Conversant Wireless Licensing S.à.r.l. (f/k/a Core Wireless Licensing S.a.r.l.)

Conversant Wireless Licensing, S.à.r.l. (f/k/a Core Wireless Licensing S.a.r.l.), a subsidiary of Conversant Intellectual Property Management, Inc. (Conversant IP), has filed two US suits against Tesla (6:20-cv-00323, 6:20-cv-00324) over the provision of its automobiles, including the Model S, Model 3, Model X, Model Y, Cybertruck, and Roadster. At issue are “connected products” that allow for the automobiles to have cellular connectivity. Six network communications patents are at issue across the two suits, with Conversant pleading that it received the patents as part of a portfolio of nearly 2,000 assets from Nokia and that the patents asserted in each case are telecommunication SEPs (“standard essential patents”) also offered in the Avanci patent pool, among others.

Yet another set of patents originating with VoiceAge Corporation has now been asserted in NPE litigation, this time in partnership with Fortress Investment Group LLC. In December 2018, VoiceAge announced a “strategic transaction” with Fortress under which the investment firm would license VoiceAge’s portfolio related to the Enhanced Voice Services (EVS) wideband audio codec—with that portfolio assigned to Fortress “affiliate” VoiceAge EVS, LLC. That entity has now asserted five of those patents in litigation, accusing HMD Global (1:19-cv-01945) of infringement through the provision of Nokia-branded smartphones supporting EVS and alleging that the patents-in-suit are essential to that standard. VoiceAge has stated that its transaction with Fortress is designed to “advance . . . [VoiceAge’s] strategic objective of diversifying revenues from [its] IP assets”. This deal follows another partnership between VoiceAge and publicly traded Acacia Research Corporation that appears to have started in 2014, leading to the launch of a litigation campaign that year through Acacia subsidiary Saint Lawrence Communications LLC. That campaign remains active after being revived in August 2018 by licensee EVS Codec Technologies, LLC, with Saint Lawrence later dragged back into the campaign over a standing dispute.

Recent months have seen the Internet of Things (IoT) licensing platform Avanci, LLC announce license agreements with multiple automotive OEMs, including Audi, Porsche, and Volkswagen, to its portfolio of standard essential patents (SEPs) covering cellular technologies. However, despite Avanci’s traction with those OEMs, the company has now begun to see pushback at the supplier level. On May 10, automotive component supplier Continental filed a declaratory judgment (DJ) complaint in the Northern District of California against Avanci and several of the patent owners participating in its licensing program, alleging that by refusing to offer fair, reasonable, and non-discriminatory (FRAND) licenses to suppliers, they have committed various antitrust violations and breached their contractual FRAND obligations, further seeking equitable relief (5:19-cv-02520). The dispute echoes similar licensing battles that continue to play out in European courts, including litigation involving patent owners Nokia and Broadcom, respectively, and OEM Daimler—which does not appear to have a relationship with Avanci—filed in German courts and before the European Commission. Similar antitrust claims have also been raised in a US DJ action recently filed by u-blox against InterDigital, Inc., which has since seen filings from the US government that reflect a recent shift in antitrust enforcement policy.

Last week, District Judge Nathanael M. Cousins of the Northern District of California dealt Conversant Wireless Licensing S.à.r.l. (f/k/a Core Wireless Licensing S.a.r.l.) another blow in its long-running litigation campaign over former Nokia patents. An August 2018 Federal Circuit opinion upset an earlier jury verdict and judgment that Apple had infringed two Conversant patents, for which the jury had awarded $7.3M in damages. The appeals court reversed the jury’s finding of infringement as to one patent and vacated the trial court’s determination that the other patent was not unenforceable due to a failure to disclose to a related standard-setting body. On remand, Judge Cousins granted the motion for unenforceability, entering judgment in Apple’s favor. Meanwhile, in Texas, Conversant filed a new case against LG Electronics (LGE) (2:19-cv-00142) over patents at the heart of a recent win before a jury there, the new complaint targeting subsequently released LGE products.

A Texas jury has returned a new damages verdict in litigation brought by Conversant Wireless Licensing S.à.r.l. (f/k/a Core Wireless Licensing S.a.r.l.) against LG Electronics (LGE) (2:14-cv-00912). In September 2016, another jury issued a verdict of infringement in the case’s first trial against LGE, but the court granted LGE a new trial on damages in September 2018 due to a series of errors made by the plaintiff’s damages expert. The resulting verdict in that second trial included a damages award of $3.5M.

The UK Court of Appeal has reaffirmed that English courts may hear disputes over standard essential patent (SEP) licensing. In a January 30 opinion, the court held that the UK was the most convenient forum for an ongoing lawsuit filed by Conversant Wireless Licensing S.à.r.l. against Huawei and ZTE over their refusal to take a global license to the NPE’s portfolio based on allegedly fair, reasonable, and non-discriminatory (FRAND) terms. The court’s ruling came despite new evidence offered by the defendants suggesting that China would also be an appropriate forum for the dispute.

The UK High Court of Justice has rejected a jurisdictional challenge in Conversant Wireless Licensing S.à.r.l.’s ongoing litigation against Huawei and ZTE. In an April 16 decision, Justice Henry Carr declined to accept arguments by the defendants, both incorporated in China, that the Court lacked jurisdiction because it could not adjudicate the validity of the Chinese patents in Conversant’s portfolio. Rather, Justice Carr held that a FRAND (fair, reasonable, and non-discriminatory) license would allow the defendants to challenge validity in parallel, and that such a license’s terms would account for the consequences of an invalidity ruling in another jurisdiction. Justice Carr also rejected the defendants’ attempt to dismiss the case due to forum non conveniens and for improper service.

Publicly traded NPEs Acacia Research Corporation and Finjan Holdings, Inc. have each provided updates on litigation filed in Germany as part of their third-quarter earnings announcements. The German infringement suit brought by Acacia’s Saint Lawrence Communications GmbH against Apple proceeds in parallel with invalidity actions brought by Apple and Motorola Mobility, while in the US Apple has pursued its own litigation against Acacia, asserting various claims related to the NPE’s allegedly unfair and anticompetitive licensing practices in that campaign. Meanwhile, a neutral expert has been appointed in Finjan’s German lawsuit against ESET as trial comes to a close in its US litigation against Blue Coat Systems, with invalidity actions also pending for that campaign in Germany and the US.

RPX took note, among the USPTO assignment records made available during the first half of May, of the transfer of patents to frequent plaintiffs Leigh M. Rothschild and IP Valuation Partners (both of which received patents from Intellectual Ventures LLC) and BlackBird Tech LLC. RPX also took note of transfers of patents from multiple assignors to an NPE controlled by patent attorney Brian Yates—a California attorney revealed, by a January sanctions ruling in Texas, as controlling more entities than previously thought. Also among the noted transactions are outbound assignments by Panasonic, Pantech, and ZTE, and a transfer from Allied Security Trust’s Industry Patent Purchase Program involving former IBM and Nokia patents.

The Federal Circuit has upheld a victory for Apple in a lawsuit brought by Luxembourg-based NPE Core Wireless Licensing S.a.r.l. (2015-2037). In an opinion issued on April 14, the court affirmed District Judge Rodney Gilstrap’s denial of the NPE’s motions for judgment as a matter of law and for a new trial, which followed a Texas jury’s March 2015 verdict that the company’s mobile devices did not infringe five wireless communications patents (6,266,321; 6,978,143; 7,383,022; 7,599,664; 7,804,850).

On December 15, a jury in the Northern District of California found that Apple has infringed two wireless communications patents (6,477,151; 6,633,536) through its mobile devices, awarding Luxembourg-based Core Wireless Licensing S.a.r.l. $7.3M in damages (5:15-cv-05008). Thursday’s decision comes after a recent win for Apple against Ameranth, Inc. related to another lawsuit involving iOS; see “Federal Circuit Expands Alice Invalidation of Ameranth Patents in Apple CBM Reviews” (December 2016).

During the second half of September 2016, RPX took note of five patent transfers to NPEs. Assignees included Core Wireless Licensing S.a.r.l.; a recently created NPE controlled by the manager of St. Luke Technologies, LLC, Multiplayer Network Innovations, LLC, and Marking Object Virtualization Intelligence, LLC; and an NPE managed by the CEO and general counsel of Personal Audio LLC. One of the transferred patents has already been asserted in a litigation campaign initiated in late September by Listou Search Technologies LLC (a newly formed affiliate of Empire IP LLC), and what has become reliably predictable NPE behavior suggests that the remaining assignees will soon file new patent litigation involving other patents discussed in this report.

A Texas jury has found that LG Electronics (LGE) willfully infringed two wireless communication patents (6,633,536; 7,804,850) through its Android smartphones (2:14-cv-00912). In a verdict handed down on September 16, the jury awarded plaintiff Core Wireless Licensing S.a.r.l. $2.3M in damages. This decision follows a recent victory for LGE in the same litigation campaign; last month, District Judge Rodney Gilstrap granted a new trial on damages in the second of two lawsuits brought by Core Wireless against the company. For more information on that order, see “LG Electronics Wins New Damages Trial in $3.5M Core Wireless Case” (August 2016).

LG Electronics (LGE) has been granted a new trial on damages against Core Wireless Licensing S.a.r.l., following a Texas jury’s March finding that the company had infringed two user interface patents (8,713,476; 8,434,020) asserted against it by the Luxembourg-based NPE. In a memorandum opinion and order issued on August 23, District Judge Rodney Gilstrap ruled that the jury’s damages award had not been supported by sufficient evidence, accepting LGE’s arguments that a Core Wireless damages expert had provided the jury with a flawed reasonable royalty calculation. Judge Gilstrap also declined to grant a new trial on the issues of infringement and the asserted invalidity of the patents-in-suit.

In the second half of May 2016, RPX saw five patent transfers to NPEs recorded with the USPTO. One of those transactions involved a patent that has already been asserted in litigation.

A Texas jury has found that LG Electronics (LGE) infringed two smartphone user interface patents (8,713,476; 8,434,020) asserted against it by Luxembourg-based Core Wireless Licensing S.a.r.l. (2:14-cv-00911). In a verdict issued on March 24, the jury determined that LGE had infringed claims 11 and 13 of the ‘020 patent and claims 8 and 9 of the ‘476 patent through its sale of various phones and smartphones. The jury also concluded that LGE had not shown that the asserted claims were invalid.

On October 27, 2015, District Judge Rodney Gilstrap transferred two cases (6:14-cv-00751, 6:14-cv-00752) filed against Apple in the Eastern District of Texas by Core Wireless Licensing S.a.r.l., a subsidiary of Conversant Intellectual Property Management, Inc. The judge ordered the cases to be transferred to the Northern District of California after adopting the report and recommendation of Magistrate John D. Love that California provided a “clearly more convenient” forum to try the cases.

Core Wireless Licensing Inc. repeated its pattern of filing multiple cases against a single defendant, suing LG Electronics (LGE) in two suits (2:14-cv-00911; 2:14-cv-00912) asserting separate groups of patents.. The first suit asserts five patents (8,434,020; 8,498,671; 8,713,476; 8,792,398; 7,072,667; 5,907,823) while the other asserts 13 patents (5,946,634; 6,266,321; 6,477,151; 6,633,536; 6,978,143; 7,383,022; 7,529,271; 7,599,664; 7,782,818; 7,804,850; 8,165,049; RE44,828), all of which relate to mobile communication and originated with Nokia. Core Wireless, a subsidiary of Conversant Intellectual Property Management, Inc. (formerly MOSAID Technologies), acquired the asserted patents from Nokia in August 2011 as part of a larger portfolio of 1,200 patents. Both suits accuse LGE’s mobile devices, including cell phones and tablets, of infringing the patents-in-suit.

Core Wireless SARL filed two new suits against Apple, the second and third suits filed by the Conversant subsidiary since it began litigating its patents in 2012. All three of Core Wireless’s cases name Apple as the sole defendant although each case asserts a different group of patents. Of the newly filed suits, one asserts a group of patents related to a communication connection over a radio network (5,946,634, 6,477,151, 6,633,536, 7,773,708, 7,782,818, RE44,828). In the complaint, Core Wireless states that the asserted patents were declared essential to mobile communication standards by previous owner, Nokia, and that Core Wireless previously approached Apple about a license. The other suit asserts patents related to various features of a mobile device, including the display, location-finding capabilities, and sending and receiving information (5,907,823, 7,072,667, 7,693,552, 8,434,020, 8,498,671, 8,713,476). Apple’s iPhone and iPad devices are accused of infringing the asserted patents in both suits. The patents-in-suit originated with Nokia, and have not been used in previous litigation. Core Wireless acquired the patents in late August 2011 from Nokia patent trust. The assignment also included a security agreement between Core Wireless and Nokia. 9/10, Eastern District of Texas, 6:14cv00751, 6:14cv00752