Wednesday, September 1, 2021

TCL takes MPEG LA's AVC/H.264 license just before Dusseldorf trials in patent infringement litigation brought by NEC, Panasonic, IP Bridge

Yesterday Ericsson won a key appellate decision against HTC, and today there is good news for some other standard-essential patent (SEP) holders. Today, patent pool firm MPEG LA announced that "TCL Electronics Holdings Limited ('TCL') has become a Licensee to MPEG LA's AVC Patent Portfolio License" and that "all legal disputes related to patent enforcement actions brought by patent holders in MPEG LA’s AVC License against TCL have been resolved." In complaints filed with the Dusseldorf Regional Court and announced by MPEG LA on July 27, 2020, TCL was accused of infringing patents declared essential to the AVC/H.264 (MPEG-4 Part 10) digital video coding standard used in mobile devices, TVs, and other products.

I've been able to find out that the plaintiffs in those German patent infringement cases were NEC, Panasonic, and IP Bridge. The Dusseldorf court would have held trials pretty soon, but TCL folded.

MPEG LA has a track record of victories in Dusseldorf. MPEG LA itself cannot sue, as it does not own those patents, but its contributors do. Very often, if not always, MPEG LA's contributors are represented in court by Krieger Mes's Axel Verhauwen.

TCL appears to have read the writing on the wall. Just this summer, it suffered two defeats in the Dusseldorf appeals court (Oberlandesgericht Düsseldorf, or Dusseldorf Higher Regional Court) in cases involving a Via Licensing pool: as a result of being deemed an unwilling licensee, TCL was enjoined. Those cases involve a different pool, but chances are that TCL realized it had to start settling at least some of its video codec patent cases.

In July, TCL also settled one of the longest-running cellular SEP disputes by taking a license from Ericsson.

TCL gets sued left, right, and center, which also includes Mannheim, where LG obtained an injunction in March. They have to choose their battles wisely, and it apparently wasn't prudent anymore to decline to take a license from MPEG LA.

Finally, it's worth noting that MPEG LA, in the capacity of an amicus curiae, is supporting the Avanci cellular SEP pool firm against automotive supplier Continental's dubious antitrust claims. The United States Court of Appeals for the Fifth Circuit vacated a hearing scheduled for Monday due to Hurricane Ida. A new hearing date is yet to be determined.

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