Context: Apart from Tesla’s UK FRAND action against Avanci and InterDigital, which was dismissed this month (July 18, 2024 ip fray article), there has been no 5G standard-essential patent (SEP) litigation in the automotive industry. So far, it appears that every Western automaker who made 5G cars has taken the Avanci 5G license.
What’s new: Earlier this month, Chinese media noticed that dozens of 5G SEPs were assigned by Chinese smartphone maker OPPO to Japan’s Toyota (Intellectual Property Finance link (Chinese)). OPPO demonstrated in its recent dispute with Nokia that it owns valid and essential 5G patents, and it apparently has so many of them that it is in a position to divest some of them to strategic buyers.
Direct impact: Toyota will not have spent money on those patents only to stick them to a wall. At this point, Toyota is not listed as an Avanci 5G licensee, which may have to do with delays of the car maker’s 5G roll-out. Avanci does not facilitate cross-licensing per se, but companies can join as licensors and licensees at the same time (as the Avanci Broadcast licensing program already shows). Should Toyota decline to take an Avanci licensee, then it will have to work out bilateral license agreements with 5G SEP holders or face infringement actions in which it can try to countersue over the patents it just acquired from OPPO.
Wider ramifications: The deal validates the strength and value of OPPO’s portfolio. Other transactions of this kind may follow. It also reflects the importance of 5G beyond the smartphone industry.
One of the patents OPPO assigned to Toyota is U.S. Patent No. 11,575,543. In 2021 it was assigned by the inventors to their employer, OPPO, and as of March 29, 2024, by OPPO to Toyota:
The assignments are not necessarily limited to U.S. patents. They may involve entire patent families, but assignments are most transparent in the U.S. which is why the transaction was discovered on the USPTO’s website first.
It will now be interesting to see how Toyota, with its annual volume of approximately 10 million cars, plans to leverage those patents.