Context: Roku’s U.S. FRAND (fair, reasonable and non-discriminatory licensing) complaint against Access Advance, Dolby and Sun Patent Trust has been dismissed in two steps. First, Judge Richard G. Stearns of the United States District Court for the District of Massachusetts granted a motion to dismiss to the extent it took aim at Roku’s claims (including patent-specific declaratory judgment claims) against Access Advance licensors Dolby and Sun Patent Trust (July 22, 2025 ip fray article). The next day, he disposed of Roku’s global FRAND determination claim against Access Advance:
The court will allow [the] Motion to Dismiss to the extent it concerns the claims asserted against Access Advance. The court lacks jurisdiction to determine the FRAND rate as requested in Count IX. The U.S. patents constitute only a fraction of the larger portfolio which includes hundreds of foreign patents. and the court’s opinion on the appropriate royalty rate would merely be advisory. And because no federal claim exists, the court declines to exercise jurisdiction over the state law claims (Counts VII and VIII).
What’s new: Access Advance has just issued a press release (BusinessWire link) that explains the decision and welcomes it as “signal[ing] to potential licensees that the rule of law matters, and litigation is not a tool to avoid good-faith licensing negotiations,” as well as “reinforc[ing] the notion that patents are territorial and that US courts cannot be used as a vehicle to unilaterally set global FRAND royalty rates for patents held by non-parties in lieu of negotiations.”
Direct impact: Access Advance notes that this decision “effectively precludes any conflict between the Massachusetts lawsuit and the [Unified Patent Court (UPC)] actions well underway in Europe.” Indeed, any appeal by Roku would be an uphill battle, even for purely practical purposes given that the UPC cases will be long decided before the U.S. case would be remanded (if ever).
Wider ramifications: The court’s reasoning would apply not only to patent pools, but also to disputes over bilateral licensing terms involving global portfolios in which U.S. patents represent only a minority of the assets. But that doesn’t diminish its relevance to the collective-licensing business in the slightest: in any given patent pool, U.S. patents are outnumbered by foreign patents.
Access Advance’s press release quotes the company’s top lawyer as follows:
“This is a significant ruling that confirms what we’ve long understood about the complexities of global patent licensing,” said John Kinton, Chief Legal Officer at Access Advance. “We appreciate the court’s careful consideration of the jurisdictional challenges involved when dealing with patent portfolios that span more than a hundred countries and involve dozens of patent owners who aren’t parties to the litigation.”
Judge Stearns granted the motion to dismiss only by means of two docket entries as opposed to elaborate written judgments spanning dozens of pages. That terse format maximizes judicial efficiency. It has no room for obiter dicta, but when a judge sees a clear case for dismissal, there is no need for dozens of pages.
It would still have been interesting to see what the judge thought of Access Advance’s other arguments for dismissal. His docket entry did not explicitly take a position on the argument that dozens of patentees who are not parties to the case would be affected by a pool rate determination. But, as stated above, the upshot of Judge Stearns’s logic is that virtually no FRAND claim against any patent pool will ever meet that standard. Maybe there can be single-country standards where most or all of the relevant patents are only U.S. patents, but most of the standard-essential patent (SEP) licensing business revolves around cellular connectivity, WiFi, and multimedia standards, followed by various other standards (such as for hardware components of computers) that tend to be global. Even standards that lack universal adoption are typically still relevant in several countries.
The dispute between Roku and Access Advance also gave rise to two anti-antisuit injunctions (AASIs) in the UPC (March 5, 2025 ip fray article). In the alternative to the outright dismissal it ended up winning, Access Advance would have wanted the case to be stayed pending the adjudication of Roku’s FRAND counterclaim in the UPC.
Jurisdictional restraint
U.S. courts have traditionally been reluctant to rule on foreign patents, at least in cases in which one of the parties opposes it. By contrast, UK courts have for years shown little or no deference to foreign jurisdictions when it comes to FRAND determinations.
Access Advance’s press release notes that “[t]he Roku decision is consistent with the decisions to date in ongoing litigation in the United Kingdom, where Tesla is appealing the UK Appeals Court’s affirmance of the UK Patents Court’s denial of Tesla’s attempt to obtain worldwide FRAND rates for the Avanci patent pool, which does not own any UK patents.” The UK Supreme Court (UKSC) granted a petition by Tesla and accepted to hear the case (July 2, 2025 ip fray article), but the hurdle remains high. The UKSC today informed of the fact that a hearing has been listed. The public list, however, is limited to the current term, during which the case will (obvously) not be heard.