Context: This fall, HP and TCL took HEVC (H.265) patent pool licenses from Access Advance (October 30, 2024 ip fray article), thereby settling several patent infringement cases. Those companies had previously taken licenses from MPEG LA, which got acquired by Via Licensing last year to form Via LA (May 2, 2023 Via LA press release).
What’s new: Today, Dusseldorf-based Cohausz & Florack announced that the patent firm, together with litigation firm Krieger Mes, filed “patent infringement suits against Microsoft based on HEVC SEPs [standard-essential patents]” toward the end of November (December 20, 2024 Cohausz & Florack press release). The context makes it clear that the patentees suing Microsoft are contributors to Via LA’s HEVC pool. It is not known yet in which court(s) the actions were filed, but Krieger Mes and Cohausz & Florack practice in German national court (where they always go to Dusseldorf when enforcing video codec SEPs) as well as, more recently, the Unified Patent Court (UPC).
Direct impact: It is unlikely that Microsoft is one of the implementers that fold as soon as they see that right holders are serious and actually sue. Via LA (or, previously, MPEG LA) licensors were very successful in other disputes, even with consumer electronics giant Samsung, but there is a possibility of Microsoft having made a strategic determination to fight over Via LA’s HEVC license terms. Microsoft is both a licensor (through its Microsoft Technology Licensing entity) and a licensee of Access Advance’s HEVC pool, which was joined by various former MPEG LA HEVC licensors such as Samsung. Microsoft continues to be a licensor and a licensee of Via LA’s AVC/H.264 pool (the predecessor standard to HEVC/H.265), as it has been for well over a decade.
Wider ramifications: While Microsoft, due to its sheer size and high degree of diversification, is a somewhat frequent defendant to patent lawsuits, this is the first major SEP enforcement effort against the company since Motorola Mobility’s SEP-based countersuits in the early 2010s, to which Microsoft responded with a (F)RAND action in the Western District of Washington that made history and, among other things, gave rise to the first-ever SEP-related antisuit injunction. Microsoft has for approximately 12 years espoused the position that injunctive relief based on SEPs should be available in only rare circumstances. Microsoft is a member of organizations such as the Fair Standards Alliance that advocate implementers’ interests.
At this stage, the names of the actual plaintiffs from the ranks of Via LA licensors are not known, much less have the patent numbers been disclosed. Even the venues are not clear, though it would be a surprise if the cases had not not been filed in the Landgericht Düsseldorf (Dusseldorf Regional Court) and/or the UPC. We will find out.
Whenever Krieger Mes and Cohausz & Florack represent Via LA (previously MPEG LA) licensors, the team leaders are Axel Verhauwen (attorney-at-law) and Gottfried Schuell (“Schüll” in German). They have won (in the sense of achieving favorable settlements) in numerous H.264 cases and have been asserting H.265 SEPs since 2022.
In Germany and the UPC. Microsoft is typically defended by Bardehle Pagenbeg’s Professor Dr. Tilman Mueller-Stoy (“Müller-Stoy” in German). Other Bardehle lawyers, most notably Dr. Volkmar Henke and Dr. Tilman Mueller (“Müller” in German), frequently represent Dolby and other Access Advance licensors. As a result, the firm is very familiar not only with the H.265 video codec standard but also knows the related licensing market inside out.
Via LA’s and Access Advance’s HEVC pools do not compete in the sense that a license to one would be a substitute for a license to the other. But either pool administrator obviously wants to have the most attractive offering possible. In that sense, they compete for licensors.
There can always be issues surrounding deductions for already-licensed portfolios. Microsoft is itself a major patent holder and routinely enters into cross-license agreements with other technology companies. It is likely that Microsoft is already licensed, on whatever basis, to parts of Via LA’s HEVC pool. Sometimes disputes between pools (whose licensors then bring the infringement lawsuits) and implementers have more to do with a disagreement on what adjustments are warranted than with a fundamental disagreement on the pool rate. During the course of this litigation, which has the potential to become a more protracted one than some other video codec cases in recent history, we may find out more.