Thursday, April 20, 2023

MPEG LA settles patent enforcement actions against former pool contributor Samsung Electronics--but contract dispute apparently continues in NY state court

Patent pool administrator MPEG LA just announced (PDF) that "the HEVC enforcement actions brought in [the Dusseldorf Regional Court] against Samsung Electronics GmbH ('Samsung') announced on 28 March 2022 [...] have been settled with the taking of licenses. As a result, all legal disputes related to those patent enforcement actions have been resolved."

I commented on that March 28, 2022 announcement on the same day. What made it so noteworthy is that it was potentially the first dispute ever in which a pool's former licensor was sued for becoming an allegedly unwilling licensee.

So the parties have put the infringement actions behind them (which is another success story for MPEG LA's common counsel of record in Dusseldorf infringement actions, Axel Verhauwen of Krieger Mes and Gottfried Schuell ("Schüll" in German) of Cohausz & Florack).

But the announcement does not mention the contract lawsuit (PDF) brought by Samsung in a New York state court last May. I've checked the docket, and just at the beginning of this week, Samsung filed its opposition to a motion to dismiss by MPEG LA. There is no notice of voluntary dismissal on the docket, which together with the careful wording of today's announcement leads me to believe that they have not (yet) been able to agree on that part. That case is a royalty dispute. Samsung argues that MPEG LA is not paying the full amount of royalties the Korean electronics giant deems itself entitled to.

Two other companies who left MPEG LA and contributed their patents to Access Advance's HEVC Advance pool (ETRI and SK Telecom) are also suing MPEG LA over that question in New York state court. That case is essentially about whether MPEG LA licensees who signed up before a given licensor left the pool are licensed not only to HEVC-essential patents obtained before, but also to those obtained after the period during which the patentee in question was an MPEG LA licensor.