The ink isn't dry yet on the Biden Administration's draft policy statement on standard-essential patent (SEP) enforcement, and an American industrial icon is already facing yet another SEP infringement lawsuit as Ford Motor Company got slapped yesterday with a complaint by Italian (but globally present) licensing firm Sisvel in the District of Delaware (this post continues below the document):
This makes Sisvel the third contributor to the Avanci pool to tell Ford that enough is enough, and hold-out must come to an end. Previously, L2 Mobile Technologies (a Longhorn IP subsidiary) also sued Ford in the same federal district, and Japan's IP Bridge is going after Ford in Munich.
Last year it became known that Ford had entered into a short-term patent license agreement with Nokia--sort of a covenant not to sue during a standstill period. A few months ago, Nokia announced a deal with an unnamed car maker, and one possibility is that Ford might have acceded to Nokia's royalty demands and taken a "real" license. The Avanci pool does not preclude its members from entering into bilateral license agreements with car makers or automotive suppliers. But when a car maker needs licenses from dozens of Avanci members, it may indeed find it more cost-efficient to take a pool license rather than engage in piecemeal resolution.
The complaint says Sisvel first made Ford a licensing offer in January 2017, and properly identified its 3G SEPs. There was some further correspondence, and in 2018 Sisvel made Ford another offer, which included 4G SEPs. While Ford continued its unlicensed use, Sisvel acquired further patents, which it specified in a 2019 letter. Four of the patents-in-suit were finally identified t Ford in a June 2021 letter. But "Ford refused to take a license to Sisvel's patents," the complaint states. And that's why Sisvel felt forced to bring the complaint shown further above.
The patents-in-suit were originally obtained by Nokia, BlackBerry (formerly known as Research In Motion), and LG Electronics:
U.S. Patent No. 7,751,803 on a "method and arrangement for optimizing the re-establishment of connections in a cellular radio system supporting real time and non-real time communications"
U.S. Patent No. 7,894,443 on a "radio link control unacknowledged mode header optimization"
U.S. Patent No. 7,979,070 on a "mobile equipment for sending an attach request to a network"
U.S. Patent No. 8,600,383 on an "apparatus and method for making measurements in mobile telecommunications system user equipment"
U.S. Patent No. 8,971,279 on a "method and apparatus for indicating deactivation of semi-persistent scheduling"
Sisvel is represented in this case by the Delaware-based Devlin Law Firm.
I'll try to find out about any European cases. Sisvel has a history of enforcing patents in Germany, a major market in which Ford might be enjoined next year as the U.S. complaint's account of the history of licensing negotiations between the parties makes it fairly likely that German courts would consider Ford an unwilling licensee...
Share with other professionals via LinkedIn: