Back in June, we alerted you to a number of infringement suits brought by licensors to the MPEG LA ATSC patent pool in the Southern District of Florida, targeting several television manufacturers — ViewSonic, Craig Electronics, and Curtis International. Yesterday, a different group of MPEG LA licensors filed suit on patents related to a different MPEG LA patent pool (relating the MPEG-2 video compression standard), but most of the defendants include those targeted in the earlier suits. This could raise speculation that MPEG LA (through its licensees) is becoming more apt to bring enforcement actions to “encourage” technology companies to become licensees to its various patent pools.
The plaintiffs in the new suits include Mitsubishi, Philips, General Electric, Thomson Licensing, Panasonic, and Sony, each of whom are licensors to the MPEG LA MPEG-2 Patent Pool. They have filed the following complaints:
- Mitsubishi et al. v. Craig Electronics
- Mitsubishi et al. v. Curtis International
- Mitsubishi et al. v. Motorola Mobility LLC
- Mitsubishi et al. v. ViewSonic
The plaintiffs allege that that the defendants’ MPEG-2 compliant products, such as television and set-top boxes, infringe several of their patents. The patents-in-suit include the following:
- U.S. Pat. No. 5,606,539: “Method and apparatus for encoding and decoding an audio and/or video signal, and a record.” (Assigned to Philips)
- U.S. Pat. No. 7,376,184: “High-efficiency encoder and video information recording/reproducing apparatus” (Assigned to Mitsubishi)
- U.S. Pat. No. 5,784,107: “Method and apparatus for picture coding and method and apparatus for picture decoding” (Assigned to Panasonic)
- U.S. Pat. No. 6,097,759: “Image signal coding system” (Assigned to Mitsubishi)
- U.S. Pat. No. 5,481,553: “Methods and apparatus for preventing rounding errors when transform coefficients representing a motion picture signal.” (Assigned to Sony)
- U.S. Pat. No. 5,459,789: “Packet TV program component detector” (Assigned to Thomson)
- U.S. Pat. No. 5,491,516: “Field elimination apparatus for a video compression/decompression system” (Assigned to GE)
The plaintiffs acknowledge that they have committed to license these patents on FRAND terms and are not seeking an injunction, but instead seek damages adequate to compensate for infringement — as well as treble damages for willfulness and attorneys’ fees and costs under Section 285. The complaints state that each of the defendants has been previously offered a license to the patents through MPEG LA (and that Motorola was in fact a prior licensee and licensor of the MPEG LA MPEG-2 pool), but that none of the defendants has accepted a the license offers.
One last interesting note to point out about these new cases — the MPEG LA licensor plaintiffs are represented by attorneys at Proskauer Rose, which is the same law firm that MPEG LA uses as patent counsel and to determine whether its licensors’ patents are essential.