Lenovo accuses Nokia of failing to disclose patent rights
Chinese technology company Lenovo has claimed that Nokia can’t enforce 19 video compression patents as the Finnish company failed to comply with requirements to disclose its rights.
In a suit filed on Monday, December 7, at the US District Court for the Northern District of Califonia, Lenovo sought a declaration that Nokia Technologies Oy can’t enforce its patents, which it claims are essential to practice the H.264 video compression standard.
Nokia Technologies Oy is a subsidiary of Nokia, tasked with monetising the patent rights obtained by the various Nokia entities.
According to Lenovo, Nokia is asserting that Lenovo’s US unit is required to take a licence to patents.
However, Lenovo argued, Nokia has failed to comply with its contractual obligation to disclose any rights in the allegedly essential Nokia patents to the relevant standards-setting organisation before the H.264 standard was “frozen”.
Nokia’s alleged failure to disclose deprived “members of the ability to take those alleged patent rights into account when the standard was still under development”, said the suit.
Lenovo went on to alleged that because this late disclosure breached the contract between Nokia and the H.264 standards-setting organisation and also violated California unfair competition law, each of the patents is unenforceable against the H.264 standard.
“Moreover, because this repeated late disclosure was egregious, and because Nokia Oy and/or Nokia Corporation have leveraged the allegedly standard-essential nature of the late-disclosed Nokia Patents to obtain unjust benefits, the Nokia patents are unenforceable against the H.264 standard under the doctrine of implied waiver,” alleged the claim.
Lenovo added that Nokia’s repeated failure to disclose its rights is part of a “pattern of egregious behaviour” that prevented the International Telecommunications Union (a UN agency responsible for all matters related to information and communication technologies) and other standard-setting organisation members from fully evaluating the relevant technologies when developing the H.264 standard.
“Upon information and belief, had the Nokia patents been timely disclosed during the standard-setting process, members would have decided to standardise an alternative technology or left the relevant technology out of the standard,” added the suit.
Lenovo has asked the court to find each of Nokia’s 19 patents unenforceable against anyone practising the H.264 standard or otherwise making, using, or selling products supporting the H.264 standard.
A spokesperson for Lenovo said: “Specifically, Nokia has advocated for its technology to be adopted into the standard, while at the same time concealing its patents it now asserts are essential to the practice of that standard.
“We believe the availability of standardised technologies on FRAND terms is critical for the future of the global tech industry and the proliferation of affordable innovation to customers around the world. Nokia’s licensing practices threaten this access.”
The dispute between the pair spans multiple jurisdictions, including Germany.
Last month, a German appeals court lifted the enforcement of an injunction secured by Nokia against Lenovo in a standard-essential patent suit, involving the H.264 video compression technology standard.
In October, Nokia had enforced its injunction against Lenovo in Germany, following the judgment of the Munich Regional Court which had found that Lenovo was infringing one of Nokia’s SEPs relating to H.264 video compression technology and rejected Lenovo’s fair, reasonable, and non-discriminatory argument.
But, the Munich Higher Regional Court - Cartel Senate (Sixth Senate) granted Lenovo’s request to stay enforcement of the Munich ruling.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
Today’s top stories
Apple challenges $503m VirnetX award
