Context: Standard-essential patent (SEP) holders increasingly expect to get paid not not only by device makers but also by streaming services. Two top-notch pool administrators have recently launched licensing programs for streaming: Avanci Video was announced in late 2023, and Access Advance launched its Video Distribution Patent (VDP) pool last month (January 16, 2025 ip fray article). Nokia announced its first license deal with an unnamed major streaming service last summer (LinkedIn post by Nokia’s Arvin Patel) and may win a German SEP injunction against Amazon Prime Video this month. Netflix became the first streaming service to be hit by patent holder with a permanent injunction in Brazil (December 23, 2023 ip fray article). Adeia is suing Disney and its Hulu and ESPN subsidiaries in the Unified Patent Court (UPC) (November 22, 2024 ip fray article).
What’s new: Today, InterDigital announced the filing of SEP infringement lawsuits against Disney (as well as its Disney+, Hulu and ESPN+ subsidiaries) in the United States District Court for the Central District of California (Disney’s home district), the Mannheim and Dusseldorf Local Divisions (LDs) of the UPC, the Munich I Regional Court and the Rio de Janeiro (Brazil) State Court (InterDigital press release). InterDigital felt forced to take this step after more than 2.5 years of fruitless attempts to work out a license agreement with the Walt Disney Company. InterDigital is seeking a permanent injunction everywhere: the U.S. complaint is publicly accessible, and all the other venues are patent injunction hotspots.
Direct impact: The forceful action taken by InterDigital may bring Disney to the negotiating table. The only factor that complicates SEP enforcement now is the lack of judicial restraint by the England & Wales Court of Appeal (EWCA), which shows a tendency to turn the normally very well-respected UK into a rogue jurisdiction that attempts to derail patent enforcement (even over non-SEPs) in the rest of the world (February 2, 2025 ip fray article).
Wider ramifications: InterDigital generally prefers to license its patents directly, a rare exception being its participation in the Avanci Automotive pool. But the more patent holders enforce their IP against streamers, the more pressure there will be on them to take licenses, bilaterally as well as from pools.
InterDigital’s press release contains the following quote:
“Our video technologies enable Disney to efficiently stream content and enhance the user experience,” said Josh Schmidt, Chief Legal Officer, InterDigital. “We always prefer to sign license agreements through amicable negotiation, but we are committed to receiving fair compensation for our groundbreaking research, which allows us to continue to invest in the next generation of technology.”
Multimedia patents are clearly part of the growth strategy of various major SEP holders such as Nokia (January 22, 2025 ip fray article). Historically, patentees focused more on device makers, but that has definitely changed. In fact, there was a time when no one expected Access Advance ever to get into the business of licensing patents to streaming services, which shows that demand creates supply.
The U.S. complaint was filed in Los Angeles yesterday (Sunday, February 2, 2025):
These are the patents-in-suit in the Central District of California:
- U.S. Patent No. 8,406,301 (“Adaptive weighting of reference pictures in video encoding”)
- U.S. Patent No. 10,805,610 (“Methods and apparatus for intra coding a block having pixels assigned to groups”)
- U.S. Patent No. 11,381,818 (“Methods and apparatus for determining quantization parameter predictors from a plurality of neighboring quantization parameters”)
- U.S. Patent No. 9,185,268 (“Methods and systems for displays with chromatic correction with differing chromatic ranges”)
- U.S. Patent No. 8,085,297 (“Method for modifying a user interface of a consumer electronic apparatus, corresponding apparatus, signal and data carrier”)
The U.S. complaint was brought by a multi-office team of McKool Smith lawyers that is apparently led by well-known patent litigator Richard Kamprath:
- Local counsel (Los Angeles, CA): Alan P. Block
- Dallas, TX: Richard Kamprath and Alexandra Easley
- New York, TX: Hannah Mirzoeff
- Austin, TX: Joshua Budwin
- Marshall, TX (Judge Gilstrap’s town): Kevin Burgess
By suing Disney in L.A., InterDigital avoids the delay that a venue transfer would cause.
Reagarding the other venues choices:
- The Landgericht München I (Munich I Regional Court), particularly its Seventh Civil Chamber under Presiding Judge Dr. Oliver Schoen (“Schön” in German) (December 9, 2024 ip fray article) is a rocket docket that takes cases from complaint to decision within about a year. Judgments typically come down within two weeks of trial, and sometimes even as bench rulings at the end of a trial.
- The UPC’s Munich LD would also have been an obvious choice for SEP enforcement in light of the patent injunction (December 18, 2024 ip fray article) Huawei won against Netgear, and the anti-antisuit injunctions that Huawei (December 23, 2024 ip fray article) and Avago/Broadcom (January 16, 2025 ip fray article) obtained there. But it is a very busy division, and InterDigital may have prioritized speed. The Mannheim LD’s (commercially irrelevant) Panasonic v. OPPO injunction (November 22, 2024 ip fray article) definitely serves to encourage SEP holders to sue there, and InterDigital has accepted the invitation. The Dusseldorf LD has not yet had the opportunity to order a SEP injunction, but Dusseldorf is traditionally a major venue for video patent enforcement.
- The Netflix injunction mentioned further above shows that Brazil can also make a useful contribution to a global SEP enforcement campaign.
Horacio Gutierrez, Disney’s Senior EVP and Chief Legal & Compliance Officer, led Microsoft’s IP department from the late 2000s to early 2014. During that period, Microsoft changed its stance from advocating the wide availability of SEP injunctions to a very restrictive position, and won the first SEP antisuit injunction in the Western District of Washington (against Motorola Mobility) in 2012.