This past Friday, Judge Richard Andrews of the District Court of Delaware held a hearing on InterDigital’s motions to dismiss several FRAND-related counterclaims in three district court cases InterDigital brought against Huawei, ZTE, and Nokia over 4G-essential patents. For a brief refresher on the issues raised in InterDigital’s motions to dismiss — which have been pending for months — you can check out our prior posts:
- InterDigital’s Motion to Dismiss (Huawei/ZTE case, Nokia case)
- Huawei/ZTE’s Opposition
- Nokia’s Opposition
- InterDigital’s Reply
After the July 12 oral argument, the court issued a written order memorializing its decision. The court granted InterDigital’s motion in part, choosing to dismiss some of the defendants’ FRAND-related counterclaims (although granting leave to amend and re-plead some of the claims).
[InterDigital Order on Motion to Dismiss]
Here’s a brief breakdown of the specific counterclaims that are affected by the court’s order:
| Case | Dismissed w/leave to amend | Dismissed w/out leave to amend |
| 13-cv-00008(Huawei) | I (breach of contract)II (breach of contract – third party)
V (declaratory judgment re: FRAND offer) VI (declaratory judgment re: FRAND determination) |
III (equitable estoppel)IV (waiver of right to enjoin) |
| 13-cv-00009(ZTE) | I (breach of contract)II (breach of contract – third party)
V (declaratory judgment re: FRAND offer) VI (declaratory judgment re: FRAND determination) |
III (equitable estoppel)IV (waiver of right to enjoin) |
| 13-cv-00010(Nokia) | I (breach of contract, specific performance re: no injunctive relief)II (breach of contract, damages)
III (declaratory judgment re: FRAND determination) V (breach of implied contract) VIII (declaratory judgment re: FRAND offer) |
IV (promissory estoppel)VI (CA unfair competition law)
IX (implied license) X (equitable estoppel) |
Note that the court’s decision on the waiver of right to enjoin/seek injunctive relief is more consistent with the ITC’s recent Samsung-Apple decision than the decisions in the Microsoft-Motorola or Realtek-LSI cases, although it’s generally found that “waiver” is not by itself an affirmative claim. We will have to wait to see if and when the defendants decide to re-plead some of these counterclaims, or whether they’ll rely on FRAND-related affirmative defenses in the parallel ITC case.