Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

TCL Communication Technology Holdings Ltd. v. Telefonaktiebolaget LM Ericsson, Appeal Nos. 2018-1363, et al. (Fed. Cir. Dec. 5, 2019)

In these appeals from the United States District Court for the Central District of California, the Federal Circuit deals with issues relating to the 7th Amendment right to a jury trial. Specifically, the Federal Circuit reviewed whether Ericsson was entitled to a jury trial on the adjudication of a specific term of a court-ordered license. The license in question imposed “fair, reasonable and non-discriminatory” (FRAND) rates in a worldwide license on Ericsson and TCL for Ericsson’s portfolio of patents that were incorporated into 2G, 3G, and 4G mobile communications standards. The term in question was a “release payment” computed based on a retrospective FRAND royalty rate for TCL’s past unlicensed sales for practicing each standard.

Both parties proposed methodologies to calculate the FRAND rates, but the district court rejected them as flawed, and instead employed its own methodology. As discussed in more detail below, the Federal Circuit held that Ericsson was entitled to a jury trial on the calculation of the release payment, which was in substance compensatory relief for past infringing activity, and that by determining the amount itself, the district court deprived Ericsson of that right.

Read more.

ALSO THIS WEEK

Plastic Omnium Advanced Innovation and Research v. Donghee America, Inc., Appeal No. 2018-2087 (Fed. Cir. Nov. 21, 2019)

In an appeal from the District of Delaware, the Federal Circuit affirmed the grant of summary judgment of non-infringement. The case turned on the court’s construction of the “parison” terms in plaintiff’s patents. The Federal Circuit agreed with the district court’s claim construction that the patentee did not use the term “parison” in the “conventional, plain and ordinary manner.” Instead, the patents gave the term a “special definition,” which the Federal Circuit held the district court properly applied in determining whether defendant’s product literally infringed. The Federal Circuit also agreed with the district court that defendant’s product did not infringe under the doctrine of equivalents, because plaintiff had failed to present evidence why the undisputed differences in the parties’ products and claimed advantages of the same were insubstantial.

The opinion can be found here.

Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributors: Erin Forbes and Bazsi Takacs