While I commented on a couple of topics last week (Google's declaratory judgment action against Rockstar and Apple's renewed motion for a U.S. permanent injunction against Samsung), I haven't checked on the dockets of most of the cases I follow in ten days. I'm now catching up with developments, and the first item I have identified as newsworthy is that Nokia and Google's Motorola Mobility are engaged in an unspecified type of patent licensing discussions.
On December 20, 2013 (the Friday before Christmas), Nokia filed a response to Google's report on the first (mandatory) settlement conference relating to Nokia's second ITC complaint against HTC. In most cases the parties to an ITC investigation or federal lawsuit agree on how to represent the status of their talks to the agency or court. Here, Nokia takes issue with Google's claim that "Nokia continues to refuse to proceed with a settlement conference with Google". Google is only an intervenor in that ITC investigation, not a defendant, so there is nothing between the parties to settle in a strictly formal sense -- but Nokia wanted the ITC to know that its executive and its counsel were nevertheless willing to listen to whatever Google might have to propose in terms of a contribution to a resolution of the infringement issues surrounding Android-based devices.
Nokia attached to its filing with the ITC (which entered the public record during Christmas week) the following paragraph from a December 3, 2013 email from Nokia's counsel to Google's (click on the image to enlarge or read the text below the image):
"If Google wishes to proceed with its requested meeting, Nokia will do so, as we have repeatedly told you. Indeed, Nokia's Robert Gray explained in his October 25, 2013, letter to Motorola Mobility Holdings, Inc.: 'If Google is in a position to end the unauthorized use of Nokia patented technology in Android products, [Nokia] would welcome independent discussions with Google on that basis.' Google has not taken Nokia up on that offer. Mr. Gray (or someone on his team) remains available to meet in Finland before the settlement conference deadline, if Google so desires."
Mr. Gray is a seasoned licensing executive. He has been mentioned in previous settlement reports filed with the ITC in connection with the Nokia-HTC dispute.
Nothing is known about Nokia's talks with Google's wholly-owned subsidiary Motorola Mobility at this stage except for what the paragraph quoted above reveals. That is enough to make it a fact that Nokia and Google's Motorola have some patent licensing-related conversations going, and the alleged infringement of Nokia patents by Android-based devices is apparently the reason (or one of the reasons) for these talks, as the quoted sentence indicates.
What was already known before this revelation is that Nokia and Motorola concluded various patent license agreements in the past. When Nokia was a new entrant, it had to pay substantial royalties to Motorola. Now, Nokia has far stronger patents (but it will be hard for Motorola to find Nokia products against which it could assert any patents of its own).
When Microsoft explained the rationale behind its acquisition of Nokia's wireless devices business in early September, it mentioned that "Nokia is also conveying [to Microsoft] rights under its agreements with IBM, Motorola Mobility, and Motorola Solutions", giving Microsoft "the benefit of attractive royalty arrangements Nokia negotiated".
But patent license deals aren't necessarily comprehensive. The Nokia-Motorola deal may very well be limited to standard-essential patents (SEPs), considering that Nokia didn't license its non-SEPs broadly in the past. And no matter what the scope of the deal is, it presumably has a limited term as well, which could be another reason for these parties to hold talks about future patent licensing arrangements.
For Google it's probably a "no go" to pay patent royalties to Nokia with respect to Motorola Mobility's Android devices. By doing so, Google would officially recognize that the entire Android ecosystem owes Nokia license fees. But if there are infringements, then Nokia will, if necessary, find ways to enforce its rights. At the end of the day, even Google's Motorola may end up having to pay.
Earlier this month it became known that Nokia is now suing HTC over Google Maps as well, which is a wider IP issue that goes beyond Android.
I'll probably have some more Nokia v. HTC news later. The Munich I Regional Court scheduled the announcement of a related ruling for this afternoon. Ten days ago Nokia already won a Munich patent case against HTC, but according to HTC, its One flagship series of smartphones is not affected by that injunction.
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