Over the past year, District Judge Rodney Gilstrap has dealt a series of setbacks to three subsidiaries of PanOptis Holdings, LLC—Optis Cellular Technology LLC; Optis Wireless Technology, LLC; and PanOptis Patent Management, LLC (collectively, PanOptis)—in their litigation asserting certain standard essential patents (SEPs). Last August, Judge Gilstrap ruled that PanOptis could not seek a declaratory judgment that its global license offer to Huawei, involving patents from various jurisdictions, had been fair, reasonable, and nondiscriminatory (FRAND), ruling that the NPE could only request such a judgment for its US patents. In March of this year, Judge Gilstrap also denied PanOptis’s request as to the US patents alone, holding that the record—reflecting license terms that did not give Huawei the option of a US-only license—lacked any evidence that would allow the court to rule on a US-only FRAND license. Apple has now made a similar set of arguments in a recently filed PanOptis lawsuit, asking that Judge Gilstrap dismiss the NPE’s claim seeking a declaratory judgment that global licensing offers made to Apple were FRAND for some of the same reasons cited by the court in March.
In September 2017, three subsidiaries of PanOptis Holdings, LLC—Optis Cellular Technology LLC; Optis Wireless Technology, LLC; and PanOptis Patent Management, LLC (collectively, PanOptis)—sued Huawei over a fair, reasonable, and nondiscriminatory (FRAND) patent licensing dispute, in part seeking a declaratory judgment that the NPE had complied with its FRAND obligations by offering certain global licensing terms to its international patent portfolio. However, the following August, District Judge Rodney Gilstrap ruled that PanOptis could only seek such a judgment for its US patents, shortly before the entry of a $10.6M willful infringement verdict later that month. Judge Gilstrap has now denied the NPE’s request for declaratory judgment, holding that the record lacked any evidence that would allow the court to rule on a US-only FRAND license. In the resulting final judgment, Judge Gilstrap awarded PanOptis $2.6M in enhanced damages, also imposing additional royalties based on a percentage of sales revenues for the accused products. These rulings come just over a month after the NPE’s acquisition by private equity firm Brevet Capital.
Weeks after the announcement of its acquisition by private equity firm Brevet Capital, PanOptis Holdings, LLC (through various litigating affiliates) has filed its first new infringement case in two years, suing Apple in the Eastern District of Texas over a group of patents declared essential to the LTE standard (2:19-cv-00066). Apple is accused of infringing the patents-in-suit—each of which originated with Ericsson, LG Electronics (LGE), Panasonic, or Samsung—through provision of “all [its] products capable of implementing the LTE standard”, including all “LTE-capable models” of Apple’s iPhone, iPad, Watch products. Three of the patents-in-suit have been previously asserted by PanOptis in a campaign that has also hit BlackBerry, Huawei, Kyocera, and ZTE.