Access Advance LLC today announced that the US District Court for the District of Massachusetts has dismissed a lawsuit filed by Roku Inc. seeking to compel the Court to set a global fair, reasonable and non-discriminatory (FRAND) royalty rate for the HEVC Advance Patent Pool. Judge Richard G. Stearns determined that his Court "lacks jurisdiction to determine" a global FRAND royalty rate, noting that the "US patents constitute only a fraction of a larger portfolio." The Court further concluded that its "opinion on the appropriate royalty rate would merely be advisory", which is prohibited under US law.
Court Reinforces Limits on Judicial Intervention
In December 2024, Roku sued Access Advance LLC, along with patent pool licensors Dolby Laboratories Inc. and Sun Patent Trust, in the District of Massachusetts seeking judicial determination of whether any of the numerous offers the Defendants made to Roku for three separate licenses to global patent portfolios including the HEVC Advance Patent Pool containing more than 27,500 patents owned by dozens of non-parties to the litigation and issued in 117 different countries and territories were FRAND, and if it was not, then to set a worldwide FRAND rate. Roku's Massachusetts complaint raised issues already pending for months in three cases involving the same licensors before the European Unified Patent Court ("UPC") in Germany. By seeking a second opinion from the Massachusetts Federal Court, Roku attempted to circumvent the UPC's determination of these same questions, forum shop to address the same or similar disputes in multiple venues, and obtain from the Massachusetts Federal Court an opinion on license terms.
In its order dismissing the lawsuit, Judge Stearns determined that the Court does not have jurisdiction to set a global FRAND rate as requested by Roku. The dismissal also effectively precludes any conflict between the Massachusetts lawsuit and the UPC actions well underway in Europe.
Strategic Implications for Industry
The dismissal signals to potential licensees that the rule of law matters, and litigation is not a tool to avoid good-faith licensing negotiations. It reinforces the notion that patents are territorial and that US courts cannot be used as a vehicle to unilaterally set global FRAND royalty rates for patents held by non-parties in lieu of negotiations.
"This is a significant ruling that confirms what we've long understood about the complexities of global patent licensing," said John Kinton, Chief Legal Officer at Access Advance. "We appreciate the court's careful consideration of the jurisdictional challenges involved when dealing with patent portfolios that span more than a hundred countries and involve dozens of patent owners who aren't parties to the litigation."
The Roku decision is consistent with the decisions to date in ongoing litigation in the United Kingdom, where Tesla is appealing the UK Appeals Court's affirmance of the UK Patents Court's denial of Tesla's attempt to obtain worldwide FRAND rates for the Avanci patent pool, which does not own any UK patents.
The decision adds to a growing body of cases in which national courts are reluctant to set worldwide FRAND rates absent agreement from the parties. This is expected to maintain stability in standards essential patent licensing and encourage good-faith participation in SEP pool licensing negotiations.
About Access Advance: Access Advance LLC is an independent licensing administrator company formed to lead the development, administration, and management of patent pools for licensing essential patents of the most important video codec technologies. Access Advance provides a transparent and efficient licensing mechanism for both patent owners and patent implementers.
Access Advance manages and administers the HEVC Advance Patent Pool for licensing over 27,500 patents essential to H.265/HEVC technology and the VVC Advance Patent Pool for licensing essential patents to VVC/H.266 technology. The company's Multi-Codec Bridging Agreement provides eligible licensees with a single discounted royalty rate structure for licensees participating in both the HEVC Advance and VVC Advance pools. In addition, Access Advance offers the VDP Pool, a comprehensive licensing solution for video streaming services covering HEVC, VVC, VP9, and AV1 codecs. For more information, please visit: www.accessadvance.com.
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Contacts:
Media:
Meredith Hollander
Director, Strategic Communications
Access Advance LLC
Email: press@accessadvance.com
Website: www.accessadvance.com
Licensing Inquiries:
Email: licensing@accessadvance.com
