Context: Most standard-essential patent (SEP) license deals are struck without litigation. The latest example became known earlier today: Nokia’s agreement with Transsion (January 30, 2025 ip fray article). One of the exceptions if Nokia’s multimedia patent enforcement against Amazon. Last month, an Administrative Law Judge (ALJ) of the United States International Trade Commission (USITC, or just ITC) sided with Nokia over four of five patents-in-suit and recommended a U.S. import ban against Amazon streaming devices (December 21, 2024 ip fray article). The preliminary ruling, called final initial determination (FID), holds Amazon responsible for its unlicensed status (January 9, 2025 ip fray article).
What’s new: A different judge, ALJ Doris Johnson Hines, yesterday handed Nokia another preliminary ITC win over Amazon. In investigation no. 337-TA-1379, two patents are still in play, and Amazon was held to infringe U.S. Patent No. 7,532,808 (“Method for coding motion in a video sequence”). She also deems the patent valid (despite an investigation having been instituted by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO)) and recommends a limited exclusion order (i.e., U.S. import ban).
Direct impact: Amazon will presumably petition for review, and Nokia may do the same with respect to the second patent in the case. After a final ruling by the Commission (the political appointees at the top of the U.S. trade agency), there is a theoretical possibility of a Presidential veto, and parties can appeal ITC decisions to the United States Court of Appeals for the Federal Circuit. According to Google Patents, the ‘808 patent is set to expire on December 11 this year, so there is a limited window of opportunity for enforcement.
Wider ramifications: With all of the pressure on Amazon in the ITC and in Germany, the question is when there will finally be a settlement.
Amazon informed ALJ Hines of the institution of a PTAB inter partes review (IPR), but Nokia countered the notice by pointing out that Amazon’s PTAB petition relied on different prior art, different arguments and a different expert. Also, the evidentiary standard there is different.
In U.S. district court, an IPR institution can be fatal to an infringement action. Not so in the ITC.