Litigation over standard essential patents (SEPs) typically involves a variety of interrelated issues, including questions over whether the parties have acted as willing licensors/licensees, the essentiality of the asserted patents, infringement, and validity. Recently, though, the US federal court leg of one prominent, multijurisdictional SEP dispute took a relatively atypical detour into US state law. On August 13, Eastern District of North Carolina Magistrate Judge Robert T. Numbers, II resolved a discovery dispute partly in favor of defendant Lenovo in support of its counterclaim brought under the state’s bad-faith patent assertion law against SEP owner and plaintiff InterDigital, Inc. While the court declined to compel the production of licensing offers made to others (ruling that this information was beyond the scope of the statute), it granted Lenovo’s request to compel production of “demands” (communications alleging infringement, as broadly defined by the statute) sent to others.

Recently recorded patent assignments made public by the USPTO contain noteworthy transfers to multiple plaintiffs now in litigation, including a new source of patents for Apex Beam Technologies LLC, a new source of patents for Pantech Corporation, and a familiar source of patent rights for Crystal Leap Zrt, this time assigning patents directly, though. Movement can also be seen from troubled patent monetization firm IP Edge LLC, as well as movement from various sources to patent broker Allied Security Trust. Take a look.

An Eastern District of North Carolina complaint from InterDigital, Inc. against Lenovo (Motorola Mobility) (5:23-cv-00493) was filed in tandem with a complaint filed before the International Trade Commission (ITC) (337-TA-3692) over the same five patents. Via both actions, InterDigital targets the provision of smartphones, computers (desktops and laptops), and tablets that allegedly support wireless file sharing and/or the AOMedia Video 1 (AV1) and VP9 video codecs. InterDigital pleads a domestic industry (either established or in process) through the US activities of licensees Apple and VIZIO.

Last month, Eastern District of Pennsylvania Judge Joshua D. Wolson, sitting in Delaware by designation, granted Lenovo’s request to stay a patent case that InterDigital, Inc. filed against it back in 2019 and that had been headed to an early December 2023 trial. The court did so to await an appeal of a March 2023 judgment from the London High Court of Justice in InterDigital v. Lenovo, that decision imposing a $138.7M global fair, reasonable, and nondiscriminatory (FRAND) license against defendant Lenovo after finding that neither party’s offers had been FRAND in their dispute over patents declared essential to various 3G, 4G, and 5G cellular standards. Now, InterDigital (together with various subsidiaries) has accused Lenovo (Motorola Mobility) (5:23-cv-00493) in a new Eastern District of North Carolina complaint of infringing five patents through the provision of smartphones, computers, and tablets that allegedly support wireless file sharing and/or the AOMedia Video 1 (AV1) and VP9 video codecs.

On March 16, the London High Court of Justice released its long-awaited judgment in InterDigital v. Lenovo, imposing a $138.7M global fair, reasonable, and nondiscriminatory (FRAND) license against defendant Lenovo after finding that neither party’s offers had been FRAND. The rate was closer to what Lenovo had sought (totaling $80M) than US-based InterDigital, Inc.’s proposal ($337M). Notably, the court also found that Lenovo had behaved as a willing licensee during licensing negotiations, but that InterDigital had not acted as a willing licensor due having consistently offered supra-FRAND rates. The court also rejected InterDigital’s proposed rate-setting methodology. This sweeping, 225-page decision marks the second time that a UK court has issued a FRAND determination in a standard essential patent (SEP) dispute.

u-blox (3:23-cv-00002) has filed suit against InterDigital, Inc. again, after the apparent expiration of a license that ended the parties’ 2019 litigation. In its new, partially redacted complaint, u-blox represents that it remains willing to enter into a license under fair, reasonable, and nondiscriminatory (FRAND) terms, “adjusting for patent expiration dates”, but that InterDigital now refuses to negotiate such a license to its standard essential patents (SEPs) in good faith. The case has again been filed in the Southern District of California.

InterDigital, Inc. (IDCC) released its third quarter earnings on November 4, reporting a 64% increase in revenue compared to Q3 2020 and a string of new licensing agreements, including with a global TV manufacturer. In an earnings call with investors, CFO Rich Brezski touted Q3 2021 as IDCC’s “strongest quarter in almost four years”.

In early August, InterDigital, Inc. and Quarterhill Inc. released second quarter financial results providing glimpses into each company’s Q2 licensing activities as well as updates on their respective litigation campaigns.

Lenovo (Motorola Mobility) has opened up another front in the set of disputes with InterDigital, Inc. (IDCC), pleading restraint of trade and monopolization claims under both Sections 1 and 2 of the Sherman Act, as well as of breach of contract, in a new District of Delaware complaint (1:20-cv-00493). Last August, IDCC sued Lenovo in the United Kingdom, alleging infringement of four UK patents, each of which the plaintiff characterizes as essential to either 3G or 4G standards; one day later, IDCC sued Lenovo in the District of Delaware, alleging infringement by cellular-enabled Motorola and Lenovo devices practicing certain standards (e.g., HSUPA, LTE, and WCDMA) of eight US wireless communications patents. In the US case, Lenovo has challenged six of the patents in an Alice motion that remains pending before District Judge Leonard P. Stark.

This month, Lenovo (Motorola Mobility) renewed an Alice motion attacking six of the eight wireless communications patents that InterDigital, Inc. (IDCC), through a group of subsidiaries, has asserted in its sole active US case. The defendants’ accused products are cellular-enabled Motorola and Lenovo devices practicing certain standards (e.g., HSUPA, LTE, and WCDMA). The abstract ideas to which the current motion alleges IDCC’s claims are patent-ineligibly directed range from “requesting additional bandwidth when the previously allocated bandwidth is insufficient” to “transmitting channel quality measurements in a rotating pattern of time intervals”. The challenge comes as InterDigital has published information detailing its “handset rate structure, portfolio data, [and] licensing principles” as part of a “new phase of transparency”.