Last Week in the Federal Circuit (January 25-29): Year 1993 and LTE Technology

Despite no precedential patent decisions at the Federal Circuit, the Court still addressed some interesting issues last week, including whether a license agreement from 1993 bars patent infringement claims on LTE technology 25 years later.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 1

Non-precedential opinions: 4

Rule 36: 0

Longest pending case from argument:  Monk v. Tran, 20-1305 (83 days)

Shortest pending case from argument:  L’Oreal USA, Inc. v. Olaplex, Inc., 19-2410 (20 days)

Case of the week:  Evolved Wireless, LLC v. HTC Corp., Nos. 20-1335, 1337, 1339, 1340, and 1363. 

Panel:  Judges Dyk, Plager, and Moore, with Judge Dyk writing the opinion

You should read this case if:  you have a matter involving standard-essential patents and license agreements that include later-developed or acquired intellectual property.  

Our case this week features the standard-essential power players of quarantine: cell phones and tablets.  If you’re wondering how your trusted devices fared, please do read on. 

Evolved owns a standard-essential patent (SEP) covering 4G/LTE technology for mobile devices.  In 2015, Evolved sued several mobile device manufacturers for infringement based on their use of Qualcomm chipsets to make multi-mode, or LTE, mobile devices.

But here’s the catch.  The patent’s original owner, LGE, had granted a license to Qualcomm back in 1993.  This license agreement barred patent infringement claims against Qualcomm and its customers for use of LGE patents that are technically or commercially necessary to make, sell, or use a “Subscriber Unit.”  The (multi-) million dollar question, then, is whether defendants’ accused products are “subscriber units” under the 1993 LGE-Qualcomm license.  The district court said “yes.”  As a result, it granted defendants summary judgment of noninfringement based on the license agreement and the doctrine of patent exhaustion. 

Here’s another catch.  Evolved alleged that the 1993 agreement was terminated at the end of 2018, after the parties filed cross-motions for summary judgment.  Evolved filed a notice of supplemental facts to alert the court in 2019.  Defendants argued that the late-filed notice was procedurally inappropriate and should be excluded from the summary judgment record.  So a second million-dollar question: does Evolved’s late-filed evidence of license termination revive Evolved’s infringement claims for the post-termination period?  The district court remained silent on this issue.  Instead, it granted summary judgment of noninfringement without addressing whether the license had been terminated.  

The Federal Circuit affirmed in part.  It agreed with the district court that the defendants’ accused products are covered “subscriber units” under the 1993 license.  The original 1993 license predated both the issuance of Evolved’s patent and the 4G/LTE technology at issue.  But the license had evolved with the technology.  Later amendments expanded the license’s scope to cover not only products using the 3G Code Division Multiple Access (CDMA) standard, but also “any subsequent generation products,” including “multi-mode” devices.  The amendments were broad enough to cover 4G/LTE products, which were the logical next generation to 3G products.  But the Court held that the license precluded infringement claims during only its temporal term. 

The Court then turned to whether the district court’s silence as to Evolved’s after-arising notice of the license termination constituted an abuse of discretion.  In reviewing the hearing transcript, the Court gleaned that the district court assumed that the license would have been replaced after it was terminated in 2018 and did not address whether the license had been terminated.  Instead of applying the abuse of discretion standard, the Court remanded the issue to the lower court to address both a procedural question and a substantive one: (1) whether Evolved’s evidence about termination should be part of the summary judgment record; and (2) if so, how any termination affects Evolved’s claims of post-termination infringement. 

As for our beloved devices, the saga will continue back in the district court.  But here are my parting words a la Bridgerton, another standard-essential power player of quarantine.  Rest assured, gentle reader.  How the parties shall bode in the district court is yet to be determined, but if anyone should reveal the circumstances of this match, it is we, yours truly.