Post-ASI battle: InterDigital sues Xiaomi for patent infringement in Munich

The claims filed by InterDigital against Xiaomi regard EP 33 55 537, EP 24 21 318, and EP 2 485 558, all of which protect 3G and 4G technology. The Regional Court Munich will hear the claims in three separate proceedings (case IDs 7 O 4225/21 and 4226/21, 21 O 4227/21).

An oral hearing at the 7th chamber of the court (7O 4226/21) is scheduled for February 2022 and will launch proceedings. This hearing is the main hearing concerning EP 318. Unusually, the case has no early first hearing, which is the norm according to the Munich procedure.

Prior involvement

Two different chambers of the same court hearing the cases is rather unusual, considering the rule of prior involvement (in German: Vorbefassung) in Germany. This means that, in a series of proceedings involving the same parties over the same matter, the court chamber that hears the first case in the series usually also hears other cases concerning the same proceedings.

In the case between InterDigital and Xiaomi, the claim follows a recent Regional Court Munich decision on the question of anti-suit injunctions. The court prohibited Xiaomi from enforcing an anti-suit injunction from the Wuhan Intermediate People’s Court against InterDigital in Germany.

Furthermore, the judges stated that implementers in FRAND disputes filing ASIs in China or elsewhere are unwilling licensees. However, Xiaomi has appealed this decision.

InterDigital and Xiaomi provides clarity

ASIs, especially from US and Chinese courts, had experienced a hype since a 2019 dispute between Nokia and Daimler over connected cars patents. Here, automotive supplier Continental filed for a ASI in the US to try and halt German proceedings. First the Regional Court, then the Higher Regional Court, in Munich put a stop to this. The courts ruled the ASI incompatible with German law.

Arno Riße

However, the ruling did not prevent Ericsson and Samsung from showering each other with such orders from Chinese and US patent courts in a global FRAND dispute in 2020.

The recent ruling in InterDigital vs. Xiaomi is providing some clarity; its first effects are visible.

JUVE Patent has learned that Chinese companies are closely examining filing for an ASI in China.

Growing teams for main proceedings

In the ASI dispute, both Arnold Ruess and Hogan Lovells appeared for the first time in the proceedings for clients InterDigital and Xiaomi.

For the main proceedings, Hogan Lovells is setting up a mixed team of litigators and patent attorneys from the Düsseldorf and Munich offices.

Arnold Ruess relies on the technical support of patent attorney firm df-mp. The firm is one of the most active litigation outfits in Germany for proceedings involving mobile communications patents. Both Dominik Ho and David Molnia worked side by side with EIP for Conversant in the dispute with Daimler.

Andreas von Falck

For InterDigital
Arnold Ruess (Düsseldorf): Cordula Schumacher (lead, FRAND), Arno Riße (lead, tech), Marina Wehler; associates: Jan Wergin, Tim Smentkowski, Lisa Schneider, Tobias Weigand
df-mp (Munich): Dominik Ho, David Molnia (both patent attorneys)
In-house (Wilmington): Steve Akerley, (VP, head of litigation)

For Xiaomi
Hogan Lovells (Düsseldorf): Andreas von Falck (lead), Alexander Klicznik, Oliver Bäcker, Stephan Stürwald (patent attorney); Andreas Schmid, Niels Gierse, Cédric Rohr (patent attorneys, Munich); associate: Lukas Wollenschläger

Regional Court Munich, 7th Civil Chamber
Matthias Zigann (presiding judge)

Regional Court Munich, 21st Civil Chamber
Tobias Pichlmaier (presiding judge)