Local division Munich grants injunction over Netgear’s Wi-Fi 6 routers

The Munich local division’s decision has far-reaching consequences. Netgear is now banned from selling Wi-Fi-6-capable routers in Belgium, Finland, France, Germany, Italy, and Sweden. These countries are considered important markets in Europe. However, for the judgment to take effect, Huawei still has to execute it by posting a security (case ID: UPC_CFI_9/2023). Netgear can also launch an appeal at the UPC Court of Appeal.

The 1st panel of the Munich local division under presiding judge Matthias Zigann ruled today that Netgear’s routers infringe Huawei’s EP 3 611 989. The patent protects a method and apparatus for transmitting wireless area network information. Essentially, the dispute concerns signal transmissions in Wi-Fi 6 routers.

The panel also included the second permanent judge Tobias Pichlmaier, Dutch judge Edger Brinkman and technically qualified judge Patrice Vidon. The latter also practises as patent attorney in his own firm. All three legally qualified judges extensive experience with SEP and FRAND cases.

The judges ruled not only that Netgear infringed EP 989 but also decided to reject Netgear’s counterclaim for revocation and FRAND defence. But Huawei did not take the full win. The judges excluded some Netgear routers that had certain Qualcomm modems installed from the decision due to the exhaustion issue. However, this only applies for a specified period, as the court does not disclose the judgment in more detail. Huawei can appeal against this part of the judgment.

Netgear steadfast

Huawei’s lawsuits against Netgear were part of a large-scale campaign, whereby Huawei has tried to enforce its Wi-Fi 6 patents against several users since 2022. In addition to Netgear this included FrtizBox manufacturer AVM, Amazon and car manufacturer Stellantis.

AVM, Amazon and Stellantis had previously reached a settlement with Huawei in the Wi-Fi 6 dispute, meaning Netgear is the only remaning company of the four original defendants.

In July 2023 and January 2024, Huawei increased the pressure on Netgear with two UPC lawsuits (ACT_18917/2023 and ACT_459771/2023) over EP 3 678 321 and EP 989. The Munich local division heared the case on the latter patent on 18 and 19 June.

Cases between Huawei and Netgear are also pending with the Munich Regional Court and the Higher Regional Court Düsseldorf. Netgear also filed claims for revocation against various Huawei patents with the German Federal Patent Court. The Federal Patent Court recently upheld Huawei’s EP 3 337 077, which was the subject of a lawsuit against AVM at the Regional Court Munich. Huawei also went to court in China.

ASI in sight?

Netgear defended itself against Hauwei’s lawsuits early on, going on the offensive in the US. In January 2024, Netgear sued Huawei at the California Federal Court, claiming the Chinese tech giant broke US antitrust laws by refusing to license its patents on reasonable terms. Netgear accuses Huawei of fraud, racketeering, and other offences for allegedly withholding patent licences for technology that Netgear’s routers require in order to comply with the international Wi-Fi networking standards.

Recently Netgear also filed a motion with the same US court (case ID: 2:24-cv-00824-AB-AJRx). It requested the court enjoin Huawei from seeking or enforcing injunctions obtained through proceedings in foreign courts, which would enjoin the manufacturing or sale of Netgear Wi-Fi-capable products based on SEPs that are subject to the worldwide licensing claims filed by Netgear at the California Federal Court. Netgear requested the court set an interim licence. The court will hear the case at the end of January 2024.

UPC’s second FRAND ruling

The application is probably primarily directed against today’s ruling by the UPC, which, according to observers, was already apparent at an early stage. It is only the UPC’s third ruling on an SEP. The Munich local division published its first SEP ruling in September, when it found Belkin had infringed a patent for a wireless charging standard from Philips. In contrast to the dispute between Huawei and Netgear, however, this did not concern FRAND aspects.

Mannheim local division handed down the first landmark ruling on FRAND a month later in the dispute between Panasonic and Oppo. It had attracted much attention due to the UK High Court having also dealt with a global FRAND rate in the dispute. This is not the case in Huawei vs Netgear case. Oppo and Panasonic have agreed on a licence in the meantime but the courts have not yet formally concluded the patent proceedings.

Huawei, Clifford Chance and BDPE

A Clifford Chance team led by Düsseldorf partner Tobias Hessel is leading proceedings for Huawei against Netgear.

As in other cases, Clifford Chance lawyers Thomas Misgaiski, Lea Prehn, and Marie Gessat supported Hessel. Further backup came from patent attorneys Ulrich Braun-Dullaeus, Friedrich Emmerling, and Lan Bi from the Munich-based firm Braun-Dullaeus Pannen Emmerling. Partner Friedrich Emmerling is a firmly established advisor for Huawei.

A Bird & Bird team consisting of Christian Harmsen, Matthias Meyer and Jörg Witting co-counseled for the non-technical parts of the case. Clifford Chance and Bird & Bird now share a large part of the litigation for Huawei in Germany. For example, they worked side-by-side in some of the cases against AVM. Previously, the Bird & Bird team had successfully enforced the patent against Amazon.

Huawei is putting a great deal of effort into the proceedings. A five-person in-house team led by Emil Zang is handling the dispute. Alsoon the team are Dylan Li, Liang Gao, Wanting Shao, and German lawyer Thomas Dreiser, who is highly active for the Chinese company in UPC proceedings.

Freshfields and Samson for Netgear

Netgear relies on Freshfields and patent attorneys from Samson & Partner for both the national and UPC cases. Both law firms have already worked together in other cases.

Freshfields counsel Stephan Dorn and associate Henning Gutheil led the proceedings as main representatives. Partner Frank-Erich Hufnagel and associate Diana Baum also played a role. Patent attorneys Cletus von Pichler, Oswald Niederkofler, Robert Baier and Wolfgang Lippich provided technical expertise.

Netgear’s Vice President Legal Anna Lam is leading the proceedings against Huawei.

Next clash tomorrow

The two companies and their legal teams will face off again tomorrow when the Regional Court Munich hears Huawei’s infringement suit over EP 3 334 112. In December 2023, the same court ordered an injunction against Wi-Fi routers manufactured by Amazon and Eero that were based on EP 112.

Huawei directly enforced the ruling. Later both companies settled the dispute.