Back in June, we alerted you to a number of infringement suits brought by licensors to the MPEG LA ATSC patent pool in the Southern District of Florida, targeting several television manufacturers — ViewSonic, Craig Electronics, and Curtis International. Yesterday, a different group of MPEG LA licensors filed suit on patents related to a different MPEG LA patent pool (relating the MPEG-2 video compression standard), but most of the defendants include those targeted in the earlier suits. This could raise speculation that MPEG LA (through its licensees) is becoming more apt to bring enforcement actions to “encourage” technology companies to become licensees to its various patent pools.
The plaintiffs in the new suits include Mitsubishi, Philips, General Electric, Thomson Licensing, Panasonic, and Sony, each of whom are licensors to the MPEG LA MPEG-2 Patent Pool. They have filed the following complaints:
U.S. Pat. No. 5,491,516: “Field elimination apparatus for a video compression/decompression system” (Assigned to GE)
The plaintiffs acknowledge that they have committed to license these patents on FRAND terms and are not seeking an injunction, but instead seek damages adequate to compensate for infringement — as well as treble damages for willfulness and attorneys’ fees and costs under Section 285. The complaints state that each of the defendants has been previously offered a license to the patents through MPEG LA (and that Motorola was in fact a prior licensee and licensor of the MPEG LA MPEG-2 pool), but that none of the defendants has accepted a the license offers.
The complaint, which was filed in the Southern District of Florida, accuses Curtis of infringing four patents through its making/selling/using televisions that comply with the ATSC Standards. While MPEG LA is not a party to the lawsuit (unlike with the recent One-Blue complaint), the patent owners assert that MPEG LA has “offered the ATSC patent pool license to Curtis on several occasions but Curtis has declined to take a license.” In what appears to be a nod to the ATSC Patent Policy‘s requirement that essential patents be made available on “reasonable and non-discriminatory terms” the complaint also asserts that the rates in the MPEG LA license are “fair, reasonable, and non-discriminatory,” and that each of the individual patent owners have committed to individually license their ATSC patents on FRAND terms. The patent owners are seeking damages adequate to compensate for infringement, as well as treble damages for willful infringement and costs and attorneys’ fees, but are not seeking an injunction against Curtis.
[UPDATE] The same group of MPEG LA licensors has apparently also filed complaints in the Southern District of Florida against ViewSonic and Craig Electronics, alleging infringement of the same five ATSC-essential patents. Links to these other complaints are below:
By now many of you have at least skimmed through Judge James L. Robart’s 207-page order setting RAND royalty terms for an 802.11- and H.264-essential patent license agreement between Motorola and Microsoft. You may have noticed that there’s no table of contents (despite the opinion’s considerable length) — and who has the time to sift through a couple hundred pages to see what’s important?
That’s why we have done some of the work for you. From the link below, you can download an annotated PDF copy of Judge Robart’s RAND opinion — in this document, we have annotated and highlighted particularly interesting portions (and also added a navigable bookmark/table of contents). We hope you find it useful.
A couple of weeks ago, we noted a peculiar minute order emanating from Judge James L. Robart’s courtroom in the Microsoft-Motorola RAND case. Based on his review of Google’s AVC/H.264 standard-essential patent pool license agreement with MPEG LA, Judge Robart asked the parties to submit short letter briefs addressing two questions regarding the relevance of the Enterprise License provision (Section 3.1.7) to any grantback license that Motorola (as a subsidiary of Google) might owe to Microsoft.
Late Friday, the parties submitted their respective answers to the court’s questions (Microsoft’s / Motorola’s). The parties’ answers and arguments show just how millions of dollars in royalties could turn on the interpretation of just a couple of short phrases in the MPEG LA agreement. After the jump, we’ll provide a short summary of both Microsoft’s and Motorola’s positions. Essentially, though, the parties’ arguments boil down to this — Was the MPEG LA agreement’s grantback provision designed to extend to all affiliates of a given licensee, whether those affiliates receive any benefits under the agreement or not?
Even though the trial in the Microsoft-Motorola RAND dispute took place over three months ago, there’s been a lot going on in Washington lately. In addition to the arguments regarding the relevance of the Google-MPEG LA AVC/H.264 patent license agreement, recall that a couple weeks ago, Judge James L. Robart granted Motorola’s request to submit additional information that may be relevant to determining the RAND rate. Late Friday, both Motorola and Microsoft filed these documents with the court — documents that may actually raise more issues than they help resolve (and may ultimately have no bearing on Judge Robart’s decision).
Last week, Judge James L. Robart briefly reopened the trial record in the Microsoft-Motorola RAND breach of contract case, in order to allow the parties to submit additional evidence regarding the RAND rate for Motorola’s patents. Yesterday, Judge Robart issued anothershort minute order, this time allowing additional briefing on a different issue. Yesterday’s order concerns the terms of Google’s license with the MPEG LA AVC/H.264 patent pool, which Microsoft claims are dispositive of the appropriate RAND rate for Motorola’s H.264 patents. (For more background on this particular issue, see our earlier post on the parties’ briefing leading up to oral arguments.). Judge Robart has now allowed the parties to submit letter briefs of up to six pages by March 1 in light of certain “novel arguments” regarding the MPEG LA agreement that were apparently raised by the parties at the January 28 oral argument.
[UPDATE]Since this post was originally published on January 22, the deadline passed for the parties to submit extrinsic evidence and additional arguments supporting their respective interpretations of the Google-MPEG LA AVC/H.264 license agreement. Microsoft submitted both a brief and a supporting Declaration of Lawrence A. Horn, who is the President and CEO of MPEG LA, LLC. Mr. Horn’s declaration supports Microsoft’s argument (as detailed in our original post below) that the scope of the grant-back under the MPEG LA license agreement extends to all Affiliates of Google, not just to those specifically identified. For its part, Motorola argues that the “scope” language of the MPEG LA agreement remains ambiguous, and that Mr. Horn’s declaration represents inadmissible hearsay because Motorola was unable to cross-examine him.
The parties’s respective briefs and Mr. Horn’s declaration may be accessed from the links below:
Judge Robart’s forthcoming opinion in the Microsoft v. Motorola RAND breach of contract case in the Western District of Washington is highly anticipated by those who pay attention to standard-essential patent disputes, as it will likely provide a judicially-sanctioned roadmap for how to determine RAND terms and conditions in a given licensing situation. But before he issues a written decision, a hearing is scheduled for January 28, during which Judge Robart will hear oral argument from Microsoft and Motorola regarding the implications that Google’s AVC/H.264 patent pool license agreement with MPEG-LA may have on the appropriate RAND terms for Motorola Mobility’s H.264-essential patent portfolio. (Google, of course, being the parent company of Motorola Mobility since it acquired Motorola in May 2012).
Because so many SEP-related issues have arisen over the past year, we will periodically revisit some of the more important occurrences with a brief post. The recent bench trial before Judge James L. Robart of the Western District of Washington between Microsoft and Motorola a may yield a groundbreaking opinion in the area of standard-essential patents, so this is a case that warrants a review.
The dispute between the parties originated back in the fall of 2010. Microsoft sued Motorola in the U.S. District Court for the Western District of Washington and the U.S. International Trade Commission, accusing Motorola Android devices of infringing several Microsoft patents. Motorola in turn sent two letters to Microsoft, offered Microsoft licenses to two of Motorola’s standard-essential patent portfolio – for the 802.11 WiFi standard and the H.264 video coding standard – at a rate of 2.25% of the net selling price of the end products that practice those standards. Microsoft then filed a complaint in the W.D. Wash. against Motorola for breach of contract – specifically, Microsoft alleged that Motorola’s offers to Microsoft breached Motorola’s prior promises to the IEEE and the ITU to offer licenses to its 802.11 and H.264-essential patents on RAND terms.