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`JOSEPH F. HAAG (SBN 248749)
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`2600 El Camino Real, Suite 400
`Palo Alto, CA 94306
`Telephone: (650) 858-6000
`Facsimile: (650) 858-6100
`Joseph.Haag@wilmerhale.com
`
`
`Attorneys for Plaintiff
`LENOVO (UNITED STATES) INC.
`
`
`WILLIAM F. LEE (pro hac vice forthcoming)
`RICHARD W. O’NEILL (pro hac vice pending)
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`Telephone: (617) 526-6000
`Facsimile: (617) 526-5000
`William.Lee@wilmerhale.com
`Richard.O’Neill@wilmerhale.com
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`
` LENOVO (UNITED STATES) INC.,
`Plaintiff,
`
`vs.
`NOKIA TECHNOLOGIES OY,
`Defendant.
`
`
`
`
`Case No.
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`COMPLAINT
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`JURY TRIAL DEMANDED
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`Plaintiff Lenovo (United States) Inc. (“Lenovo United States”), on personal knowledge as
`to its own acts, and on information and belief as to all other acts based on its own and its
`attorneys’ investigation, by and through its attorneys, alleges as follows:
`INTRODUCTION
`1.
`Defendant Nokia Technologies Oy (“Nokia Oy”) has asserted, and continues to
`assert, that Lenovo United States is required to take a license to patents that Nokia Oy claims to
`own and claims are essential to practice the H.264 video compression standard. However, with
`respect to each of the nineteen patents discussed below (“Nokia Patents”), the prior owner (Nokia
`Corporation) failed to comply with its contractual obligation to disclose any rights in the allegedly
`essential Nokia Patents to the relevant standards-setting organization before the H.264 standard
`was “frozen”—thus depriving members of the ability to take those alleged patent rights into
`account when the standard was still under development.
`2.
`Because this late disclosure breached the contract that existed between Nokia
`Corporation and the H.264 standards-setting organization (and 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. Moreover, because this repeated late disclosure was egregious, and because Nokia Oy
`and/or Nokia Corporation have leveraged the allegedly standard-essential nature of the late-
`disclosed Nokia Patents to obtain unjust benefits, the Nokia Patents are unenforceable against the
`H.264 standard under the doctrine of implied waiver.
`PARTIES
`3.
`Plaintiff Lenovo United States is a company organized under the laws of Delaware,
`with its principal place of business at 8001 Development Drive, Morrisville, North Carolina
`27560.
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`4.
`On information and belief, Defendant Nokia Oy is a Finnish corporation that is
`headquartered in and does business in Sunnyvale, California.1 Nokia Oy claims to own by
`assignment all right, title, and interest in and to the Nokia Patents.
`5.
`On information and belief, Defendant Nokia Oy is a wholly owned subsidiary of
`Nokia Corporation. Defendant Nokia Oy’s primary business is to monetize the patent rights
`obtained by the various Nokia entities, including Nokia Corporation.
`JURISDICTION AND VENUE
`6.
`Lenovo United States brings this action under 28 U.S.C. § 2201, federal patent law,
`California contract law, and the California Unfair Competition Law (“UCL”), Business and
`Professions Code §§ 17200 et seq.
`7.
`The Court has original jurisdiction over Lenovo United States’ claims pursuant to 28
`U.S.C. § 1332 because Lenovo United States is a citizen of Delaware and North Carolina, Nokia
`Oy is a citizen of Finland and California, and the value of the matter in controversy (including,
`among other things, Nokia Oy’s demand for Lenovo United States to take a license to its patents
`that allegedly cover the H.264 standard) exceeds $75,000.
`8.
`The Court also has subject matter jurisdiction under 28 U.S.C. § 2201 over Lenovo
`United States’ request that the Court declare the Nokia Patents unenforceable in relation to the
`H.264 standard under U.S. patent law.
`
`
`1 See Nokia Bell Labs, https://web.archive.org/web/20201024004255/https://www.bell-
`labs.com/connect/global-locations/sunnyvale-ca/ (as of October 24, 2020, last visited December 7,
`2020) (“Nokia opened the Sunnyvale site in December 2010. This location is home to Nokia Bell
`Labs, Nokia Technologies, Mobile and Fixed Networks.”) (emphases added); see also Internet
`Archive, Nokia Corporation Website, Nokia Technologies,
`https://web.archive.org/web/20170301164948/https://www.nokia.com/en_int/about-us/who-we-
`are/our-businesses/nokia-technologies (as of March 1, 2017; last visited December 7, 2020) (“our
`headquarters in Sunnyvale, CA”); Chris O’Brien, Nokia Technologies President on the Future of
`His ‘Startup’: ‘Anything Is Possible,’ Venturebeat, http://venturebeat.com/2016/08/22/nokia-
`technologies-president-on-the-future-of-his-startup-anything-is-possible/ (last visited December 7,
`2020) (describing Nokia Technologies as “[b]ased in Sunnyvale” and “based in Silicon Valley”);
`Dkt. 53 [Ans. to First Am. Compl.] ¶ 4, Nokia Techs. Oy v. Lenovo (United States) Inc. et al., No.
`5:19-cv-427-BO (E.D. N.C. June 29, 2020) (“Nokia [Technologies Oy] admits that it does
`business in Sunnyvale, California.”).
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`9.
`The Court also has supplemental jurisdiction under 28 U.S.C. § 1367 over Lenovo
`United States’ state law breach of contract and unfair competition claims because those claims
`form part of the same case or controversy as the federal law claims.
`10. The Court has personal jurisdiction over Nokia Oy on the basis of Nokia Oy’s
`continuous and systematic contacts with the state of California, including because Nokia Oy
`maintains a place of business in Sunnyvale, California, and conducts business there as well. See
`supra n.1.
`11. Venue in this district is proper under 28 U.S.C. § 1391(c)(2) because Nokia Oy is
`subject to the Court’s personal jurisdiction as explained above.
`INDUSTRY TECHNICAL STANDARDS
`12.
`Industry technical standards are sets of technical guidelines and protocols that
`enable a product produced by one manufacturer to interoperate with products produced by other
`manufacturers that support the same standard. Standards are developed and released by industry
`groups called standard setting organizations (or SSOs).
`13. During standardization, industry participants in the SSO propose ideas for inclusion
`in the standard. The SSO collectively considers proposals and then chooses which proposals to
`adopt into the standard, either as proposed or with modifications from other participants. The
`standard is then adopted (or “frozen”) and published for use by product suppliers.
`14. The promulgation of standards can help increase competition among suppliers and
`lead to improved products for consumers. Absent appropriate rules and adherence thereto,
`however, standards also can lead to anticompetitive abuses, particularly when participants in the
`standardization process have patent rights relating to technology being proposed for the standard.
`Before standardization, suppliers of various technologies compete with other suppliers that offer
`similar functionality, and the royalties a patent owner can demand for its technology is constrained
`by the value of the patented technology standing alone and the availability of alternative technical
`approaches to perform the functionality claimed in the patent. Post-standardization, however,
`former alternatives to perform the standardized functions are often no longer viable substitutes for
`those practicing the standard and thus no longer constrain royalties relating to standardized
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`technology. As a result, a patent holder may demand royalties attributable to inclusion of the
`patented technology in the standard rather than the actual value of the patented technology.
`15. The danger that a patent holder will gain an arbitrary and unfair advantage in
`demanding royalties is particularly high when an SSO standardization participant proposes ideas
`to be included in the standard that are identical or similar to the ideas the participant separately
`seeks to patent (or has already patented). Such a situation creates the risk that a participant will
`intentionally push the SSO to adopt—unknowingly—the participant’s patented technology, even
`though the SSO might have adopted a different technology or excluded the functionality from the
`standard if the SSO was timely made aware that the patent-holding participant claims to have
`patent rights covering the technology under consideration.
`16.
`In response to this substantial risk of exploitative behavior, most SSOs have adopted
`intellectual property rights (IPR) policies that seek to minimize the potential for this type of abuse.
`Among other things, these IPR policies typically require participants to timely disclose any
`alleged standard-essential patent rights (including rights in pending patent applications) that might
`cover the technology that the SSO is considering for standardization. By requiring members to
`declare any patent rights that, if adopted into the standard, might be essential to practice the
`standard, members can evaluate alternative technical proposals, decide not to include the proposed
`technology, and consider other potential implications of any patents that that might cover the
`various proposals—all before the standard is frozen and before industry participants become
`locked into implementing the standard in their products.
`17. SSOs adopt such disclosure policies to promote the widespread use of their
`standards by suppliers and consumers. Standards that are developed subject to a requirement of
`full, timely disclosure of potentially essential patent rights ensure that the resulting standard is not
`encumbered by patents that SSO members were unaware of during the standardization process.
`THE H.264 STANDARD
`18. This Complaint concerns nineteen patents that Nokia Oy and/or Nokia Corporation
`have claimed are essential to practice the H.264 video compression standard.
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`19. The H.264 standard was developed by the Joint Video Team (“JVT”), which is an
`SSO composed of (1) the Motion Picture Experts Group (MPEG), which is the video subgroup of
`the International Organization for Standardization/International Electrotechnical Commission
`(“ISO/IEC”), and (2) the Video Coding Experts Group (“VCEG”), which is a subgroup of the
`International Telecommunications Union (“ITU”). According to the ITU’s Term of Reference for
`Joint Video Team (JVT) Activities, the JVT operated as a “joint group under the ordinary policies
`and procedures of both organisations,” and committed to working in compliance with the IPR
`policies, reporting requirements, and procedures of the ITU and the ISO/IEC.2
`20. Early development of the H.264 standard was performed by the ITU’s VCEG, and
`the JVT was created in 2001 to finalize it. The first version of the H.264 standard was frozen and
`then published in May 2003. Subsequent editions were published in March 2005, November
`2007, and approximately annually thereafter.
`21. According to the ITU, H.264 “represents an evolution of the existing video coding
`standards” and “was developed in response to the growing need for higher compression of moving
`pictures for various applications such as videoconferencing, digital storage media, television
`broadcasting, Internet streaming, and communication.”3
`DISCLOSURE OBLIGATIONS UNDER THE ITU’S PATENT POLICY
`22. At all times relevant to these allegations, Nokia Corporation was a member of the
`ITU-T4 and actively participated in developing the H.264 standard, including by attending
`meetings and making technical proposals for certain aspects of the H.264 standard. As a result,
`Nokia Corporation was bound by the ITU’s Patent Policy (now known as the Common Patent
`
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`2 ITU, “Terms of Reference for the Joint Video Team (JVT) Activities,”
`https://www.itu.int/dms_pub/itu-t/oth/34/01/T34010000010001PDFE.pdf (last visited December
`7, 2020).]
`3 ITU-T, “Summary,” http://www.itu.int/dms_pubrec/itu-t/rec/h/T-REC-H.264-200901-
`S!Cor1!SUM-HTM-E.htm (last visited December 7, 2020).]
`4 The ITU-T is the sector of the ITU that focuses on standardization. The ITU-T “assembles
`experts from around the world to develop international standards known as ITU-T
`Recommendations, which act as defining elements of the global infrastructure of information and
`communication technologies.” ITU, https://www.itu.int/en/join/Pages/default.aspx (last visited
`December 7, 2020).
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`Policy for the ITU-T/ITU-R/ISO/IEC). As assignee of the Nokia Patents, Nokia Oy is bound by
`the contractual commitments that Nokia Corporation owed under the ITU Patent Policy, and also
`stands in the shoes of Nokia Corporation with respect to any remedies arising from a breach or
`other violation of those contractual commitments.5
`23. The ITU Patent Policy in effect when Nokia Corporation began participating in
`development of the H.264 standard states that “any ITU-T member organization putting forward a
`standardization proposal should, from the outset, draw the attention of the [Telecommunication
`Standardization Bureau (TSB)] to any known patent or to any known pending patent application,
`either their own or of other organizations.”6
`24. The ITU’s Guidelines for Implementation of the ITU Patent Policy state (1) “[t]he
`term ‘from the outset’ as it appears in paragraph 1 of the TSB Patent Policy . . . implies that such
`information should be disclosed as soon as possible, i.e. as soon as it is becoming clear that an
`evolving draft Recommendation will, in fact, fully or partly include patented elements”;7 and (2)
`“[a]ny ITU Member State or Sector Member organization aware of a patent held by itself or
`others, which may fully or partly cover elements of the draft Recommendation(s) proposed for
`approval, is requested to disclose such information to the TSB, in no case later than the date
`scheduled for approval of the Recommendation(s).”8 According to the Guidelines’ statement of
`purpose, “[t]he guidelines encourage the early disclosure and identification of patents that may
`relate to Recommendations under development. In doing so, greater efficiency in standards
`development is possible and potential patent rights problems can be avoided.”9
`25. Despite its involvement in developing the H.264 standard, and despite being bound
`by the ITU’s Patent Policy, Nokia Corporation repeatedly failed to disclose during development of
`the H.264 standard that it had rights in the Nokia Patents that Nokia Corporation and/or Nokia Oy
`
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`5 Ex. 1 (ITU, “Guidelines for Implementation of the Common Patent Policy for ITU-T/ITU-
`R/ISO/IEC” (April 23, 2012) Part 7.)
`6 Ex. 2 (ITU, Guidelines for Implementation of the TSB Patent Policy (July 7, 1999), at 7
`(Appendix I)).
`7 Id. at 3 (Section 2.4).
`8 Id. at 4 (Section 3.1).
`9 Id. at 2 (Section 1).
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`have since claimed are essential to practice the H.264 standard. Indeed, Nokia Corporation did
`not notify the ITU (or the ISO/IEC) about any of the Nokia Patents until long after the first
`iteration of the H.264 standard was frozen and then published in May 2003.
`26. Upon information and belief, Nokia Corporation did so to induce JVT/ITU members
`to incorporate technology into the H.264 standard that Nokia Oy now contends is covered by the
`Nokia Patents—but without providing those members with the ability to consider those alleged
`patent rights before the H.264 standard was frozen. 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.
`27. Members of the ITU and other third-party beneficiaries of Nokia Corporation’s
`obligations under the ITU Patent Policy reasonably expected Nokia Corporation to disclose its
`known patents and patent applications at the outset of the standardization process, and not after
`functionality allegedly covered by a patent or patent application was approved for incorporation
`into the H.264 standard and/or after the H.264 standard was frozen. If Nokia Corporation held or
`had applied for patents potentially essential to the H.264 standard, then under the binding
`contractual rules of the ITU Patent Policy, Nokia Corporation was obligated to disclose those
`patents from the outset, and at least before the H.264 standard was frozen.
`28. Nokia Corporation did not submit a Patent Statement and Licensing Declaration to
`the ITU specifically identifying any of the Nokia Patents (or the applications for those patents) as
`allegedly essential to any specific aspect of the H.264 standard before the standard was frozen,
`even though Nokia Corporation knew it possessed those patent rights during development of the
`H.264 standard, as detailed below.
`29.
`Indeed, Nokia Corporation did not disclose the existence of the Nokia Patents
`(and/or applications for those patents) during the H.264 standard-setting process, even while
`Nokia Corporation personnel (including named inventors of the asserted patents) participated in
`the relevant working groups that adopted the same technology that Nokia Oy now claims is
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`covered by the Nokia Patents, and even though participants at meetings were frequently reminded
`of the Patent Policy and their contractual obligation to disclose potentially essential patent rights.
`30. Under the ITU Patent Policy, Nokia Corporation had binding contractual
`commitments with the ITU, with ITU members, and with other SSOs participating in the H.264
`standard development, all for the benefit of the SSOs, their members, and any entity involved in
`making, using, selling, offering for sale, and/or importing products that support the H.264
`standard, including Lenovo United States. All these entities reasonably relied on the ITU’s rules,
`including the ITU’s Patent Policy, in supplying products that support the H.264 standard.
`31. Lenovo United States has invested significant time and resources in connection with
`supplying products in reliance on the transparency of the ITU’s standard-setting process and the
`requirement that H.264 participants comply with the ITU’s rules, including the ITU’s Patent
`Policy requirement for members to timely disclose any patent rights that might be essential during
`development of the H.264 standard.
`32. Upon information and belief, Nokia Corporation’s failure to timely disclose its
`rights in the Nokia Patents was intended to and did cause ITU members to incorporate technology
`into the H.264 standard that Nokia Corporation and/or Nokia Oy have since claimed is covered by
`the Nokia Patents, all without the benefit of having knowledge of those alleged patent rights
`before the H.264 standard was frozen. Upon information and belief, had Nokia Corporation
`timely disclosed its rights in the Nokia Patents, JVT/ITU members would have decided to adopt
`an alternative technology to perform the relevant functionality or left the relevant technology out
`of the H.264 standard. Nokia Corporation’s conduct therefore distorted and impaired the
`standardization process in a manner that has harmed Lenovo United States and others, such that
`the accused functionality would not have been included in the H.264 standard but for the lack of
`timely disclosure.
`33. This standards-setting misconduct is not an isolated incident, as Nokia Corporation
`has a history of failing to disclose its allegedly essential patent rights to standards setting
`organizations. As just one example, the Federal Circuit determined in Core Wireless Licensing
`S.A.R.L. v. Apple Inc. that Nokia had a duty to disclose its allegedly essential patent rights before
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`the relevant standard was frozen, and breached that contractual obligation by waiting years after
`the standard was frozen to first do so. 899 F.3d 1356, 1368 (Fed. Cir. 2018).
`THE ’576 PATENT
`34. U.S. Patent No. 7,006,576 (“the ’576 patent”) is titled “Video Coding,” and names
`Miska Hannuksela as inventor.
`35. Upon information and belief, the ’576 patent is assigned to Nokia Oy.
`36. As assignee of the ’576 patent, which was assigned to Nokia Corporation during the
`development of the H.264 standard, Nokia Oy is successor-in-interest to Nokia Corporation’s
`rights and obligations under the ’576 patent and to Nokia Corporation’s rights and obligations
`arising under the ITU Patent Policy with respect to the ’576 patent.
`37. The ’576 patent issued on February 28, 2006, from an application filed July 19,
`2000, and claims priority to an application filed on July 19, 1999.
`38. Upon information and belief, Nokia Oy contends that the ’576 patent is essential to
`practice certain aspects of the H.264 standard.
`39. Upon information and belief, Nokia Corporation and Nokia Oy did not disclose the
`’576 patent or its underlying application to the ITU as potentially essential to the H.264 standard
`before the relevant provisions of the H.264 standard were frozen.
`THE ’211 PATENT
`40. U.S. Patent No. 6,711,211 (“the ’211 patent”) is titled “Method for Encoding and
`Decoding Video Information, a Motion Compensated Video Encoder and a Corresponding
`Decoder,” and names Jani Lainema as inventor.
`41. Upon information and belief, the ’211 patent is assigned to Nokia Oy.
`42. As assignee of the ’211 patent, which was assigned to Nokia Corporation during the
`development of the H.264 standard, Nokia Oy is successor-in-interest to Nokia Corporation’s
`rights and obligations under the ’211 patent and to Nokia Corporation’s rights and obligations
`arising under the ITU Patent Policy with respect to the ’211 patent.
`43. The ’211 patent issued on March 23, 2004, from an application filed May 8, 2000.
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`44. Upon information and belief, Nokia Oy contends that the ’211 patent is essential to
`practice certain aspects of the H.264 standard.
`45. Upon information and belief, Nokia Corporation and Nokia Oy did not disclose the
`’211 patent or its underlying application to the ITU as potentially essential to the H.264 standard
`before the relevant provisions of the H.264 standard were frozen.
`THE ’268 PATENT
`46. U.S. Patent No. 6,879,268 (“the ’268 patent”) is titled “Adaptive Variable Length
`Coding of Digital Video,” and names Marta Karczewicz as inventor.
`47. Upon information and belief, the ’268 patent is assigned to Nokia Oy.
`48. As assignee of the ’268 patent, which was assigned to Nokia Corporation during the
`development of the H.264 standard, Nokia Oy is successor-in-interest to Nokia Corporation’s
`rights and obligations under the ’268 patent and to Nokia Corporation’s rights and obligations
`arising under the ITU Patent Policy with respect to the ’268 patent.
`49. The ’268 patent issued on April 12, 2005, from an application filed July 29, 2003,
`and claims priority to an application filed on January 22, 2002.
`50. Upon information and belief, Nokia Oy contends that the ’268 patent is essential to
`practice certain aspects of the H.264 standard.
`51. Upon information and belief, Nokia Corporation and Nokia Oy did not disclose the
`’268 patent or its underlying application to the ITU as potentially essential to the H.264 standard
`before the relevant provisions of the H.264 standard were frozen.
`THE ’502 PATENT
`52. U.S. Patent No. 6,954,502 (“the ’502 patent”) is titled “Method for Encoding and
`Decoding Video Information, a Motion Compensated Video Encoder and a Corresponding
`Decoder,” and names Jani Lainema as inventor.
`53. Upon information and belief, the ’502 patent is assigned to Nokia Oy.
`54. As assignee of the ’502 patent, which was assigned to Nokia Corporation during the
`development of the H.264 standard, Nokia Oy is successor-in-interest to Nokia Corporation’s
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`rights and obligations under the ’502 patent and to Nokia Corporation’s rights and obligations
`arising under the ITU Patent Policy with respect to the ’502 patent.
`55. The ’502 patent issued on October 11, 2005, from an application filed February 3,
`2004, and claims priority to an application filed on May 8, 2000.
`56. Upon information and belief, Nokia Oy contends that the ’502 patent is essential to
`practice certain aspects of the H.264 standard.
`57. Upon information and belief, Nokia Corporation and Nokia Oy did not disclose the
`’502 patent or its underlying application to the ITU as potentially essential to the H.264 standard
`before the relevant provisions of the H.264 standard were frozen.
`THE ’450 PATENT
`58. U.S. Patent No. 7,082,450 (“the ’450 patent”) is titled “Implementation of a
`Transform and of a Subsequent Quantization,” and names Antti Hallapuro and Kim Simelius as
`inventors.
`59. Upon information and belief, the ’450 patent is assigned to Nokia Oy.
`60. As assignee of the ’450 patent, which was assigned to Nokia Corporation during the
`development of the H.264 standard, Nokia Oy is successor-in-interest to Nokia Corporation’s
`rights and obligations under the ’450 patent and to Nokia Corporation’s rights and obligations
`arising under the ITU Patent Policy with respect to the ’450 patent.
`61. The ’450 patent issued on July 25, 2006, from an application filed August 30, 2001.
`62. Upon information and belief, Nokia Oy contends that the ’450 patent is essential to
`practice certain aspects of the H.264 standard.
`63. Upon information and belief, Nokia Corporation and Nokia Oy did not disclose the
`’450 patent or its underlying application to the ITU as potentially essential to the H.264 standard
`before the relevant provisions of the H.264 standard were frozen.
`THE ’456 PATENT
`64. U.S. Patent No. 7,206,456 (“the ’456 patent”) is titled “Method for Encoding and
`Decoding Video Information, a Motion Compensated Video Encoder and a Corresponding
`Decoder,” and names Jani Lainema as inventor.
`-12-
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`COMPLAINT
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`Case No.
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`1 2 3 4 5 6 7 8 9
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`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
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`Case 5:20-cv-08650 Document 1 Filed 12/07/20 Page 13 of 27
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`65. Upon information and belief, the ’456 patent is assigned to Nokia Oy.
`66. As assignee of the ’456 patent, which was assigned to Nokia Corporation during the
`development of the H.264 standard, Nokia Oy is successor-in-interest to Nokia Corporation’s
`rights and obligations under the ’456 patent and to Nokia Corporation’s rights and obligations
`arising under the ITU Patent Policy with respect to the ’456 patent.
`67. The ’456 patent issued on April 17, 2007, from an application filed November 26,
`2002, and claims priority to an application filed on November 27, 2001.
`68. Upon information and belief, Nokia Oy contends that the ’456 patent is essential to
`practice certain aspects of the H.264 standard.
`69. Upon information and belief, Nokia Corporation and Nokia Oy did not disclose the
`’456 patent or its underlying application to the ITU as potentially essential to the H.264 standard
`before the relevant provisions of the H.264 standard were frozen.
`THE ’674 PATENT
`70. U.S. Patent No. 7,289,674 (“the ’674 patent”) is titled “Spatial Prediction Based
`Intra Coding,” and names Marta Karczewicz as inventor.
`71. Upon information and belief, the ’674 patent is assigned to Nokia Oy.
`72. As assignee of the ’674 patent, which was assigned to Nokia Corporation during the
`development of the H.264 standard, Nokia Oy is successor-in-interest to Nokia Corporation’s
`rights and obligations under the ’674 patent and to Nokia Corporation’s rights and obligations
`arising under the ITU Patent Policy with respect to the ’674 patent.
`73. The ’674 patent issued on October 30, 2007, from an application filed June 10,
`2003, and claims priority to an application filed on June 11, 2002.
`74. Upon information and belief, Nokia Oy contends that the ’674 patent is essential to
`practice certain aspects of the H.264 standard.
`75. Upon information and belief, Nokia Corporation and Nokia Oy did not disclose the
`’674 patent or its underlying application to the ITU as potentially essential to the H.264 standard
`before the relevant provisions of the H.264 standard were frozen.
`
`Case No.
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`
`-13-
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`
`COMPLAINT
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
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`

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`Case 5:20-cv-08650 Document 1 Filed 12/07/20 Page 14 of 27
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`
`THE ’001 PATENT
`76. U.S. Patent No. 7,302,001 (“the ’001 patent”) is titled “Random Access Points in
`Video Coding,” and names Ye-Kui Wang and Miska Hannuksela as inventors.
`77. Upon information and belief, the ’001 patent is assigned to Nokia Oy.
`78. As assignee of the ’001 patent, which was assigned to Nokia Corporation during the
`development of the H.264 standard, Nokia Oy is successor-in-interest to Nokia Corporation’s
`rights and obligations under the ’001 patent and to Nokia Corporation’s rights and obligations
`arising under the ITU Patent Policy with respect to the ’001 patent.
`79. The ’001 patent issued on November 27, 2007, from an application filed April 28,
`2003, and claims priority to an application filed on April 29, 2002.
`80. Upon information and belief, Nokia Oy contends that the ’001 patent is essential to
`practice certain aspects of the H.264 standard.
`81. Upon information and belief, Nokia Corporation and Nokia Oy did not disclose the
`’001 patent or its underlying application to the ITU as potentially essential to the H.264 standard
`before the relevant provisions of the H.264 standard were frozen.
`THE ’660 PATENT
`82. U.S. Patent No. 7,403,660 (“the ’660 patent”) is titled “Encoding Picture
`Arrangement Parameter in Picture Bitstream,” and names Miska Hannuksela as inventor.
`83. Upon information and belief, the ’660 patent is assigned to Nokia Oy.
`84. As assignee of the ’660 patent, which was assigned to Nokia Corporation during the
`development of the H.264 standard, Nokia Oy is successor-in-interest to Nokia Corporation’s
`rights and obligations under the ’660 patent and to Nokia Corporation’s rights and obligations
`arising under the ITU Patent Policy with respect to the ’660 patent.
`85. The ’660 patent issued on July 22, 2008, from an application filed April 30, 2003.
`86. Upon information and belief, Nokia Oy contends that the ’660 patent is essential to
`practice certain aspects of the H.264 standard.
`
`Case No.
`
`
`-14-
`
`
`CO