This past Wednesday, the Blu-ray patent pool One-Blue, LLC and several of its licensors (Philips, Panasonic, Pioneer, and Sony) filed a patent infringement lawsuit in Delaware district court, accusing Imation Corp. of infringing several patents that are either essential or related to the Blu-ray Disc Assocation’s (BDA) Blu-ray standards.
The plaintiffs allege that Imation has made, used, sold, offered for sale, and imported products such as Blu-ray discs that display the official BDA logo — demonstrating that these products are compliant with the Blu-ray standards. The plaintiffs request damages to compensate for Imation’s alleged infringement, including treble damages for what the plaintiffs deem to be willful infringement, as well as costs, expenses, and attorneys’ fees. The complaint does not include a request for an injunction, however.
The complaint states that “Plaintiffs’ pioneering inventions became the foundation for the establishment and adoption of the Blu-ray Standard,” and that the patents-at-issue were incorporated into the Blu-ray Standard. The patents-in-suit are as follows:
- U.S. Patent No. 7,290,272, titled “Optical Data Recording Disc With Protrusion Between Clamping Area And Center Hole” and assigned to Panasonic
- U.S. Patent No. 7,389,520, titled “Optical Data Recording Disc With Protrusion Between Clamping Area And Center Hole” and assigned to Panasonic
- U.S. Patent No. 7,292,509, titled “Recording Disc And Apparatus And Method For Reproducing Recorded Information” and assigned to Pioneer
- U.S. Patent No. 7,123,567, titled “Recording Technique With Particular Bit-Distance Control In The Synchronization Pattern” and assigned to Sony
- U.S. Patent No. 7,349,309, titled “Disk Recording Medium Having ID Recorded Over A Circle Of A Burst Cutting Area” and assigned to Sony
- U.S. Patent No. 7,158,472, titled “Record Carrier And Apparatus For Scanning The Record Carrier” and assigned to Philips and Sony
The section of the complaint dealing with the One-Blue patent pool states that “[e]ach of the patents asserted by Plaintiffs in this action is contained in the Patent Pool and five of the six asserted patents have been deemed essential to the Blu-ray Standard by an independent patent evaluator. The sixth is a related patent.” But the complaint also states separately for each asserted patent that it “has been deemed essential to the Blu-ray Standard by an independent patent evaluator,” so it’s unclear which patent may only be “related” to the standard.
Oh, and if you’re wondering about FRAND obligations, that’s a good question. Clause 16 of the Blu-ray Disc Association Bylaws includes language that requires members to grant licenses to Blu-ray essential patents on RAND terms. The bylaws also provide that “the aggregate of terms and conditions of all licenses necessary under the Members’ Essential Patents shall not block, frustrate, or harm” acceptance of the Blu-ray standard as a commercially viable technology. The BDA website lists each of the owners of the patents-in-suit as a member of the BDA Board of Directors, and Imation as a “general member.” Presumably, the plaintiffs believe that the rates charged by the One-Blue pool — which vary between 7.25 cents and 16 cents per Blu-ray compatible disc — fall within the RAND framework. It will be interesting to see how their damages claims line up with the pool royalties, should this case ever get that far.
[UPDATE] As pointed out by an astute reader, Clause 16(5) of the BDA Bylaws also mandates that disputes over whether licenses to Blu-ray-essential patents are being offered on FRAND are to be decided “by a single neutral arbitrator appointed under the International Rules of the American Arbitration Association and will be conducted under the rules of that Association in New York City” — and there’s no mention of such an arbitration in the complaint. However, Clause 28 of the BDA Bylaws also provides that:
Notwithstanding the foregoing and the mandatory arbitration addressing licensing terms and conditions set forth in Clause 16(5) hereof, nothing in the Bylaws shall preclude any Member at any time from seeking an injunction, damages, or any other legal relief available under applicable laws against any other Member or Ex-Member or third party for intellectual property infringement.
So it may be that nothing prevents the plaintiffs from filing their infringement claims at this point — but if Imation raises FRAND defenses, it would not be surprising to see it seek to stay or dismiss the case pending resolution of the licensing dispute in a New York City arbitrator’s office. [/UPDATE]