Düsseldorf court hands Intel a sales ban in R2 Semiconductor chip dispute

R2 Semiconductor and Intel are currently engaged in a battle over on-chip voltage regulators, which are features of the latter company’s portfolio of mobile phones, laptops and server-processor chips. Yesterday, the Düsseldorf Regional Court handed down a judgment in which it declared that some of the US multinational corporation’s products infringe a patent owned by California-based R2 Semiconductor (case IDs: 4c O 58/22, 4c O 59/22, 4c O 60/22, 4c O 61/22).

The implications from the outcome of the case could also involve companies which integrate Intel chip processors into their models, such as HP, Dell and HPE. All three companies were involved in the case as defendants alongside Intel.

The patent in question, EP 3 376 653 B1, relates to overvoltage protection for a switching converter in an integrated circuit unit. R2 Semiconductor develops high-frequency semiconductor technology for power management; for example, EP 653 covers voltage-regulation technology.

Intel responds to attack

In November 2022, R2 Semiconductor filed a lawsuit against Intel Deutschland GmbH with the Düsseldorf Regional Court. The suit claimed that the Fully Integrated Voltage Regulator technology present in many of the last three generations of Intel processors, including in Intel’s Core and Xeon chips, infringes EP 653.

As such, the claimant requested injunctive relief, disclosure, rendering of accounts, recall and destruction. It also sought a declaration of liability for damages on the basis of its patent-in-suit. The Düsseldorf Regional Court has upheld R2 Semiconductor’s claims, resulting in a sales ban on certain Intel processors in Germany.

In May 2023, the company had issued a counterclaim for revocation at the German Federal Patent Court (case ID: 4Ni 14/23. In December 2023, however, the court issued an opinion stating the patent had a high chance of success.

Parallel in the UK

The processors affected are: the Core i3/i5/i7/i9 ‘Ice Lake’; the Core i3/i5/i7/i9 ‘Tiger Lake’; the Core i3/i5/i7/i9 ‘Alder Lake’; and the Xeon Scalable ‘Ice Lake Server’. Furthermore, the company must also provide an account of how many units of the effected products it has sold so far. Press reports state that Intel intends to file an appeal. However, according to a Financial Times report, the case does not impact the company’s 13th and 14th generation chips

In November 2022, R2 Semiconductor filed a claim for infringement against Intel at the UK High Court (case ID: HP-2022-000031), seeking an injunction against Intel. Meanwhile, in December 2022 Intel responded with a counterclaim for invalidation, also refuting the claim of infringement. The UK hearing, which concerns the same patent, is due to take place in April 2024.

Previously, R2 Semiconductor had tried to assert a patent belonging to the EP 653 family against Intel in the US. However, according to reports, the court in question rejected the claims.

Strong across Germany

A mixed team of two strong, mixed firms, Bardehle Pagenberg and Eisenführ Speiser, worked together for R2 Semiconductor, bringing in expertise from across their German offices. For example, in Hamburg, partner Volkmar Henke led for Bardehle, working alongside the firm’s own patent attorneys in Munich, including partner Tobias Kaufmann.

A mixed Eisenführ partner team in Hamburg, comprising of litigator Sönke Scheltz and patent attorney Stefan Wiethoff, worked alongside one of the firm’s Berlin-based partners, Ludger Eckey. Eisenführ conducted proceedings against Dell, which were also involved alongside Intel.

European IP boutique Hoyng ROKH Monegier works for Intel, having previously represented the latter company in Europe. One of the firm’s Munich-based partners, Klaus Haft, is also experienced in suits concerning semiconductors. For example, he currently represents Texas Instruments at the UPC, after it was sued by Network System Technologies.

London teams involved

In the parallel UK proceedings, Herbert Smith Freehills is leading the charge for R2 Semiconductor. Partners Andrew Moir and Andrew Wells are running the team here. London-based patent attorney firm Gill Jennings & Every originally filed the patent at the EPO.

In London, a team from the London office of US firm, Kirkland & Ellis, represents Intel. Partners Daniel Lim and Nicola Dagg are running the case for the US manufacturer. While Intel has long relied on the US-based Kirkland team, the instruction against R2 Semiconductor demonstrates that the firm is becoming a top choice for the company in the UK, too.

For R2 Semiconductor
Bardehle Pagenberg (Hamburg): Volkmar Henke (partner); associate: Anita Peter (counsel)
Bardehle Pagenberg (Munich): Tobias Kaufmann (partner); associate: Daniel Werner (both patent attorneys)
Eisenführ Speiser (Hamburg): Sönke Scheltz, Stefan Wiethoff (patent attorney) (both partner)
Eisenführ Speiser (Berlin): Ludger Eckey (partner)

For Intel
Hoyng ROKH Monegier (Munich): Klaus Haft (partner); associates: Carina Höfer (counsel), Max von Leitner, Clara Berrisch
Samson & Partner (Munich): Wolfgang Lippich (partner, patent attorney)

Düsseldorf Regional Court, Düsseldorf
Sabine Klepsch (presiding judge)

JUVE Patent updated this article on 09.02.2024 to reflect which firms are representing R2 Semiconductor in the dispute.

JUVE Patent updated this article on 13.02.2024 to reflect which firms are representing Intel in the dispute, and to clarify that the German Federal Patent Court has issued an opinion, not a final judgment, regarding the patent’s validity.