Context: Last fall, Nokia started its enforcement of video streaming patents against Amazon, one of the world’s leading video streamers (October 31, 2023 Nokia corporate blog post). About two months ago, Amazon started to countersue over cloud patents (July 31, 2024 ip fray article). Video streaming is a field in which very few license deals have happened so far, though Nokia announced one with an unnamed licensee (LinkedIn post by Nokia’s Arvin Patel).
What’s new: Yesterday evening (September 19, 2024), the Munich I Regional Court’s Seventh Civil Chamber (Presiding Judge: Dr. Oliver Schoen) granted Nokia a permanent injunction (appealable, but enforceable pending the appeal if collateral is provided) over EP2375749 (“System and method for efficient scalable stream adaptation”). The way Amazon’s streaming devices such as the Fire TV Stick (Amazon link) decode video data was found to infringe this patent. Amazon raised a FRAND (fair, reasonable and non-discriminatory licensing terms) defense to the claim for injunctive relief over this standard-essential patent (SEP). This has even been a bench ruling.
Direct impact: Whether Nokia will enforce during the appeal depends on the security amount, but at any rate this shows to Amazon that it would be wise to settle. A couple more German patent injunctions could come down before the end of the year; an Administrative Law Judge (ALJ) of the U.S. International Trade Commission will issue a final initial determination during the same time frame; and the Unified Patent Court (UPC) has cases pending that will be adjudicated next year.
Wider ramifications: The same patent will go to trial in the same court against HP in November. The court found Amazon unwilling to negotiate a FRAND license in good faith while Nokia was deemed to have discharged its FRAND licensing obligations. That is reminiscent of the dispute between Huawei and Amazon, which was settled with Amazon actually recognizing the value of Huawei’s patents (March 5, 2024 ip fray article).
Nokia’s Chief Licensing Officer New Segments, Arvin Patel, provided the following statement upon request:
“The Munich Regional Court in Germany has ruled that Amazon is using Nokia’s patented video-related technologies in its end user streaming devices and is selling them illegally without a license. The Court also found that Nokia has acted fairly in its negotiations with Amazon. We hope that Amazon accepts its obligations and agrees a license on fair terms.“
As ip fray has additionally learned, it was a bench ruling, meaning the three-judge panel decided at the end of the trial. The Seventh Civil Chamber generally tries to decide quickly, such as within two weeks of a trial, but this here must have been such a crystal clear case that the announcement was made yesterday evening and the writting judgment, stating the reasons in detail, will follow shortly.
Such bench rulings by trial courts are very rare in Germany (unlike in nullity cases before the Federal Patent Court, where they are common). And in a SEP case involving a FRAND case, it is even more difficult for a court to rule right at the end of the trial.
Video streaming companies have for a long time felt that they were (though they are not under the law) immune to video codec SEP infringement claims. Licensing very much focused on device and software makers. Here, the accused products are indeed streaming devices that Amazon sells. What Amazon will need in the end is a streaming license that covers not only its devices but also its streaming services.
For Nokia, which renewed all of the major smartphone licenses between late 2022 and the early part of this year (February 8, 2024 ip fray article), the recently announced license deal with an unnamed streamer and the fact that the noose is tightening around Amazon’s neck are facts that bode well for its licensing (Nokia Technologies) business development. This is a growth area for Nokia and other digital patent holders. There will be more patent licensing (and, sometimes, litigation-related) news involving this segment.