Context: Assertions of standard-essential patents (SEPs) against car makers are rare. Most cellular SEPs can be licensed through the Avanci pool, whose 4G program has near-complete coverage of the market and whose 5G program has signed up various automakers already without any litigation (March 5, 2024 ip fray article). A rare exception is Neo Wireless, which is not an Avanci licensor but is asserting SEPs against car makers. Earlier today, ip fray mentioned Neo’s dispute with Toyota in a LinkedIn post.
What’s new: On Friday (April 12, 2024), Intellectual Ventures filed a patent infringement complaint against Tesla with the United States District Court for the Western District of Texas. Tesla is headquartered in that district, and due to an overlap with an earlier-filed action against Volvo and others, the case will presumably be assigned to Judge Alan D. Albright. IV is asserting a dozen patents, including an exclusively licensed U.S. Navy patent.
Direct impact: Tesla risks a major damages verdict unless it fends off all 12 patent assertions or settles.
Wider ramifications: The patents-in-suit do not appear to be standard-essential (the vast majority of them certainly aren’t). But part of the damages argument is based on the commercial value Tesla derives from connectivity in various ways. Tesla is the sole car maker at this point to disagree with the Avanci 5G program’s terms: Tesla brought a proactive lawsuit in London prior to making its first 5G-capable car (January 3, 2024 ip fray article).
Here’s Intellectual Ventures’ complaint:
These are the patents-in-suit:
- U.S. Patent No. 7,336,805 on a “docking assistant” (a former Daimler (now named Mercedes) patent)
- U.S. Patent No. 9,706,500 on “power control in a wireless network”
- U.S. Patent No. 10,292,138 on “determining buffer occupancy and selecting data for transmission on a radio bearer”
- U.S. Patent No. 10,952,153 on “power control in a wireless network” (smae family as the ‘500 patent)
- U.S. Patent No. 8,898,395 on “memory management for cache consistency”
- U.S. Patent No. 10,136,416 on “communicating on a shared channel in a wireless network”
- U.S. Patent No. 7,916,180 on “simultaneous multiple field of view digital cameras”
- U.S. Patent No. 9,232,158 on “large dynamic range cameras”
- U.S. Patent No. 7,181,743 on “resource allocation decision function for resource management architecture and corresponding programs therefor” (a U.S. Navy patent of which IV is the exclusive licensee, which confers standing)
- U.S. Patent No. 6,894,639 on “generalized hebbian learning for principal component analysis and automatic target recognition, systems and method” (a former Raytheon patent)
- U.S. Patent No. 11,206,670 on “communication in a wireless network using restricted bandwidths”
- U.S. Patent No, 11,664,889 on “communications over a wireless network” (the subject matter of this patents makes it a possibility that it could read on cellular standards)
With respect to the ‘805 patent, IV’s willfulness argument points to an August 7, 2020 letter. For all twelve patents, IV sent Tesla a letter the day before filing suit.
IV’s complaint is not going to be assigned randomly in the district as the ‘138 and ‘158 patents are also at issue in a case against Volvo and others:
“In this case, Intellectual Ventures asserts two of the same patents that were previously filed in the Waco Division and are currently being litigated in the 429 Case, although on a different set of infringing systems and methods. The parties in the 429 Case are in the process of briefing claim construction in anticipation of the Court in the Waco Division construing claims of each of the 429 Related Patents at a Markman hearing, currently set for May 24, 2024.”
(from the notice of related case)
IV is being represented by Cherry Johnson Siegmund James (Austin) as well as Kasowitz Benson Torres (Redwood Shores).