After loss in Paris, Philips wins with Hoyng ROKH Monegier in The Hague

It is currently one of the biggest patent disputes in Europe. The battle between Philips and the mobile phone companies Archos, Asus, HTC and Wiko has seen judgments in different European countries with very different outcomes.

Recent judgments from the patent courts in Paris and The Hague followed the same trend. While Paris Regional Court destroyed three of Philips’ patents, the electronics group managed to prevail against Wiko before the Court of Appeal in The Hague.

In its home country, things were already going very well for the Dutch electronics giant. In May, the same court found EP 1623511, owned by Philips, valid and infringed by Asus. It also rejected Asus’ FRAND defence (case ID: 200.221.250). Shortly after the judgment, Philips enforced the verdict. JUVE Patent understands that Asus recently lodged an appeal at the Supreme Court.

Home sweet home

In the dispute between Philips and Wiko, the Court of Appeal followed the Asus decision. It concluded that the so-called patent EP 511 is valid and that the French mobile operator infringed it (case ID: 200.219.487/01). In the first instance, the Regional Court The Hague had destroyed all three patents and dismissed Philips’ claims.

Bart van den Broek

The patents are standard essential and protect technology for the UMTS and LTE standard. After the Court of Appeal reinstated EP 511, its view on the question of infringement was more in Philips’ favour.

This meant Wiko could attempt to use the FRAND defence again. However, as in Asus’ case, the judges ruled that Wiko did not meet the requirements set out in the European Court of Justice’s Huawei/ZTE decision and must therefore be regarded as an unwilling licensee. Wiko may appeal the judgement.

In the Appeals Court’s view, defendants in SEP licensing negotiations must provide written notice of their willingness to take a licence and submit a counteroffer. Wiko failed to do this. The Dutch court is thus regarded as SEP-holder friendly.

The Dutch court has yet to rule on Philips’ other two patents.

Different FRAND approach

Philips filed the lawsuits in 2015, intitally suing Asus, Archos, HTC and Wiko for patent infringement. The company claimed the defendants infringed three patents related to the UMTS and LTE standards in the Netherlands, as well as in the UK.

Richard Ebbink

In Germany more than 14 patents are in dispute before the Mannheim and Düsseldorf patent courts. Four of the patents are SEPs. All others are implementation patents.

Some of the Mannheim infringement proceedings are already in appeal before Karlsruhe Higher Regional Court.

Unlike the Dutch court, in November 2017 Mannheim Regional Court found Asus to be a willing licensee. Furthermore, it ruled that Philips did not sufficiently disclose its contracts and so its Dutch offer could not be considered FRAND.

Nevertheless, the German court also considered Philips’ patent to be valid and infringed by Asus.

Whereas the Mannheim court allowed Asus to make subsequent improvements after the complaint had been filed, the Dutch court only considered the two parties’ negotiation efforts up to the date the claim was filed.

In the third patent case, the London High Court also ruled in favour of Philips. The UK patent is valid and infringed by Asus. In the meantime Asus has filed an appeal. But London has not yet seen a FRAND judgment in this dispute. The High Court will hear this trial next year.

Paris declares Philips’ non-SEPs void

Things went better in France for Wiko and the other defendants, Asus, Archos and HTC. Shortly before the Dutch decision, the Tribunal de Grande Instance in Paris had destroyed a total of three Philips patents as part of the dispute (EP 1 384 134, EP 0 888 687 and EP 1 571 988). None of them are standard essential. They all protect interface technologies in mobile radio.

As is customary in France, the infringement and validity cases were heard simultaneously. Archos, Asus, Wiko and HTC had all attacked the patents with nullity suits. The court heard all proceedings together (case ID: 16/00753). An appeal is possible.

According to JUVE Patent’s sources, Philips has not filed any further lawsuits in France.

Judgment halts sales

Two of the patents disputed in France (EP 687 and EP 988) were also the subject of infringement proceedings in Germany.

In the summer of 2016, Mannheim Regional Court issued a temporary injunction that resulted in a sales stop for smartphones and tablets from Asus featuring Android 5.0 and above (case ID: 7 O 240/15). The technology was based on Philips’ patent EP 687. This protects a technology for the user interface for televisions.

Wiko, HTC and Archos also used the technology in their mobile phones. All four defendants filed nullity suits against the patent (case IDs: 4 Ni 36/16, 4 Ni 40/16, 4 Ni 43/16 and 4 Ni 44/16).

Since all affected devices used the Android operating system, Android provider Google joined the dispute at the time. The US software company developed an update which, according to its own statements, no longer infringed the contested patent.

Asus announced that it wanted to install it in its equipment and therefore appealed against the Mannheim ruling to the Karlsruhe Higher Regional Court. The appeal is still pending, but the Federal Patent Court has meanwhile declared the patent invalid. Philips has lodged an appeal against this decision at the Federal Court of Justice.

In October 2016 the Mannheim court stayed the infringement case against Archos (case ID: 2 O 227/15) concerning EP 988, finding that a revocation of the patent by the Federal Patent Court seemed sufficiently likely. In a ruling in January 2018 the Federal Patent Court then finally nullified the patent. Philips appealed the judgment. The infringement proceedings at the Mannheim court shall remain suspended until the question of validity has been clarified.

In the meantime, EP 687 is the only one of the three patents disputed in Paris to have expired. The other two remain valid until 2022 (EP 134) and 2023 (EP 988), provided national patent courts do not declare them void.

Deep-rooted collaboration

Philips is working with its go-to law firm Hoyng ROKH Monegier for the proceedings at The Hague. The international IP firm also conducts the Paris proceedings.

In Germany, the Dutch company has a long-standing relationship to Eisenführ Speiser. The mixed IP firm represents Philips in the German proceedings with both patent attorneys and litigators.

On the other side of the Channel, Bristows steers the suits before the London patent courts.

David Por

Paris Allen & Overy partner David Por worked for Archos here for the first time. The law firm also advises the mobile phone company on patent disputes in Germany. Here the Munich partners Jan Ebersohl and Michael Krenz lend their expertise.

Wiko already has a long-standing client relationship with Armengaud Guerlin. The French mobile phone manufacturer regularly relies on its Parisian partner Mateu.

In Germany, Vossius & Partner, together with Samson & Partner, recently assisted Wiko in the negotiations for a licence agreement with Ericsson.

Pan-European counsel

For years, HTC has relied on Hogan Lovells throughout Europe, for example in the dispute against Philips in France. Roux-Vaillard already advised the client in 2013 on the dispute against Nokia over a technology to reduce power consumption in mobile phones. In Germany, too, the company relies on Hogan Lovells, most recently in the proceedings against IP Bridge for the LTE mobile communications standard.

Asus has been represented in the French proceedings by August Debouzy, while Taylor Wessing advises the Taiwanese mobile communications company in the Netherlands and Germany. The firm came into contact with Asus through the liaison office in Menlo Park, California. (Co-author: Konstanze Richter)

For Philips
Hoyng ROKH Monegier (Amsterdam): Bart van den Broek (lead), Roeland Grijpink – Dutch proceedings
Hoyng ROKH Monegier (Paris): Denis Monégier du Sorbier – French proceedings
In-house (Uetrecht): Ewoud Caspers (senior legal counsel IP&S), Kevin Scott (principal licensing counsel IP&S, Redhill)

For Wiko
Brinkhof (Amsterdam): Richard Ebbink, Gaëlle Béquet, Rien Broekstra – Dutch proceedings
Armengaud Guerlain (Paris): Catherine Mateu – French proceedings

For Archos
Allen & Overy (Paris): David Por – French proceedings

For Asus
August Debouzy (Paris): Grégoire Desrousseaux – French proceedings

For HTC
Hogan Lovells (Paris): Stanislas Roux-Vaillard – French proceedings

Gerechtshoven The Hague
Rian Kalden (presiding judge), M. Bonneur, M. van der Burg

Tribunal de Grande Instance
Gilles Buffet (Vice presiding judge), Nathalie Sabotier, Karine Thouati