Intellectual Ventures loses SEP dispute in Paris

Intellectual Ventures has been locked in a bitter dispute against various telecommunications companies for years. The NPE accuses the companies of infringing its EP 1 694 020, which protects a multicarrier modulation system and method. Intellectual Ventures claims it as essential to the ADSL norm and filed suits against Orange, Bouygues Telecom and SFR (case IDs: 22/01207 and 22/01209 and 22/01211).

The defendants brought in DSL equipment manufacturer ECI Telecom, which was taken over by US-based software company Ribbon Communications, 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.

Huawei, which had retained August Debouzy in the first-instance proceedings, did not take part in the appeal proceedings due to previous settlements.

In september 2021, the first-instance Judicial Court of Paris declared important claims of the French part of EP 020 invalid and consequently denied infringement (case IDs: 17/13837, 17/13838 and 17/13839). The Court of Appeal has now confirmed this decision.

Tight schedule

At the appeal hearing on 21 March, which JUVE Patent attended, Julien Fréneaux from Bardehle Pagenberg argued on behalf of the plaintiff Intellectual Ventures. The French team of the German firm has represented the claimant since the beginning of the proceedings. The team is known for its extensive experience in litigating for NPEs. For example, the firm has also worked for IPCom in the past. Bardehle also represents Intellectual Ventures in parallel French proceedings concerning two other patents, as well as in the German dispute against Deutsche Telekom, Telefonica/O2 and Vodafone.

The defendants also retained advisors who have represented them in other disputes in France.

The panel of judges of the 2nd chamber of the court’s 5th division consisted of presiding judge Véronique Renard and judges Laurence Lehmann and Agnès Marcade. They gave Fréneaux one and a half hours for his plea. “After that, I’ll turn off the microphone,” threatened Renard.

However, the arguments for the validity of EP 020 took up the majority of the allotted time. After more than an hour, not a word had been said on the question of infringement. Nevertheless, the judges did not turn off the microphone.

Defence team counters

After a short break, the defence had little time left to present its arguments. Marianne Gabriel from Casalonga for Sagemcom and Pauline Debré from Linklaters for Intel presented the main line of defence on behalf of the joint defence group. Sylvie Kong Thong of ARPI participated in the appeal for Sagemcom as a lawyer specialised in appeal procedures.

Tried and tested

Sophie Micallef and Amandine Métier from Hoyng ROKH Monegier presented the pleas before the Court of Appeal for telecommunications operators Bouygues Télécom and Orange. The companies have banked on the renowned firm since proceedings began. Deutsche Telekom also worked with the firm in the German case until they recently reached a settlement. Anne Grappotte Benetreau, a lawyer specialised in appeal procedures, provided support.

SFR relies on Guillaume Dubos from Loyer & Abello in all proceedings against Intellectual Ventures in France.

Furthermore, a team from Bird & Bird around partner Anne-Charlotte Le Bihan represented Broadcom. The boutique Taliens represented long-standing client ZTE, with counsel Tougane Lumeau attending the oral hearing. Philippe Marchiset from Jones Day attended the trial as part of the team around partner Thomas Bouvet acting for Infineon.

Ribbon (formerly ECI Telecom) retained Augustin Pfirsch from Darkanian & Pfirsch, while Sercomm relied on Richard Rondoux from BRG, assisted by Frédérique Etevenard as specialist for appeal procedures.

More to come in France

Further disputes are pending regarding two other Intellectual Ventures patents in France. In 2021, the EPO revoked EP 2 146 439. The French court stayed proceedings pending a decision by the EPO Boards of Appeal on the patent’s validity. However, according to JUVE Patent information, last week the BoA confirmed the opposition division’s decision to revoke the patent. The French proceedings may thus resume in time. However, the EPO has not yet published the decision.

In November 2022, the Paris Judicial Court revoked some claims of EP 1 327 374 due to lack of novelty, while also dismissing the infringement claims. An appeal is pending.

In Germany, however, Intellectual Ventures reached a settlement with the three major network operators Deutsche Telekom, Telefonica/O2 and Vodafone in spring. Thus, after nine years, one of the biggest patent battles in Germany is at an end.