Philips and Thales settle global disputes

As stated in a joint stipulation before the US District Court of Delaware, Koninklijke Philips and Thales agreed to dismiss all claims and counterclaims (case ID: 20-1713 CFC). This was reported by IPFray. Previously, Blomberg had reported that the court cancelled a hearing scheduled for mid-August. According to JUVE Patent research, this also ends the pending dispute in France.

Philips accused Thales of infringing several of its SEPs for wireless communication via products of the former company Gemalto, which the French group acquired in 2017.

In December 2020, after five years of unsuccessful negotiations over SEP licences, Philips sued Thales before the District Court for the District of Delaware. It also initiated an action before the US International Trade Commission. The aim was to ban US market access for some of Thales’ products. In 2022, in the course of the proceedings, Thales sold the relevant business involved in the patent dispute to IoT company Telit.

Seizure in France

Subsequently, Thales sued Philips in France, accusing the company of abusive behaviour in the FRAND licence negotiations. The French company therefore sought authorisation to conduct a seizure at Philips’ French site (saisie-contrefaçon) in order to search for evidence of the alleged abuse. The Judicial Court Paris granted the authorisation in November 2021. An application by Philips to retract or modify the seizure order was rejected in September 2022 (case ID: 22/00651). Philips appealed the decision, but the court dismissed the appeal in February 2023.

In addition, Thales requested €13.5 million as compensation for Philips’ litigation in the US. The company claimed Philips violated EU unfair competition rules by requesting an injunction in infringement proceedings at the District Court in Delaware.

ETSI was once again co-defendant in France. Thales criticised the standardisation body for not having acted to enforce ETSI’s IP policy. TCL and Xiaomi have implemented this strategy in previous litigation against Philips.

The agreement in the US also puts an end to the French disputes, including the involvement of ETSI.

Philips relied on its go-to law firm Hoyng ROKH Monégier. The team around renowned partners Sabine Agé and Amandine Métier also represented the Dutch tech company in its high-profile litigation against TCL and Xiaomi. Associate Theophile Rebuffel assisted. Both cases focused on the role of standardisation body ETSI, which retained Cyrille Amar of Amar Goussu Staub.

From the onset of the case in France, August Debouzy represented Thales. The renowned litigator Grégoire Desrousseaux took the lead. Then-counsel Abdelaziz Khatab, who joined Simmons & Simmons in late spring as a partner, assisted as well as associate Candice Dupin.