Intellectual Ventures ends biggest patent battle in Germany without a win

In 2015, the US-based non-practicing entity Intellectual Ventures sued the three major German network operators, Deutsche Telekom, Telefonica/O2 and Vodafone for the first time at the Mannheim, Munich and Düsseldorf regional courts. Further lawsuits followed, with 16 patents said to have been sued against each of the three providers. In addition, individual PI proceedings also took place.

Intellectual Ventures sued each of the three providers over the same 16 patents. All concerned LTE, DSL and WCDMA technology, as well as infrastructure and mobile devices.

Deutsche Telekom, Telefonica, and Vodafone each responded with individual nullity actions against most of the NPE’s patents. Germany’s patent courts are therefore likely to have heard between 100 and 120 proceedings during the dispute. Parties filed parallel lawsuits in France, Ireland and the US.

Lawsuits withdrawn

The NPE and the three main defendants have now apparently reached settlements in Germany. According to JUVE Patent information, Intellectual Ventures reached an agreement with Deutsche Telekom several months ago. A settlement with Vodafone followed at the beginning of 2024. As JUVE Patent has now learned, the NPE and Telefonica settled their dispute in March.

As such, parties have since withdrawn almost all lawsuits and nullity proceedings. None of the companies involved commented on the details of the agreements. As a central supplier of network technology, Huawei was also involved in all proceedings. The Chinese company has also reached an agreement with the NPE across the German and French cases.

During the dispute in Germany, multiple mobile phone manufacturers came onboard. As well as Huawei, Ericsson, HTC, Google, LG, Nokia, Wiko, ZTE, Michael Telecom AG and two further manufacturers of base stations joined the dispute at an early stage, forming a joint defence group. However, only Huawei, LG, Wiko, and Michael Telecom were officially involved as co-defendants in the proceedings.

Intellectual Ventures unsuccessful

Apparently, the parties involved on the defendant side coordinated very closely and maintained a uniform line against the NPE for years. This is despite their interests often diverging. In particular, they coordinated the arguments in the nullity actions against Intellectual Ventures’ patents, which were in part identical.

However, according to people involved, there parties did not coordinate on aspects relevant to antitrust law, such as FRAND,

The mega-battle between Intellectual Ventures and the three German network operators and their co-defendants produce a lot of paperwork. ©Anonymous

Intellectual Ventures was unsuccessful in court in all approximately 60 infringement and PI proceedings. The courts either dismissed the claims for non-infringement or revoked or restricted the patents so extensively that the network operators’ infringement was no longer viable.

Finally, Intellectual Ventures no longer actively pursued its infringement claims. Essentially, the case came down to the matter of reimbursement of costs. The value in dispute (in German, ‘Steitwert’) in the infringement actions varied between €5 and €20 million.

In particular, the defendant network operators and their co-defendants wanted Intellectual Ventures to reimburse their legal fees, with individual cost assessment proceedings still active. With so many years of dispute, the total legal costs are likely to be in the tens of millions of euros.

Dispute rumbles on

In France, however, the dispute continues. Here, in 2017 Intellectual Ventures filed suits based on three patents against Orange and Bouygues Télecom after making a licence offer. The defendant brought in DSL equipment manufacturers ECI Télécom, which US-based software company Ribbon Communications took over, as well as Infineon and Lantiq as third-party defendants.

Furthermore, Huawei, Sagemcom, ZTE and Sercomm – suppliers of DSL boxes to Orange – also joined the suit as voluntary co-litigants. According to JUVE Patent research, the parties have not yet settled the French proceedings.

As recently as the end of March, the French Court of Appeal heard an appeal by Intellectual Ventures. On 21 March, the judicial panel around presiding judge Veronique Renard deliberated whether multiple parties infringed the NPE’s EP 1 694 020, as well as its validity. Huawei did not take part in the appeal hearing due to its previous global settlement.

Tilmann Müller-Stoy

What next for France?

The settlement in Germany should now increase the pressure on the parties in France to end the dispute. In France, as in Germany, Bardehle Pagenberg represents the NPE as plaintiff. In the French proceedings, the Paris team is led by partners Julien Fréneaux and Clément Jaffray.

Two teams from Hoyng ROKH Monegier, led by partners Sophie Micallef, and Amandine Métier and Sabine Agé respectively, represent Bouygues Télécom and Orange.

Eight other companies recently participated in the proceedings as co-defendants: SFR with Loyer & Abello, Broadcom with Bird & Bird, Infineon with Jones Day, Intel with Linklaters, Sagemcom with Casalonga, ZTE with Taliens, ECI Telecom (now Ribbon) with Darkanian & Pfirsch.

Finally, Sercomm appeared with the Paris law firm BRG.

Nine years, same advisors

Although the litigation series has experienced many ups and downs over the years, the companies have always maintained continuity with their advisors. Bardehle Pagenberg has advised Intellectual Ventures from the start. Partner Tilmann Müller-Stoy leads its mixed team of patent attorneys and lawyers.

Telefonica always banks on the lawyers and patent attorneys at Lorenz Seidler Gossel, led by Philipp Neuwald. They were accompanied by a large in-house team led by head of legal, Alexander Krenzler.

Stephan Altmeyer

As in previous patent battles, Vodafone retained Hogan Lovells partner Erhard Keller and Martin Chakraborty. The latter sadly passed away during the course of the dispute. Many participants attribute Chakraborty to playing a central role in the joint-defence group. Vodafone also relied on patent attorneys from Maikowski & Ninnemann, and Eisenführ Speiser.

Vodafone key client

Hogan Lovells particularly benefits from fending off suits from Intellectual Ventures; in addition to Vodafone, the team represents co-litigants LG, ZTE and Google. LG and ZTE are long-term clients, whereas Google began establishing deeper ties to Hogan Lovells’ Munich office during the Intellectual Ventures battle.

The German team of Hoyng ROKH Monegier regularly represents Deutsche Telekom. The Bonn-based company frequently calls on the team around Kay Kasper for patent litigation. Braun-Dullaeus Pannen Emmerling and Samson & Partner patent attorneys were also on the team.

As usual for the company, an in-house team led by general counsel Claudia Junker and VP patents & brands Stephan Altmeyer played a key role.

Christian Donle

New claims in the US

Huawei and its advisors are said to play a particularly active role in the defence community. Preu Bohlig partner Christian Donle, patent attorney Friedrich Emmerling from Braun-Dullaeus Pannen Emmerling, and a large in-house team work alongside each other as a dedicated team. Huawei also cooperates with other law firms on both the lawyers and patent attorney side.

Wiko (advised by Vossius & Partner), HTC (Kather Augenstein), Ericsson (Freshfields Bruckhaus Deringer), Google (Hogan Lovells), Nokia (Arnold Ruess and Samson & Partner), Michael Telecom (McDermott Will & Emery and Meissner Bolte & Partner) and ZTE (Hogan Lovells) were variously involved in the individual proceedings at different times over the last nine years.

According to press reports, Intellectual Ventures launched a new series of lawsuits against the car manufacturer Tesla in the US in mid-April. The NPE has sued for infringement of twelve US patents.

It has not yet filed lawsuits in Europe. JUVE Patent is also not aware of any lawsuits against other companies in Europe.