Over the last four years the licensing dispute between Conversant subsidiary Core Wireless and LG has had all the familiar traits of a modern day infringement spat as the battle has dragged on in two separate district court cases.
Late last week, in another sign that things have turned well and truly in Conversant’s favour, the Court of Appeals for the Federal Circuit delivered its verdict on an appeal from LG, agreeing with the district court in East Texas that patents in the Core Wireless portfolio were not invalid and had been infringed by the Korean tech giant.
In reaching their decision on validity, the CAFC judges used the two step process outlined in the Supreme Court’s Mayo and Alice decisions, and ruled at the first step that the claims were not abstract and therefore not directed to ineligible subject matter under section 101 of the US patent statute.
The decision from the Federal Circuit is the latest ruling to go Conversant’s way in the dispute. In 2016, in a separate case involving two different Core Wireless patents, Conversant was awarded $2.28 million in damages by a jury in East Texas which was then boosted by an additional award of $456,000 in enhanced damages. Also in 2016 the NPE notched up a big win against Apple (having previously lost a 2015 case to the tech giant) including damages of $7.3 million after a jury ruled that the iPhone maker had infringed a pair of Core Wireless patents.
Conversant acquired the Core Wireless portfolio of around 2,000 assets from Nokia in 2011. It entered into negotiations with LG soon afterwards, but started litigation in 2014 after the Korean company declined to take a licence. Conversant initially struggled to gain traction in licensing its Core Wireless portfolio — which last summer was renamed Conversant Wireless — although its victories against LG and Apple might be helping to change that. Early last year, for instance, the company announced a licence agreement with an (unnamed) global consumer electronics manufacturer.
That said, it’s notable that last July Conversant filed its latest infringement suit against Huawei and ZTE in London, rather than in the US. That came after Boris Teksler took over from John Lindgren as the firm's CEO in late 2016. In his previous role as CEO of Unwired Planet, Teksler had helped shift that NPE’s litigation focus away from US courts, filing a suit in London’s High Court against Huawei which last year led to a landmark SEP FRAND licensing decision.
It may be too early to predict that decisions such as last week’s will encourage those patent owners that have looked to overseas courts to reconsider the US. However, it certainly suggests that for some patent owners, invalidity threats under section 101 don’t hold the fear they once did.