Context: In May 2023, Malikie Innovations acquired a majority of BlackBerry’s non-core patents and patent applications (roughly 32,000) related to mobile devices, messaging, and wireless networking for $200 million. Malikie is a subsidiary of Irish non-practicing entity Key Patent Innovations. Between February and September 2024, the company sent four letters to Olga Damiron, Corporate General Counsel at Vantiva SA (formerly Technicolor), a French company that provides technology products and services for the communication, media and entertainment industries. It warned that it had recently acquired several BlackBerry patents essential to the Institute of Electrical and Electronics Engineers’ (IEEE) 802.11 wireless standards and that Vantiva was infringing those standard-essential patents (SEPs). Its final letter urged the company to pay $0.16 per device for the 802.11 wireless SEPs and $0.08 per device for the WiFi alliance SEPs. Malikie then sued Vantiva for patent infringement in the Eastern District of Texas in February 2025.
What’s new: Vantiva has filed a complaint for declaratory judgment against Malikie in the Northern District of Georgia, alleging that the Irish firm has breached its obligations by failing to offer a license to its 802.11 wireless technology SEPs on FRAND terms and by seeking a permanent injunction for two of those patents. Its license offer “far exceeded commercially reasonable, market rates for such a license”, it claimed. Malikie also violated the implied covenant of good faith and fair dealing that adheres to every contract by seeking to exclude Vantiva from importing or selling products that implement 802.11 wireless technology, the complainant has alleged. And, it added, Malikie’s suit targets Vantiva SA, which is a French holding company that does not make, sell, offer to sell, or import products into the U.S. – it is Vantiva USA’s indirect parent company.
Direct impact and wider ramifications: Malikie is a relatively litigious entity, having filed patent infringement lawsuits against Nintendo in the U.S. and the Unified Patent Court (October 22, 2024 ip fray article), as well as ADT Inc, Toast Inc, Match Group, Inc., Mara, and Marathon Digital Holdings & Core Scientific, Inc. in the past year alone. Aside from a re-examination action filed by Unified Patents against Malikie’s Wi-Fi patents (June 16, 2025 Unified Patents press release), this action filed by Vantiva is the first time the company is publicly experiencing pushback against its widespread enforcement campaign.
This is Vantiva’s complaint:
The patents-in-suit include:
- U.S. Patent No. 8,099,646 (“Low density parity check (LDPC) code”)
- U.S. Patent No. 8,291,289 (“Low density parity check (LDPC) code”)
- U.S. Patent No. 9,313,065 (“Scattered pilot pattern and channel estimation method for MIMO-OFDM systems”)
- U.S. Patent No. 7,529,305 (“Combination of space-time coding and spatial multiplexing, and the use of orthogonal transformation in space-time coding”)
BlackBerry was a participant in the development of 802.11 standards at the IEEE and submitted several letters of assurance stating that it was willing to grant licenses to patents, including SEP claims, on FRAND terms, Vantiva said in its complaint.
BlackBerry previously contacted U.S.-based CommScope about alleged patent infringement, including both the SEPs asserted in Malikie’s suit against Vantiva, but the companies settled peacefully with a cross-license in 2021. Those SEPs have been licensed at a “significantly lower rate” than those offered by Malikie, which are “in excess of market rates for licenses and in excess of what an implementer would expect to pay for similar patents”, Vantiva alleged.
Further, it added, Malikie is contractually obligated to grant licenses to all of its patents essential to the 802.11 standards consistent with the patent policies of the IEEE – on FRAND terms – because of BlackBerry’s previous contractual commitment with the IEEE.
Vantiva is seeking a declaratory judgment for the following:
- Vantiva is entitled to license any and all patents that fall within Malikie’s commitments to the IEEE in relation to 802.11-related technology on a FRAND basis;
- Vantiva has not infringed the asserted patents; and
- The asserted patents are invalid.
Counsel
Vantiva is being represented by Bloom Parham’s Troy R. Covington and Goodwin Procter’s Brett M. Schuman, Rachel Walsh, and Lana S. Shiferman.
Malikie is being represented by Reichman Jorgensen Lehman & Feldberg’s Matt Berkowitz, Patrick R. Colsher, and Naveed S. Hasan.