Wednesday, April 17, 2013

Samsung asks ITC for two-month delay of investigation of Ericsson's complaint

The ITC currently has a rather ambitious target date for the investigation of Ericsson's late-November 2012 complaint against Samsung: April 8, 2014 (15 months after institution of the investigation). Samsung and the ITC staff had thought that more time was needed to resolve this large and complex case.

Yesterday Samsung filed a motion to extend discovery by 60 days and modify the procedural schedule accordingly. Samsung "asserts that this extension of time is warranted in view of the breadth of outstanding discovery" and blames Ericsson for failing to reduce the scope of the investigation. Samsung would have wanted Ericsson to drop patents (or at least certain claims). Samsung acknowledges that some narrowing has occurred: Ericsson used to assert 134 claims from 11 different patents against "over 190 accused Samsung products spanning diverse product lines, including cellular phones, tablet computers, base stations, televisions, and media players". But there are still "ten patents, 123 claims, and over 190 Samsung accused products" at issue in the investigation.

The fact that seven of Ericsson's asserted patents are FRAND-pledged standard-essential patents (SEPs) further inflates and complicates discovery, requiring information from third parties regarding their SEP license agreements. Many of the third parties are not U.S.-based, requiring international judicial assistance to conduct discovery. Foreign third parties subpoenaed in the investigation include ASUSTeK, Flextronics, Hon Hai, HTC, huawei, Japan Display, LG, MediaTek, Nokia, Sharp, ST-Ericsson, TSMC, Wintek, and ZTE. There are also 40 U.S. companies that hav been subpoeaned, including the U.S. subsidiaries of many of the aforementioned companies.

Samsung proposes to extend the fact discovery cutoff deadline from April 23, 2013 to June 25, 2013. As a result, numerous other deadlines would have to be extended by approximately two months as well. The trial, which was originally scheduled to take place in mid-August 2013, would take place in late October or early November 2013 according to Samsung's proposed schedule. The Administrative Law Judge's final initial determination would be postponed into next year (Samsung does not propose a specific date), and the target date for the final Commission decision would be June 9, 2014.

If Samsung's requested extension was granted, its retaliatory complaint against Ericsson would be adjudged three weeks before Ericsson's earlier-filed complaint. The target date for the investigation of Samsung's complaint is May 16, 2014.

[Update] Subsequently to Samsung's motion, Ericsson "move[d] for partial termination of this Investigation with respect to claim 17 of United States Patent No. 6,473,506, and claims 3, 55, 62, and 63 of United States Patent No. 6,301,556". Presumably this isn't enough to address Samsung's concerns about the scope of the case. [/Update]

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