Apple and Hoyng repel Ericsson infringement claim in The Hague

The Netherlands is fast becoming a hotspot for preliminary injunction cases, and nowhere is this clearer in Apple vs. Ericsson. Although the two companies are not direct competitors in the mobile communication market, the breakdown of a licence agreement between the two has led to multiple disputes over Ericsson’s portfolio of standard essential patents, as well as its non-SEPs.

In the current proceedings, the Dutch court has not granted a PI as requested by Ericsson. However, further SEP suits are being filed in Germany and the US. Judgments are also pending in other jurisdictions, including the Netherlands.

Coming to a head

In May 2022, the District Court of The Hague declared it would not uphold Ericsson’s request for a preliminary injunction against Apple, citing a decision based on the weighing of interests in favour of Apple. The former claims the US company infringed its divisional patent EP 28 19 131 B1 with its iPhones, iPads, Apple TVs, HomePod and smartwatches incorporating the relevant semiconductor chips covered by the patent.

Although the current decision is summary proceedings and thus temporary, for the iPhone manufacturer an injunction would be hugely damaging for its operations in the Netherlands. Furthermore, Ericsson had sought PIs in all locations in which the patent is designated. According to the EPO database, this includes Brazil, China, Spain, Hungary, Japan and Korea.

Apple and Ericsson are now awaiting a decision on the merits. In separate proceedings, Ericsson has also appealed against the rejection of an anti-anti-suit injunction against the US mobile communications company at the District Court of The Hague.

The patent is not an SEP, rather an implementation patent; as such, the law does not require parties to seek a licence. However, due to its importance EP 131 is likely to play a role in future disputes over Ericsson’s SEP and non-SEP patent portfolio.

Apple on implementation

Theo Blomme

In this instance, although the patent relates to only a very small feature of Apple’s devices, Ericsson sought to injunct the whole product.

According to JUVE Patent information, it is unusual for Dutch courts to reject an entire argument based on only a very small product feature. Although such a detail will often form part of a defence, the court has never yet used it as the basis of its whole decision. On the other hand, in the US the practice is more common.

Seven other cases between the parties are also pending. For example, yesterday Apple filed its defence in the ongoing SEP case in the Netherlands, since proceedings have already taken place. Ericsson also filed a case on the merits against Apple in Belgium, with the parties expecting a judgment in May 2023.

International court action

Germany is also back in the action, with public sources showing that Apple has recently filed its first SEP suit over EP 31 78 199 against Ericsson in Munich. Earlier this year, the company also filed a suit in Mannheim. Previously, Ericsson had confirmed to JUVE Patent that the company also filed lawsuits against Apple in Düsseldorf, Mannheim and Munich.

Furthermore, in the country’s first-ever 5G SEP suit, a court in Colombia also confirmed a preliminary injunction against Apple. This means the company must cease selling its 5G-enabled smart phones until further notice. In retaliation, the company has filed ASI proceedings at the District Court of Texas, which are due to be heard in two weeks.

Hoyng in the Netherlands

Wim Maas

Amsterdam-based partner Theo Blomme of Hoyng ROKH Monegier is leading the dispute for Apple, due to his instruction for the AASI proceedings. However, the relationship between the iPhone manufacturer and the Dutch office of the IP boutique is relatively new.

Previously, Apple has worked with Freshfields Bruckhaus Deringer, Hogan Lovells as well as Hoyng ROKH Monegier on three major litigation campaigns in Germany.

Hoyng ROKH Monegier has its own patent attorneys, to whom it has likely turned for technical support in the proceedings.

Taylor Wessing up again

Wim Maas, partner at Taylor Wessing in Eindhoven, is leading both the AASI proceedings and the preliminary injunction proceedings for Ericsson in the Netherlands.

In the past, Maas was the first choice for Ericsson in Dutch proceedings. Together with his team, which also includes recently-promoted partner Eelco Bergsma, he is now also handling the patent infringement suits, while patent attorney firm AOMB also provides technical expertise.

Taylor Wessing also represents Ericsson in Belgium, having recently expanded its team in Brussels.

For Ericsson
Taylor Wessing (Eindhoven): Wim Maas (lead), Eelco Bergsma (both partners); associates: David Mulder, Iris van der Heijdt, Pauline Springorum
AOMB (Eindhoven): Teun van Berkel (partner, patent attorney)

For Apple
Hoyng ROKH Monegier (Amsterdam): Theo Blomme (lead), Peter van Schijndel (both partners)

District Court of the Hague, The Hague
Edger Brinkman (presiding judge)