Context: In late 2020, Philips sued Thales and several of its customers over the alleged infringement of standard-essential patents (SEPs) by its wireless communications modules used in various IoT products. During the course of the proceedings, Thales sold the relevant business unit to Telit (July 29, 2022 press release (in French)). The dispute also gave rise to a motion for an antisuit injunction that was denied, a denial that the Federal Circuit affirmed.
What’s new: A stipulated dismissal (with prejudice) of a case in the District of Delaware shows that the parties have settled the dispute. obviously through a license agreement. The Thales/Telit customers who were also being sued in the same district over the use of Thales/Telit modules still have to defend against infringement allegations relating to their use of Quectel modules.
Direct impact: This has taken longer than the average SEP dispute, but Philips has a rather successful licensing program. Earlier this month it turned out that a recent settlement with OPPO also involved the assignment of some 5G SEPs to Philips (August 8, 2024 ip fray article), but OPPO is in a stronger position to do such deals than Thales.
Wider ramifications: The dispute could have resulted in some interesting clarification on the availability of antisuit injunctions targeting ITC proceedings, but as no import ban issued, there was no showing of imminent irreparable harm that would have warranted the grant of a preliminary injunction. Other than that, the dispute was a run-of-the-mill patent enforcement campaign. The settlement comes at a time where some other patent disputes have also been resolved as ip fray reported (mostly on LinkedIn).
Here’s the stipulated dismissal, which the court subsequently rubberstamped:
For the avoidance of doubt, the filing clarifies that Thales/Telit customers who were being sued in one of the two Philips v. Thales cases in Delaware still need a solution with respect to their use of Quectel modules: “[T]he dismissal with prejudice in this case against CalAmp, Laird and Xirgo relates only to products that incorporate modules sold by Telit and Thales (including their affiliates and predecessors); thus, it does not cover CalAmp, Laird or Xirgo products that incorporate Quectel modules, which are accused of infringement in [another case].”
There have recently been some other settlements:
- Payment terminal maker Verifone took a SEP license from Nokia (August 14, 2024 ip fray article).
- Texas Instruments settled a Unified Patent Court (UPC) case brought by non-practicing entity Network System Technologies over former Philips patents, while Volkswagen and its Audi subsidiary continue to defend themselves (mid-August 2024 LinkedIn post by ip fray).
- Seoul Semiconductor has a strong track record enforcing LED patents and has recently settled a UPC dispute with Amazon (mid-August 2024 LinkedIn post by ip fray).