Regional Court Munich imposes sales ban against Ford

The 7th Civil Chamber of the Munich Regional Court has ruled that Ford infringed IP Bridge’s European patent EP 22 94 737 B1 (case ID: 7 O 9572/21). The judges ordered an injunction and the recall of delivered cars, as well as damages, information and rendering of accounts.

EP 737 protects a technology for a channel-quality indicator and is essential to the LTE mobile standard. The Munich judges ruled that the FordPass-Connect connectivity module, which connects the car with smartphones, infringes the patent.

Court follows IP Bridge claims

According to a court press release, the judges have fully followed IP Bridge’s claims. They also clarified that, during the course of the trial, Ford did not sufficiently demonstrate that it was willing to license. Specifically, Ford made no counteroffer to the Avanci patent pool. The pool bundles patents relevant to mobile communication standards from various companies for use in the automotive industry.

The ruling is extensive in terms of the injunction, and the recall and destruction of the vehicles. In such cases, §139 of the new German Patent Act gives patent judges more discretion to restrict such far-reaching automatic injunctions. However, the proportionality test apparently did not lead the judges to make use of the new rule here.

The new law has been in force since the beginning of the year. German patent judges have repeatedly emphasised that they would only apply the new rule on automatic injunctions in exceptional cases.

A quarter billion at play

The judges saw no reason to suspend the action in view of Ford’s nullity proceedings against EP 737 B1. IP Bridge has already enforced the patent several times against other companies, including TCT and HTC. Therefore, the patent is viewed as strong, while the Federal Court of Justice has already confirmed its validity. Ford must now formulate strong new arguments with which to overturn the patent.

Ford can now appeal to the Higher Regional Court in Munich, although the company did not comment on whether it intends to take this step. But in view of the ruling’s possible consequences, trial observers expect an appeal.

However, in order to implement a sales ban, IP Bridge would first have to provisionally enforce the judgment. The Munich judges have set a high hurdle, with the NPE required to deposit a security of 227 million euros.

In August 2020, Mannheim Regional Court also ordered an injunction against Daimler in a lawsuit brought by Nokia, but set a security deposit of €7 billion.

Avanci’s auto involvement

Despite the high hurdle to enforcement, the Munich ruling is now likely to significantly increase pressure on Ford to accept an Avanci licence. The pool is currently instrumental in licensing wireless standards to the auto industry. Other car companies which have recently taken an LTE licence from Avanci include Volkswagen, with Tesla and General Motors taking the full Avanci licence.

Peter-Michael Weisse

IP Bridge is a member of the Avanci pool. The Japanese NPE sued Ford over EP 737 B1 only. However, other Avanci members are also taking action against Ford. For example, other lawsuits are pending in Germany by Sisvel, KPN and MiiCs.

Judgments are not expected in these lawsuits in the near future. Ford is also facing connected cars lawsuits in the US and Italy.

Ford is round two

The lawsuits against Ford constitute round two of the connected cars lawsuits against the auto industry. In recent years, the Avanci pool and other SEP holders have focused on German car makers such as BMW, Volkswagen and Daimler, as well as their suppliers.

All three car manufacturers have now accepted an Avanci licence. According to JUVE Patent information, Avanci members are currently going after a French and a Japanese car maker in Germany in addition to Ford.

Ford and IP Bridge retain advisors

Wildanger’s litigators and Hoffmann Eitle’s patent attorneys have worked together for IP Bridge for a long time. Both firms, as well as Cohausz & Florack, were also active in the NPE’s and Nokia’s connected cars lawsuits against Daimler. The Wildanger team is also representing the NPE MiiCs in two infringement actions against Ford.

Steffen Steininger

The counsel know their opponents on the implementer side from the first round of connected cars lawsuits. In numerous cases from 2019 to 2021, Hogan Lovells represented Peiker/Valeo as a supplier to Daimler.  The patent team has long-standing contacts with Ford.

A mixed patent team also represents the car maker in the Sisvel, KPN and MiiCs lawsuits.

Freshfields Bruckhaus Deringer and the patent attorneys of Braun Dullaeus Pannen Emmerling already acted for co-defendant Continental in the connected cars lawsuits against Daimler. The German automotive supplier also relies on the patent attorneys of Maikowski & Ninnemann in other cases.

For IP Bridge
Wildanger Kehrwald Graf v. Schwerin & Partner (Düsseldorf): Peter-Michael Weisse, Jasper Meyer zu Riemsloh, Ole Dirks; associates: Stefan Berkemeier
Hoffmann Eitle (Munich): Georg Siegert (patent attorney)
Cohausz & Florack (Düsseldorf): Christoph Walke (patent attorney)

For Ford
Hogan Lovells (Munich): Steffen Steininger (lead), Benjamin Schröer (lead, FRAND), Andreas Schmid (patent attorney, lead validity); associates: Teresa Christof, Daniel Kaneko, Cédric Rohr (patent attorney)

Frank-Erich Hufnagel

For Continental
Freshfields Bruckhaus Deringer (Düsseldorf): Frank-Erich Hufnagel (lead); Corin Gittinger
Braun Dullaeus Pannen Emmerling (Düsseldorf): Karl-Ulrich Braun-Dullaeus (patent attorney)
In-house (Munich): Roman Bonn (global head of IP), Michael Schlögl

Regional Court Munich, 7th Civil Chamber
Matthias Zigann (presiding judge), Benjamin Kuttenkeuler, Hubertus Schacht