The MPEG LA patent pool firm just announced the filing of patent infringement actions against Samsung.
The patents-in-suit have been declared essential to the HEVC (High Efficiency Video Coding) standard, also known as H.265. The complaints were filed with the Dusseldorf Regional Court, a prime venue for video codec patents that dealt MPEG LA rival Access Advance a major setback in late 2021, but MPEG LA has consistently succeeded there. The same patent litigator-patent attorney duo is representing MPEG LA's enforcing licensors again: Axel Verhauwen of Krieger Mes and Gottfried Schuell ("Schüll" in German) of Cohausz & Florack.
Today's announcement is so very interesting not only because of Samsung's significance as a consumer electronics giant but also because of Samsung's history with MPEG LA. As the announcement mentions, "Samsung Electronics Co. Ltd. was both Licensor and Licensee to MPEG LA’s HEVC Patent Portfolio License from Fall 2014 until terminating in March 2020, but Samsung has continued to offer products including smartphones, tablets and televisions in Germany that use patent protected HEVC methods without license since termination." The German lawsuits target that entity's German subsidiary Samsung Electronics GmbH.
In April 2017, Samsung joined Access Advance's HEVC pool named HEVC Advance (in fact, the entire company was named Access Advance at the time). A few years later, or about two years ago as we speak, it then terminated its MPEG LA contract.
It seems that even Xiaomi, which took an MPEG LA license in January 2020, is licensed to Samsung's HEVC patents as a result of its own MPEG LA license. This is important with a view to Access Advance's duplicative-royalty policy.
In order for Xiaomi not to be licensed, Samsung's contribution of patents to the MEPG LA pool would have had to end even sooner than its license agreement as an implementer. Today's announcement says Samsung terminated in March 2020. MPEG LA's HEVC licensor page is also pretty clear:
"*Terminated. For as long as they continue to be a Licensee, those Licensees who entered the HEVC Patent Portfolio License before a Licensor’s termination are covered under all HEVC Essential Patents that the terminated Licensor and its Affiliates presently or in the future has the right to license or sublicense, but coverage is not available to Licensees who enter the HEVC Patent Portfolio License after the Licensor’s termination date. Please see the addendum to the Attachment 1 (Click here) for specific termination dates."
The PDF accessible via the "Click here" link states:
Samsung Electronics Co., Ltd.
(terminated March 27, 2020)
Given that Xiaomi is the closest competitor to Samsung among Android device makers in various respects, the question of whether Xiaomi has access to Samsung's patents on FRAND terms is key.
Today's MPEG LA press release is the first announcement of a major SEP enforcement action against Samsung since the dispute with Ericsson that settled about a year ago.
Actually, MPEG LA's terms favor large-scale implementers like Samsung, especially by virtue of royalty caps. It is hard to tell why Samsung didn't simply renew its license with MPEG LA. Maybe we'll learn more about it as a result of the infringement actions that have been brought.
I'm not aware of any other case in which a former contributor to a pool later got sued by that pool for a refusal to take a license. It may indeed be the first one of its kind. It is another example of the hot mess that is HEVC patent licensing (and that VVC patent licensing threatens to become unless the industry at large finds a better way forward).
Industry rumor has it that Samsung and Nokia have yet to agree on the terms of a renewal. There have been some Nokia-Samsung announcements in recent years, but there's no reason to assume they involved Nokia's cellular SEP portfolio. Should Nokia have to sue Samsung (as it is presently suing OPPO and Vivo), that would be a dispute orders of magnitude larger than MPEG LA's cases. Nokia does not believe in royalty caps, let's put it that way.
Share with other professionals via LinkedIn:
