EVS Codec Technologies, LLC v. Huawei Device USA, Inc. et al DC

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.

Saint Lawrence Communications LLC (as patent owner), a subsidiary of publicly traded NPE Acacia Research Corporation, and EVS Codec Technologies, LLC (as exclusive licensee) have together filed suit against BBK Electronics (OnePlus Technology (Shenzhen)) and Deutsche Telekom (T-Mobile) (2:19-cv-00057). The same five data compression patents that have been at issue throughout the US leg of this campaign are asserted in the new complaint, which targets OnePlus products that contain the EVS codec, including certain smartphones providing OnePlus Ultra HD Voice (or HD Voice+) and any OnePlus products containing certain Qualcomm modems. The NPEs plead that “T-Mobile has promoted the infringing OnePlus EVS Products, including through cited materials indicating that “T-Mobile + OnePlus 6T = Exclusive Soulmates”, and that the defendants have been aware of the patents-in-suit through various channels, including German litigation brought by an Acacia subsidiary against Deutsche Telekom and Vodafone.

Saint Lawrence Communications LLC has filed suit against Amazon (2:19-cv-00027), asserting a familiar set of five data compression patents in a new complaint that targets a long list of devices supporting the Adaptive Multi-Rate-Wideband (AMR-WB) audio codec for speech. The accused products include the Fire Phone, various Fire TV products, various Kindle Android tablets, and various Echo and Alexa products (including those running Amazon’s Android-based Fire OS). Saint Lawrence, a subsidiary of Acacia Research Corporation, pleads ownership of the patents asserted; last August, EVS Codec Technologies, LLC—claiming the exclusive right to grant licenses covering products practicing the Enhanced Voice Standard (EVS) for voice services over LTE/4G networks—asserted the same five patents in suits filed against Huawei, LG Electronics (LGE), and ZTE. The Saint Lawrence Communications complaint acknowledges a “prior settlement and license agreement” with Amazon but further alleges that “Amazon is not currently licensed to the patents asserted in this Complaint with respect to the activities accused of infringement”.

Recently formed Texas NPE EVS Codec Technologies, LLC has kept a portfolio of wideband audio patents in litigation, filing suit against Huawei (2:18-cv-00346), LG Electronics (LGE) (2:18-cv-00343), and ZTE (2:18-cv-00344) on nearly the same day that saw the last case in a prior campaign closed. The defendants are accused of infringement through the provision of mobile devices supporting the Enhanced Voice Services (EVS) codec via Ultra HD Voice compatibility. LGE and ZTE were both defendants in the prior campaign as to devices supporting a predecessor of Ultra HD Voice/EVS (the AMR-WB, or HD Voice, codec) waged by Saint Lawrence Communications LLC, a subsidiary of publicly traded NPE Acacia Research Corporation. Acacia recently announced a significant shakeup in both its executive team and board of directors.

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.

In October 2017, the Patent Trial and Appeal Board (PTAB) saw the filing of petitions for inter partes review (IPR) against a variety of frequent litigants, including publicly traded NPEs Acacia Research Corporation and Xperi Corporation, as well as privately held Monument Patent Holdings, LLC and Uniloc Corporation Pty. Limited. The Board also instituted trial in October for IPRs against multiple Acacia subsidiaries, Uniloc, and Papst Licensing GmbH & Company Kg. In addition, the PTAB issued an IPR final decision cancelling multiple claims from a data compression patent held by prolific plaintiff Realtime Data LLC, including the single claim that Riverbed Technology (one of the petitioners for the IPR) was found to infringe in a $4.3M verdict in May, with other final decisions issued in campaigns waged by TQ Delta LLC and publicly traded Quarterhill Inc. IPRs against IP Bridge, Inc. and Mobile Telecommunications Technologies, LLC also ended in termination in October after the patent owners requested adverse judgments.

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.

Dominion Harbor Enterprises, LLC (DHE), an affiliate of patent monetization firm Dominion Harbor Group, LLC (DHG), has formed a new European licensing partnership with Swedish IP brokerage and consulting firm Parallel North IP AB. In a press release issued on May 3, DHE announced that it will work with Parallel North IP to monetize the portfolio of former Kodak imaging patents that DHG subsidiary Monument Peak Ventures, LLC acquired from Intellectual Ventures LLC (IV) in February. DHE describes the deal with Parallel North IP as part of a “comprehensive global plan to commercialize” the Kodak portfolio.

The Patent Trial and Appeal Board (PTAB) saw a decline in petitions for AIA review filed against NPES in April 2017. While the total number of April petitions, 120, was somewhat less than the three-year monthly average of 150, NPEs were hit by 20 petitions in April, a 68.8 percent decline from 64 the previous month. The dip in April PTAB filings comes in the midst of an overall increase in PTAB petitions over the previous year, with the total number of petitions filed so far in fiscal year 2017 nearing 1,200 as of the date of this report (compared to just over 930 petitions during the same period last year). Prolific private litigants remain a regular target for PTAB petitions, with petitions filed in April against IP Edge LLC and Uniloc Corporation Pty. Limited, while Acacia Research Corporation was the only publicly traded NPE named in petitions brought during that month.

The Patent Trial and Appeal Board (PTAB) continued to see the filing of petitions for inter partes review (IPR) against publicly traded NPEs in March 2017, including Acacia Research Corporation; Finjan Holdings, Inc.; Pendrell Corporation; TiVo Corporation (formerly known as Rovi Corporation); and Wi-LAN Inc. (WiLAN). A variety of prolific, privately held NPEs were also targeted for IPR throughout March, including Blackbird Tech LLC, General Patent Corporation, IP Edge LLC, Realtime Data LLC, and Papst Licensing GmbH & Company Kg, along with several inventors and inventor-controlled NPEs and an assortment of other plaintiffs.

A Texas jury has issued a $9M willful infringement verdict against Lenovo (Motorola Mobility) in a case brought by Acacia Research Corporation subsidiary Saint Lawrence Communications LLC (2:15-cv-00351). On March 24, the jury found that Motorola had infringed five wideband audio patents (6,795,805; 6,807,524; 7,151,802; 7,191,123; 7,260,521) through the provision of various HD Voice-capable Android smartphones.