For decades, JVC has been one of the global market leaders in the entertainment industry and still holds numerous key patents in DVD technology. Many of them are so-called standard-essential patents (SEP) that are indispensable for the manufacture of DVDs.
JVC wanted to exploit the existing patents by issuing licenses and commissioned us with the development of a promising strategy.
In close collaboration with JVC, we identified patents that are essential for the manufacture of DVDs, i.e. which have to use the standards that apply to DVDs, which have a relatively long remaining term, and whose legal validity is sound. Based on test purchases, DVDs from different manufacturers were checked for their compliance with the technical standards. If manufactured in accordance with the standards, JVC’s patent rights automatically apply. We also analysed whether licenses existed for the patents in question. Manufacturers without valid licensing agreements were offered the opportunity to purchase a license. If it was not possible to come to an agreement, we pursued a multi-tiered strategy: in many cases, unlicensed DVDs, in particular DVDs that had come from the Far East, were seized on the basis of border seizure applications. We sued manufacturers of patent-infringing DVDs that had managed to enter the German market before German courts, and in some cases, we filed for preliminary injunctions.
The tide turned after the successful conclusion of the first lawsuits. We were able to conclude several licensing agreements, and all unlicensed DVDs were removed from the German market.