China’s Supreme People's Court(SPC) recently made a second-instance judgment on six voice standard essential patents(SEP) related cases brought by Advanced Codec Technologies LLC (hereinafter referred to as "ACT") against OPPO, according to news released on January 15.
The SPC partially upheld the lower court’s decision and ordered OPPO to pay a licensing fee of 15,390,527 Yuan to ACT, an amount significantly lower than the 342 million Yuan claimed by ACT for infringement.
The SPC also sets the licensing fee for the six patents involved as $0.008 per unit, with an average licensing fee of around $0.0013 per unit for each patent, providing an important reference for the licensing and litigation practices of audio and video-related patents.
The dispute between the two sides dates back to November 2018, when US-based ACT filed six separate lawsuits against OPPO at the Nanjing Intermediate People's Court. ACT alleged that OPPO intentionally delayed the licensing negotiations for its six Chinese SEPs with numbers 99813601.8、00815854.1、99813602.6、99813640.9、01803954.5 and 99813641.7.
ACT sought a total compensation of 342 million Yuan and requested the Nanjing Court to order OPPO to cease manufacturing, selling, or promising to sell 44 accused infringing mobile products violating patents with numbers 00815854.1 and 01803954.5.
OPPO contested all claims, asserting that ACT violated the Fair, Reasonable, and Non-Discriminatory (FRAND) licensing negotiation obligations during the negotiation process with OPPO.
The Nanjing Intermediate People's Court delivered the first-instance judgment in November 2021, ordering OPPO to pay an undisclosed licensing fee to ACT.
Both OPPO and ACT appealed this decision to the SPC.
On December 22, 2023, the SPC ruled that OPPO must pay a licensing fee of 15,390,527 Yuan to ACT. Additionally, the court established the licensing fee for the six patents at $0.008 per unit, averaging around $0.0013 per unit for each patent.
Reports suggested that ACT had initiated separate lawsuits against Xiaomi and vivo in the Intermediate People's Court of Nanjing, and against TCL in the Shanghai Intellectual Property Court. In 2019, ACT settled with Xiaomi, receiving licensing fees ranging between $5 million and $9 million. ACT also has a history of litigation and settlements with various companies, including Apple, Motorola, Sony, Samsung, LG Electronics, ZTE, and Huawei.
Source:China Intellectual Property
