Friday, April 1, 2022

Fourth Avanci licensor sues Ford Motor Company: Sol IP asserting five LTE standard-essential patents from Korean research institute ETRI in Eastern District of Texas

Pressure is mounting on the Ford Motor Company to do its standard-essential patent (SEP) licensing homework. The legendary U.S. car maker is now defending against patent infringement actions brought by (at least) four Avanci licensors:

A few days ago, Ford also got sued in the Western District of Missouri by a company named Neo Wireless, which unlike the aforementioned three companies is not an Avanci licensor (thus likely to demand far higher royalties on a per-patent basis).

The latest enforcement action by an Avanci licensor--the fourth to date to assert patents against Ford--was filed yesterday in the Eastern District of Texas. Sol IP, which has an exclusive license to various patents belonging to Korean research institute ETRI, is suing Ford over five 4G SEPs (this post continues below the document):

22-03-31 Sol IP v. Ford Mot... by Florian Mueller

With a view to TC Heartland (case law on patent venue transfers), Sol IP argues that Ford as a Central Market Area Office in Plano, TX, which is in the Eastern District. In a case before a Texas state court in 2015, Ford said the Plano office was "the principal office of Ford in the State of Texas." The General Manager of that office resides in Frisco, TX, which is equally in the Eastern District. He is responsible for "750 Ford and Lincoln Dealers".

Sol IP's complaint points to the fact that Ford could take an Avanci pool license anytime (though the complaint also notes that any licensing through Avanci is "nonexclusive" and mentions a bilateral licensing offer that came with the infringement notice):

"Other automakers have taken licenses from Avanci on the same terms per connected vehicle that has been offered to Ford, including but not limited to Volkswagen, Seat, Skoda, BMW, Audi, Porsche, Volvo, Jaguar Land Rover, Mercedes Benz, Daimler Truck, Aston Martin, Scania, MAN, and Volvo Group. In all, more than thirty automotive brands are Avanci licensees."

Sol IP is not pursuing an injunction, but it is seeking damages including willfulness enhancements.

Sol has previously sued Qualcomm over 28 ETRI patents as well as carriers AT&T Mobility, Verizon, and Sprint.

These are the asserted patents, each of which was declared essential to the 4G/LTE standard and belongs to South Korea's Electronics and Telecommunications Research Institute (ETRI):

With all that is going on, the question is now whether Ford is the next Daimler (which defended itself against SEP infringement cases by Avanci licensors for more than two years, only to take a pool license anyway) or the next Volkswagen (which settled its dispute over an upgrade of its Avanci license to 4G rather quickly). I can't give the answer to that question. Only Ford itself can.

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