Wednesday, July 25, 2012

ITC judge sets January 2014 target date for Nokia-HTC case, stresses technical diversity of patents

Administrative Law Judge Thomas B. Pender yesterday set a target date of January 23, 2014 for the final ITC ruling on Nokia's May 2012 complaint against HTC. The ALJ's preliminary ruling is scheduled for September 23, 2013.

ITC judges usually set a target date of 16 -- not 18 -- months after publication of the notice of institution of an investigation in the Federal Register, but they can take more time if there are reasons for which an investigation takes more than the usual amount of time. In this case, the primary reason for the delay is that "[t]his investigation has eighty-seven asserted claims spread over nine asserted patents; the patents covering eight completely unrelated (i.e., dissimilar) technologies". An additional reason is that the ITC staff (the Office of Unfair Import Investigations) decided not to participate. Due to resource constraints, the OUII participates only in some investigations as a third party.

The primary reason cited by the judge -- the technological diversity of the patents-in-suit -- speaks to the strength of Nokia's patent portfolio. In litigation, companies always pick patents that they consider to be among their strongest assets, but most companies don't have strong patents across multiple fields of technology. Large players have patents in many areas, but when it comes to their strongest patents, they're often one-trick ponies. Even though all of Nokia's patents asserted in this action are obviously related to wireless devices, such devices are multifunctional and their makers need to license patents that read on a multiplicity of technologies.

These are the nine Nokia patents at issue in this action:

  1. U.S. Patent No. 5,570,369 on "reduction of power consumption in a mobile station"

  2. U.S. Patent No. 5,884,190 on "method for making a data transmission connection from a computer to a mobile communication network for transmission of analog and/or digital signals"

  3. U.S. Patent No. 6,141,644 on "synchronization of databases with date range"

  4. U.S. Patent No. 6,393,260 on a "method for attenuating spurious signals and receiver"

  5. U.S. Patent No. 6,728,530 on a "calendar-display apparatus, and associated method, for a mobile terminal"

  6. U.S. Patent No. 7,106,293 on a "lighting control method and electronic device"

  7. U.S. Patent No. 7,209,911 on "synchronization of databases using filters"

  8. U.S. Patent No. 7,366,529 on a "communication network terminal supporting a plurality of applications"

  9. U.S. Patent No. 7,415,247 on a "method and arrangement for transmitting and receiving RF signals through various radio interfaces of communication systems"

Those are just nine out of several dozen patents that Nokia asserted in May against HTC, Viewsonic and RIM. It recently added three patents to one of its German lawsuits against RIM.

There is usually a significant drop-out rate of patents at the ITC. Judge Pender notes that Nokia is currently asserting 87 claims spread over the nine patents listed above. By the time this action goes to trial, I guess Nokia will drop a couple of patents and also reduce the number of claims it is going to assert from the other patents. But there is still going to be a significant diversity of patents-in-suit, and it won't be easy for HTC to defend itself against all of them.

By U.S. patent litigation standards, getting a final (though appealable) decision 20.5 months after filing a complaint is a swift resolution of a case. Nokia will have to be patient if HTC decides to see this through instead of backing down and paying up. But by the time the ITC decides, Nokia will probably have obtained rulings in a number of German lawsuits. The courts in Mannheim and Munich usually resolve such cases within 8-10 months, though they sometimes stay cases for the duration of a parallel nullity (invalidation) proceeding if there is serious doubt about the validity of a patent-in-suit. Nullity actions before the Federal Patent Court take longer than infringement proceedings in Munich and Mannheim, but (excluding an appeal to the Federal Court of Justice) usually not much longer than ITC investigations. So Nokia has the chance to make a whole lot of headway in Germany prior to the final ITC decision, but suing in both jurisdictions in parallel means that Nokia will have more leverage (if it prevails on some of its claims) than otherwise.

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