Jack Ellis

Rockstar has dismissed its Eastern District of Texas patent infringement suit against Huawei. The termination of the case suggests that the two parties have agreed a settlement – marking an important early victory for Rockstar in its licensing campaign targeting Android carriers.

Rockstar sued Huawei at the end of October last year as part of a raft of litigation it launched against Google and Android device manufacturers including ASUSTeK, HTC, LG, Samsung and ZTE. Speaking to the IAM blog in November, IP investor David Hoff identified the following US patents as those which Rockstar was asserting against the Chinese telecoms and mobile company:

• 5,838,551 - “Electronic Package Carrying an Electronic Component and Assembly of Mother Board and Electronic Package

• 6,037,937 - “Navigation Tool for Graphical User Interface”

• 6,128,298 - “Internet Protocol Filter”

• 6,333,973 - “Integrated Message Center”

• 6,463,131 - “System and Method for Notifying a User of an Incoming Communication Event”

• 6,765,591 - “Managing a Virtual Private Network”

• 6,937,572 - “Call Trace on a Packet Switched Network”

He also noted that Rockstar asked the Eastern Texas court for a permanent injunction, a finding of wilful infringement, attorney’s fees, interest, supplemental damages for any post-verdict infringement, and a compulsory ongoing licensing fee in the absence of a permanent injunction.

But it would appear that Huawei and Rockstar have now reached a settlement before the case could get to trial. For the Chinese company, reaching an agreement with the NPE at this early stage means that it will save an awful lot of money in terms of legal fees and will avoid getting bogged down in what could be an extremely drawn-out court battle. What’s more is that – assuming a licence deal was part of the settlement – Huawei can continue to market its products that were alleged to infringe Rockstar’s patents without the threat of a sales ban or the need to develop rapid workarounds. It is worth noting that this is not the first time that Huawei has settled a significant patent dispute prior to trial; in December, Huawei entered into a “binding settlement agreement and agreement to arbitrate” with InterDigital, resulting in the dismissal of infringement suits the latter company had initiated in Delaware and at the International Trade Commission. Huawei’s conciliatory strategy makes for an interesting comparison to HTC’s apparent ‘fight to the last breath’ approach to its worldwide disputes with Nokia.

Nevertheless, the real winner here is Rockstar – and not just because it has most probably secured its first major licensee since launching its debut assertion campaign last Halloween. This initial victory also bodes well for Rockstar’s ongoing disputes with the other Android carriers it has accused of infringing the same patents; the fact that one company has agreed to pay up at such an early stage could be seen by the court as an affirmation that there is weight behind the NPE’s infringement claims. As this blog has mentioned previously, it was crucial that Rockstar should emerge with a string of victories from its first enforcement actions if it is to continue as a serious force in the IP marketplace going forward. The early settlement with Huawei is a great way to get off to a winning start.