This is now the third post in a row on standard-essential patent (SEP) litigation in the Eastern District of Texas. The two previous ones were about Ericsson v. Apple. As I was checking on the E.D. Tex. docket, I also discovered a new automotive SEP lawsuit: a group of patent licensing firms named Optis Wireless Technology, Optis Cellular technology, Unwired Planet, and PanOptis Patent Management has brought an infringement complaint over five 4G SEPs against Ford Motor Company.
That group of patent holders has a strong track record in litigation. most famously involving the UK Supreme Court's Unwired Planet v. Huawei decision. An Optis v. Apple FRAND trial (setting the terms of a conditional injunction) will soon be held in London. And now the Optis-Unwired group has become the sixth Avanci licensor to go after Ford--and the second one in the Eastern District of Texas, where Korea's Sol IP is already asserting a whopping 21 patents against the car maker. Other Avanci licensors to be enforcing their intellectual property against Ford include MiiCS (Munich), Sisvel (Delaware and Munich), IP Bridge (Munich), and Longhorn IP subsidiary L2 (Delaware). The Delaware cases will go to trial only sometime in 2024, but holdout won't work for Ford because the patent injunction hammer will likely come down in Germany long before, and I also expect Sol IP's and Optis-Unwired's cases in the Eastern District of Texas (which are about damages, for now) to go to trial much sooner.
According to the latest complaint, both Optis-Unwired and Avanci have been trying for about five years to strike a license deal with Ford:
"For several years dating back to 2017, Plaintiffs themselves and also as part of a licensing pool through Avanci LCC ('Avanci') have attempted to negotiate with Ford to reach an agreement for a FRAND license to Plaintiffs’ cellular patent portfolios. However, Ford has declined to date to take a license. In contrast to Ford, several other automobile manufacturers have taken a license.
"Plaintiffs have also sought to have Ford take a license to its patents on FRAND terms as part of a broader pool of essential cellular patents through Avanci. On information and belief, starting in August 2017, Avanci has made extensive efforts to have Ford take a license on FRAND terms."
The complaint notes that "[i]n contrast to Ford, several other automobile manufacturers have taken a license." That fact ups the ante for Ford, which really comes across as an unwilling licensee by now. Just two days ago, Avanci announced a license agreement with General Motors, the largest U.S. car maker. When IAM reported on that deal, it also stated what I've been saying for some time (Tesla must be an Avanci licensee given that multiple cases brought by Avanci licensors were withdrawn near-simultaneosuly last year) and said that electric SUV and pickup truck maker Rivian Automotive is an Avanci licensee.
These are the patents asserted by Optis and Unwired against Ford:
U.S. Patent No. 8,149,727 on a "radio transmission apparatus, and radio transmission method" (originally filed by Panasonic, currently assigned to Optis Wireless Technology)
U.S. Patent No. 8,199,792 on a "radio communication apparatus and response signal spreading method" (originally filed by Panasonic, currently assigned to Optis Wireless Technology)
U.S. Patent No. 8,223,863 on a "method and arrangement in a cellular communications system" (originally filed by Ericsson, currently assigned to Optis Wireless Technology)
U.S. Patent No. 8,254,335 on a "radio communication apparatus and radio communication method" (originally obtained by Panasonic, currently assigned to Optis Wireless Technology)
U.S. Patent No. 8,320,319 on a "semi-persistent scheduled resource release procedure in a mobile communication network" (originally filed by Panasonic, currently assigned to Optis Wireless Technology)
Optis-Unwired's complaint was filed by McKool Smith, which also (together with Irell & Manella) won a $300 million damages verdict against Apple for the same plaintiff and in the same district.
For as much as I would like to show you the complaint (though there's no major information in it beyond what you can find in this post anyway), I haven't been able to upload it to Scribd. While Scribd did successfully process the court document in my previous post (Ericsson's opposition to Apple's motion to stay a case over three 5G patents), it entered into an endless loop after claiming that the upload of the Optis-Unwired complaint (and previously, an Ericsson-Apple court order) had been completed "100%." I don't know whether this is due to my new computer, but the fact that one of those three court documents from the Eastern District was successfully published on Scribd makes it unlikely that I have a firewall problem (I can also upload files to other websites without problems). I'll try to solve the problem. If all else fails, I'll have to find an alternative to Scribd. Apologies.
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