It's pretrial season in the Huawei-Samsung and Apple-Qualcomm FRAND disputes, thus a flurry of motion practice. Before I'll get to discuss the strategically extremely important exhaustion issue (in light of the Supreme Court's 2017 Lexmark) in Apple v. Qualcomm, there's also a short but interesting ruling that United States Magistrate Judge Mitchell D. Dembin handed down in the Southern District of California on Tuesday (this post continues below the document):
The procedural context, which the order summarizes at the start, is that Apple's original complaint involved, among other things, requests for declaratory judgment on invalidity and non-infringement of nine Qualcomm patents. With the first amended complaint, Apple tackled another nine Qualcomm patents. As an Apple filing noted (see the update paragraph at the end of this June 2017 post), Qualcomm--quite surprisingly!--elected not to bring compulsory infringement counterclaims, forever precluding Qualcomm from bringing such charges.
With the trial approaching, Qualcomm may have had second thoughts regarding its choice. Its lawyers apparently preferred to have their experts opine on infringement with a view to everything the jury will have to decide.
Apple didn't accept that change of mind and brought a motion to strike. The motion succeeded with respect to certain passages of multiple expert reports, which Qualcomm (unless it successfully appeals this order to Judge Curiel) won't be allowed to leverage at trial. The motion failed with respect to some others (the judge concluded that those expert opinions focused on standard-essentiality of certain patents and valuation; in a way, essentiality is often tantamount to infringement).
The following harsh words show that Magistrate Judge Dembin was annoyed by the way in which multiple Qualcomm expert reports were inconsistent with Qualcomm's decision not to bring infringement counterclaims with respect to the original set of nine patents:
"Qualcomm's counsel know that in a declaratory judgment action by a licensee against a patentee seeking an order of non-infringement, the patentee, Qualcomm, bears the burden of persuasion of infringement. [...] Qualcomm made the tactical decision not to assert infringement and thus avoid certain discovery obligations as mentioned above. In its expert designations, Qualcomm chose not to disclose that certain experts expressly would opine on infringement and assert that Plaintiffs are infringing patents-in-suit. Qualcomm will be held accountable for the consequences of its tactical decisions." (emphasis added)
"To the extent that Qualcomm claims they have disclosed in discovery their views regarding infringement and, consequently, there is no surprise and no prejudice, is unavailing. Rules are rules and tactical decisions have consequences[.]"
In other words (not in the order): you make your bed and you lie in it.
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