If the Guinness Book of Records had category for the largest number of standard-essential patents (SEPs) asserted in a single infringement action, Korea's Sol IP--one of at least five Avanci licensors currently asserting SEPs against Ford Motor Company--might claim the crown.
Ford hasn't even responded to the recently-filed original complaint (over five SEPs) yet, but Sol IP has already amended it and is now asserting not only the five original SEPs-in-suit but also 16 more in the Eastern District of Texas. I'll list all 21 patents-in-suit and discuss the implications, especially with a view to litigation economics, but let me firstly show you the amended complaint (this post continues below the document):
These are the five original SEPs-in-suit, which continue to be asserted:
U.S. Patent No. 10,938,534 on "carrier aggregation in wireless communication systems"
U.S. Patent No. 10,231,211 on a "method for paging information in cellular system
U.S. Patent No. 10,932,298 on a "method for transmitting uplink control signal in mobile communication system"
U.S. Patent No. 8,320,571 on a "method for generating downlink frame, and method for searching cell"
U.S. Patent No. 10,148,477 on a "method and apparatus for transmitting ACK/NACK" (ACK = acknowledgement; NACK = negative acknowledgment)
Here are the new ones:
U.S. Patent No. 10,206,207 on an "error control method, medium access control (MAC) frame designing method, and terminal registration method in wireless communication system, and recording medium"
U.S. Patent No. 10,244,559 on a "method for transmitting up link control signal in mobile communication system"
U.S. Patent No. 8,311,031 on a "cell search method, forward link frame transmission method, apparatus using the same and forward link frame structure"
U.S. Patent No. 9,496,976 on a "cell search method, forward link frame transmission method, apparatus using the same and forward link frame structure" (same title as previous patent)
U.S. Patent No. 10,080,204 (same title as previous two patents)
U.S. Patent No. 8,320,565 on a "method for generating downlink frame, and method for searching cell"
U.S. Patent No. 10,749,722 on a "method and apparatus for transmitting ACK/NACK" (ACK = acknowledgement; NACK = negative acknowledgment) (same title as '477 patent (#5 on the list))
U.S. Patent No. 10,271,349 on a "scheduling apparatus and method for multicast broadcast service"
U.S. Patent No. 10,687,351 on a "scheduling apparatus and method for multicast broadcast service" (same title as previous patent)
U.S. Patent No. 8,593,936 on "carrier aggregation in wireless communications systems" (same title as '534 patent (#1 on the list))
U.S. Patent No. RE48,101 on a "method of transmitting downlink channel rank information through physical uplink shared channel"
U.S. Patent No. 10,405,277 on a "method for reducing power consumption of terminal in mobile communication system using multi-carrier structure"
U.S. Patent No. 10,863,439 on a "method for reducing power consumption of terminal in mobile communication system using multi-carrier structure" (same title as previous patent)
U.S. Patent No. 10,462,776 on a "method for transmitting and receiving control information of a mobile communication system"
U.S. Patent No. 10,009,896 on "methods for transmitting and receiving of control channel in wireless communication systems"
U.S. Patent No. 10,893,525 on a "method for transmitting and receiving control channel in wireless communication systems" (almost identical title as previous patent)
Judge Gilstrap presumably won't let Sol IP put that many patents before the jury, as the trial would take very long and then disrupt jurors' lives for months. Even though those 21 patents are not from 21 different families (patents from the same family relate to largely the same technique, yet each must have a unique scope of protection), it would still take a whole lot of technical explanation.
But to the extent that those patents cover distinct inventions, the court can't force Sol IP to drop them. A frequently cited precedent in that regard is the Federal Circuit's 2011 opinion In re Katz Interactive Call Processing Patent Litig.. Sol IP may not even have to narrow its complaint at all (by dropping patents, which it could also do without prejudice in order to be able to reassert them subsequently) until we get a lot closer to a jury trial.
If Ford wants to properly defend itself, it will have to spend tens of millions of dollars. Based on Avanci's published 4G rate, that would cover a whole lot of cars with respect to 49 patent portfolios, of which Sol IP's is just one. I'm sure that some people at Ford have already done the math.
There is an asymmetry because Sol IP can assert all those patents without having to--for example--search prior art. Also, Sol IP likely has access to the inventors and the patent attorneys who prosecuted the original application, and those individuals are already quite familiar with the inventions in question.
Ford is in the business of making cars (as it has been for well over a century), not in the business of defending against cellular SEP infringement complaints. Sol IP's 16 additional SEPs-in-suit have probably simplified Ford's calculus.
Ford was not directly involved in the amicus brief campaign surrounding the en banc petition in Continental v. Avanci. It is, however, a member of the Alliance for Automotive Innovation, which filed an amicus brief together with the VDA (German Association of the Automotive Industry). Car makers Tesla (a presumptive Avanci licensee), Toyota, and Honda finally managed to file their own brief (as opposed to the wrong one), as I discussed in my previous post.
Continental is so far from making even the slightest headway against Avanci--they're not even going to be able to start discovery anytime soon--that Ford may already have given up on the prospects of that case. It now has to make the right decision for itself, realistically coming from the assumption that Continental's complaint is beyond salvation, and that Ford itself will sooner or later be enjoined in Germany and face at least substantial damages claims (if not also injunctions) in the United States, where the Biden Administration's new SEP policy statement that is currently in the works won't make much impact (if any) in the near term either.
Henry Ford famously said: "Half the money I spend on advertising is waste, and the problem is I do not know which half." When it comes to SEP litigation, defendants often find that more or less 100% of the money they spent defending themselves against patents was wasted.
Share with other professionals via LinkedIn: