IP Bridge and TCL settlement pre-empts FRAND negotiation in Germany

As reported by Chinese and US magazines, the state-funded Japanese patent pool IP Bridge and Chinese electronics company TCL have concluded a global licensing agreement. This ends all current lawsuits around cellular, wireless communication and HEVC technology.

IP Bridge and TCL face off

Peter-Michael Weiße

In Europe, the two companies faced each other primarily in Germany. According to JUVE Patent information, IP Bridge had sued for five patents and one utility model over mobile communications patents. Invalidity suits were also pending against the property rights.

IP Bridge had also brought the patents against other entities. For example, prior to the dispute with TCL, companies such as Apple, Huawei, ZTE, Xiaomi, and the car manufacturers Tesla, Ford, Opel and Volkswagen, had already taken a licence. HTC, on the other hand, continues to resist.

No FRAND judgment in Germany

Recently, IP Bridge’s dispute with TCL over SEPs seemed to reach its pinnacle at the Federal Court of Justice. At the end of November, the highest German patent court would have heard the infringement claims against TCL. Here, FRAND aspects were the main issue.

Back in January 2022, the Federal Court of Justice upheld two IP Bridge LTE patents, EP 21 78 232 and EP 22 94 737. Since 2016, the Japanese patent pool enforced these against mobile phone manufacturers HTC and TCT. The court had already upheld IP Bridge’s third patent-in-suit, EP 09 91 054, with amendments in June 2021. EP 054 is essential to the UMTS standard.

In 2022, the three decisions paved the way for another federal court judgment on SEP claims and FRAND issues. Were it not for the TCL settlement, the highest German patent court would have ruled on FRAND issues for the first time after the two leading decisions in Sisvel vs. Haier I and II (case ID: X ZR 21/22, regarding EP 737).

Thomas Lynker

HTC remains stubborn

HTC’s appeal in its dispute with IP Bridge also remains pending at the highest German patent court. In November 2020, the Higher Regional Court Karlsruhe found that HTC infringed EP 737 (case ID: X ZR 123/20). The case also concerns EP 737.

But even in this dispute, for the time being the Federal Court of Justice will not hand down any further FRAND decisions, since it has referred the case back to the Higher Regional Court. Whether the case will ever find its way back to the Federal Court is not yet known.

According to JUVE Patent information, further FRAND cases are currently pending before the Federal Court of Justice.

Other technologies involved

However, IP Bridge and TCL fought not just over mobile patents in Germany, but also over the use of the HEVC video standard. Here, IP Bridge had sued the Chinese electronics group, which in addition to mobile devices also sells consumer goods such as televisions, as a member of the Access Advance patent pool at the Munich Regional Court.

However, in this case there was only one infringement action plus an action for revocation.

Georg Siegert

Other Access Advance pool members such as GE, Mitsubishi and Philips have also sued TCL. The current settlement does not cover these lawsuits.

German firms on both sides

Many German patent firms were recently involved on both sides of the dispute. Wildanger Kehrwald Graf v. Schwerin & Partner litigators Peter-Michael Weisse and Jasper Meyer zu Riemsloh lead the proceedings against TCL regarding some mobile communication patents, working alongside the patent attorneys of Hoffmann Eitle. Here, partner Georg Siegert led the team.

Hoffmann Eitle led other proceedings against TCL alone with a mixed team. On the other hand, in proceedings against HTC, the firm’s patent attorneys worked together with Quinn Emanuel partner Johannes Bukow.

In the HEVC proceedings, IP Bridge relied on the two Hamburg partners Tilman Müller and Volkmar Henke. They moved from Eisenführ Speiser to Bardehle Pagenberg in the spring, taking the case with them.

In other disputes, the Japanese patent pool’s firm had relied on lawyers from EIP and patent attorneys from df-mp. In the past, Krieger Mes Graf von der Groeben & Partner also worked for IP Bridge.

Taliens and Vossius for TCL

Andreas Kramer

TCL relied on the Munich law firm Taliens in the mobile phone lawsuits brought by IP Bridge, with Thomas Lynker and Christian Werner leading proceedings. Patent attorneys were not involved. A mixed team from Vossius & Partner around Düsseldorf partner Andreas Kramer and patent attorneys Zhuomin Wu and Ju Min Kim led the HEVC technology dispute.

Previously, TCL has also worked with CMS Hasche Sigle and Klaka in lawsuits brought by other Access Advance pool members.

A Hogan Lovells team led by Düsseldorf partner Clemens Plassmann and patent attorneys from MERH-IP led for HEVC in the IP Bridge lawsuits.