EPO not playing along with KPN’s UPC strategy

KPN’s UPC lawsuit against Oppo, which it only launched in September, has taken a surprising turn just three months later. The Boards of Appeal have declared the patent in suit EP 2 387 844 invalid due to added-subject matter (case ID: T1841/23).

The Technical Board 3.5.05 under chairman Kemal Bengi-Akyürek set aside an earlier ruling of the Opposition Division. In August 2023, Xiaomi attacked the patent at the Opposition Division but the patent survived. Xiaomi appealed the decision. Oppo joined as intervener.

EP 844 protected a technology to manage associated sessions in a network and is relevant to multimedia streaming and the WebRTC standard. Back in September 2024, KPN filed an SEP case against two Dutch and two German Oppo subsidiaries at the local division The Hague (case IDs: ACT_49159/2024 and UPC_CFI_502/2024). KPN had previously opted EP 844 out of the UPC but withdrew the opt-out in March 2024.

UPC path unclear

The Dutch company accused Oppo and OnePlus of infringing the patent with its smartphones. It thus sought an injunction against Oppo, particularly for the Netherlands, Germany, France, and Italy. So far this is KPN’s only UPC suit against Oppo. The companies are also fighting in two proceedings at the Regional Court Düsseldorf (case IDs: 4b O 27/22 and 4b O 44/22) and before other national courts.

It is now unclear how the UPC case will proceed. In the hearing before the EPO Boards of Appeal, KPN indicated that it would appeal to the Enlarged Boards of Appeal as it considered its right to be heard had been violated. The company complained that it had not had enough time to respond to the opponents’ submissions and requested that the hearing, or at least the judgment, be postponed so that it could still respond in writing.

It is currently unclear whether KPN will take this step. Even if KPN files the appeal, it is very likely that the UPC will not continue the infringement case until the EBA has reached a final decision. This could take years.

However, it is also possible that KPN will withdraw the UPC action and concentrate on other patents. KPN has submitted further applications to the EPO based on the same technology as EP 844.

Bird & Bird and De Vries for KPN

Dutch patent firm NLO represents Xiaomi. Patent attorneys Harm von der Heijden, Huaizhou Shi and Bart de Leeuw launched the attack against the KPN patent. Lawyer Marco Scheffler and patent attorney Martin Thimm from German IP firm Gulde & Partner represented Oppo in the EPO proceedings.

Rien Broekstra from Dutch firm Brinkhof is leading team operating under the Vossius & Brinkhof UPC litigators brand that represents Oppo in the UPC case. Brinkhof has represented Oppo in several disputes against Nokia, Sisvel and KPN in the past. Recently, Brinkhof lawyers together with German IP firm Vossius & Partner represented Oppo in three lawsuits filed by Panasonic at the local division Mannheim. The cases are about to settle.

In the UPC case, KPN relied on the same firms as in the EPO opposition proceedings but they had different roles. While patent attorneys Ferry van Looijengoed and Erik Visscher from Amsterdam firm De Vries & Metman were in the lead in the opposition proceedings, they supported the Bird & Bird team in the UPC case on the technical side. Bird & Bird lawyer Peter van Gemert was also present in the EPO proceedings.

Both firms have a long-standing relationship with the Dutch telecommunications company. For example, they have defended KPN against High Point for many years and also in a nullity case initiated by Verify IP.