MPEG LA and TCL settle disputes with help from key advisors

On 1 September, MPEG LA announced that TCL is now a licensee of MPEG LA’s AVC/H.264 licensing program. This puts an end to all patent enforcement litigation brought by members of MPEG LA’s patent pool against the Chinese company.

According to JUVE Patent information, the pool members IP Bridge, NEC and Panasonic had filed suit at the Regional Court Düsseldorf in July 2020. The court had scheduled an oral hearing for last Tuesday. However, the companies agreed on a settlement before it could take place.

Gottfried Schüll

The pool members had complained that TCL offers mobile phone and television products in Germany that use patent-protected AVC methods. Consequently, the parties had sought monetary damages and injunctions at Düsseldorf Regional Court. IP Bridge and Panasonic had each asserted two standard-essential patents against TCL. NEC had sued over one patent.

TCL did not file nullity suits against the five patents at the Federal Patent Court. However, in the infringement proceedings, TCL had essentially relied on a FRAND licence.

Campaign against Chinese manufacturers

Previously, the manufacturers Xiaomi, Oppo, Vivo, Huawei and ZTE have all taken a licence from the MPEG LA pool. This means that all major Chinese mobile phone and TV manufacturers are now licensees. Only Hisense has yet to reach an agreement with MPEG LA. The patent pool sued the company for patent infringement in November at the Regional Court Düsseldorf.

Düsseldorf is MPEG LA’s preferred court. It began its litigation campaign in 2017 with lawsuits against Huawei and ZTE. The patent pool pursued Chinese manufacturers that refused to accept a licence. After the Regional Court Düsseldorf then convicted Huawei and ZTE of patent infringement in late 2018, both companies then accepted a licence in early 2019. MPEG LA made an example of ZTE by enforcing four judgments and putting a stop to sales.

A case for key advisors

Axel Verhauwen

All plaintiffs in the MPEG LA patent pool have counted on the team around partner Axel Verhauwen from Krieger Mes, and patent attorney Gottfried Schüll from Cohausz & Florack. Furthermore, the advisors have been on side for the entire case.

Patent firm Cohausz & Florack, based in Düsseldorf, has been working for MPEG LA’s members for many years and is responsible for assessing the patents it brings to the pool.

Both firms had already jointly handled the lawsuits against Huawei and ZTE.

Similarly, the patent teams at Noerr and Klaka have good ties to TCL. They are also representing the Chinese company in other lawsuits. TCL is currently one of the most frequently-sued mobile phone and electronics manufacturers in Germany.

For other cases, TCL relies on Taliens and Vossius & Partner.

For MPEG LA pool and members
Krieger Mes Graf von der Groeben (Düsseldorf): Axel Verhauwen
Cohausz & Florack (Düsseldorf): Gottfried Schüll, Christoph Walke, Fabian Vogelbruch, Henning Sternemann (all patent attorneys)

Ralph Nack

For TCL
Noerr (Munich): Ralph Nack, Armin Kühne, Niclas Gajeck, Valentin Schmidt (against IP Bridge and NEC)
Klaka (Munich): Olaf Giebe, Wolfgang Straub (against Panasonic; public knowledge)
Gulde & Partner (Berlin): Nicolas Haße, Falk Lehmann (both patent attorneys; against Panasonic)
MFG Meyer-Wildhagen Meggle-Freund Gerhard (Munich):  Martin Meggle-Freund, Frank Meyer-Wildhagen (both patent attorneys;  public knowledge)

Regional Court Düsseldorf, 4b Civil Chamber
Daniel Voß (presiding judge)

Regional Court Düsseldorf, Chamber 4c
Sabine Klepsch (presiding judge)