About two months ago, Apple brought antitrust counterclaims against HTC's second ITC complaint (the one that was filed about a year ago) and immediately removed them to the Eastern District of Virginia (since the ITC cannot adjudicate such counterclaims). The dispute relates to two patents HTC had acquired from a company named ADC Telecommunications. Apple alleges in its counterclaims that HTC and ADC failed to disclose those patents as essential to the 4G/LTE standard and to make a FRAND commitment, despite participating in numerous standardization meetings. Allegedly, the relevant patents "were being offered to HTC to attempt to extort a license from Apple to its patents on unique proprietary features that were not related to standards". In order to thwart this scheme, Apple wants an injunction against HTC's assertion of those two 4G/LTE patents.
HTC moved to dismiss or stay Apple's case, and it also requested a transfer to the District of Delaware. The transfer was granted today against Apple's opposition. Among other things, Apple argued that HTC cannot complain about Apple's choice of East Virginia given that this district court is only eight miles away from the ITC building in Washington DC, where HTC brought its complaint against Apple involving those patents. District Judge Anthony J. Trenga announced the decision today at the end of a hearing on HTC's motions, and entered a minute order from which I learned about it:
"Motion  to Transfer Case argued & GRANTED. Motion  to Stay and Motion  to Dismiss are DEFERRED to the United States District Court for the District of Delaware."
A detailed order will follow, but I didn't want for it before reporting. All that matters now is that HTC got what it wanted, and if the past is any indication, it will be difficult for Apple to get its counterclaims adjudicated in Delaware before the ITC investigation is concluded. In the meantime, Apple is trying to get the two former ADC patents tossed from the ITC investigation: on August 7, Apple filed a motion to terminate the investigation for lack of standing. On that basis (but the facts are usually very deal-specific) Apple already got five Google patents thrown out.
This is HTC's second win of a ticket to Delaware in as many months. On July 31, HTC already won a transfer of infringement claims over six Apple patents from the Southern District of Florida to the District of Delaware. Delaware is a district that Apple seeks to avoid nowadays. Late last year, that district court stayed all of Apple's offensive claims against HTC pending in that district until resolution of the ITC investigation of Apple's second complaint (filed more than a year ago) against HTC, and this spring, it denied an Apple motion to belatedly add infringement claims over four patents as counterclaims to a lawsuit brought by HTC. Also, in January 2012 the chief judge of this court reproached Apple for making a "disingenuous" argument (Apple argued that Delaware as a "forum non conveniens" though Apple itself had brought litigation there and opposed transfers of other cases from Delaware to its home court in Northern California).
That said, I'm sure Apple knew from the beginning that a transfer from East Virginia to Delaware was a possibility, and it just thought it was worth trying to keep the case out of Delaware. As a result of HTC's success, the case may be resolved less swiftly than otherwise, but at some point it will be, and Apple still has all options to defend itself against those patents in the ITC investigation, should the ITC deny Apple's motion to terminate the investigation for lack of standing.
If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.
Share with other professionals via LinkedIn: