RAND in the Courts: Legal Theories for RAND and an Update on Strategies and Approaches Being Used by Eric Lamison

1
RAND in the CourtsLegal Theories for RAND and
an Update on Strategies and Approaches Being Used
by Eric Lamison
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Venues Where RAND Issues Are Presented
RAND IN THE COURTS

• Claims / Defenses in U.S. District Courts
• ITC Defenses
• ITC venue limits the theories that are viable for
  Respondents.
• See, e.g., Microsoft v. Motorola ITC Initial
  Determination, 337-TA-752
• (Yet another reason why ITC may remain popular
  for certain patentees.)
• Claims / Defenses in State Courts
• Claims are typically based on state law.
• Governmental Body Investigations (FTC, European
  Commission)
• Foreign Courts, e.g. Mannheim Court, Germany

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RAND Based Claims / Defenses
RAND IN THE COURTS

1. Declaratory Judgment Actions
2. Breach of Contract
3. Promissory Estoppel
4. Equitable Estoppel
5. Waiver
6. Fraud
7. Unclean Hands
8. Antitrust Claims / Patent Misuse
9. Unfair Business Practices

4
Declaratory Judgment Actions
RAND IN THE COURTS

• 35 U.S.C. 2201
• In a case of actual controversy within its
  jurisdiction . . . any court of the United
  States, upon the filing of an appropriate
  pleading, may declare the rights and other legal
  relations of any interested party seeking such
  declaration, whether or not further relief is or
  could be sought
• Declaratory Judgment claimant in a patent case
  must meet case-or-controversy requirements as set
  forth in MedImmune, Inc. v. Genentech, Inc.
• Basically, the question in each case is whether
  the facts alleged, under all the circumstances,
  show that there is a 1 substantial controversy,
  2 between parties having adverse legal
  interests, 3 of sufficient immediacy and
  reality to warrant the issuance of a declaratory
  judgment.
• MedImmune, Inc. v. Genentech, Inc., 549 U.S.
  118 (2007).

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Declaratory Judgment Actions
RAND IN THE COURTS

• Who Adjudicates?
• The Declaratory Judgment Act specifically
  preserves the right to jury trial for both
  parties.  
• Burden of Proof
• Party seeking a declaratory judgment has the
  burden of establishing the existence of an actual
  case or controversy. MedImmune, Inc. v.
  Genentech, Inc., 549 U.S. 118, 127 (2007).
• Plaintiff has burden to establish by a
  preponderance of the evidence.
• Shell Oil Co. v. Amoco Co., 970 F.2d 885, 887
  (Fed. Cir. 1992)

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Declaratory Judgment Regarding Amount of
Reasonable Royalty
RAND IN THE COURTS

• Realtek Semiconductor Corp. v. LSI Corp., 2012 WL
  4845628 (N.D. Cal. Oct. 10, 2012) (Order denying
  motion to dismiss declaratory judgment claim)
• Realtek sought a declaratory judgment
• That Defendants have not offered license terms
  consistent with SSO policy and declarations
• Setting forth RAND terms and conditions for a
  license, including royalty rate and
• That the alleged essential patents are
  unenforceable as to Realtek given Defendants
  refusal to offer a license on RAND terms
• Defendants moved to dismiss the declaratory
  judgment count as duplicative of other claims,
  stating it sought same relief and added no new
  dimension or theory.
• Court denied motion, finding controversy based on
  patent infringement claims.
• the determination of a reasonable royalty is
  part of a live controversy between the parties
  over defendants claims of patent infringement,
  which is independent of whether defendants
  breached the alleged contract.

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Declaratory Judgment of Non-RAND Offer
RAND IN THE COURTS

• Microsoft Corp. v. Motorola, Inc. (W.D. Wash.
  June 1, 2011)
• The Court found Microsofts declaratory judgment
  claim to be duplicative of its additional claims,
  particularly its claim for breach of contract,
  because the relief it was seeking is the
  consequence of the same ruling on its other
  claims, which is an injunction that requires
  Motorola to make a RAND offer.
• The Court relied on Swartz v. KPMG LLP, 476 F.3d
  756, 766 (9th Cir. 2007) stating requests for
  declaratory judgment orders that merely impose
  the remedies provided for in other claims are
  duplicative and may be dismissed on that basis.
• Therefore the court granted Motorolas motion to
  dismiss Microsofts declaratory judgment cause of
  action.
• However, it would appear that contract and other
  claims have various elements such as damages,
  that seem unnecessary for a DJ claim.

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Right to a Jury on Patent Damages
RAND IN THE COURTS

• Determination of Running Royalty Calculation (if
  ordered negotiations fail)
• Apple, Inc. v. Motorola, Inc., 2012 WL 2376664
  (N.D. Ill. June 22, 2012)
• The Court stated that, although an order to pay a
  royalty in the future certainly sounds like an
  equitable order (a mandatory injunction),
  alternatively it may be part of a jurys verdict
  on damages. If past damages are awarded along
  with future damages either calculated as a lump
  sum or as a non-equity running-royalty order,
  there would be no occasion to order equitable
  relief.
• Thus a running royalty calculation may be made by
  either a judge or a jury (citing Telcordia, 612
  F.3d 1365, 1378-89 (Fed. Cir. 2010)).

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Breach of Contract
RAND IN THE COURTS

• Agreement between patentee and SSO
• Duty to disclose existence of essential IP
• Commitment to license on RAND terms
• Breach of the Agreement
• Question whether initial offer or later offers
  must be RAND
• Even if initial offer need not be RAND,
  unreasonable initial offer may breach implied
  covenant of good faith fair dealing. Initial
  outrageous offer also may be viewed as
  anticipatory breach by patentee.
• Pros / Cons of engaging in further negotiations
  if you wish to assert claim
• Damages
• Can be a disputed element if no non-RAND license
  fee has been paid.
• Party asserting RAND may need to be creative,
  e.g. rely on legal fees / costs
• Third-party beneficiary status
• Apple, Inc. v. Motorola Mobility, Inc., 2012 WL
  3289835 (W.D. Wis. Aug. 10, 2012)

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Breach of Contract Agreement
RAND IN THE COURTS

• Offer
• IP rights policies of the SSO can be considered
  offers in exchange for ability to participate in
  developing standards
• Acceptance
• Attending meetings participation in meetings
  having proposals considered joining the SSO,
  submitting letters of assurance, etc.
• Consideration two theories recently articulated
• The right to participate in standards
  discussions.
• Having your IP declared essential to compliance
  with the standard.
• Apple, Inc. v. Motorola Mobility, Inc., 2012 WL
  3289835 (W.D. Wis. Aug. 10, 2012)
• Apple, Inc. v. Motorola Mobility, Inc., 2012
  WL 2376664 (N.D. Ill., June 22, 2012)

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Breach of Contract Developing Cases
RAND IN THE COURTS

• Apple v. Motorola Mobility (W.D. Wisc.) case
  pending
• Court allowed Apples counterclaim for breach of
  contract to survive summary judgment motion by
  Motorola and awarded Apple summary judgment that
  
• contracts existed between Motorola and the SSO
• Apple, as potential user of the standards at
  issue, is a third party beneficiary
• that Motorola was obligated to disclose its
  patents and applications before adoption of
  standards incorporating its patents and
• Motorola failed to timely disclose patents and
  applications.
• Agreement All members shall use reasonable means
  to disclose IP rights that might have become
  essential to standards being considered before
  issuance
• Issues for trial
• Whether Motorola breached the agreement by (a)
  failing to make bona fide efforts to disclose in
  a timely manner and (b) failing to offer a
  license on RAND terms
• Damages attributable to each asserted breach

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Breach of Contract Developing Cases
RAND IN THE COURTS

• Microsoft Corp. v. Motorola, Inc. (W.D. Wash.
  June 1, 2011)
• Microsoft raised a breach of contract claim
  against Motorola and the Court found that
  Motorolas Letters of Assurances to the IEEE
  created an enforceable contract and that
  Microsoft was a third party beneficiary.
• The Court found there to be no legal authority
  requiring negotiation as a precondition to a
  breach of contract claim based on RAND licensing
  and denied Motorolas motion to dismiss the
  claim.

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Breach of Contract Developing Cases
RAND IN THE COURTS

• Realtek Semiconductor Corp. v. LSI Corp. Agere
  Systems, Inc., 2012 WL 4845628 (N.D. Cal. Oct.
  10, 2012).
• After defendants sued Realtek in ITC, Realtek
  filed NDCA complaint
• Realtek alleges that defendants breached
  agreement to comply with policies of IEEE-SA and
  commitment to offer RAND licenses for patents
  essential to 802.11
• Judge Whyte denied motion to dismiss, citing to
  WA and WI cases
• Didnt decide if initial offer must be RAND or
  just meet good faith/fair dealing
• Intriguing The court is troubled by
  defendants decision to choose, in the first
  instance, a forum for enforcing their patent
  rights in which money damages are unavailable and
  the only relief is injunctive in nature. Since
  defendants have done so, there appears even less
  reason for this court to wait before determining
  the reasonable royalty rate, which is all
  defendants are initially entitled to. Thus, the
  motion to dismiss Realteks breach of contract
  claim is denied.

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Breach of Contract
RAND IN THE COURTS

• Who Adjudicates?
• Judge determines meaning of the agreement or
  policy. Hynix Semiconductor Inc. v. Rambus Inc.,
  645 F.3d 1336 (Fed. Cir. 2011).
• Jury determines whether the patentee breached the
  agreement (unless parties waive jury trial).
  Microsoft Corp. v. Motorola, Inc., 2012 WL
  2030098 (W.D. Wash. June 6, 2012).
• The RAND amount can be a jury question. Id.
• Burden of Proof
• Plaintiff bears burden of proof by the applicable
  state law standard, which is usually a
  preponderance of the evidence. See e.g. Lab.
  Corp. of Am. Holdings v. Metabolite Laboratories,
  Inc., 599 F.3d 1277, 1280 (Fed. Cir. 2010).

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Promissory Estoppel Elements
RAND IN THE COURTS

• A promise
• The intent to induce action or forbearance based
  on the promise
• Reasonable reliance on the promise
• Injury
• Microsoft Corp. v. Motorola, Inc., 2012 WL
  2030098 (W.D. Wash. June 6, 2012)

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Promissory Estoppel Developing Cases
RAND IN THE COURTS

• Microsoft Corp. v. Motorola, Inc., 2012 WL
  2030098 (W.D. Wash. June 6, 2012)
• Microsoft alleged that Motorola made a clear and
  definite promise through their commitments to the
  IEEE and ITU. Microsoft claims that they
  developed and marketed produces in reliance on
  Motorolas promise, and they have been harmed as
  a result of its reasonable reliance.
• Motorola filed a motion to dismiss stating that
  Microsoft had alleged a valid contract and the
  doctrine of promissory estoppel was not designed
  to give a party a second bite at the apple in
  event it fails to prove a breach of contract.
• The Court determined that at an early stage in
  the case a plaintiff may plead alternative causes
  of action even if inconsistent, and denied
  Motorolas motion.

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Promissory Estoppel Developing Cases
RAND IN THE COURTS

• Realtek Semiconductor Corp. v. LSI Corp., 2012 WL
  4845628 (N.D. Cal. Oct. 10, 2012)
• Patent-holder submitted Letters of Assurances to
  IEEE stating it was prepared to grant a license
  to an unrestricted number of applicants on RAND
  terms.
• Realtek claimed that it developed and sold
  standard-compliant products in reliance on this
  commitment to license.
• The court denied LSIs motion to dismiss, stating
  that Realteks complaint alleged enough
  information for the claim to survive.

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Promissory Estoppel
RAND IN THE COURTS

• Who Adjudicates?
• Some courts have found promissory estoppel to be
  an issue properly resolved by the Court.
• Merex A.G. v. Fairchild Weston Sys., Inc., 29
  F.3d 821, 826 (2d Cir. 1994)
• Others have found the reasonable reliance element
  to be an issue of fact for the jury.
• Hendricks v. Smartvideo Techs., Inc., 511 F.
  Supp. 2d 1219 (M.D. Fla. 2007)
• In re JPMorgan Chase Mortg. Modification Litig.,
  2012 WL 3059377 (D. Mass. July 27, 2012)
• Burden of Proof
• Proof of promissory estoppel may require clear
  and convincing evidence.
• W. Indies Network-I, LLC v. Nortel Networks,
  (CALA) Inc., 243 F. Appx 482, 485 (11th Cir.
  2007) Escarra v. Regions Bank, 353 F. Appx 401,
  403 (11th Cir. 2009)

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Equitable Estoppel
RAND IN THE COURTS

• Statement/conduct of patentee communicates
  something in a misleading way
• Accused infringer must show it substantially
  relied on the misleading conduct in taking some
  action
• Accused infringer must establish it would be
  materially prejudiced if patentee is now
  permitted to proceed.
• A.C. Aukerman Co. v. R.L. Chaides Constr. Co.,
  960 F.2d 1020 (Fed. Cir. 1992)

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Equitable Estoppel Reliance Issues
RAND IN THE COURTS

• Microsoft v. Motorola, Initial Determination
  (ITC), 337-TA-752
• ALJ found against Microsofts equitable estoppel
  claim because Microsoft purportedly did not meet
  the reliance prong.
• ALJ opined that Microsoft did not (1) explain
  what their costs were when they invested in
  implementing the standards in its products and,
  more importantly, (2) make clear that Microsoft
  relied upon Motorolas RAND assurance when it
  began selling the accused products.

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Equitable Estoppel Reliance Issues
RAND IN THE COURTS

• Barnes Noble, Inc. v. LSI Corp., 849 F. Supp.
  2d 925 (N.D. Cal. 2012).
• it is reasonable to infer reliance by the IEEE
  based on the IEEEs policies requiring disclosure
  and requiring it to obtain assurances regarding
  any patents relevant to proposed standards before
  adopting them.
• Notes that requirement to provide assurances on a
  FRAND basis necessarily anticipates reliance on
  those commitments, otherwise the assurances would
  be meaningless.
• Adoption of the standards in question is
  sufficient to infer reliance on the propriety of
  the standards-setting process itself.

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Equitable Estoppel
RAND IN THE COURTS

• Who Adjudicates?
• Equitable estoppel is a matter committed to the
  sound discretion of the trial judge.A.C.
  Aukerman Co. v. R.L. Chaides Const. Co., 960
  F.2d 1020, 1028 (Fed. Cir. 1992).
• When a trial involves questions that require
  answers by both judge and jury, the jury
  questions should be decided first, however the
  judge retains discretion to take into
  consideration alternative factors such as the
  courts docket and hardships to each party.
• Beacon Theatres, Inc. v. Westover, 359 U.S. 500,
  510 (1959).
• Burden of Proof
• Absent special circumstances, such as fraud or
  intentional misconduct, a party asserting
  equitable estoppel must prove each factor by a
  preponderance of evidence.
• A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960
  F.2d 1020, 1046 (Fed. Cir. 1992).

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Waiver
RAND IN THE COURTS

• Waiver can be asserted as a defense, but has been
  rejected as an affirmative claim.
• Implied waiver has been typically used for
  arguing that patentee failed to comply with duty
  of disclosure to SSO
• Qualcomm v. Broadcom, 548 F.3d 1004,1012-18
  (Fed. Cir. 2008)
• One may try to argue that an express commitment
  to license on RAND terms is
• (a) express waiver through intentional
  relinquishment of right to seek non-RAND
  royalties or
• (b) implied waiver through conduct inconsistent
  with an intent to enforce rights as to include a
  reasonable belief that such right has been
  relinquished.

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Waiver
RAND IN THE COURTS

• Who Adjudicates?
• In patent cases, waiver appears to be an
  equitable defense for determination by the judge,
  although advisory jury verdict may be utilized.
• Qualcomm v. Broadcom, 548 F.3d 1004, 1012-18
  (Fed. Cir. 2008)
• Burden of Proof
• Waiver must be proved by clear and convincing
  evidence.
• Qualcomm v. Broadcom, 548 F.3d 1004, 1016, 1018
  (Fed. Cir. 2008)
• Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d
  1336, 1348 (Fed. Cir. 2011)

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Fraud
RAND IN THE COURTS

• A misrepresentation, concealment, or
  nondisclosure in the face of a duty to disclose
• Knowledge of falsity
• Intent to defraud or induce reliance
• Sufficient that patentee intended its statements
  or silence to be communicated to SSO members
• Justifiable reliance
• Reliance found if defendant designed products
  based on the standard
• Damages
• Barnes Noble, Inc. v. LSI Corp., 849 F. Supp.
  2d 925, 933-34 (N.D. Cal. 2012)

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Fraud Developing Cases
RAND IN THE COURTS

• Barnes Noble, Inc. v. LSI Corp., 849 F. Supp.
  2d 925, 942 (N.D. Cal. 2012)
• BN sought declaratory judgment of
  non-infringement. LSI counterclaimed for
  infringement, and BN asserted numerous equitable
  affirmative defenses for unenforceability, citing
  non-disclosure of 3G patents during ETSI meetings
  by LSI and LSIs predecessor-in-interest,
  Lucent.
• Court denied motion to strike fraud defense based
  on alleged failure to disclose essential patents.

27
Fraud
RAND IN THE COURTS

• Who Adjudicates?
• Fraud involves questions of fact normally left to
  a jury.
• Burden of Proof
• Fraud must be proved by clear and convincing
  evidence, including in the standard setting
  context.
• E.g., Rambus, Inc. v. Infineon Techs. AG, 318
  F.3d 1081 (Fed. Cir. 2003).

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Unclean Hands
RAND IN THE COURTS

• Patentees conduct is inequitable and relates to
  the subject matter of its claims.
• Barnes Noble, Inc. v. LSI Corp., 849 F. Supp.
  2d 925, 942 (N.D. Cal. 2012)
• (denying motion to strike unclean hands defense)
• Typically arises in context of duty to disclose,
  but one can envision that where a plaintiff
  demands excessive compensation or an injunction
  in violation of a RAND commitment, unclean hands
  may be a tenable defense.

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Unclean Hands
RAND IN THE COURTS

• Who Adjudicates?
• The judge, based on the equitable nature of the
  defense.
• Levi Strauss Co. v. Shilon, 121 F.3d 1309, 1313
  (9th Cir. 1997)
• (Cited in Barnes Noble v. LSI)
• Burden of Proof
• Unclean hands must be proven by clear and
  convincing evidence.
• Aptix Corp. v. Quickturn Design Sys., Inc., 269
  F.3d 1369 (Fed. Cir. 2001)

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Antitrust Claims
RAND IN THE COURTS

• Sherman Act 2 Unlawful monopolization claim
  requires
• Monopoly Power,
• Acquired or maintained through anticompetitive
  conduct.
• Broadcom Corp. v. Qualcomm, Inc., 501 F.3d 297,
  306 (3d. Cir. 2007)
• What type of conduct is anticompetitive?
• Failure to disclose. At least one court has held
  it essential that the SSO would not have used the
  IP but for the deception.
• Rambus Inc. v. FTC, 522 F.3d 456 (D.C. Cir. 2008)
• Failure to later license on FRAND terms.
• Broadcom Corp. v. Qualcomm Inc., 501 F.3d 297 (3d
  Cir. 2007)

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Antitrust Claims
RAND IN THE COURTS

• Rambus, Inc. v. FTC, 522 F.3d 456 (D.C. Cir.
  2008)
• Failure to disclose IP rights to SSO did not
  necessarily reduce competition because SSO might
  have chosen to standardize the IP anyway.
• Broadcom Corp. v. Qualcomm, Inc., 501 F.3d 297
  (3d Cir. 2007)
• FRAND promise plus later demanding non-FRAND
  terms could be a deception sufficient to violate
  antitrust law. Misrepresentations of the cost
  (i.e. licensing cost) of implementing a standard
  may confer an unfair advantage and bias the
  competitive process in favor of the defendant.

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Antitrust Claims
RAND IN THE COURTS

• Noerr-Pennington Immunity
• May immunize patentee from antitrust claim where
  patentee is asserting patent right. See Apple,
  Inc. v. Motorola Mobility, Inc., 2012 WL 3289835
  (W.D. Wis. Aug. 10, 2012).
• Therefore, may need to assert some injury beyond
  litigation costs. Id.
• Can apply to other types of unfair competition
  claims.

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Antitrust Claims Developing Cases
RAND IN THE COURTS

• Apple, Inc. v. Motorola Mobility,
• Inc., 2012 WL 3289835 (W.D.
• Wis. Aug. 10, 2012)
• Noerr-Pennington doctrine provides Motorola
  immunity.
• Court stated that Apples only alleged damages
  from the abuse of the standards-setting process
  were costs of litigation arising from Motorolas
  allegedly improper suits against it.
• Realtek Semiconductor Corp. v.
• LSI Corp., 2012 WL 4845628
• (N.D. Cal. Oct. 10, 2012)
• Court dismissed the claim due to the fact that
  Realtek focused on the harm to them rather than
  the competitive harm, and harm to the rest of the
  marketplace.

34
Antitrust Claims FTC
RAND IN THE COURTS

• Civil antitrust actions to prohibit unfair or
  deceptive acts or practices affecting commerce
  (DOJ handles criminal cases).
• Remedies potentially available (Rambus, 2006 WL
  2330117, FTC Commission Remedy Op., Feb. 2, 2007)
• Injunction against future anticompetitive conduct
• Compulsory license at reasonably royalty rates
• Free compulsory license

35
Antitrust Claims FTC
RAND IN THE COURTS

• Concerned about the issue of abuse of SEPs
• In June, held a workshop on standard-setting and
  SEPs. Sought public comments on the issue
  through August 5th.
• Earlier this month, DOJs chief economist gave
  speech at National Academy of Sciences in D.C.
  explaining policy choices SSOs could implement
  that would help competition.

36
Antitrust Claims European Commission
RAND IN THE COURTS

• Pending European Commission antitrust
  investigation regarding seeking of injunctive
  relief for FRAND-obligated patents.
• Jan. 31, 2012 formal investigation opened
  regarding Samsung
• April 3, 2012 formal investigation opened
  regarding Motorola Mobility
• Commission examines whether there is an abuse of
  a dominant position prohibited by Article 102 of
  the Treaty on the Functioning of the EU.
• Apple, as defendant, has very recently (Oct. 19,
  2012) asked the German court to stay its patent
  litigation with Samsung pending the EC
  investigation.

37
Antitrust Claims European Commission
RAND IN THE COURTS

• Appears to be very motivated to solve the SEP
  abuse issue
• The fact that we have received many complaints
  related to standards-essential patents also shows
  that there is a great need for guidance. I want
  to tell you that I am willing to provide clarity
  to the market through our enforcement. . . . I
  expect the leading companies in the sector not to
  misuse their intellectual property rights . . .
• EC Vice President Almunia
• http//europa.eu/rapid/press-release_SPEECH
  -12-629_en.htm

38
Patent Misuse
RAND IN THE COURTS

• Apple, Inc. v. Motorola Mobility, Inc., 2012 WL
  3289835 (W.D. Wis. Aug. 10, 2012).
• Apple filed a claim for declaratory judgment that
  Motorola misused its patents by promising to
  offer fair licenses and then failing to do so.
• The Court determined that it was not clear from
  Apples complaint whether this claim was based on
  contract theory or antitrust theory.
• If based on antitrust theory, the Court
  determined that this claim would not survive as
  Motorola is immune under the Noerr-Pennington
  doctrine.
• However, the Court stated that if the claim is
  based on contract theory it may proceed.

39
Patent Misuse
RAND IN THE COURTS

• Who Adjudicates?
• The judge, based on the equitable nature of the
  defense.
• C.R. Bard. Inc. v. M3 Sys., Inc., 157 F.3d 1340,
  1372 (Fed. Cir. 1998)
• Burden of Proof
• Patent misuse must be proven by clear and
  convincing evidence.
• C.R. Bard. Inc. v. M3 Sys., Inc., 157 F.3d 1340,
  1372 (Fed. Cir. 1998)

40
Unfair Competition
RAND IN THE COURTS

• Under California Business and Professions Code
  17200, unfair competition refers to conduct that
  threatens an incipient violation of an antitrust
  law, or that violates the policy or spirit of one
  of those laws because its effects are comparable
  to a violation of the law, or that otherwise
  significantly threatens or harms
  competition.Cel-Tech Communications, Inc. v.
  Los Angeles Cellular Tel. Co., 20 Cal. 4th 163,
  973 P.2d 527 (1999)

41
Unfair Competition Developing Cases
RAND IN THE COURTS

• Realtek Semiconductor Corp. v. LSI Corp.,
• 2012 WL 4845628 (N.D. Cal. Oct. 10, 2012)
• Plaintiffs allege competitive harm under 17200
  stating that due to Defendants actions the
  entire WLAN product market has suffered injury.
• The Court determined that Realteks allegations
  do not adequately suggest competitors will be
  harmed.
• Realtek only focused on the alleged impact on
  themselves rather than the market as a whole.
• Apple, Inc. v. Motorola Mobility, Inc.,
• 2012 WL 3289835 (W.D. Wis. Aug. 10, 2012)
• Apple alleged unfair competition and business
  practices, arguing that Motorola engaged in a
  pattern of unfair, deceptive and anticompetitive
  conduct by failing to disclose ownership of
  patents it now claims to be essential.

42
RAND IN THE COURTS
Case DJ Contract Promissory Estoppel Equitable Estoppel Waiver Fraud Unclean Hands Antitrust/Misuse
Apple v. Motorola (W.D. Wis.) Pending Pending Dismissed Precluded
Apple v. Motorola (ITC) Rejected
Microsoft v. Motorola (ITC) Rejected Rejected
Microsoft v. Motorola (W.D. Wash.) Dismissed Pending Pending Dismissed as affirmative claim
Realtek v. LSI (N.D. Cal.) Pending Pending Pending Dismissed
Barnes Nobles v. LSI (N.D. Cal.) Pending Pending Pending Pending
Hynix v. Rambus (Fed. Cir.) Rejected Rejected
Qualcomm v. Broadcom (Fed. Cir.) Asserted Affirmed by Fed. Cir. Asserted
43
KIRKLAND ELLIS LLP
Eric Lamison is the founding partner for the
intellectual property trial practice group for
Kirkland's San Francisco office. eric.lamison_at_kirk
land.com [phone]
Harper Batts is a partner for the intellectual
property trial practice group for Kirkland's Palo
Alto office. harper.batts_at_kirkland.com (650)
859-7001
Reza Dokhanchy is an intellectual property
litigation associate in Kirkland's San Francisco
office. reza.dokhanchy_at_kirkland.com [phone]
Claire Thompson is an intellectual property
litigation associate in Kirkland's San Francisco
office. claire.thompson_at_kirkland.com (415)
439-1492