Judge Koh recently granted Apple and Samsung’s stipulated request to dismiss without prejudice Samsung’s claims that Apple infringes certain declared-standard essential patents (SEPs) and Apple’s related FRAND defenses and counterclaims.  There is no indication in the filing that the parties are negotiating a settlement as to those SEPs, though that’s always a possibility.  The stipulation does indicate that the parties’ have not resolved the dispute and Samsung may reassert the SEPs against Apple at a later time:

  1. This stipulation of dismissal without prejudice is made subject to Samsung’s and Apple’s reservation of rights to reassert these claims, counterclaims, and related defenses should any such dismissed claim be revived or reasserted by either party for any reason.
  2. This Stipulation and Order is not an adjudication on the merits of nor admission regarding any of the claims or counterclaims that are hereby dismissed without prejudice.

Background.  On February 8, 2012, Apple filed suit against Samsung in the Northern District of California alleging that Samsung’s smartphones, media players and tabelts, including several of Samsung’s Galaxy-branded products, infringe eight of Apple’s patents.  Samsung counterclaimed arguing that Apple’s iPhone 4 and 4S and iPad 2 and New iPad infringe certain of Samsung’s patents alleged to be essential to the European Telecommunications Standards Institute (ETSI) standards relating to Wideband Code-Division Multiple-Access (W-CDMA).

Apple filed an answer and reply to Samsung’s counterclaims asserting FRAND-related affirmative defenses and counterclaims, which Apple later amended.  Apple’s fourth affirmative defense claimed that, with respect to Samsung’s declared-essential patents, Samsung “engaged in standard-setting misconduct, including without limitation Samsung’s breach of its commitments to offer FRAND license terms for the Declared-Essential Patents and Samsung’s breach of its patent disclosure requirements or based on other circumstances.”

As its fifth affirmative defense, Apple asserted that to the extent Samsung’s patents “are essential to any ETSI standard and to the extent any of the alleged inventions described in and allegedly covered by the Declared-Essential Patents are used, manufactured, or sold by or for Apple, its suppliers, and/or its customers, Apple has the irrevocable right to be licensed on FRAND terms under those patents.”

Apple’s sixth affirmative defense asserted that Samsung’s alleged commitment to ETSI to license its declared standard essential patents on FRAND terms barred it from seeking injunctive relief against Apple for those patents.  According to Apple, it has an “irrevocable right to obtain a license by virtue of Samsung’s FRAND commitments.”

Apple’s seventeenth counterclaim asserted that Samsung breached its alleged contractual obligations to ETSI by ”claiming infringement and seeking to enjoin Apple from practicing the [relevant] standard, notwithstanding that, to the extent any of the alleged inventions described in and allegedly covered by [Samsung's] Declared-Essential Patents are used, manufactured, or sold by or for Apple, its suppliers, and/or its customers, Apple has the right to a FRAND license to the Declared-Essential Patents by virtue of Samsung’s FRAND commitments….”  Apple also asserted that Samsung breached its alleged contractual obligations with ETSI by failing “to timely disclose its allegedly essential patents in accordance with the requirements of the ETSI IPR Policy” and by refusing “to offer FRAND royalty terms to Apple, instead offering excessive terms that violate FRAND, e.g., with respect to both royalty rate and royalty base.”

Apple’s eighteenth counterclaim requested a declaratory judgment “that, to the extent any of the alleged inventions described in and allegedly covered by the Declared-Essential Patents are used, manufactured, or sold by or for Apple, its suppliers, and/or its customers and covered by valid Declared-Essential Patents, Apple has the irrevocable right to be licensed on FRAND terms under those patents.”

Apple’s eigth affirmative defense and twenty-first counterclaim alleged that one of Samsung’s alleged standard-essential patents was unenforceable due to inequitable conduct.

Samsung filed an answer to Apple’s counterclaims substantively denying Apple’s claim for relief.

Stipulated Dismissal of SEP and FRAND claims.  Last week, Samsung and Apple filed a stipulated dismissal without prejudice of the SEP and FRAND claims and defenses discussed above, which was entered by the court as an order of dismissal on March 9.  According to the stipulation, the parties dismissed these claims in an effort “to further narrow and streamline the trial in [the] matter to avoid overburdening the jury and the court.”  But the dismissal without prejudice does not preclude Samsung from reasserting those patents against Apple in the future.

According to the docket, trial in the matter is set to begin on March 31.