The Regional Court Mannheim has refused Deutsche Telekom repayment of licences from IPCom, in a decision handed down yesterday by its 2nd Civil Chamber. As the sole licensee of a portfolio of mobile communications patents, including numerous SEPs, the German company felt IPCom's actions towards it had been discriminatory.
1 June 2022 by Konstanze Richter
Deutsche Telekom accused the Munich-based NPE IPCom of not making sufficient efforts to also license other network operators, arguing that the licence agreement did not comply with the FRAND rules required for SEPs. As a result, in November 2021, Deutsche Telekom sued IPCom for repayment of the licences Deutsche Telekom had paid.
According to trial observers, the company is demanding roughly €300 million in damages including interest. However, Deutsche Telekom did not comment on this.
But, in a ruling handed down yesterday, the 2nd Civil Chamber of the Mannheim Regional Court dismissed the action (case ID: 2 O 130/20). Presiding judge Holger Kircher referred in particular to a clause in the 2013 licence agreement, whereby IPCom is not obligated to seek additional licensees or enforce its patent rights against other network operators. Deutsche Telekom can appeal against the decision.
Speaking to JUVE Patent, Stephan Altmeyer, VP patent and brand at Deutsche Telekom, expressed his disappointment with the ruling. He says, “If the first SEP licensee runs the risk of being not only the first, but also the only one, there will be no first licensee in the future. That cannot be the idea of FRAND licensing”.
With regard to the clause in the licence agreement, Altmeyer added, “Antitrust law protects competition and cannot simply be excluded by the licence agreement if it is precisely this licence agreement that causes the distortion of competition”.
Everything seemed to be in order between the two rivals until autumn 2021. After years of patent disputes, Deutsche Telekom had taken licences for a patent portfolio originally developed by Bosch in summer 2013. This included SEPs for GSM, UMTS and LTE technology.
At the time, the two parties did not disclose the licence fee. According to press reports, it was in the three-digit million range, making it one of the NPE’s most lucrative licensing deals.
The lawsuits between IPCom and Deutsche Telekom were part of a spectacular patent battle launched by the NPE against Nokia in 2008. Later, IPCom sued Taiwanese mobile phone manufacturer HTC, following this up with attacks on mobile phone providers Telekom and O2/Telefonica.
But the 2013 settlement with Telekom had no impact on the other IPCom lawsuits. Unlike Deutsche Telekom, the other defendants refused to take licences. As such, the disputes continued.
Only earlier this year did it become known that HTC had also recently taken licences. According to a report by IAM, Apple also accepted a licence from IPCom. However, the parties have not yet confirmed this. A few weeks ago, US network operators AT&T, Verizon and Sprint/T-Mobile also took licences after the patent holder sued the companies for infringement in the US.
Bonn-based group Deutsche Telekom relied on Clifford Chance for the damages suit. Antitrust lawyer Joachim Schütze has many years of experience in the telecommunications industry.
In patent litigation prior to 2013, Reimann Osterrieth Köhler Haft (ROKH) acted for Deutsche Telekom from the beginning of the dispute. The firm merged with Hoyng Monegier in 2015 to form Hoyng ROKH Monegier. Patent partner Kay Kasper is considered a fixture when Deutsche Telekom is involved in patent lawsuits.
IPCom instructed regular counsel Quinn Emanuel Urquhart Sullivan. The firm has represented the NPE in parts of the patent litigation since the disputes began in 2008. While, at the time, Quinn Emanuel partner Marcus Grosch was responsible for the Mannheim actions, Axel Verhauwen of Düsseldorf IP firm Krieger Mes & Graf v. der Groeben represented IPCom in the infringement proceedings in Düsseldorf.
Quinn Emanuel litigator Jérôme Kommer led a team of patent and antitrust lawyers to defend the NPE in the current damages suit. Hengeler Mueller partner Wolfgang Kellenter also acted in an advisory capacity. He is often active for IPCom, for example in the dispute against Nokia.
According to JUVE Patent research, lawyers from the law firm of then-IPCom-owner Bernhard Frohwitter, as well as Noerr partner Ralph Nack negotiated the 2013 settlement. Kay Kasper from Hoyng ROKH Monegier also acted on the Deutsche Telekom side. He also represented the company in its various patent disputes.
Quinn Emanuel Urquhart & Sullivan (Mannheim): Jérôme Kommer, Marcus Grosch, Rüdiger Lahme (antitrust) (partners); associates: Felix Trumpke, Isabelle von Thuemmler (antitrust)
In-house (Munich): Pio Suh (managing director)
For Deutsche Telekom
Clifford Chance (Düsseldorf): Joachim Schütze (antitrust), Stefan Lohn (litigation & dispute resolution) (partners); associate: Arne Gayk (antitrust)
In-house (Bonn): Stephan Altmeyer (VP patent and brand), Patrick Schmitz, Karsten Schnetzer, Stefan Kettler (all three patent law), Jan Lohrberg (antitrust)
Regional Court Mannheim, 2nd Civil Chamber
Holger Kircher (presiding judge)