First NPE lawsuits over semiconductor patents reach the UPC

Prior to the launch of the Unified Patent Court, experts had expected a particularly high number of lawsuits from NPEs. However, in the first seven months, these companies have shown particular reluctance to file lawsuits with the new court. Now, according to the court’s case search, the first two NPEs have filed UPC actions.

At the beginning of January, the US company Network System Technologies, which focuses on the licensing business, sued Texas Instruments, Audi and Volkswagen for infringement of EP 1 875 683, EP 1 552 669  and EP 1 552 399 (case IDs: ACT_597692/2023, ACT_597691/2023 and ACT_597693/2023).

According to JUVE Patent information, the US company has sued over a third patent. However, this lawsuit is not yet visible in the UPC case search. All patents relate to chip technology but are not SEPs. They cover methods for integrated circuit design and message exchange in such integrated circuits. This technology is used in electronic devices, but also in cars. Philips originally developed the technology in Europe.

Three NPE claims in Munich

EP 669 and EP 399 expired at the end of the year. Accordingly, Network System Technologies is only seeking damages. In the action relating to EP 683, however, it is seeking an injunction and damages from the three defendants.

Thomas Gniadek

Parallel lawsuits are running in the US. A Simmons & Simmons team led by Munich partner Thomas Gniadek filed the three UPC lawsuits.

According to the UPC website, Klaus Haft, Munich-based partner of Hoyng ROKH Monegier, represents Texas Instruments, with whom the firm has a long-standing relationship.

Klaus Haft already represented the US company in a connected cars lawsuit in 2018. At that time, Innovative Foundry Technologies filed an infringement suit against VW, Ford and Texas Instruments at the Regional Court Düsseldorf.

According to the UPC website newly appointed Bardehle Pagenberg partner Jan Bösing has taken over the representation of Audi and Volkswagen.

Semiconductor patents at play

Another NPE case, which also revolves around semiconductor technology, was filed by the US company ICPillar in December against twelve different companies in the ARM group.

ICPillar is a US company founded by the US inventor Daniel Seidner. According to JUVE Patent information, it does not produce or sell its own products. ARM developed the so-called ARM architecture, which is built under licence and used in many mobile devices.

Klaus Haft

ICPillar sued ARM at the Paris local division for infringement of EP 3 000 239. The patent protects a system and method for universal control of electronic devices, which is used to produce semiconductors. Daniel Seidner owns the patent.

According to the UPC website, Lionel Martin, partner at August Debouzy, filed the UPC lawsuit. A Germany based team of Mayer Brown is representing the defendants. Mayer Brown is supported by a British-German patent attorney team of Haseltine Lake Kempner.

Many SEPs cases, few NPE claims

With the four new claims from Network System Technologies and ICPillar, the number of UPC proceedings relating to mobile communications and semiconductor technology has now risen to 27, not including counterclaims for revocation and appeals. However, medical technology remains the strongest technology field, with 29 proceedings.

Lionel Martin

The largest dispute over mobile communication patents remains the twelve lawsuits filed by Panasonic against Oppo and Xiaomi. The first lawsuits from this sector include Philips against Belkin, and Avago against Tesla. Avago also sued Tesla over semiconductor patents.

Like the Network System Technologies campaign, the proceedings can be categorised as connected cars lawsuits.

Other UPC proceedings include Nokia against Hewlett-Packard over video coding, and Amazon as well as Huawei against Netgear over wifi technology. Some observers associate the lawsuits by Dolby against Hewlett-Packard and Asus with patent pools.

For Network System Technologies
Simmons & Simmons (Munich): Thomas Gniadek (lead, partner); associates: Tobias Schönhöfer, Sebastien Versaevel, Diptanil DebBarma (both patent attorneys)

For Texas Instruments
Hoyng ROKH Monegier (Munich/Düsseldorf): Klaus Haft (partner)

For Audi and Volkswagen
Bardehle Pagenberg (Munich): Jan Bösing

Unified Patent Court, Munich local division
Matthias Zigann (presiding judge), Tobias Pichlmaier, Pierluigi Perrotti

For ICPillar
August Debouzy (Paris): Lionel Martin (partner)

For ARM
Mayer Brown (Frankfurt, Köln, Düsseldorf): Christoph Crützen (lead), Ulrich Worm, Rob Pluta (Chicago, all partners); associates: Benjamin Beck, Niyati Asthana, Alexander Balan
Haseltine Lake Kempner (London, Bristol, Munich):  Greg Ward, Matthew Howell, Will Morgan, James Ward (all patent attorneys)

Unified Patent Court, Paris local division
Camille Lignieres (presiding judge), Carine Gillet, Petri Rinkinen

JUVE Patent updated this article on 6.03.2024 to reflect which firms are representing ARM in the UPC proceeding.