Standard essential patents

Mixed results for Frohwitter in Germany and UK

Just days before IPCom's important 100a patent expires, the non-practising entity and its sister company Fipa have had mixed success at the High Court in London and the Regional Court Düsseldorf. In Düsseldorf Fipa was successful against HTC. In London, on the other hand, IPCom has come away empty-handed, even though the patent was ruled as valid, infringed and essential to the standard.

11 February 2020 by Mathieu Klos

In its defence against IPCom, Vodafone invoked Crown use privilege, which protects the use of private innovation by public bodies in the UK, such as for emergency calls ©Jane/ADOBE STOCK

Frohwitter Intellectual Property Agency (Fipa) and IPCom are part of the network of corporate entities belonging to the Munich-based patent attorney Bernhard Frohwitter. Lawsuits from both NPEs have been keeping the mobile communications industry on tenterhooks for years. While IPCom exploits mobile phone patents formerly belonging to Robert Bosch, Fipa enforces former Hitachi patents.

Last week, the Regional Court Düsseldorf upheld Fipa’s claim against the Taiwanese company HTC and ordered it to provide information, render accounts and pay damages (case ID: 4a O 121/17). The court found HTC had infringed the German part of Fipa’s so-called H.01 patent (EP 0957594).

Appeal is likely

Wolfgang Kellenter partner Hengeler Mueller patent litigation

Wolfgang Kellenter

Hitachii applied for the patent in 1999. It controls the synchronisation of mobile devices with network stations. However, the patent expired in 2019. As a result, Fipa could no longer sue for an injunction. Nevertheless, the damages could be a handsome sum for the NPE, as the court granted a claim for financial compensation from September 2010.

HTC will likely appeal the judgment, however. There is a hearing at the German Federal Patent Court on 19 February to determine the patent’s validity. The court has already declared the H.05 patent (EP 0847147) invalid in another case. The Düsseldorf Regional Court had therefore suspended the infringement proceedings.

Fipa originally sued Samsung, LG, HTC and Sony in Germany. In the meantime, Fipa and Sony have come to a settlement.

IPCom disappointed

In the UK, on the other hand, things were much less favourable for Frohwitter’s other company, IPCom, in the dispute with HTC (case ID: HP-2018-000030).

IPCom filed lawsuits with the UK courts against Vodafone, HTC, Lenovo and Xiaomi in 2019. While HTC relented and stopped selling mobile phones in the UK, the case against the other three opponents is ongoing.

IPCom is taking action against Vodafone over its so-called 100 T8 patent (EP 2579666 B1). The patent protects a method for access rights in telecommunication networks. This can also affect emergency call functions.

Myles Jelf, Bristows, London, patent litigation

Myles Jelf

The European Patent Office had classified the patent as valid and essential for the UMTS standard. It is part of IPCom’s 100 patent family, which also includes IPCom’s best-known patent 100a. The property rights all expire in mid-February. In view of this, the proceedings were IPCom’s last chance to obtain an injunction.

In the course of the infringement proceedings, however, Vodafone surprised the plaintiff and implemented a workaround which was also accepted by the High Court. This put an end to any hopes of injunctive relief from London and shifted the focus to compensation here as well.

Crown use privilege

Although the court found Vodafone guilty of partially infringing the patent, no conviction was obtained because Vodafone had invoked Crown use privilege. This protects the use of private innovation by public bodies in the UK, for example for emergency calls. Vodafone claimed a conviction could compromise the MTPAS emergency call system.

The UK government created the Mobile Telecommunications Privileged Access Scheme (MTPAS) in order to prioritise telephone network access for privileged persons in emergency situations. During major incidents, networks often experience an abnormally high number of calls, thus jeopardising the network. Under MTPAS, senior police officers can issue a request to mobile network providers, such as Vodafone, that emergency responders be given priority access to the network.

Successors sought at High Court

The same law firms from past disputes over IPCom and Fipa patents once again faced each other. Hengeler Mueller partner Wolfgang Kellenter and Bristows partner Myles Jelf have been leading the litigation in Germany and the UK for many years. The Düsseldorf and London offices of Hogan Lovells, on the other hand, organise the defence for Vodafone and HTC.

Clemens Plassmann Hogan Lovells patent litigation

Clemens Plassmann

But the involvement of Douglas Campbell, a barrister of the High Court in London, is not something that happens every day. Barristers experienced in patent law often help the court when there are no conflicts. The court is currently facing major staffing concerns following Richard Arnold’s promotion to the Court of Appeal. Furthermore, well-regarded High Court patent judge Henry Carr passed away in July. The search for successors is proving difficult.

The court usually recruits judges from experienced barristers. At present, Colin Birss remains the only full-time judge at the patent chambers and so the court calls on assistant judges such as Douglas Campbell. In London patent circles he is considered a possible successor.

For Fipa
Hengeler Mueller (Düsseldorf): Wolfgang Kellenter; counsel: Benedikt Migdal
In-house (Munich): Pio Suh

Hogan Lovells (Düsseldorf): Clemens Plassmann; associates: Felix Banholzer, Agathe Michel-de Cazotte
Maikowski & Ninnemann (Berlin, München): Gunnar Baumgärtel, Felix Gross, Dirk Grupe (all patent attorneys)

Regional Court Düsseldorf, 4a Civil Chamber
Tim Crummenerl (presiding judge), Carsten Haase, Kathrin Reich,

For IPCom
11 South Square (London): Brian Nicholson, Adam Gamsa
Bristows (London): Myles Jelf (lead), Richard Pinckney
(Munich): Pio Suh

For Vodafone
3 New Square: Thomas Mitcheson, Stuart Baran
Hogan Lovells (London): no information given

UK High Court
Douglas Campbell (presiding judge)