Intellectual Ventures fails with infringement claim against SFR in France

Intellectual Ventures is taking action against various telecommunications companies in France over a variety of patents. The disputes concern network standards such as 3G and 4G, as well as wifi technology. For example, an appeal is currently pending in the case concerning EP 16 94 020, which the first-instance court decided on in 2021.

Intellectual Ventures claims infringement

However, the current proceedings concern the French part of EP 13 04 002, which protects a technology for arranging data ciphering in a wireless telecommunication system. In November 2019, the patent holder filed a request for limitation of the French part of EP 002 with the French patent office INPI. It granted this in January 2020, with the patent then expiring at the end of June 2021.

The Société Française du Radiotéléphone (SFR) has offered its “Auto Connect WiFi” service since 2012, which gives customers access to the internet via hotspots. In providing this service, Intellectual Ventures accuses the French telecommunications provider of infringing claims one, eleven and 14 of the French part of EP 002.

Following a seizure, known as a saisie-contrefaçon, Intellectual Ventures filed an infringement suit against SFR at the Judicial Court Paris in November 2016. Now the judges have declared the three claims null and void. They have also dismissed the infringement suit.

Unusual turn of events

The court has also ordered Intellectual Ventures to pay 50,000 euros in compensation to SFR for defamation, in addition to the usual legal costs. This is because, shortly after the NPE filed the suit in November 2016, it publicised the legal dispute on its website. According to the judges, this harmed SFR’s image and discredited a market participant without the basis of a legally binding judgement.

Julien Fréneaux

However, this part of the judgment is rather unusual, since it is fairly common practice for patent owners to publicise newly filed lawsuits. In addition, the court rejected the defendants’ request to destroy the evidence collected during the seizure. This would allow it to be used again, provided Intellectual Ventures appeals the ruling.

IP boutiques join the fray

Intellectual Ventures is again relying on Bardehle Pagenberg, with the two already working together in proceedings against numerous mobile communications providers over DSL technology. Paris partner Julien Fréneaux has experience in representing NPEs, also litigating for IPCom in proceedings against Lenovo and Xiaomi.

Partner and patent attorney Marie-Claude Pellegrini assisted Fréneaux on the technical side. Bardehle Pagenberg is one of the few French IP teams with a mixed line-up.

Loyer & Abello has already represented SFR in the multiparty litigation over DSL. The firm has a long-standing client relationship with Numericable. In 2014, Numéricable’s holding company, Altice, acquired SFR and eventually merged the activities of both subsidiaries.

Name partner Michel Abello, who the UPC recently named as a technical judge, was mainly involved with nullity issues in the current proceedings. Young partner Guillaume Dubos, who joined the IP boutique from Dechert in 2013, advised on infringement matters.

Michel Abello

For Intellectual Ventures
Bardehle Pagenberg (Paris): Julien Fréneaux (partner), Marie-Claude Pellegrini (partner and patent attorney); associate: Clément Jaffray

For SFR
Loyer & Abello (Paris): Guillaume Dubos, Michel Abello (partners); Thomas Leconte (patent attorney); associate: Stéphanie Rollin de Chambonas
In-house (Paris): Claire Chamard (head of IP)

Judicial Court of Paris, 3rd Chamber
Nathalie Sabotier (presiding judge), Arthur Courillon-Havy, Linda Boudour