Viavi, Optrontec sign patent licensing agreement
Samsung's fear of a possible injunction from USITC has been mitigated
South Korean component maker Optrontec and US 3D sensing company Viavi Solutions has agreed to a licensing agreement in 3D sensing filters, the companies said on Thursday.
The agreement will likely end the two’s patent lawsuits which began in March last year in South Korea and the US.
Optrontec, and its main client Samsung Electronics, will no longer have to worry about potential patent risks from their use of 3D sensing filters thanks to the agreement.
The terms and conditions of the licensing arrangement will not being disclosed, the companies aid.
"Optrontec provides sophisticated optical filters for 3D sensing and plans to offer assembly and system based optical solution by integrating filter and lens technology for a wide range of applications in Korea and internationally," said Optrontec CEO Sagoan Hong said in a statement. "We look forward to our collaboration with Viavi as we work together to grow the market for 3D sensing applications."
3D sensing filter refers to the 3D Time of Flight (ToF) band-pass filters used in smartphones. ToF is expected to be used widely for augmented reality and virtual reality applications.
Viavi supplies it 3D sensing optical filters to Apple, while Optrontec suppliers theirs to Samsung.
The licensing agreement allows Optrontec to supply its filters to Samsung without possible patent lawsuits going forward.
People familiar with the matter said Samsung had pressured Optrontec to resolve the problem. In the worst case scenario, Viavi could have filed an injunction lawsuit against Samsung phones that use the filters to the US International Trade Commission (USITC), they said.
How much Optrontec has to pay Viavi in licensing fee will like impact its profitability going forward.
On whether Viavi will win new orders from Samsung is another point to note. People familiar with the matter said part of the reason why the US company filed its lawsuits against Optrontec was likely to win supply orders from Samsung. Supplying to Samsung can lower Optrontec’s current dominance in 3D optical filters.
Viavi first filed its patent lawsuit against Optrontec to the Seoul Central District Court in March, 2019. Optrontec filed a patent invalidation lawsuit against Viavi to Korean Intellectual Property Tribunal in May of that year in response.
In November, Viavi filed lawsuit against LG Electronics, LG InnoTek and Optrontec at the Northern District Court of California and USITC for patent violations, also in 3D filiters.
In April this year, the Tribunal announced that Viavi’s patents were invalid, but the company appealed against the decision in May.
Meanwhile. Viavi and LG signed their own patent licensing agreement earlier this year. LG InnoTek’s ToF module is expected to be supplied to iPhone 12 Pro and iPhone 12 Pro Max launching later this year. The modules were also supplied for Apple’s iPad Pro.