A former US Patent and Trademark Office official last week warned that a reluctance by US courts to declare global fair, reasonable and nondiscriminatory (FRAND) license terms is putting US innovators at a disadvantage. Roku yesterday presented the US Court of Appeals for the Federal Circuit with an opportunity to buck that trend.
A request for a declaration of global fair, reasonable and nondiscriminatory (FRAND) terms for a license to High Efficiency Video Coding standard essential patents (SEPs) was wrongly rejected as “merely advisory” where US patents comprise only a portion of the Access Advance HEVC patent pool, Roku told the US Court of Appeals for the Federal Circuit on Monday.In a redacted opening brief, the streaming device maker argues that — contrary to the conclusion reached this summer by US District Judge Richard Stearns of the District of Massachusetts — an actual controversy between it, Access Advance and SEP owners Dolby Laboratories and Sun Patent Trust (SPT) does exist.
That is so, Roku maintains, “because Dolby and SPT’s FRAND commitments are binding contractual promises to license worldwide on FRAND terms, and because Roku requested and committed to accept a court-determined global rate.”
“A rate setting determination is merely advisory when there is no concrete controversy, such as when a licensor initiates a rate setting request and the implementer has not agreed to bound to the court’s determination.”
That, however, is “not at all the case here,” Roku says.
— Scheme alleged —
At issue are what Roku deems two “conclusory and cursory text-only orders” issued back-to-back by Stearns this summer (see here).
In one, he turned away on jurisdiction grounds Roku’s request for a declaratory judgment of noninfringement of Dolby and SPT’s US Patent Nos. 9,445,105, 9,014,494, 9,277,240 and 9,001,888; in the other, Stearns dismissed Roku’s state law request that the court determine the cost of a FRAND license to the HEVC SEP pool.
Access Advance is headquartered in Massachusetts.
On appeal, Roku counters that its patent-related cause of action arises directly from or relates to a “Massachusetts-centric scheme to pressure Roku into accepting a pool license proffered by Access Advance that does not comply with Dolby and SPT’s FRAND licensing commitments.”
Roku pins its case for the exercise of specific personal jurisdiction over the SEP owners on Dolby and SPT’s payment of fees to Access Advance in Massachusetts, their participation in Access Advance’s Administrative Committee and Dolby’s role as an Access Advance co-founder.
According to the appellant, Stearns went astray when he applied the wrong standard to the appellees’ motion to dismiss.
Under the correct “but-for” standard, Roku asserts, were it not for “Dolby’s and SPT’s decision to channel licensing, rate setting, and enforcement through Access Advance’s Massachusetts run enterprise — and to use that enterprise to target Roku, coordinate enforcement incentives, and approve litigation — Roku would not face the coordinated campaign to pressure it into taking a supra FRAND pool license on Access Advance’s terms, nor the related foreign infringement suits designed to coerce that outcome.”
— Resolvable controversy —
Regarding global FRAND, Roku says Stearns’ actions were ultra vires given his finding, one day earlier, that jurisdiction over the federal, patent-related declaratory judgment claim was lacking.
“Thus, the district court’s statement in its minute order that any decision it would render regarding setting FRAND rates would be ‘merely advisory’ has no legal effect, [and] should be vacated,” Roku adds.
However, should the Federal Circuit judges disagree and find Stearns had the authority to address its state law claim, Roku urged them to declare Stearns’ holding “substantively incorrect.”
Pursuant to Cont’l Auto. Sys., Inc. v. Avanci, an antitrust case decided by the US Court of Appeals for the Fifth Circuit in 2022, along with district court holdings in TCL Communications v. Ericsson and InterDigital v. Walt Disney, Roku maintains global FRAND rate setting is authorized when “doing so would squarely resolve an actual controversy between the parties to the litigation.”
— Competitive disadvantage —
Recognizing that authority is not the same as exercising it, however.
On that score, Clear IP’s Joe Matal last week* warned that US courts are not keeping pace with their judicial counterparts in Germany, the UK and China.
“US courts should start global rate setting. It just makes sense. It’s much more efficient. And if US courts don’t start doing this, we will eventually cede control over rate setting to foreign jurisdictions,” he said.
“The problem,” according to the former US Patent and Trademark Office acting director, “is that there’s really no mechanism right now for doing this in an organized way [because] there is no federal cause of action for rate setting.”
That can and should change, Matal continued, when the intellectual property around which a global FRAND rate request revolves is both issued and regulated at the federal level.
For innovators in the US — who in many cases are responsible for the technologies in dispute — the stakes are high: “if one of these foreign courts is setting a global rate,” Matal said, “the value of that IP is being determined by someone outside of the United States.”
Concurring, Tara Hairston, Senior Director of Technology Policy for the Alliance for Automotive Innovation, lamented the unwillingness of US courts to “engage in this space.”
Their silence, she said, “leaves US-based businesses or companies doing business and selling and manufacturing in the US . . . to the whims of these other jurisdictions, some of which . . . are incentivized to grant automatic injunctions.”
That, in turn, can be “really problematic in terms of your ability to have freedom to operate,” Hairston added.
— Coercion —
Although the accused streaming devices have not yet been enjoined in foreign infringement litigation by Dolby and SPT, that could soon change. The SEP owners requested as much at the Unified Patent Court, and again in a Dolby complaint filed last week in Brazil that takes aim at Roku's operating system and streaming services.
Roku says that largely comes at the behest of Access Advance, as the pool “seeks to leverage injunctive relief in Europe to coerce” a supra-FRAND license even when a “majority” of Roku’s sales are domestic.
“Dolby and SPT indisputably had a binding contractual obligation, made in promises to standard-setting organizations, to Roku to offer licenses on FRAND terms. Access Advance proactively made similar representations to implementers that its HEVC pool rates would comply with its licensors’ individual FRAND obligations,” Roku notes.
“In its complaint, Roku invoked those obligations, sought a determination of FRAND terms by the court, and agreed to be bound to them — creating an actual controversy resolvable through a declaratory judgment from the court,” it added.
*America First: Aligning SEP Policy with the Trump Administration’s Agenda, Competition Review and Lexology, Oct. 15, 2025
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