London is the site for the next round of high-profile SEP litigation. InterDigital and Lenovo are in dispute over five patents covering the 3G and 4G standard. In the first technical decision, InterDigital emerged on top, with the court handing down a finding of validity and infringement. Parties now await further FRAND proceedings.
3 August 2021 by Amy Sandys
The UK High Court has handed down the first technical judgment in litigation between InterDigital and Lenovo. Overall, five patents concerning the 3G and 4G standard are in dispute. The first decision, over EP 2 485 558, is in InterDigital’s favour, with the court ruling that Lenovo infringes the valid and essential EP 558 patent.
EP 558 ‘Allows mobile phone users quick and efficient access to 4G (LTE) networks.’ Now the way is clear for a trial, in January 2022, to determine a FRAND licensing rate. Lenovo’s counterclaim for invalidity was also overruled.
EP 558 is one of five European patents are at the heart of the debate. The other patents at issue are EP 23 63 008, EP 2 557 714, EP 24 21 318 and EP 33 55 537. All pertain to the 3G and 4G standard. The court has already heard a second technical trial relating to EP 537, with a decision expected in the coming months.
Since 2009, the parties have discussed licensing EP 558. InterDigital claims that it has made global licensing offers to Lenovo on FRAND terms. InterDigital also offered to licence the patent on alternative terms. However, so far the parties were unable to reach an agreement.
InterDigital claimed that Lenovo was an unwilling FRAND licensee and would not accept the offered FRAND licence. However, Lenovo rejected claims that InterDigital’s offer was FRAND. Furthermore, InterDigital claims that Lenovo has imported and marketed 4G devices into the UK. Such an action, argued InterDigital, constituted infringement of EP 558.
Lenovo denied infringement and counterclaimed for invalidity of the patent, on the basis of lack of novelty, lack of validity, and inventive step. The court rejected the counterclaim. The next trial is a FRAND trial, scheduled for next year, over EP 558.
InterDigital had also initiated parallel proceedings in Germany, with the company filing infringement claims against Xiaomi at the Regional Court Munich. The claims are over EP 537, EP 318, and EP 558, on which the UK has just ruled. However, according to an InterDigital press release, the parties have now settled all pending litigation.
With a build up of several years, the case between InterDigital and Lenovo has piqued the interest of many patent professionals, both in the UK and elsewhere. This stems from the UK courts’ fresh role in determining licence fees and FRAND rates for patent holders.
The first win for InterDigital could now increase pressure on Lenovo to take a licence from the technology development company’s 4G SEP portfolio. If Lenovo do not take a licence, the ruling could impact the company’s place in the UK market.
In August 2020, the UK Supreme Court finally published its long-awaited judgment in the dispute between Unwired Planet vs. Huawei (case IDs: UKSC 2018/0214). In doing so, the Supreme Court judges confirmed that the courts of England and Wales have jurisdiction to determine global FRAND terms and rates.
SEP owners now hope London courts will grant them a licence for a global SEP portfolio based on a UK patent, and that the court will calculate the licence fee.
Another recent UK judgment also found that US tech company Apple infringed SEPs for the 3G and 4G standard belonging to Optis, ruling Apple as an unwilling licensee. London’s patent courts are clearly a burgeoning and important forum for lawsuits concerning SEPs.
InterDigital began the lawsuits with Gowling WLG, with co-chair of global tech Alexandra Brodie leading the team. The firm is also undertaking parallel FRAND proceedings in India and the US, with the firm’s Beijing and Guangzhou offices providing support.
The relationship between Kirkland & Ellis and Lenovo is still very fresh. The US firm took over from Powell Gilbert, which initially represented Lenovo, shortly after the claims were filed in April 2020. Furthermore, the firm now acts for the Chinese company in a second SEP dispute against IPCom. Partners Daniel Lim and Nicola Dagg supervised the current proceedings for the law firm.
Richard Hacon presided over the case as a deputy judge. His usual role is as presiding judge of the Intellectual Property Enterprise Court (IPEC).
In parallel German proceedings, Arnold Ruess and df-mp Dörries Frank-Molnia & Pohlman appear for InterDigital, with Hogan Lovells the lead counsel for Xiaomi.
3 New Square (London): Douglas Campbell, Joe Delaney
8 New Square (London): Maxwell Keay
Gowling WLG (London): Alexandra Brodie, Matt Hervey (partners); associates: Felicity Wade-Palmer, Olivia Nimmo, Rebecca Limer
In-house (Wilmington): Steve Akerley (VP, head of litigation)
3 New Square (London): Thomas Hinchliffe, Jeremy Heald
11 South Square (London): Kyra Nezami
Blackstone Chambers (London): James Segan
Kirkland & Ellis (London): Nicola Dagg, Daniel Lim, Nathan Mammen (partners); associates: Gabriella Bornstein, Ashley Grant
UK High Court, London
Richard Hacon (deputy presiding judge)