Monday, September 21, 2020

PanOptis/Unwired Planet patent troll group sues allegedly unwilling licensee Tesla over former Panasonic and Ericsson patents in Eastern District of Texas

There's further escalation in the standards-essential patent (SEP) conflict between the abusive Avanci gang and the 21st century's most innovative automotive company, Tesla:

After Conversant Wireless's patent infringement complaints against Tesla in the Western District of Texas and the Mannheim Regional Court, a request for a Japanese import ban by Sharp, and Sisvel doubled down on its litigation campaign against Tesla in the District of Delaware, the affiliated patent trolls named Optis Wireless, PanOptis, and Unwired Planet have just filed a patent infringement suit against Tesla in the Eastern District of Texas over four former Panasonic patents and one former Ericsson patents, all of them declared to be essential to cellular telecommunications standards (this post continues below the document):

20-09-20 Optis PanOptis Unw... by Florian Mueller

These are the four former Panasonic patents-in-suit:

In addition, the trolls are asserting a former Ericsson patent:

Legal entities from the same patent troll group received a $506 million verdict against Apple last month in the same venue: Marshall, Texas, where the exceeding troll-friendly Chief District Judge Rodney Gilstrap presides over numerous patent infringement cases every year.

The complaint contains a relatively detailed descriptions of efforts by the Avanci patent pool firm as well as the plaintiffs in this action to sell Tesla a license. The trolls' lawyers argue that Tesla behaved like an unwilling licensee, engaging in hold-out rather than good-faith negotiations, sometimes taking many months to respond to an offer in a way that the trolls didn't consider to be constructive. But let's not take that narrative at face value:

  • It remains to be seen how Tesla will seek to justify its negotiation style when it files it answer to the complaint, and when the case gets closer and ultiamtely goes to trial.

  • At the heart of the problem is something you can't blame Tesla for: instead of demanding SEP royalties from Tesla on the value of an entire car, the trolls and their Avanci pool firm should talk to the relevant suppliers about an exhaustive component-level license that would cover the downstream, including but not limited to Tesla.

The day after tomorrow, the Munich I Regional Court will hold a trial over one of various patent infringement cases brought by another privateer (a patent troll fed by a large company with patents for the purpose of extracting higher royalties than otherwise), Conversant Wireless, against Daimler. As I noted in the previous post, the patent-in-suit in that case is now also being asserted against Tesla in a differnet German court (Mannheim). The Munich decision in the Daimler case won't be formally binding on the Mannheim court in any way, but should Daimler lose in Munich, Tesla would have to convince the Mannheim judges that their Munich-based colleagues made a mistake.

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