WebM Patent Fight Ahead for Google?

In February, MPEG LA announced a call for patents essential to the VP8 video codec specification as outlined in Google’s WebM release. The press release announcing the call asked for submissions by March 18, so I thought I would check in with a spokesperson at MPEG-LA to see if there was any activity.

I learned that there had been plenty. Twelve parties have stepped forward with patents that they believe are essential to the VP8 standard, on which Google's WebM is based, though no patent pool has been formed yet and MPEG LA is not releasing the patentholders' names at this time.

I sent questions to MPEG LA via email; below are the organization's responses.

Streaming Media: Have their been any submissions relating to the VP8 call to patents that you announced in February?

MPEG LA: Yes.

What happens with these submissions? The press release talks about submitting the patents for “a determination of their essentiality by MPEG LA’s patent evaluators.” Can you explain what that is and how good a predictor this analysis is if you ever have to go to court to prove infringement?

A "determination of their essentiality by MPEG LA’s patent evaluators" means that patent experts, construing the patent claims in accordance with patent law, compare claims of the submitted patents to the VP8 Specification to determine whether one or more independent claims is essential to the VP8 Specification. Patents with a claim that is found to be essential to the VP8 Specification may be included in a VP8 patent pool license should one be formed. Patents that are determined not to be essential would not be included in a VP8 patent pool license. Independent evaluations of patent essentiality are key to MPEG LA’s pool licensing programs and have stood up well throughout its history.

Assuming that you've received a patent or patents that is/are deemed essential, what happens next?

Those patent holders found to have at least one essential patent were invited to discuss and determine the possible creation of a pool license and the terms of any such license. Thus far, 12 parties have been found to have patents essential to the VP8 standard. Generally, parties may submit patents for evaluation of essentiality to VP8 at any time during the process of facilitating a patent pool, and may continue to do so after the pool launches, assuming one is formed.

Once a pool license is created, it typically remains open for the inclusion of additional essential patents, and patent holders with essential patents are welcome to join the license as Licensors. MPEG LA met with VP8 essential patent holders in late June to facilitate a discussion among them whether and on what terms they may want to create a VP8 patent pool license and is continuing to facilitate that discussion.

What’s the statue of limitations (or analog) to claims like these? Is there any date where you have to either sue or get off the pot?

When a patent pool license is created, it is offered as a convenience to the market enabling users to take a license to as much essential intellectual property as possible in a single license as an alternative to negotiating separate licenses with individual patent owners. Decisions whether to bring actions for infringement of patents are made by individual patent owners.

So what's it all mean? My take is this: The bottom line is that there are some patent holders with claims that VP8 infringes upon their IP rights, but that a patent group has not been formed. I’m not privy to any discussions, but I would assume that one very salient factor regarding whether to form a group is the likelihood of prevailing against Google if a patent infringement suit was filed, and the estimated cost of that suit.

After spending $105 million to acquire the technology, it’s unlikely that Google wouldn’t fight any infringement claims, and legal fees that would seem monumental to most companies would be remote rounding errors for Google. Sometimes the 600-pound gorilla wins without a fight.

Speaking of Google, we asked if they had any comment on this story. Here's the statement we received from a Google spokesperson, a very slight variation on a statement the company first issued in March:

“MPEG LA has alluded to a VP8 pool since WebM launched—this is nothing new. The web succeeds with open, community-developed innovation, and the WebM Project brings the same principles to web video. The vast majority of the industry supports free and open development, which is why we formed the WebM CCL enabling member organizations to license patents they may have that are essential to WebM technologies to other members of the CCL. We are firmly committed to the project and establishing an open codec for HTML5 video.”

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