Nokia Charging For Licensing H.264?

JH
John Honovich
Aug 24, 2016
IPVM

Anyone hear anything like this? I though H.264 was orderly and completed licensed by MPEGLA but recently I heard Nokia was asking for licensing payments on H.264.

U
Undisclosed #1
Aug 24, 2016
IPVMU Certified
(1)
JH
John Honovich
Aug 24, 2016
IPVM
UM
Undisclosed Manufacturer #2
Jan 10, 2017

MPEG LA's license to its H.264 patent portfolio includes nearly 5000 patents but may not include all patents essential to H.264 video coding. MPEG LA mentions this in its AVC FAQ:"No assurance is or can be made that the License includes every essential patent."


Nokia holds several patents allegedly relevant to the H.264 video standard. You can check for yourself by querying ITU's patent database:
http://www.itu.int/net4/ipr/search.aspx

There, enter "Nokia*" as patent holder and "H.264*" as recommentation and run a search.

U
Undisclosed #1
Jan 10, 2017
IPVMU Certified

Sure, no one is denying that they have patents that could be applicable.  But that is different than wanting to get paid on them now.

Have you heard anything regarding that?

UM
Undisclosed Manufacturer #2
Jan 11, 2017

Yes, for example according to US patent law there is a time limitation for damages regarding past patent infringement but no statue of limitations for filing a patent infringement lawsuit, i.e., a patent holder can ask a court to award damages for at most six years prior to the filing date of a patent infringement lawsuit but the patent holder can very well "sit on the patents" and delay filing of the patent infringement lawsuit as he may see fit.

U
Undisclosed #1
Jan 11, 2017
IPVMU Certified

...the patent holder can very well "sit on the patents" and delay filing of the patent infringement lawsuit as he may see fit.

Disagree.  In this case a defense using laches would, IMHO, be succesful in eliminating any damages in the prior 6 years, since Nokia could not reasonably claim to not have known about the infringement.

Though the long standing laches defense is under review by the U.S. Supreme Court, and that could change its applicability depending on the exact ruling.

UM
Undisclosed Manufacturer #2
Jan 11, 2017

You are correct, the defense of laches is available in patent infringement lawsuits, too. However, the burden would be on you to prove to the court that the patent holder knew of the infringement while "sitting on the patents" and that you therefore suffered material prejudice. I'm not a lawyer but I don't think you would win that argument in court.

More importantly, a defense of laches only applies to past infringement and does not prevent filing of claims regarding continuing patent infringement, e.g., seeking injunctive relief (to stop you from using, selling, manufacturing H.264 based video surveillance system) or monetary recovery for infringing activities conducted after filing of the patent infringement lawsuit (to make you pay a license fee).

U
Undisclosed #1
Jan 11, 2017
IPVMU Certified

More importantly, a defense of laches only applies to past infringement and does not prevent filing of claims regarding continuing patent infringement...

Well I thought that was the point of your 'sitting on it' until they see fit.  Basically, to not initiate any action until there is a long history of infringement to collect upon.

In any event, equitable estoppel may be available here, which could stop the whole suit.  Above notes a recent case involving this defense.  Note that the conditions are the same as laches plus one additional.

As summarized by the court, “[t]hree elements are required for equitable estoppel to bar a patentee’s suit:

the patentee, through misleading conduct (or silence), leads the alleged infringer to reasonably infer that the patentee does not intend to enforce its patent against the alleged infringer;
the alleged infringer relies on that conduct; and
the alleged infringer will be materially prejudiced if the patentee is allowed to proceed with its claim.

The district court found that prong (1) was satisfied by Bumper Boy’s “2005 demand letter and subsequent silence for over four and a half years.”

The district court found that prong (2) was satisfied by Innotek’s expansion and acquisition by Radio Systems.

The district court found that prong (3) was satisfied by “Innotek’s investment in new products.”

 

jh
jack hoang
Oct 25, 2022
IPVMU Certified

Hi John

Nokia was asking us to sign the NDA and they want to negotiate about the H264 or H265

"Firstly, you are free to use a patent lawyer if that is your wish. This said, we would prefer bilateral discussions, at least in the early stage of the discussions, e.g. for cost reasons. The purpose of the first videoconference is to introduce ourselves and have an open discussion about the licensing process.

We don’t see why MPEG-LA should be involved in the discussions between Nokia and i3 about licensing Nokia’s patents to i3. I would emphasize again that Nokia’s patents aren’t included in MPEG-LA, they are separate patents from the patents of companies participating in MPEG-LA and only Nokia has the right to license them. If MPEG-LA wants to contact us regarding the matter, you can give them our contact information.

Again I would ask you to sign the NDA. The purpose of the NDA is to enable open exchange of information during our upcoming licensing discussions. If you have any questions concerning the NDA, please do not hesitate to contact us."

Do you have any ideas about this case?

I don't want to sign the NDA & negotiate for the patent fee without understanding the consequences

Regards;

JackH

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