Lenovo seeks to render Nokia's H.264 patents unenforceable, claims it misled standards bodies

The American wing of Lenovo has sued Nokia in a California federal court in an attempt to stop the telecoms equipment biz from enforcing its 19 patents pertaining to video decoding. The suit, filed earlier this week, targets Nokia Technologies Oy, a subsidiary of the Finnish tech giant responsible for managing and licensing …

[Blackjack]

How long do these kind of patents last?

I have noticed that video game consoles still use FAT32 for example.

[Charlie Clark]

Re: How long do these kind of patents last?

25 years after registration in general so not relevant here. Things get more complicated with standards like H264 which are normally covered by a patent pool to prevent precisely this kind of case: manufacturers pay a single fee and are imdemnified. However, I don't know the details of this particular case but it is causing additional problems in the notebook channel.

[Anonymous Coward]

Re: How long do these kind of patents last?

Patents last 20 years in the USA.

[Sgt_Oddball]

Considering...

Nokia don't have a hat in the laptop game it's rather strange for them to bring this. It's not like Lenovo are the only player.

Some smaller ones first, win a few settlements and get a war kitty + presidence would seem a more prudent way.

Unless...Nokias just become a patient troll in which case they can suck it.

All we know is the only winners will be the lawyers.

[Blackjack]

Re: Considering...

Is a Video standard, that can and gets used for EVERYTHING that uses videos.

[Sgt_Oddball]

Re: Considering...

So why is Nokia going for just the one company? Why not Google, Microsoft, Apple?

[zuckzuckgo]

Re: Considering...

Nokia may be testing the waters before expanding its claim to other players or it already has a deal with these companies. Companies with significant intellectual property patents often have blanket agreements covering their portfolios.

[Anonymous Coward]

Patents and Standards

Based solely on the article, Lenovo's case seems solid.

But I wonder how many other standards which have been proposed by other companies (like Google) have followed these rules?

[Anonymous Coward]

Re: Patents and Standards

Didn't Rambus do something similar with RDRAM? I would say it was a successful strategy at the time, but neither RDRAM or Rambus are much of a thing any more.

[martinusher]

Re: Patents and Standards

RAMBUS was the poster child for this sort of thing. Back in the good old days everyone played nice when forming standards, it was just unthinkable that someone would play the patent troll as their business model. Rambus threw everyone because that's exactly what they did -- they wormed their patent into a standard and then didn't just wait for the standard to be ratified before announcing their interest but waited until manufacturers were actually shipping product. The resulting firestorm caused a number of changes including the now mandatory disclosure of patent interest as a condition for even participating in a standards group. Nokia's actions** definitely sound like they're now playing the patent troll -- if the inclusion was an oversight then there would have been plenty of opportunities to correct the oversight and work with companies who were unwittingly using their patents. Instead we've got the standard troll behavior -- try to shut down the sales of a product until they get what they want.

This is not a good business decision (IMHO) and I'd guess that it almost certainly didn't come from engineering. Any company that acts like a troll will find themselves osctracized, unable to contribute because nobody wants to deal with them.

(**Disclaimer -- I'm not a lawyer, I don't know the case details and so on.....)

[Anonymous Coward]

Re: Patents and Standards

I don't think that it is necessary for patents to be disclosed to a particular forum. If a patent is valid and applicable, then Lenovo needs to license it.

At best this is a "we didn't know about it" argument... Nokia just needs to say "it was on the USPO website, along with all the other patents".

[Rich 2]

Wrong way round?

I'm not defending Nokia in this, but to me, this seems like the problem is not with the patents, but with the standardisation.

The patents are valid (whether you like it or not). What should be invalidated is the ITU/ISO standardisation, because it is THAT that was incorrectly obtained/certified/whatever.

In practical terms, withdrawing such standardisation would be pointless (it's not going to stop anyone using it) and unrealistically disruptive. Nonetheless, as far as I can tell, it is that which is the problem; not the patents

[Ken Hagan]

Re: Wrong way round?

The article suggests that the ITU's rules basically mean that Nokia *gave up* their patent rights when, *as members*, they kept schtumm whilst the IP was being incorporated into the standard. IOW, the rules of membership trump the normal IP rights.

If Nokia don't like that, membership of the ITU is optional and they were free to withdraw from either the ITU or the standards effort, and they were free to mention their IP in this area and keep it out of the standard if they wanted to continue to assert their patent rights. They chose not to do any of these.

[DavCrav]

Re: Wrong way round?

I've tried reading the ITU's guidance on this here. Obviously it's as clear as mud, but it seems that you would have to be a member of the subgroup that evolved the standard to be forced to submit SEPs at the time.

H.264 was developed by Study Group 16 (according to Wikipedia), in particular the MPEG and VCEG committees. I cannot seem to find anywhere a list of the members of these working groups, so I cannot confirm if Nokia was one of them.

[Rich 2]

Re: Wrong way round?

" the rules of membership trump the normal IP rights"

I don't think this is correct. IP rights have a legal basis. Membership of the ITU is just that; membership. You might break their rules and they might chuck you out or fine you or whatever as a result. But it's just a club; it has no legal right to trump anything

[Ken Hagan]

Re: Wrong way round?

But in applying for membership you are agreeing to their rules, so you are giving up your IP rights where they overlap with a standard. Having done that, you can't take them back later any more than a shop can do you for shoplifting after you've paid for the goods.

[Anonymous Coward]

Re: Wrong way round?

If a company being on a standards forum meant that they couldn't exercise the patent, they'd just create a shell company "Nokia2" to hold the patents.

I don't think that Nokia (or anyone else) gave up any rights in joining the ITU.

[Yes Me]

Re: Wrong way round?

It's not the wrong way round. If patents are not disclosed during the open standardisation process, the result is highly unfair on companies that choose to implement the open standard in ignorance of the patents. Most standards development organisations (including the ITU) have strict disclosure requirements to avoid this unfairness. If Nokia is proved to have ignored those requirements, they will lose the case, painfully.

[Anonymous Coward]

Re: Wrong way round?

Life's not fair.

[gnasher729]

I once had the fun job to get a prototype for an h.264 decoder working. I must say that the decoding process is obvious for anyone able to read a spec and to write code. There may be the possibility of clever shortcuts that could be patent worthy, but a straightforward decoder isn't. The cleverness is all in the data structures, with a bit of cleverness in the encoder, but decoding is absolutely straightforward.

[Yes Me]

straight forward?

Your definition of straightforward and a patent examiner's definition of "obvious to one skilled in the art" might be different. Remember that patents in this case would have been approved *before* the standard was agreed and published. What seemed straightforward when you read the standard might not have been considered obvious several years previously when the patent application was evaluated.

[Michael Wojcik]

Re: straight forward?

In the US, at least, it's not just "someone skilled in the art", but someone of ordinary skill in the art. (I recently attended a presentation by a lawyer specializing in the IT patent process who discussed this point.) In other words, the intent of the "obvious" provision in US patent law is that an invention shouldn't be eligible if a hypothetical most-common-practitioner would find it obvious.

There are a lot of programmers, and sometimes what's obvious to you or me is not obvious to many of them. I think there's ample evidence for that in, well, pretty much any large-enough sample of software.

The obviousness test and other restrictions still seem to reject a fair number of applications, considering that USPTO only grants around half of the applications every year. (Yes, that's arguably still too high, but it's a far cry from the usual accusations in these parts of rubber-stamping everything that comes before them.) But it's not a high bar.

[Anonymous Coward]

h264 is 18 years old now

Any patents will be expiring over the next couple of years anyway... The trolls are starting to panic!