Federal Patent Court revokes InterDigital patent in dispute with Oppo

The Federal Patent Court under presiding judge Monika Hartlieb has revoked InterDigital’s  EP 2 485 558 B1 in its entirety (case ID: 2 Ni 11/22). The patent protects a technology for a method and apparatus for providing and utilising a non-contention-based channel in a wireless communication system.

Oppo had challenged the German part of the patent as part of its dispute with the NPE over a global licence agreement. After the court doubted the validity of the patent in its preliminary opinion, Mannheim Regional Court stayed InterDigital’s infringement action (case ID: 7 O 155/21 and 7 O 46/22).

This constitutes a further setback for InterDigital. However, the NPE can appeal against the Federal Patent Court’s ruling. If the two companies do not agree on a licence beforehand, InterDigital will likely appeal.

Mixed result in Germany

For years, InterDigital has fought various mobile phone manufacturers in different countries over SEPs relevant for the 3G, 4G and 5G standards. In Germany, the NPE filed lawsuits against Oppo, OnePlus and Realme — all of which belong to Chinese group BBK Electronics — over three different patents at courts in Mannheim and Munich.

There is no litigation pending at the UPC, but the two opponents are facing off in the UK. There are also parallel proceedings in China, India, and Spain.

At the end of 2023, InterDigital achieved an early success in its battle against Oppo, OnePlus and Realme. In a nullity action filed by Oppo, the Federal Patent Court upheld the German part of InterDigital’s patent EP 2 127 420 B1 with restrictions. Then, shortly before Christmas, Munich Regional Court’s 7th Civil Chamber found that Oppo and OnePlus products infringed the previously restricted patent and ordered the defendants to cease and desist (case ID: 7 O 17302/21). Oppo has since appealed against both judgments.

Munich Regional Court stayed the third infringement proceedings after the Federal Patent Court revoked EP 2 421 318 in November 2023. InterDigital appealed against this judgment (case ID: X ZR 28/24).

Therefore, the court has now revoked two of InterDigital’s patents in the first instance. At the end of the week, the focus will turn to the UK High Court in London.

All eyes on London

The UK High Court will hear the FRAND trial between InterDigital and Oppo on Thursday or Friday (case ID: HP-2021-000047).

Initially, the UK High Court had scheduled the technical trials, however Interdigital and Oppo agreed to bring forward the FRAND trial. The court heard the main FRAND trial in March 2024. Joanne Smith is the presiding judge. According to UK sources, this is her first FRAND case.

In the meantime, the UK Court of Appeal has established new facts with its ruling in InterDigital vs Lenovo. As a result, Smith has given InterDigital and Oppo another opportunity to comment on how the Court of Appeal’s ruling affects the FRAND positions in their case at this week’s hearing.

Observers expect judge Smith to hand down the final FRAND ruling around four weeks after the additional hearing. It could be the first FRAND ruling following the decision of the UK Court of Appeal. The next FRAND ruling by Richard Meade in the dispute between Panasonic and Oppo is expected at the end of the year.

Maikowski and Clifford Chance for Oppo

For the technical issues in the German proceedings, patent attorneys Gunnar Baumgärtel and Frederick Kramer of Maikowski & Ninnemann took the lead in the revocation action. They are working with Clifford Chance lawyers Tobias Hessel and Stefan Richter. The two teams also represent Oppo in national and UPC litigation against Panasonic.

Hessel and Richter brought the client relationship with Oppo to Clifford Chance when they moved to the international full-service law firm from Hoyng ROKH Monegier in early 2023.

Arnold Ruess and df-mp for InterDigital

InterDigital relies on Düsseldorf IP boutique Arnold Ruess. The team, led by litigators Arno Riße and Jan Wergin, is also advising Nokia in the lawsuit against Oppo. Here, as in the current case for InterDigital, the well-established cooperation with the patent attorneys of df-mp comes into play once again.

Both Dominik Ho and David Molnia are highly recognised for their expertise in telecommunications. Patent attorney Nikola Wiesemann and lawyer Jakob Dandl were also part of the team.

In the UK proceedings Oppo relies on Taylor Wessing partner Michael Washbrook’s team, including Xuyang Zhu, Daniel Piccinin and Ravi Metha.

Bird & Bird is representing InterDigital. London-based partners Richard Vary and Katharine Stephens are in the lead.