Justia Patents Opinion SummariesArticles Posted in US Court of Appeals for the Fifth Circuit
HTC Corp. v. Telefonaktiebolaget LM Ericsson
The European Telecommunications Standards Institute (ETSI) established many global standards for 3G, 4G, and 5G cellular communications technology. ETSI members that own standard-essential patents must provide “an irrevocable undertaking in writing that [they are] prepared to grant irrevocable licenses on fair, reasonable and non-discriminatory (FRAND)” terms. Ericsson holds patents that are considered essential to the ETSI standards and agreed to grant licenses to other companies to use its standard-essential patents on FRAND terms. HTC produces mobile devices that implement those standards; to manufacture standard-compliant mobile devices, HTC has to obtain a license to use Ericsson’s patents. Ericsson and HTC have previously entered into three cross-license agreements for their respective patents. Negotiations to renew one of those agreements failed.HTC filed suit, alleging that Ericsson had breached its commitment to provide a license on FRAND terms and had failed to negotiate in good faith. The jury found in favor of the defendants. The district court entered a separate declaratory judgment that the defendants had affirmatively complied with their contractual obligations. The Fifth Circuit affirmed, rejecting challenges to the district court’s exclusion of HTC’s requested jury instructions, its declaratory judgment that Ericsson had complied with its obligation to provide HTC a license on FRAND terms, and the exclusion of certain expert testimonial evidence as hearsay. View "HTC Corp. v. Telefonaktiebolaget LM Ericsson" on Justia Law
ATOM Instrument Corp. v. Petroleum Analyzer Co., LP
After ATOM filed for bankruptcy, plaintiff and ATOM initiated an adversarial proceeding against Petroleum Analyzer, alleging claims of misappropriation of trade secrets, unfair competition, and civil theft. On the bankruptcy court's recommendation, the district court withdrew the reference to the bankruptcy court and asserted jurisdiction under 28 U.S.C. 1334, and entered partial summary judgment for plaintiff and ATOM. Four years later, the district court held a bench trial and entered judgment in favor of Petroleum Analyzer and later awarded attorneys' fees to Petroleum Analyzer.The Fifth Circuit held that the district court did not clearly err by finding that Petroleum Analyzer did not use plaintiff's trade secrets in Petroleum Analyzer's sulfur-detecting excimer lamp called a MultiTek. Furthermore, the district court did not ignore the "law of the case" doctrine. The court also held that the district court did not err by awarding Petroleum Analyzer attorneys' fees under the Texas Theft Liability Act. The court remanded to allow the district court to make the initial determination and award of appellate attorneys' fees to Petroleum Analyzer. View "ATOM Instrument Corp. v. Petroleum Analyzer Co., LP" on Justia Law
Xitronix Corp. v. KLA-Tencor Corp.
At issue in this case was whether a jury should hear Xitronix's claim that KLA-Tencor violated the Sherman Act's prohibition of monopolies by obtaining a patent through a fraud on the U.S. Patent and Trademark Office (PTO).The Fifth Circuit could not conclude that the Federal Circuit's decision to transfer this case to it was plausible, given the Supreme Court's and Congress's decisions to the contrary. The court held that the case belongs in the Federal Circuit because it presented a standalone Walker Process claim and there are no non-patent theories that would divert it to the Fifth Circuit. The court held that, under any reading of Gunn v. Minton, 568 U.S. 251 (2013), the court would deem it implausible that it could decide this appeal. Therefore, the court transferred the case back to the Federal Circuit. View "Xitronix Corp. v. KLA-Tencor Corp." on Justia Law