Violation of RAND Obligation May Constitute Patent Misuse or Unclean Hands

The court denied plaintiff's motion for summary judgment that its video compression patents were not unenforceable for patent misuse or unclean hands based on alleged RAND violations. "[S]everal courts have held that a patentee’s violation of its RAND obligations may in certain circumstances constitute patent misuse. . . . [Plaintiff] argues that [defendants] have failed to provide any evidence showing that the patents-in-suit are essential patents to the H.264 standard and, therefore, are subject to any potential RAND obligations related to that standard. However, a reasonable inference could be drawn that the patents-in-suit are essential to the H.264 standard based on [plaintiff's] assertion that the Defendants infringe the patents-in-suit by practicing that standard. In addition, [defendants] have presented the Court with testimony from one of [plaintiff's experts] stating that [two of the patents-in-suit] are by some criteria essential to the H.264 standard. Accordingly, the Court denies [plaintiff's] motion for summary judgment of [defendants'] affirmative defenses of patent misuse and unclean hands."

Multimedia Patent Trust v. Apple Inc., et. al., 3-10-cv-02618 (CASD November 9, 2012, Order) (Huff, J.).