Google victorious against Philips over smart phone patent

The Federal Court of Justice in Germany has declared European patent EP 08 88 687 owned by Philips invalid. It concerns rotating displays for smartphone screens. The patent is non-essential, otherwise known as an implementation patent.

Litigation about the patent is now over in Germany and all infringement proceedings have been dropped against co-claimants Wiko, HTC, Archos, Asus and Axdia. Google intervened to lead the case on this side. The case is significant due to its scope. If EP 687, among other parallel patents, was found valid and infringed across all jurisdictions, withdrawing multiple mobile phone models could mean huge economic losses for the claimants.

Implementing the patent

Proceedings over EP 687 began in late 2015, when Philips filed proceedings against four defendants Wiko, HTC, Archos and Asus. The company claimed the defendants infringed three patents related to the UMTS and LTE standards in the Netherlands, the UK, France and Germany.

In summer 2016, Mannheim Regional Court issued a temporary injunction to halt sales for smartphones and tablets from Asus featuring Android 5.0 and above. The technology was based on Philips’ patent EP 687. The Dutch company claimed the use of this technology in mobile phones belonging to Wiko, HTC and Archos infringed the patent.

Google provides the Android operating system, which is used by the phone manufacturers, thus providing the justification to join the dispute. It developed an update which it claimed no longer infringed the contested patent 687. Google then filed a nullity action before the Federal Patent Court. The court declared the patent invalid.

Philips lodged an appeal against this decision at the Federal Court of Justice, but the court upheld the first instance decision. Now European patent EP 687 is now null and void, although the invalidity ruling currently only affects Germany. However, last year in parallel proceedings, the Tribunal de Grande Instance in Paris also destroyed patent EP 687.

Decisions in the Netherlands

There is also Europe-wide litigation taking place concerning standard essential patents owned by Philips. In particular, Dutch courts have recently handed down notable decisions concerning FRAND.

In December 2019, the Court of Appeal in the Netherlands court found European patent EP 1 440 525 , which is owned by Philips, valid and infringed by Asus and Wiko. The patent concerns radio communication systems. In Germany, the Federal Patent Court declared the same patent null and void.

In the same case, the court found Asus an unwilling licencee to Philips on FRAND terms. Regarding Wiko, the court reiterated its first instance decision regarding validity and infringement of the Philips patent. The parties are expected to appeal this decision.

In another judgment, the Court of Appeal in the Netherlands found EP 1 685 659 invalid due to lack of inventive step. Here, Philips lost its appeal against the second instance decision. Therefore no FRAND discussions took place concerning EP 659, which covers a method of operating a radio communication systems.

Last week, the UK Court of Appeal also handed down judgments concerning the UK designations of the above patents. Another patent, EP (UK) 1 440 525, was also involved. EP 659 was found invalid. However, the court found the other two patents valid. In Germany, 14 patents owned by Philips are still in dispute. The total contains a mixture of SEPs and implementation patents.

Final curtain

Andreas Kramer

Philips is working with its go-to law firm Hoyng ROKH Monegier for the proceedings at The Hague. The international IP firm also conducted the Paris proceedings.

However, in Germany Philips has a long-standing relationship to Eisenführ Speiser. The mixed IP firm represents Philips in the German proceedings with a mixed team of patent attorneys and litigators.

French firm Wiko has long relied on Düsseldorf-based Vossius partner Andreas Kramer, who brought the case from his previous position at Arnold Ruess in 2018. Vossius led the litigation proceedings for Wiko in Germany. However, Vossius worked alongside patent attorney Christoph Hewel from Paris-based patent attorney firm Cabinet Beau de Loménie in the nullity aspects of the case.

Richard Ebbink

Brinkhof, led by partner Richard Ebbink, acts for Wiko in the Netherlands. Taiwanese electronics company HTC was also originally a plaintiff in the dispute. However, the company withdrew its action before the oral hearing. It was represented by Hogan Lovells.

Google has long been represented by the team around Marcus Grosch, partner at the Munich office of Quinn Emanuel Urquhart & Sullivan. The firm is the first choice for Google and subsidiaries in Germany. The two have a long-standing and close relationship.

Marcus Grosch

Throughout Europe, Taylor Wessing represents Asus. In Germany, the roles are clearly divided between two teams at the firm. A team in Munich advises on the SEP proceedings, while a team around Düsseldorf partner Roland Küppers handles proceedings on implementation patents.

Taylor Wessing first came into contact with Asus through the liaison office in Menlo Park, California.

For Philips
Eisenführ Speiser (Hamburg): Jochen Ehlers (lead); Désirée Heintz, Tilman Müller (patent attorneys) (German proceedings)
Hoyng ROKH Monegier (Amsterdam): Bart van den Broek (lead), Geert Theuws (Dutch proceedings)
Hoyng ROKH Monegier (Paris): Denis Monégier du Sorbier (French proceedings)

For Google
Quinn Emanuel Urquhart & Sullivan (Munich): Marcus Grosch, Jérôme Kommer, Marlen Yan (German proceedings)

For Wiko
Vossius & Partner (Düsseldorf): Andreas Kramer, Hannes Obex, Leonie Dißmann-Fuchs (German proceedings)
Cabinet Beau de Loménie (Paris): Christoph Hewel (patent attorney) (German proceedings)
Brinkhof (Amsterdam): Richard Ebbink, Rien Broekstra (Dutch proceedings)
Armengaud Guerlain (Paris): Catherine Mateu (French proceedings)

For Asus
Taylor Wessing (Düsseldorf): Alexander Rubusch, Roland Küppers (German proceedings)
Dompatent von Kreisler Selting Werner (Cologne): Andreas Gagidis (German proceedings)
Taylor Wessing (Eindhoven): Wim Maas, Eelco Bergsma, Bram Nijhof, David Mulder (Dutch proceedings)
August Debouzy (Paris): Grégoire Desrousseaux (French proceedings)

Federal Court of Justice, Karlsruhe
Klaus Bacher (presiding judge), Helga Kober-Dehm, Nina Marx, Patricia Rombach, Hartmut Rensen