IP Bridge, a Japanese patent licencing agency, has filed a lawsuit in Munich against Ford Motor Company on a former Panasonic SEP.
L2 Mobile Technologies LLC, a business linked with non-practising firm Longhorn IP (named after the official state big animal of its home state of Texas), filed a patent infringement lawsuit in the District of Delaware on the first of the month. Among automobile manufacturers, Ford is not the most willing licensee, and it once had a short-term licence arrangement with Nokia that was more of a standstill agreement.
The prior episodes: In March 2019, Ford signed into a short-term patent licence arrangement with Nokia “under duress,” which was cancelled on January 31, 2020.
As previously noted in April, an unknown American vehicle maker was mentioned as a Nokia patent licensee at some of the Nokia v/s Daimler patent cases in Germany. Everyone thought it was Tesla, but nothing substantial was in the public domain. With everything going on in that context, including the Mannheim injunction that month and the Dusseldorf trials in the week mentioned above, it was found from a U.S. source that the provisional licence had been issued to but then revoked by the Ford Motor Company.
The following is the timeline of that short-term standard-essential patent (SEP) licence deal, which was only intended to buy Ford time to negotiate a long-term licence:
- On March 20, 2019, the initial agreement was signed;
- It was updated on September 18, 2019;
- Ford sent Nokia a notice of termination on December 29, 2019; and
- The termination took place on January 31, 2020.
Ford also provided material to Daimler for use in its (now-resolved) dispute with the Finnish wireless carrier. Ford may prefer to fight Longhorn rather than sign up for a licence immediately, but whether or not that is a financially prudent move is up to the beholder.
The Munich I Regional Court press office showed that at least one standard-essential patent (SEP) action against Ford is currently pending in Germany. A hearing has been planned for late February in case no. 7O9572/21, a patent licencing corporation owned by the Japanese government, IP Bridge.
The patent-in-suit (EP2294737 on “Control Channel Signalling for Activating the Independent Transmission of a Channel Quality Indicator“) was obtained by Panasonic, a Japanese electronics company, who declared it necessary for 4G/LTE.Abstract of corresponding document: EP2117155(A1)
The invention suggests a method for providing control signalling in a communication system, comprising the steps performed by a base station of the communication system of generating a control channel signal comprising a transport format and a channel quality indicator trigger signal for triggering transmission of a channel quality indicator by at least one terminal to the base station, and transmitting the generated control channel signal to at least one terminal, wherein said transport format is a predetermined format for user data transmission by the at least one terminal to the base station and said control channel signal indicates a predetermined mode for reporting the channel quality indicator to the base station, wherein the channel quality indicator transmission is to be triggered by the at least one terminal based on the channel quality indicator trigger signal.
HTC, a Taiwanese smartphone manufacturer, and potentially other defendants have previously been sued on the same patent.
Both Longhorn IP and IP Bridge support the Avanci SEP pool. By obtaining an Avanci licence, Ford could kill not just two but dozens of birds with a single stone. However, this does not imply that Avanci, which does not own patents and consequently has the standing to assert them, is in any way liable for the infringement cases. Longhorn and IP Bridge, which is also suing Daimler, are licencing companies that must deliver.
The Bottom Line: Automobile manufacturers cannot continue to infringe on the patents of the Avanci licensors indefinitely. They will require bilateral licences if they don’t accept a pool licence. Suppose they refuse to do either form of a licence arrangement. In that case, SEP holders will sue them, and Ford must now decide how it will try to persuade judges in various jurisdictions, including Germany and the United Kingdom, of its willingness to accept SEP licences on FRAND terms.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.