On July 21 and 22, the United States District Court for the District of Massachusetts dismissed all 10 counts filed by Roku against S&C clients Access Advance, Dolby Laboratories, and other Dolby entities (Dolby), and Sun Patent Trust (SPT), in a lawsuit seeking to set a global royalty (FRAND) rate for a patent pool.
Roku sought declarations of patent non-infringement and declarations that pool and bilateral patent licenses offered by the defendants violated the fair, reasonable, and non-discriminatory (FRAND) licensing promises the patent owners had made to standard development organizations. The dismissal is an important precedent for patent pool administrators and licensors in a sparse field about when (if at all) it is appropriate for courts to set global royalty rates.
After dismissing Dolby and SPT for lack of personal jurisdiction, the court turned to Roku’s request to set royalty rates. The S&C team argued that the remaining counts against Access Advance should be dismissed because the court did not have jurisdiction to set a royalty rate for non-U.S. patents and that any such opinion would be advisory as the court could not compel acceptance of any rate it set. The court accepted all of these arguments.
The S&C team representing Access Advance, Dolby and SPT includes Garrard Beeney, Andrei Iancu, Brittany Bruns, Phinneas Bauer, Amy Kwong and Charles Rossino.