A Massachusetts judge has issued what is thought to be the first ruling by a US federal court clearly rejecting a request to set a global FRAND rate for a patent pool

In a rare FRAND-related ruling from a US court, on 22^nd July, Judge Richard G Stearns sitting in the United States District Court for the District of Massachusetts ruled that a federal court cannot set patent pool FRAND rates (Roku Inc v Access Advance LLC et al (D. MA. 1:24-cv-13217-RGS)).

The decision arose out of a dispute between Roku on the one hand and Sun Patent Trust (SPT), Dolby and patent pool administrator Access Advance on the other. In response to infringement actions filed by Dolby and SPT in the UPC, Roku sued the UPC plaintiffs and Access Advance in the district of Massachusetts.

Roku sought a declaration that it did not infringe the US counterparts of the patents-in-suit in the UPC, and a declaration that the bilateral and pool royalty rates sought by SPT, Dolby and Access Advanced were not FRAND. It also asked that the court set a FRAND rate for both the bilateral licences and the pool licence.

After dismissing SPT and Dolby for lack of personal jurisdiction, the court turned to Roku’s request to set a FRAND rate for Access Advance’s licence. The court refused to do so, holding that it lacked jurisdiction to make such a determination because of the large percentage of non-US patents in the pool portfolio and the fact that any opinion on FRAND rates would be advisory and have no binding effect.

As far as we are aware, this is the first US court decision clearly rejecting a request to set pool licence rates. It follows a similar ruling by the Court of Appeal of England and Wales rejecting Tesla’s request to set a FRAND rate for the Avanci pool. Tesla subsequently appealed that decision and at the end of June the UK Supreme Court granted the petition on four out of five grounds. The case is likely to be heard next year.

Contrary to the current rulings in the US and the UK, the Supreme People’s Court of China did not take issue with a decision by a lower court to set a global FRAND rate for the Access Advance pool in a case that has now been settled.