BOSTON-- March 11, 2022 -- Access Advance, an independent licensing administrator, today announced that the licensors to its HEVC Advance Patent Pool approved a revised Duplicate Royalty Policy. The revised Policy responds to the Duesseldorf District Court’s December 21, 2021 ruling, which declined to grant an injunction despite finding Vestel Germany GmbH (“Vestel”) liable for damages arising from its infringement of certain HEVC standard essential patents asserted by HEVC Advance licensors.

While Access Advance’s Duplicate Royalty Policy followed (and exceeded) long-standing industry practice, because of the substantial number of overlapping patents in the HEVC Advance Patent Pool and MPEG LA's HEVC patent pool to which Vestel was licensed (as a result of Vestel taking an MPEG LA license in 2018 before a large number of licensors left MPEG LA), the German court found such practice not FRAND. In particular, the court found such practice (1) did not impose on the HEVC Advance Patent Pool a direct legal obligation to Vestel ensuring that a licensor whose patents were licensed in both pools did not receive a duplicate royalty payment, and (2) did not adequately specify to Vestel prior to license execution the methodology each licensor would apply to prevent receipt of such duplicate royalties by licensors.

Importantly, the court once again did not express concerns with any other facet of the HEVC Advance Patent Pool, including its royalty rates. In an earlier set of patent infringement cases brought by several HEVC Advance Patent Pool licensors against MAS Elektronik, this same court expressly confirmed that the HEVC Advance pool license and rates were FRAND. Nothing about the court’s Vestel decision changes or undermines this prior and fundamental finding.

The revised Policy announced today not only resolves the issues identified by the court, but goes a significant step further in allowing licensees under both the HEVC Advance Patent Pool and another HEVC patent pool or joint licensing program that qualify to elect to receive a deduction from the HEVC Advance Patent Pool for the amount of duplicate royalties that would be received by HEVC Advance licensors on account of patents licensed under both the HEVC Advance Patent Pool and the other HEVC patent pool or joint licensing program. Previously, each HEVC Advance licensor could determine from which pool or program a licensee would receive a duplicate royalty deduction.