Over the past year, District Judge Rodney Gilstrap has dealt a series of setbacks to three subsidiaries of PanOptis Holdings, LLC—Optis Cellular Technology LLC; Optis Wireless Technology, LLC; and PanOptis Patent Management, LLC (collectively, PanOptis)—in their litigation asserting certain standard essential patents (SEPs). Last August, Judge Gilstrap ruled that PanOptis could not seek a declaratory judgment that its global license offer to Huawei, involving patents from various jurisdictions, had been fair, reasonable, and nondiscriminatory (FRAND), ruling that the NPE could only request such a judgment for its US patents. In March of this year, Judge Gilstrap also denied PanOptis’s request as to the US patents alone, holding that the record—reflecting license terms that did not give Huawei the option of a US-only license—lacked any evidence that would allow the court to rule on a US-only FRAND license. Apple has now made a similar set of arguments in a recently filed PanOptis lawsuit, asking that Judge Gilstrap dismiss the NPE’s claim seeking a declaratory judgment that global licensing offers made to Apple were FRAND for some of the same reasons cited by the court in March.
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.
In September 2017, three subsidiaries of PanOptis Holdings, LLC—Optis Cellular Technology LLC; Optis Wireless Technology, LLC; and PanOptis Patent Management, LLC (collectively, PanOptis)—sued Huawei over a fair, reasonable, and nondiscriminatory (FRAND) patent licensing dispute, in part seeking a declaratory judgment that the NPE had complied with its FRAND obligations by offering certain global licensing terms to its international patent portfolio. However, the following August, District Judge Rodney Gilstrap ruled that PanOptis could only seek such a judgment for its US patents, shortly before the entry of a $10.6M willful infringement verdict later that month. Judge Gilstrap has now denied the NPE’s request for declaratory judgment, holding that the record lacked any evidence that would allow the court to rule on a US-only FRAND license. In the resulting final judgment, Judge Gilstrap awarded PanOptis $2.6M in enhanced damages, also imposing additional royalties based on a percentage of sales revenues for the accused products. These rulings come just over a month after the NPE’s acquisition by private equity firm Brevet Capital.