Malikie and Peterreins Schley kick off UPC battle against Nintendo

Malikie, founded in 2023 to commercialise the BlackBerry patent portfolio, is part of the Irish NPE Key Patent Innovation. It holds a wide variety of intellectual property rights, both SEPs and non-SEPs, for wireless, security, messaging and server technologies that are used in various industries – from consumer electronics to automotive, cybersecurity, AI and medical devices.

Malikie has recently filed a lawsuit against Nintendo at the UPC local division Hamburg based on two of these patents (case IDs: ACT_53365/2024 and ACT_52355/2024). EP 2 448 225 protects a “Navigation tool holder” and EP 2 579 551 is titled “Method and apparatus pertaining to automatically performing an application function of an electronic device based upon detecting a change in physical configuration of the device”. Both patents are not related to any standard.

In Malikie’s opinion, these are infringed by products from the Japanese games console manufacturer.

In Hamburg, UPC judges Sabine Klepsch, Stefan Schilling and Marije Knijff will rule on the two cases. Further proceedings are pending in the USA.

Big battle likely

This could mark the start of a major patent battle over different IT related patents at the UPC. Although Blackberry licensed various companies, the Canadian company was primarily focused on using the technology in its own products. “The portfolio is unlicensed to a large number of companies”, says Angela Quinlan, Managing Director of Malikie and among other things responsible for licensing and litigation strategies, in an interview with JUVE Patent.

Angela Quinlan

She is convinced of the high value of the portfolio. “Numerous patents are implemented in many products of various manufacturers in a wide range of industries,” she says. According to Quinlan, some large corporations have already taken licenses. She announced that Malikie would enforce IP rights against potential infringers.

Several actions are currently being prepared in different jurisdictions, including the UPC. “Europe is an important market and the UPC is therefore very relevant for us,” says Quinlan. None of the patents in the portfolio are opted out of the system.

Strong UPC presence

For its first lawsuits at the UPC, Malikie is relying on a team from the German IP boutique Peterreins Schley. Partner Frank Peterreins, Thomas Adam and Marc Grunwald are in the lead. They are assisted in technical matters by the firm’s patent attorneys and partners Jan Malte Schley and Felix Glöckler.

The Munich IP firm has made a strong start at the UPC, suing Xiaomi and MediaTek on behalf of Daedalus Prime, as well as for Headwater Research against Samsung Electronics, and Nera Innovations against Xiaomi. In addition to these three mobile communications cases, the client Lionra Technologies is also entrusting the firm with proceedings against Cisco over semiconductors.

Quinlan knows the firm from previous collaborations. She is an engineer and patent attorney and has experience in patent attorney firms such as Carpmaels & Ransford and FRKelly as well as various positions as in-house vice president licensing. She works closely together with in-house gaming experts Anthony Kavanagh and Stephen Cunningham.

Nintendo’s representative is not yet known. However, in the past Bardehle Pagenberg represented the Japanese company, e.g. in a dispute against competitor Bigben over Wii consoles. The patent attorneys of the mixed law firm are also active in prosecution for the Japanese company. Furthermore, Bardehle is one of the most active firms at the UPC to date, and already boasts extensive experience representing clients such as Dolby, 10x Genomics and Amgen, as well as the automotive companies Bentley and BMW.