Lenovo seeks to render Nokia's H.264 patents unenforceable, claims it misled standards bodies

IP arm of Finnish firm should have spoken up sooner... or so the lawsuit claims

The American wing of Lenovo has sued Nokia in a California federal court in an attempt to stop the telecoms equipment biz from enforcing its 19 patents pertaining to video decoding.

The suit, filed earlier this week, targets Nokia Technologies Oy, a subsidiary of the Finnish tech giant responsible for managing and licensing its patents and intellectual property rights. Among the thousands of patents it holds are several to do with the H.264 video compression standard (which is the most widely used).

Lenovo asserts [PDF] that Nokia failed to disclose its ownership of these patents to the International Telecommunications Union (ITU) and International Organisation for Standards (ISO) before the H.264 standard was frozen in 2013.

The China-based laptop maker claimed in the suit that Nokia had violated ITU’s patent policy by failing to disclose its interests. The policy contractually obligates any members drawing up technical standards to disclose any intellectual property holdings that could present a conflict of interest. As a consequence of this, claimed Lenovo, those building the technical standards were unable to take into account those patent rights while forming the spec.

“If Nokia Corporation had timely disclosed its rights in the Nokia Patents, as it was contractually required to do, the JVT/ITU could have, for example, adopted one or more alternative technologies or declined to include the relevant functionality in the final standard. By failing to disclose its rights in the Nokia Patents before the H.264 standard was frozen, Nokia deprived members of the ability to consider those options,” the complaint said.

“Because this late disclosure breached the contract that existed between Nokia Corporation and the H.264 standards-setting organization (Lenovo United States is a third-party beneficiary of that contract and has suffered harm as a result of the breach) and also violated California unfair competition law, each of the Nokia Patents is unenforceable against the H.264 standard,” Lenovo’s complaint argued.

In addition to trying to make Nokia’s relevant patents unenforceable, Lenovo is also seeking damages — although it has not specified a dollar figure.

This is the latest H.264-related spat between Nokia and Lenovo in recent years. In 2019, Nokia filed suit in North Carolina federal court claiming Lenovo had infringed 11 of its patents related to video decoding, and sought injunctive relief that would block imports of Lenovo’s IdeaPad, ThinkPad, and Flex laptops. That suit was stayed pending an investigation by the US International Trade Commission, which is ongoing.

Nokia has had some early wins. In October, a lower court in Germany ruled Lenovo had violated six of Nokia’s patents relating to H.264 decoding. It ordered an injunction against Lenovo prohibiting the importation of certain products, which Nokia subsequently enforced. This injunction has since been stayed pending an appeal. ®