Toyota becomes Avanci 4G & 5G licensor, previously only licensee

Toyota becomes Avanci 4G & 5G licensor, previously only licensee; acquired 4G/5G SEPs from OPPO

Context:

A year ago, Japanese automaker Toyota, which was previously licensed to Avanci’s 4G standard-essential patent (SEP) pool, took an Avanci 5G license (October 9, 2024 ip fray article).
Also last year, it became known that Toyota had acquired 4G/5G SEPs from Chinese smartphone maker OPPO (July 29, 2024 ip fray article).

What’s new:

Toyota is now the first company to be listed twice on Avanci Vehicle’s 4G and 5G pages — as a licensor and as a licensee. Also, a couple of other Avanci Vehicle licensors can be found: video conferencing company Daviko and South Korean licensing firm Mentats for 5G, and Beijing Jingshi IP for 4G. Avanci 5G now has 84 licensors, and Avanci 4G has 64.

Direct impact: Toyota is now both paying license fees and receiving a share (presumably just a small one) of the pool’s revenue redistribution. Put differently, other car makers are, via Avanci, paying Toyota for the use of its IP. Avanci is not a cross-licensing club, however, so the other Avanci licensors (none of whom is a car maker at this point) are not paying (or granting discounts to) Toyota as a result of its Avanci licensor status.

Wider ramifications:

For patent pools in such fields as video and WiFi, it is fairly common to have licensor-licensees among their members.

Toyota’s dual role represents a tacit endorsement of Avanci and its terms.

Various automotive suppliers such as LG have been Avanci licensors for some time, but that does not technically make them licensor-licensees.

When we reported on Toyota’s acquisition of cellular SEPs from OPPO, we wrote:

 Avanci does not facilitate cross-licensing per se, but companies can join as licensors and licensees at the same time (as the Avanci Broadcast licensing program already shows).
There has now been almost exactly a year between Toyota becoming an Avanci 5G licensee and a licensor. It is not known when Toyota first applied to become an Avanci licensor. Vetting by third-party experts is part of the process and presumably takes time, but hardly a year.

OPPO may or may not be the only cellular SEP holder to have sold assets to Toyota, but it was the first one to become known.

It will be interesting to see if other automakers also acquire cellular SEPs and contribute them to Avanci Vehicle. Also, Toyota could seek patent royalties from other companies implementing those patents, such as smartphone makers.