Yesterday, the Rockstar Consortium (and its subsidiaries MobileStar Technologies LLC and NetStar Technologies LLC) sued Google and several Andriod device manufactures (Asustek, HTC, Huawei, LG, Pantech, Samsung and ZTE) in E.D. Tex. on several patents that Rockstar had acquired in July 2011 out of the Nortel bankruptcy.
You may recall that Rockstar is a consortium that, according to Rockstar’s corporate disclosures, currently includes Apple, Blackberry, Ericsson and Microsoft. The Rockstar consortium and Google had been in a bidding war to purchase Nortel’s patent portfolio out of bankruptcy, including reported memoriable bids by Google based on the distance to the sun and pi ($3.14159 billion). Rockstar ultimately paid $4.5 billion for the portfolio.
Along the way, concern was raised about what would happen with Nortel’s standard essential patents. For example, the IEEE filed with the bankruptcy court an objection to any sale of the Nortel patents “in a way that permits a successor patent-holder to disavow the patent commitments that IEEE, other standards setting organizations (SSOs), entire industries, and end-users have relied upon.” The bankruptcy court’s order approving the sale maintained to some extent the “promises, declarations and commitments granted, made or committed in writing … to standard-setting bodies and industry groups.”
The U.S. Department of Justice (DOJ) also investigated the acquisition of Nortel’s patents where DOJ, per its report, “focused on standard essential patents (SEPs) that … Nortel had committed to license to industry participants through their participation in standard-setting orginazations (SSOs).” DOJ reviewed whether the acquisition would have an anti-competitive impact in view of Rockstar’s stakeholders. DOJ ultimately approved the acquisition, stating that it “continues to monitor the use of SEPs in the wireless device industry, particularly in the smartphone and computer tablet markets,” and “will not hesitate to take appropriate enforcement action to stop any anticompetitive use of SEP rights.”
A focus of the patent bidding war and DOJ scrutiny appeared to be Nortel’s wireless LTE patents. But those patents do not appear to be at issue in Rockstar’s instant lawsuit, and many of Nortel’s LTE patents reportedly were transferred to Rockstar’s stakeholder Apple. Rather, the seven patents asserted against Google appear directed to search functionality, such as matching search terms with ads through Google’s AdWords. A different set of seven patents are asserted against the Andriod device manufacturers based on electronic packaging, graphical interfaces, mobile hotspot functionality, messaging, etc.
It may not be coincidence that Rockstar’s newly filed complaint is against Google and Andriod devices that compete with Rockstar stakeholders. But did Rockstar decide to avoid standard-essential patent issues in this skirmish? Rockstar’s complaints do not state whether any of the asserted patents are subject to a standard setting obligation. One of those patents is related to an IETF “informational” Request For Comment (RFC). Specifically, in October 2005, Nortel filed an IPR declaration with IETF stating that U.S. Pat. No. 6,128,298 entitled “Internet Protocol Filter” “may be related to at least a portion of RFC 3022” entitled “Traditional IP Network Address Translator (Traditional NAT)”. Nortel’s IPR declaration characterizes RFC 3022 as “an Information RFC and not an IETF standards-track document,” and RFC 3022 itself states that it “provides information for the Internet community” and “does not specify an Internet standard of any kind.”
We’ll keep a watch on whether and to what extent standard essential patent issues are raised here.