Philips and Hoyng win final instance FRAND battle against Wiko

As a result of the CJEU’s Huawei vs. ZTE decision, the Netherlands has seen its first two Supreme Court rulings on FRAND. This follows judgments handed down in the UK and Germany. In two actions brought by Philips, the Dutch Supreme Court has confirmed that French mobile phone manufacturer Wiko infringed two UMTS patents.

According to the court, Wiko also failed to act in a FRAND-compliant manner (case IDs: HR 20/01160 and HR 19/04503).

Philips prevails on FRAND

The Court of Appeal in The Hague had ruled the same. In both cases, the court upheld Philips’ patents-in-suit EP 16 23 511 and EP 14 40 525, confirmed infringement and ordered Wiko to cease and desist. The Court of Appeal did not accept Wiko’s FRAND defence.

Rather, the judges viewed Wiko as an unwilling licensee, because the French mobile phone manufacturer did not declare its willingness in time. It later failed to submit a FRAND-compliant offer. On the other hand, according to the Court of Appeal, Philips did not breach its FRAND obligations (case IDs: 200.233.178/01 and 200.219.487/01).

Robert van Peursem, who is the Dutch Supreme Court Advocat General and a former patent judge, had already confirmed this position, with the Supreme Court judges following this ruling without further reasoning. Furthermore, the judges did not refer FRAND issues to the CJEU for clarification.

Thus, the highest Dutch court has taken a patent-owner-friendly position in SEP and FRAND actions. Previously, the German Federal Court of Justice took a similar view in its two Sisvel vs. Haier judgments. In addition, the UK Supreme Court adopted a very SEP-owner-friendly view in Unwired Planet vs. Huawei.

Bittersweet for Wiko 

The Supreme Court also upheld the Court of Appeal’s ruling in Philips’ third lawsuit against Wiko. Here, however, the second instance declared the Dutch part of the patent-in-suit EP 16 85 659 invalid, which settled the infringement suit and FRAND discussion.

The Supreme Court judges have now reached same conclusion (case ID: 20/01111). Robert van Peursem had suggested the Supreme Court should overturn the judgment.

However, this success is unlikely to help Wiko. As a consequence of the two Court of Appeal The Hague injunctions, Wiko has withdrawn from the Dutch market. According to JUVE Patent information, Philips had enforced one of the two judgments.

Philips turns the tide

The lawsuit began in late 2015, when Philips sued Wiko for infringement of its patents EP 659, EP 511 and EP 525. All protect a method for operating a communication system and a mobile station. All three patents are important to Philips’ UMTS and LTE patent portfolio.

The Dutch group claimed several Wiko mobile devices featuring HSDPA functionality infringed the patent in the Netherlands. The group requested injunctive relief, destruction and information about the infringing products. However, Wiko fought back with nullity claims and the FRAND defence.

Frank Eijsvogels

Initially, Philips had little success. In September 2017, the Regional Court The Hague dismissed all three of Philips’ lawsuits and declared the Dutch part of all three European patents invalid. Philips appealed against this decision.

In the second instance, however, the tide turned for Philips with the two successful injunctions in 2019. Wiko appealed against these to the Supreme Court.

In the third action concerning EP 659, the Court of Appeal The Hague maintained the patent as invalid and upheld the first-instance ruling (case ID: 200.231.812/01). Philips appealed to the Supreme Court to save the patent, as it had the longest term of validity.

Xiaomi steps in

Philips also sued Wiko in France, where only implementation patents were asserted. In the UK and Germany, on the other hand, Philips took action against the French mobile phone manufacturer concerning UMTS and LTE patents. According to JUVE Patent information, the proceedings in France and the UK have concluded. Some proceedings are still active in Germany.

Bart van den Broek

In late November, the Federal Court of Justice declared the important EP 18 15 647 invalid in Germany (case ID: X ZR 112/19). This removes the basis for the infringement case. Following the two landmark FRAND rulings in Sisvel vs. Haier I and II, Philips’ injunction action against Wiko was recently pending before the German Federal Court of Justice.

Philips had also asserted the patent against other implementers. According to JUVE Patent information, some mobile phone operators such as HTC, Archos and ASUS originally sued by Philips have since taken a licence.

However, in 2011, Philips also sued Xiaomi in the Netherlands, Germany, France, the UK and other jurisdictions. The proceedings remain at an early stage.

Although it did not publish the judgment, the UK High Court rendered an ex-parte anti-suit injunction against Xiaomi. In France, the Regional Court Paris ruled it has jurisdiction to determine a global FRAND licence and ordered ETSI to remain party to the dispute.

Hoyng leads for Philips

Hoyng ROKH Monegier and Philips have worked together for many years, with bot headquarters located in Amsterdam-Amstel.

Rien Boekstra

The law firm handled the Dutch cases against Wiko and other implementers from the start of the trial. Amsterdam partner Bart van den Broek led the entire campaign, while Willem Hoyng and Frank Eijsvogels were responsible for the Supreme Court proceedings. Patent attorneys at the firm provided technical support to the litigation team.

In the French proceedings,Philips again relied on Hoyng ROKH Monégier, with a team led by Sabine Agé. In the UK, Bristows represents the company, whereas in Germany mixed firm Eisenführ Speiser leads for Philips in numerous disputes.

Like Asus, Wiko is also working through all instances with Hoyng ROKH’s fiercest competitor, Brinkhof. While senior partner Richard Ebbink led the first two instances, Jan Pot and Rien Broekstra were responsible for the Supreme Court proceedings.

De Vries & Metman’s frontman and patent attorney Ferry van Looijengoed contributed the technical arguments.

Jan Pot

For Philips
Hoyng ROKH Monegier (Amsterdam): Willem Hoyng, Frank Eijsvogels, Bart van den Broek (lead), David Owen (patent attorney); counsel: Robin van Kleeff, assocaites: Roeland Grijpink, Andrew Lin (patent attorney)
In-house (Redhill): Kevin Scott (lead licencing program UMTS)

For Wiko
Brinkhof (Amsterdam): Jan Pot, Rien Broekstra, Richard Ebbink (lead)
De Vries & Metman (Amsterdam): Ferry van Looijengoed (patent attorney)
In-house (Marseille): Justine Nespoulous

Supreme Court of the Netherlands, Civil Chamber, no 20/01111
Martijn Polak (chairman), Maarten Kroeze, Tanja Tanja-van den Broek, Carla Sieburgh, Pieter Frans Lock, H.M. Wattendorff, Robert van Peursem (Advocate General)