Standard essential patents

IPCom’s 100A patent upheld at Federal Patent Court

Non-practising entity IPCom has gained another victory with its 100A patent. In early October, the Federal Patent Court dismissed a nullity action brought by Apple and HTC against the patent (case ID: 6 Ni 34/17). Now proceedings are continuing in Germany at the Federal Court of Justice.

15 October 2019 by Christina Schulze

100a patent The Federal Patent Court upholds IPCom's headset patent in another win for the NPE ©Danon/ADOBE STOCK

In mid-October, the Federal Patent Court dismissed the nullity suit from Apple and HTC against IPCom’s 100A patent (case ID: 6 Ni 34/17). Therefore, the NPE’s suspended infringement proceedings can resume, including proceedings at the Federal Court of Justice against MediaSaturn. In London, important decisions are also pending in the dispute between IPCom and Vodafone.

Twists and turns

In 2014, the Karlsruhe Higher Regional Court found the patent was not infringed in proceedings against Nokia (case ID: 6 U 29/11). However, in later proceedings against MediaSaturn the Higher Regional Court Munich confirmed infringement (case ID: 6 U 76/15). Now this case is pending before the Federal Court of Justice.

In another case, Karlsruhe Higher Regional Court stayed infringement proceedings against Apple, pending a ruling from the Federal Court of Justice. The disputes in Germany reached a peak in February 2014, when IPCom’s sensational €1.6 billion damages claim against Apple failed before Mannheim Regional Court.

Bernhard Frohwitter, Munich, 100a patent

Bernhard Frohwitter

In July 2017, the Technical Boards of Appeal at the European Patent Office decided that patent ( T0767/14-3.5.03) was valid. Ericsson, HTC, Vodafone, Apple and Microsoft Mobile filed the opposition.

With IPCom’s portfolio due to expire on 15 February 2020, the clock is ticking on the infringement cases. Then the German proceedings will only determine damages without injunctive relief. Subsequently, these would be far less commercially relevant.

Sales stopped

IPCom’s best-known patent 100A, EP 1 841 268 (UK) is standard essential. It protects technology which governs how a handset connects to a network while prioritising emergency calls. In 2007, IPCom acquired a portfolio from Bosch that includes the UMTS patent in dispute, which is regarded as an SEP. Moreover, is considered the jewel in the crown of IPCom’s portfolio.

This summer IPCom achieved an important success against HTC in the UK. As a result, HTC voluntarily stopped selling its smartphones in the UK. IPCom had proved to HTC that some of its devices did not use a workaround and continued to infringe the 100a patent. In addition, IPCom claims to have filed further actions for injunctive relief and damages at the High Court in London in mid-October 2019.

Long-term teams

Clemens Plassmann

Clemens Plassmann

IPCom has instructed Hengeler Mueller partner Wolfgang Kellenter since the cases began. Munich patent attorney David Molnia, partner at df-mp, is responsible for the technical aspects of the cross-border dispute. Molnia has advised on some of the patents since their application and fended off attacks on the 100A patent.

Myles Jelf, partner at the London office of Bristows, represented IPCom in London.

In proceedings at the EPO, HTC has worked with the patent attorneys of Wagner & Geyer since the beginning.

However, before the Federal Patent Court HTC worked with Samson & Partner. The firm already knows the case well from its work for Apple and represented both companies in the most recent proceedings.

From England to Germany

In Germany, a team from Hogan Lovells were regularly involved as litigators. According to sources, Hogan Lovells is also advising HTC in the UK and the firm is also active for Vodafone on both sides of the Channel. Hogan Lovells advises MediaSaturn in other proceedings.

Apple and Ericsson have used the same lawyers and attorneys since the initial proceedings. Apple has a long-standing relationship with Freshfields and Samson in Germany.

In EPO proceedings against IPCom, attorney Hans-Dieter Jostarndt, who regularly represents Vodafone, caused a stir with the ruling that Haar is part of Munich.

For IPCom
11 South Square (London): Iain Purvis, Brian Nicholson
Bristows (London): Myles Jelf (lead), Richard Pinckney
Frohwitter (Munich): Bernhard Frohwitter
df-mp Dörris Frank-Molina & Pohlman (Munich): David Molnia, Dominik Ho
Hengeler Mueller (Düsseldorf): Wolfgang Kellenter
In-house (Munich): Pio Suh

Samson & Partner  (Munich): Friedrich von Samson-Himmelstjerna, Tobias Stammberger, Robert Baier
Wagner & Geyer (Munich): Eric Emde
Hogan Lovells (Düsseldorf): Clemens Plassmann, Matthias Siebels

For Apple
Freshfields Bruckhaus Deringer (Munich): Wolrad Prinz zu Waldeck und Pyrmont, Stephan Dorn
Samson & Partner (Munich): Friedrich von Samson-Himmelstjerna, Tobias Stammberger

For Ericsson
In-house (Herzogenrath): Thomas Burchardi
Hoffmann Eitle (Munich): Georg Siegert, Lorenz von Kurowski

For Vodafone
Jostarndt (Munich): Hans-Dieter Jostarndt, Reza Ghadiri (both patent attorneys)
Hogan Lovells (Düsseldorf): Henrik Lehment, Erhard Keller
In-house (Düsseldorf): Jochen Meyer

For Media Saturn
Engel Rinkler (Karlsruhe): Axel Rinkler
Hogan Lovells (Düsseldorf): Clemens Plassmann

German Federal Patent Court, 4th Senate
Karin Friehe (presiding judge)