mickey: You now ask: "why would you agree to arbitration on a expired license? You could have gone to court years ago so why arbitrate what you could have done with no legal
expense of arbitration?"
Apparently you forgot, or did not understand what had occurred in the past regarding LG. Actually, after LG did not renew their license, IDCC did file an infringement action against them.
In Jul 2011, IDCC filed an infringement complaint with the ITC, against Huawei, Nokia, and ZTE (the 800 investigation). In Oct 2011, IDCC requested that LG be added as a respondent. LG opposed IDCC’s request, but in Dec 2011, the ALJ granted the request .
A month later , in Jan 2012, LG moved to terminate the investigation, arguing that its accused 3G products were still covered by its license to IDCC’s patents, and that IDCC’s infringement claim was subject to arbitration because it came under the expired agreement. IDCC and the ITC Staff opposed LG’s motion. Pointing to the plain text of the agreement, they argued that LG did not have an ongoing license for 3G products, as it’s claim to arbitration was “wholly groundless.” However, in Jun 2012, the ALJ issued an initial determination granting LG’s motion to terminate it from the investigation; and In Jul 2012, the ITC Commission declined to review the ALJ’s decision, making it a final determination.
IDCC appealed the termination to CAFC. In a June 2013 decision CAFC reversed the ITC’s termination order by finding that LG’s claim for arbitration was “wholly Groundless”. They remanded the case back to the ITC for further proceedings.
LG then appealed to the U S Supreme Court, and in an Apr 2014 decision the Court declared that the CAFC judgment should be vacated as the issue moot since IDCC had dropped their case against LG at the ITC. The Court also stated that CAFC was wrong in even taking and acting on the case since it did not have jurisdiction.
Separately, in Mar 2012, LG filed a demand for arbitration with the International Centre for Dispute Resolution. The request sought a determination that the expired license agreement gave LG the right to use the patents that IDCC asserted in the ITC proceeding. Apparently the arbitrators agreed that the matter was subject to arbitration
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What you have to understand is that there is a basic legal principle which in effect is that once the parties are in arbitration the courts will not take on the dispute. Since there was an ongoing arbitration as to whether LG was/was not licensed for 3G, there was no sense in IDCC filing a court action against LG regarding infringement of 3G patents.
