Colonial Purchasing Cooperative's newsletter, Physical World, has been tracking the DVD and Blu-ray patents that expire this year. While identifying the patents concerned via a questionnaire, none of the representatives of various patent groups approached would disclose any financial information, such as how much money has been collected to date from such patents, or future savings by licensees as the result of the expirations. Physical World's feature is re-published with permission.

DVD6C

Navigating the relevant patents is a complex process, which is why most holders have pooled their interests within various royalty collection groups, such as the DVD6C on whose website ( www.dvd6cla.com/list.html ) specifies which patents by pool member and the expiration date by country.

For example, among the dozens listed for a DVD-Video disc, Toshiba's patent No. 5,774,441 was set to expire in the U.S. on 30 June 2015. In contrast, Panasonic's No. 5,734,788 will expire in August 2016.

There are patents in various stages of coming due for other varieties of discs including: DVD-ROM, DVD-Audio, DVD-R, DVD- RW, DVD-RAM, DVD+R, and DVD R+W. So if you're involved with manufacturing any of these pre-recorded and blank media formats, it behooves you to examine closely the list [and website links of all the patent groups], as well as your own agreements, if you indeed signed one.

MPEG LA

MPEG LA offers licenses of convenience under patents that are essential to various Standards, explains an MPEG LA spokesperson. "The patents included in its licenses and their expiration dates are a matter of public record," the spokesperson added, "but for easy reference, the lists of patents in our MPEG-2 License, AVC License, VC-1 License and MVC License can be found in the corresponding sections of our website."

As can be ascertained from the link providing a 25-page pdf listing by member, www.mpegla.com/main/programs/m2/Documents/m2-att1.pdf , hundreds of MPEG-2 patents have already expired throughout the world, and some in the U.S. claimed by Philips and Panasonic, for example, expired as recently as this past April and as long ago as 2007.

Similar trends are also found in the long document for VC-1 at www.mpegla.com/main/programs/vc1/Documents/vc-1-att1.pdf , but the expirations are listed on page 16 of the 21-page document.

That's not to say it's all over for patent collection. To the contrary, as evidenced by the 85-page document at www.mpegla.com/main/programs/avc/Documents/avc-att1.pdf containing still-in- effect patents for AVC throughout the world, although on page 82 some in U.S. expired as early as 2007.

On the MVC attachment at page 23 of 24 www.mpegla.com/main/programs/MVC/Documents/MVC-att1.pdf , the U.S. patent (5,617,334) held by 'The Trustees of Columbia University in the City of New York' expires on 20 July 2015.

The MPEG LA spokesperson points out that "MPEG LA is authorized to offer single licenses for coverage under standard essential patents owned by multiple patent owners as an efficient alternative to negotiating separate licenses with individual patent owners. Therefore, users are free to negotiate with individual patent owners for other alternatives." In all cases, applicable royalties are payable whether one or more patents is used, the spokesperson notes.

AACS

An AACS spokesperson explains the group was founded by a group of stakeholders in the Blu-ray ecosystem who collectively wanted to facilitate the consumer adoption of the Blu-ray format. "As such, the founders agreed to develop an innovative encryption technology to protect the Blu-ray content, then to license that technology to all participants in the Blu-ray ecosystem on a cost recovery basis."

Licensing the technology in the AACS case means licensing specifications and the selling of the encryption keys that make the system work in an interactive fashion. Interactive meaning that any Blu-ray disc should work in any Blu-ray device. This innovative encryption technology does rely on patents. However, AACS also has used an innovative technique to license those patents.

AACS does not own rights to the patents; the patents are owned by the AACS founders. The AACS founders license the patents directly to AACS licensees under a method called 'Necessary Claims.' That means the licensees can take advantage of whatever founder patents are necessary to implement the AACS Specifications within the scope of use defined in the license agreements. In return, the licensees agree not to take any actions against either the founders or any other AACS licenses, again to implement the AACS Specifications and within the scope of use defined in the AACS license agreements.

According to the AACS, this has the tremendous advantage for participants in the Blu-ray ecosystem, who are AACS licensees, to know that other participants in the ecosystem will not take action against them over the AACS technology. The 'Necessary Claims' licensing technique, by its nature, implies that patents are not listed. And as stated previously, the patents are owned by the AACS Founders, not by AACS. Therefore, AACS could not enter into an agreement with Colonial to license patents it does not own, and the 'Necessary Claims' methodology makes it impossible to speculate on when any of the patents may expire.

One-Red

A DVD disc's numerous varieties in terms of functionality (e.g., -ROM) or construction (e.g., single layer vs. double) also come with a multitude of patents. In 2012, a new collection body representing the patent interests of Philips, Sony, Pioneer, and LG formed known as One-Red.

As with the other collection agencies, One-Red has numerous expiring patents in the US during the next 18 months that are too numerous to list specifics here. But here's an example: Sony's U.S. patent No. 5969651 for '8/16 Modulation on a Single Layer DVD' expires on 7 July 2015, the same day that the company's U.S. patents Nos. 5969651 & 5818367 expire, also covering 8/16 Modulation but for a Dual Layer DVD- ROM disc.

Interested parties can go directly to: www.one-red.com/en/license-programs/one-red-dvd-disc-and-dvd-player-license-programs/dvd-disc .

The patents managed by One-Red's sister organization formed to cover Blu-ray disc technology are mostly much newer, and therefore don't expire for the most part for another eight years or later. However, sandwiched among the data is this curio: Panasonic No. 5790487 for a Blu- ray disc as well as recordable Blu-ray disc's 'Optical Information Recording Medium,' which expired 6 June 2015.

See the complete One-Blue list at: http://www.one-blue.com/license-programs/bd-r-re/.

DVD FLLC

Regarding the time left on the ubiquitous DVD logo, DVD FLLC's Masa Saito tells Physical World: "We renew our logo periodically (e.g. every five years at patent and trademark offices in the world). So, I cannot tell how long." Saito adds that each current license started from 1 January 2015 and expires on 31 December 2019 for all licensees no matter when they sign.

The Physical World newsletter can be downloaded here.

Story filed 14.07.15