December 28, 2018
MPEG LA announced today that patent holders in MPEG LA’s AVC/H.264 Patent Portfolio License have enforced verdicts of injunction in German District court (“Landgericht Dusseldorf”) cases finding that Huawei Deutschland GmbH (“Huawei”) and ZTE Deutschland GmbH ("ZTE") infringed patents by their use in mobile phones that implement the AVC/H.264 (MPEG-4 Part 10) Standard. See http://www.mpegla.com/Lists/MPEG%20LA%20Legal%20Action%20List/Attachments/61/FINAL%20Huawei%20ZTE%20Infringement%20PrsRls%202018-11-16.pdf.
Against Huawei the case 4a O 17/17 (EP 1 773 067/Appeal case no. I-15 U 73/18) has been enforced.
Against ZTE the case 4b O 5/17 (EP 1 750 451/Appeal case no. I-2 U 76/18) has been enforced.
In both cases the Court of Appeals (“Oberlandesgericht Dusseldorf”) has dismissed Huawei’s and ZTE’s requests for an immediate stay of the enforcement while the cases are under appeal.
As a result, Huawei and ZTE must cease and desist from offering in Germany AVC/H.264 compliant devices such as smartphones and tablets that use the enforced patents. In addition, all such products in their possession or the possession of third parties must be recalled and destroyed.
“Although the failure to be licensed has made these enforcements necessary, taking a license under the AVC patents would easily remedy it, and we continue to welcome Huawei and ZTE to do so,” said Larry Horn, President and CEO of MPEG LA.
Validity cases related to the patents in suit are pending before the Federal Patent Court in Munich, Germany (“Bundespatentgericht”).
A team led by Axel Verhauwen of Krieger Mes & Graf v. der Groeben and Gottfried Schüll of Cohausz & Florackrepresented the plaintiffs.
MPEG LA, LLC
MPEG LA is the world’s leading provider of one-stop licenses for standards and other technology platforms. Starting in the 1990s, it pioneered the modern-day patent pool helping to produce the most widely used standards in consumer electronics history. MPEG LA has operated licensing programs for a variety of technologies consisting of nearly 20,000 patents in 90 countries with more than 250 patent holders and more than 6,000 licensees. Approximately 2,000 licensees enjoy the worldwide one-stop coverage of MPEG LA’s AVC Patent Portfolio License under essential patents owned by 38 patent holders. By assisting users with implementation of their technology choices, MPEG LA offers licensing solutions that provide access to fundamental intellectual property, freedom to operate, reduced litigation risk and predictability in the business planning process. For more information, go to www.mpegla.com.