A recent ruling in a Düsseldorf lawsuit filed by Unwired Planet International Limited may signal a dramatic shift in how Germany approaches fair, reasonable, and nondiscriminatory (FRAND) licensing disputes. On April 5, the Higher Regional Court of Düsseldorf issued an opinion after a February hearing in which it criticized Unwired Planet and other NPEs that acquire standard essential patents (SEPs) to seek higher licensing rates, asserting that such behavior is a “flagrant violation of the ban on discrimination under the FRAND rules”. That ruling, combined with a nascent legislative reform effort over injunctive relief, indicates that Germany may soon start to become less friendly toward patent plaintiffs overall. This is the second time in the past year that the Unwired Planet campaign has played a significant role in the development of European SEP jurisprudence, following the UK Court of Appeal’s ruling in Unwired Planet v. Huawei. Meanwhile, Chinese courts have only just begun to telegraph their posture toward international FRAND disputes, and a pending US appeal in litigation between two operating companies may soon provide further clarity on how American courts will approach these issues.
RPX noted, among the patent transfer records released during the first half of September, a number of patent transactions that suggest that new litigation campaigns will soon follow. Assignees in this week’s report include affiliates of IP Valuation Partners LLC and Monument Patent Holdings, LLC, with assignors ranging from small operating companies to tech giants.
European NPE litigation has begun to see a shift toward the UK for litigation of standard essential patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) licensing disputes in the wake of the UK High Court of Justice’s decision in Unwired Planet v. Huawei. Meanwhile, NPEs litigating in Germany have seen mixed success in their pursuit of injunctive relief, against frequent defendants, in recent weeks, with multiple German NPE suits also ending in settlement in campaigns waged by publicly traded American NPEs.
RPX took notice, among the USPTO assignment records made available during the first half of July, of a patent transfer involving over 160 assets to Fortress Investment Group LLC. Other assignees of note included IP Edge LLC, the most prolific patent plaintiff in 2017 thus far, and Rondevoo Technologies, Inc., which appears to be on the precipice of launching its first litigation campaign.
The Federal Circuit has rejected the Patent Trial and Appeal Board’s (PTAB’s) standard for what constitutes a “covered business method” (CBM) patent as overly broad (2015-1812). In an opinion issued on November 21, the court ruled that the PTAB had exceeded its authority by implementing a definition of a CBM patent that exceeds the statutory requirements established by the America Invents Act (AIA). By allowing CBM review of patents with subject matter “incidental to” or “complementary to” a financial activity, the court held, the Board has “render[ed] superfluous the limits” set by Congress. The Federal Circuit’s opinion stemmed from Unwired Planet LLC’s appeal of a final decision in a CBM review filed by Google (CBM2014-00006) against a location services patent (7,203,752).
The Federal Circuit has affirmed the Patent Trial and Appeal Board’s (PTAB’s) cancellation of a location-based services patent (7,024,205) asserted in district court by Unwired Planet LLC against Google (2015-1810). In an opinion issued on November 15, the court held that the PTAB had correctly found that all six claims from the ‘205 patent are invalid as obvious over prior art in an inter partes review filed by Google (IPR2014-00036). In light of that decision, the court also dismissed as moot an appeal of the Board’s final ruling in a Google covered business method (CBM) review (CBM2014-00005) against the ‘205 patent (2015-1811). Unwired Planet’s sole lawsuit against Google (3:12-cv-00504) remains stayed pending the outcome of the PTAB proceedings against the ‘205 patent here resolved by the Federal Circuit, with the other nine patents-in-suit already dropped from the case.