HP told a Texas federal court yesterday that an infringement action over patents declared essential to the Wi-Fi 6 standard is barred by estoppel, in view of a failure by Wilus Institute of Technology to comply with its obligation to offer licenses on fair, reasonable and nondiscriminatory terms. But HP didn’t stop there: the California-based PC maker adds patent pool Sisvel as a Wilus co-defendant on HP’s breach of contract counterclaims and asks US District Judge Rodney Gilstrap, to whom the case is assigned, to declare Frand terms for a global license to the Wilus patent portfolio.
HP is going on offense in patent infringement litigation by Wilus Institute of Technology.In an answer and counterclaim filed yesterday (see here), HP says the patents it stands accused of infringing — each of which relate to the medium access control layer, or MAC, of Wi-Fi 6 wireless local area networks — are rendered unenforceable by Wilus’s failure to live up to its promise to the Institute of Electrical and Electronics Engineers Standards Association (IEEE-SA) to engage in good faith efforts to license its technology on fair, reasonable and nondiscriminatory, or Frand, terms.
HP additionally maintains that it does not infringe Wilus’s US Patent Nos. 10,911,186, 11,716,171, 11,664,926, and 12,004,262 or, alternatively, that the patents are invalid.
Each are declared essential by Wilus to the IEEE Wi-Fi 6 standard and administered by the patent pool Sisvel, whom HP now seeks to add as a co-defendant in the case.
Wilus asserted in its complaint (see here) that HP was informed in 2022, via Sisvel, that the products would infringe the patents, some of which were not yet approved.
According to HP, however, over nine months of talks while it “attempted to understand Sisvel’s licensing model, including how the rates were determined, what patents were covered, and what the implications may be if HP were to receive a license directly from one of the pool members,” it never heard directly from Wilus. Instead, HP contends, “for unknown reasons and without warning,” it was sued by Wilus last month for infringement.
HP’s filing yesterday levels counterclaims of breach of contract and breach of the duty of good faith against both Wilus and Sisvel, accusing the two of acting in concert to pursue the case and asserting that Sisvel is bound by the same IEEE commitments as the patent owner.
“The IEEE-SA Standards Board Bylaws prohibit a Submitter from, ‘with the intent of circumventing or negating any of the representations and commitments made in the Accepted Letter of Assurance, assign[ing] or otherwise transfer[ring] any rights in any Essential Patent Claims that they hold, control, or have the ability to license and for which licensing assurance was provided on the Accepted Letter of Assurance,’” HP says.
Moreover, HP continues, “an Accepted Letter of Assurance is intended to be binding upon any and all assignees and transferees of any Essential Patent Claim covered by such LOA.” The counterclaim argues “Wilus’s LOAs (Letters of Assurances) were intended to be binding upon Sisvel.”
HP asked US District Judge Rodney Gilstrap of the Eastern District of Texas, to whom the case is assigned, in a declaratory judgment counterclaim to issue a Frand determination.
In support, HP says it “relied on Wilus’s Frand licensing promises when it incorporated compliance with wireless local area network connectivity into its products,” and that Sisvel’s pre-suit proposal appears supra-Frand and untethered “to the specific patents actually practiced by HP.”
“Sisvel has based its licensing offers on end-user device prices. With this take-it-or-leave-it end-product pricing policy, Sisvel forces end-product manufacturers like HP to pay higher royalties than component manufacturers would pay to implement the same patents for the same functionality,” the counterclaim argues.
“HP is entitled to a declaratory judgment as follows: (1) a determination that Wilus has not offered a license to the Alleged Wi-Fi 6 SEPs on Frand terms and conditions; and (2) a determination of what constitutes Frand terms and conditions for a license to the Alleged WiFi 6 SEPs, with those terms and conditions being ordered and imposed on the parties,” HP adds.
The same day Wilus sued HP, it also leveled patent infringement allegations against Samsung Electronics in a case also assigned to Gilstrap.
Last week, Samsung won an extension of its deadline to answer the complaint from US Magistrate Judge Roy Payne. That filing is now due in May.
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