Dolby Labs acquires GE Licensing; US and UK agree SEP collaboration; Sisvel’s new IoT patent info campaign; why the EUIPO SEP registry must be rethought; plus much more
Welcome to the latest edition of the Sisvel Insights weekly round-up, aggregating news stories, analyses and data points affecting the SEP world that have caught our eye over the past seven days
The IP market never stands still. Last week’s announcement that Dolby Labs had entered into a definitive agreement to acquire GE Licensing was further evidence of this. "The transaction will include a portfolio of over 5,000 patents, including foundational patents in standard essential video compression," a press release announcing the deal stated.
Elsewhere, the USPTO and the UK IP Office have signed an accord that will see them collaborate on issues relating to SEPs. Among the areas of focus will be one that involves looking at how other jurisdictions might get involved, "including exploring a venue for such broader discussions". Could that be a reference to the EU and a reflection of US and UK worries about the unilateral approach the SEP regulation represents?
Staying with this proposed legislation, a highly respected commentator has published an article looking at the many problems the envisaged EUIPO SEP registry presents. More positively, there was also news of a new Sisvel informational initiative designed to help IoT businesses understand the ins and outs of patent licensing.
Please note that inclusion of a piece in the list below does not signify agreement with what is stated in the linked article, just that we believe it is of interest and worth pointing out.
Legal
The Delhi High Court ordered Lava to pay recurring security deposits based on actual sales of its Android devices, the latest ruling in the Indian smartphone maker’s SEP dispute with Dolby. Lava told to pay recurring royalties in Dolby SEP dispute | Managing Intellectual Property (managingip.com) (Paywall)
The CAFC upheld a $20 million damages award against Google in a surprising 2-1 ruling with possible implications for the way licence agreements are written. Patent license negotiators get valuable guidance from Federal Circuit in $20M Google thermostat decision on how to prepare for future trials – ip fray
Xiaomi has been sued at the UPC by an affiliate of Atlantic IP; the Chinese smartphone maker has emerged as one of the European court’s busiest defendants. Xiaomi sued at UPC by new Atlantic IP NPE following major patent transfer - IAM (iam-media.com) (Paywall)
Market
Dolby Labs entered into a definitive agreement to acquire GE Licensing for an undisclosed sum. The transaction includes a portfolio of over 5,000 patents. Dolby Laboratories Announces Agreement to Acquire GE Licensing from GE Aerospace | Dolby Newsroom
NovaCloud Licensing LLC acquired a portfolio of 40 patent families from Ericsson, which it says will form the basis of a licensing programme focused on the cloud computing industry. NovaCloud Launches New Licensing Program For Patent Portfolio Covering Key Cloud Technologies From Ericsson (prnewswire.com)
Sisvel launched an informational campaign to help cellular IoT device makers understand the basics of patent licensing. A new website, iotpatentpool.com, explains how the Sisvel Cellular IoT pool can help these businesses save time and money. Sisvel | Sisvel campaign demystifies patents for cellular IoT device makers
VideoLabs announced a licensing deal with an unnamed Japanese smart TV manufacturer, which it said is its third licensee in the smart display space. Post | Linkedin
US law firms are expecting SEP-related work to increase for reasons including the ascent of patent pools and the rise of 5G. ‘So many doors opening’: US firms expect boom in SEP work | Managing Intellectual Property (managingip.com) (Paywall)
Policy
The USPTO and the UK IP Office have agreed to collaborate on SEP-related matters. They have signed an MOU calling for a balanced standards ecosystem, joint efforts to educate SMEs and greater transparency in FRAND licensing. Post | Feed | LinkedIn
In a US Federal Circuit challenge to Idaho’s law countering “bad faith” patent assertions, 27 states have asked to file amicus briefs in favour of the contested statute. Other States Rally Behind Idaho’s Bad-Faith Patent Assertion Law - News | RPX Insight (rpxcorp.com)
Analysis/Opinion
The EUIPO registry envisaged by the proposed EU SEP licensing regulation, which would entail mandatory essentiality checks performed on random samples of patents, is deeply flawed and should be significantly revised, if not completely abandoned. IP finance: Fool’s errand with fallacies in administrative essentiality checking
The recent Delhi High Court ruling in a dispute over antenna technology provides crucial insights on patent damages in India and how to secure an award based on lost profits. Delhi High Court awards multi-million dollar patent damages in watershed ruling - IAM (iam-media.com) (Paywall)