This is an update on three recently-instituted ITC investigations involving Samsung Electronics (but not Apple, for a change).
Ericsson denies bad faith in connection with reissue patent
On Monday Samsung opposed Ericsson's motion to amend its November 30, 2012 complaint, arguing that the assertion of the '888 patent was made in bad faith in the first place and should either be denied or, in the more realistic alternative, the schedule should be extended. Ericsson had been forthright from the beginning about the fact that a reissue of the '888 patent -- U.S. Patent No. RE43,931 was going to be published shortly and would replace the '888 patent in this investigation. But Samsung says that Ericsson should never have asserted a patent that it considered invalid because otherwise it wouldn't have requested a reissue. Samsung also took issue with the fact, also noted by the ITC staff, that Ericsson wants to throw in 15 more patent claims through its amendment.
Samsung and the ITC staff did not oppose Ericsson's request to file a reply in support of its motion to amend.
The reply brief implies that Samsung is ungrateful as "Samsung's motion proves the point that no good deed goes unpunished". Ericsson says that by asserting the '888 patent and highlighting proactively that a replacement would occur it actually enabled Samsung to research the publicly-accessible prosecution history of this patent and prepare for the assertion of the reissue patent, while Ericsson could also have simply left out the '888 patent (asserting an unpublished reissue would not have been an option) and amended the complaint later. Ericsson's "good deed" is, however, rather self-serving. Ericsson, like any other complainant, wanted to file its complaint as early as possible, and it wants the investigation to be concluded as quickly as possible -- but it also wanted to use this reissue patent. If Ericsson had done what it says it could have done (amend the complaint without asserting the pre-reissue patent at all), resolution of the investigation would likely have been delayed. Ericsson wanted to have its cake and eat it: file early, get a tight schedule, but assert this patent, while it's undergoing some important transformation due to the reissue, at any rate, and (now we're getting to the tricky part) assert 15 more claims on the occasion of the amendment. I don't see any indication that Samsung had received an advance warning in this regard. Samsung only knew that some replacement would occur, but with only one of the claims of the '888 patent having been asserted originally, I don't think Samsung could expect the totality of Ericsson's assertions relating to RE'931.
Ericsson also denies that a patent holder's request for reissue is tantamount to an admission of invalidity. But the basis for a reissue request must be that there are some problems, and Ericsson mentions the following possible motivations:
"Patent owners place patents into reissue to permit the Patent Office to consider new prior art that may raise a question. Reissue also allows patent owners to amend claims to more clearly describe the invention, and in some cases, more clearly distinguish prior art."
None of the above excudes confidence in the validity of the patent.
If I had to decide this, I would allow Ericsson to amend, but I would give Samsung an extra month or so in recognition of the fact that it really couldn't know how many (and which) claims Ericsson was going to assert at this stage. We'll see what the ITC is going to do.
ITC hearing on Samsung's retaliatory complaint against Ericsson will start on September 30, 2013
On December 21, 2012 Samsung hit back at Ericsson with an ITC complaint. On Wednesday Administrative Law Judge E. James Gildea scheduled the final ruling for May 16, 2014; the judge's final initial determination for January 16, 2004; and the evidentiary hearing (trial) for September 30 - October 11, 2013.
This means the investigation would be concluded within approximately 15.5 months of institution of the investigation. Ericsson's complaint was filed three weeks earlier and currently has a 15-month target date (unless the amendment discussed in the previous section results in a new schedule), resulting in a target date of April 8, 2014. If the schedules didn't change during the course of the investigations (which is very unlikely), Ericsson would have an advantage of five to six weeks over Samsung.
June 4, 2014 target date set for investigation of InterDigital's complaint against Samsung, Nokia, Huawei and ZTE
Last week the ITC decided to investigate InterDigital's complaint against Samsung (the primary target against which seven patents are asserted) and three companies already defending themselves against another InterDigital complaint (Nokia, Huawei and ZTE). Samsung and Huawei had asked for a postponement, but the investigation is going ahead. Administrative Law Judge Robert K. Rogers, Jr. yesterday set a June 4, 2014 target date (16 months from institution of the investigation) for the final ruling and, accordingly, a February 4, 2014 target date for his final initial determination.
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