ITC judge recommends U.S. import ban on Amazon streaming devices due to violation of 4 out of 5 Nokia multimedia patents

In the combination of the ongoing enforcement in Germany and the clear and present danger of a U.S. import ban that could take effect in the spring, the likelihood of a settlement should have increased greatly. While Amazon struck a conciliatory tone when settling a WiFi 6 dispute with Huawei earlier this year (March 5, 2024 ip fray article), it brought a countersuit against Nokia over some of its own cloud patents in the District of Delaware in the summer (July 31, 2024 ip fray article).

Nokia normally concludes its license agreements without litigation, even in segments that others find difficult to penetrate, the most recent example being the company’s second license deal with a major Chinese automaker (December 17, 2024 ip fray article). With HP, it took litigation, but after the settlement HP was dismissed from this ITC investigation while Amazon remained in it. Nokia’s chief licensing officer for new segments, Arvin Patel, provided a statement on Friday’s ITC ruling that implicitly accuses Amazon of patent hold-out:

“Litigation is always a last resort for Nokia.  Our goal is for Amazon’s consumers to benefit from our substantial investment in multimedia R&D. But the innovation ecosystem breaks down if patent-holders are not fairly compensated for the use of their technologies, as it becomes much harder for innovators to fund the development of next generation technologies.  We welcome the initial determination and hope Amazon accepts its obligations and agrees a license on fair terms.”

The products accused in this ITC investigation include various Amazon Blink, Amazon Echo, Amazon Fir, Amazon Kindle and Amazon Ring (doorbells, cameras etc.) products.

To satisfy the domestic industry requirement, Nokia points to licensed devices sold by Microsoft and Samsung.

The full 192-page decision is not available yet, but ALJ Elliot gave notice of the key results:

CONCLUSIONS OF LAW

1. Nokia has proven infringement of claims 6, 8, 9, and 15 of U.S. Patent No. 7,724,818.
2. Nokia has proven infringement of claims 8 and 10 of U.S. Patent No. 8,050,321.
3. Nokia has not proven infringement of any claim of U.S. Patent No. 8,077,991.
4. Nokia has proven infringement of claim 23 but not claim 15 of U.S. Patent No. 10,536,714.
5. Nokia has proven infringement of claims 7-9 and 25-27 of U.S. Patent No. 11,805,267.
6. Amazon has not proven the invalidity of any claim of U.S. Patent No. 7,724,818.
7. Amazon has not proven the invalidity of any claim of U.S. Patent No. 8,050,321.
8. Amazon has proven the invalidity of claims 22 and 31 but not claims 29 or 38 of U.S. Patent No. 8,077,991.
9. Amazon has not proven the invalidity of any claim of U.S. Patent No. 10,536,714.
10. Amazon has proven the invalidity of claims 7, 25, and 26 of U.S. Patent No. 11,805,267 but not claims 8, 9, or 27.
11. Nokia has proven the existence of articles protected by claims 6, 8, 9, and 15 of U.S. Patent No. 7,724,818.
12. Nokia has proven the existence of articles protected by claims 8 and 10 of U.S. Patent No. 8,050,321.
13. Nokia has not proven the existence of articles protected by any claim of U.S. Patent No. 8,077,991.
14. Nokia has proven the existence of articles protected by claim 23 but not claim 15 of U.S. Patent No. 10,536,714.
15. Nokia has proven the existence of articles protected by claims 7-9 and 25-27 of U.S. Patent No. 11,805,267, except that claims 7, 25, and 26 are invalid.
16. Nokia has proven the existence of an economic domestic industry as required by 19 U.S.C. § 1337(a)(2) for U.S. Patent Nos. 7,724,818, 8,050,321, 8,077,991, 10,536,714, and 11,805,267.
17. There is a violation of section 337 with respect to U.S. Patent No. 7,724,818.
18. There is a violation of section 337 with respect to U.S. Patent No. 8,050,321.
19. There is no violation of section 337 with respect to U.S. Patent No. 8,077,991.
20. There is a violation of section 337 with respect to U.S. Patent No. 10,536,714.
21. There is a violation of section 337 with respect to U.S. Patent No. 11,805,267.

INITIAL DETERMINATION AND ORDER

Based on the foregoing, it is my Initial Determination that there is a violation of Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain integrated circuits, components thereof, and products containing the same in connection with the asserted claims of U.S. Patent Nos. 7,724,818, 8,050,321, 10,536,714, and 11,805,267. There is no violation in connection with U.S. Patent No. 8,077,991.

It would be somewhat difficult for Nokia to convince the Commission that the outcome regarding the ‘991 patent should be different. Two of its claims were deemed valid by the ALJ, while three were held invalid. And apparently he did not consider any claims (neither the valid nor the invalid ones) from that patent to be standard-essential, which was fatal to the infringement theories as well as Nokia’s argument that the patent is practiced by a domestic industry, in this case, by Microsoft and Samsung products sold in the United States).

Finally, here’s an overview of the four patents on which Nokia prevailed at this stage along with the benefits that Nokia asserted in the complaint and during the course of the investigation (as of the relevant priority dates of the patents; apparently the ALJ agreed, which is why, unless and until the FID is reversed, we assume those claims to be well-founded):