Mobile communication

Game over in Sisvel and Xiaomi’s global SEP dispute

A licensing deal has ended all global litigation between Sisvel and Mitsubishi Electric, and mobile electronics company Xiaomi. The deal covers all mobile communication patents of the companies. So far, the proceedings have kept numerous law firms in Germany, Italy, the Netherlands and the UK occupied.

2 July 2021 by Mathieu Klos

Sisvel and Mitsubishi, Xiaomi A licensing deal between Sisvel and Mitsubishi, and mobile company Xiaomi, has ended all global litigation over SEPs between the parties ©Jo Panuwat D/ADOBE STOCK

It’s game over in the ongoing SEP debate between Sisvel and Mitsubishi, and Xiaomi. On Wednesday, Sisvel and Mitsubishi agreed with Xiaomi to settle all global lawsuits concerning the UMTS and LTE patents.

Sisvel’s licensor Mitsubishi Electric, as well as the NPE itself, had sued Xiaomi across Europe. Xiaomi had also sued Sisvel at the Beijing Intellectual Property Court, requesting a determination of SEP royalty rates in China.

The latest settlement includes Xiaomi agreeing to a licence for all of its mobile communication patents. Additionally, the companies announced in a joint press release to end all lawsuits in China, Germany, Italy, the Netherlands and the UK.

Sisvel and Mitsubishi offer settlement

Volkmar Henke, Eisenführ Speiser, Sisvel and Mitsubishi

Volkmar Henke

Sisvel and Mitsubishi Electric’s cellular patent portfolio, which is now licensed to Xiaomi, includes over 120 patent families. Altogether comprising over 1,800 individual patents, the portfolio concerns cellular standards.

Since early 2018, Sisvel says it has combined and licensed various telecommunications licensing programs for the UMTS and LTE standards through its mobile communications programme (MCP). The portfolio includes Sisvel and Mitsubishi patents, and comprises 82 patent families for the 3G standard. Furthermore, it contains 107 patents for the LTE standard.

According to Sisvel, the company demands a licence rate of €0.35 per handset for 3G. However, this amount rises to €0.53 for LTE. Licensees must pay €0.88 for both licences together.

But, because Xiaomi has not signed up to the MCP programme, the agreement only covers Sisvel and Mitsubishi patents. The agreement does not cover patents owned by other MCP licensors. JUVE Patent is unaware whether Xiaomi accepted the settlement on official MCP terms. It is probable that more favourable terms were possible. However, the companies have not disclosed details.

Expanding the battle

For many years, Sisvel claimed it was trying to persuade Xiaomi to sign a licence agreement for its UMTS and LTE portfolio.

Sisvel and Mitsubishi

Thomas Gniadek

In 2019, Sisvel went up against Xiaomi in the UK, Italy and the Netherlands. Early in the dispute, the Regional Court and Higher Regional Court of The Hague denied Sisvel a preliminary injunction against Xiaomi for lack of urgency.

In Italy, Sisvel sued the Chinese mobile phone manufacturer over four patents.

In April 2019, in proceedings Sisvel brought against Xiaomi, the NPE sought a declaration that its MCP pool licence was FRAND. Sisvel also sought acknowledgement that Xiaomi infringed three of its patents in the UK. The court divided the case into three oral hearings, which began at the end of the year and continued into 2021.

On 4 September 2020, Sisvel filed a patent infringement suit against Xiaomi at the Munich Regional Court (case ID: 7 O 1154/20). The NPE accused Xiaomi of infringing two UMTS patents with its tablets and mobile phones in Germany.

Sisvel is now pursuing a litigation campaign against Oppo and OnePlus in the UK, the Netherlands and Italy.

Eisenführ in the lead

Gertjan Kuipers, Sisvel and Mitsubishi

Gertjan Kuipers

For the German case against Xiaomi, Sisvel relied on a team from Eisenführ Speiser, led by Hamburg partner Volkmar Henke. The NPE solely retained a mixed team of lawyers and patent attorneys from Eisenführ without retaining any lawyers from other law firms. Eisenführ has a long-standing client relationship with Sisvel.

In the parallel Dutch claims against Xiaomi, Sisvel worked together with a team from law firm De Brauw Blackstone Westbroek and patent attorney firm De Vries & Metman. Elsewhere, Milan-based partner Giovanni Galimberti and a team from Bird & Bird run the Italian cases for the NPE against Xiaomi.

In the UK, Sisvel retained a Bird & Bird team led by partners Richard Vary and Jane Mutimear.

Xiaomi in Europe

Xiaomi is a relatively new face in European patent litigation. As such, the company is just beginning to establish relationships with European patent firms.

Nicola Dagg, Sisvel and Mitsubishi

Nicola Dagg

In the dispute against Sisvel, the German patent team of Simmons & Simmons around Peter Meyer and Thomas Gniadek defended Xiaomi. This was the first time the German team had worked for the mobile communication company. Patent attorneys of MFG Meyer-Wildhagen Meggle-Freund Gerhard supported Simmons in the proceedings.

In the Netherlands, Xiaomi works with Brinkhof, as well as with  patent attorney firm NLO.

In the UK, Xiaomi had relied on Kirkland & Ellis in lawsuits brought by IPCom. Partners Nicola Dagg and Steven Baldwin led the team, which came to the fore against Sisvel. In Italy, IP boutique Trevisan & Cuonzo took over the proceedings for Xiaomi.

For more background on the Sisvel and Mitsubishi vs. Xiaomi case, read here.