Xiaomi destroys KPN patent with Bardehle in first instance

The Dutch telecommunications group KPN accuses Xiaomi of infringing its EP 2 291 033 with some of its smartphones and sued the Chinese mobile phone manufacturer at Düsseldorf Regional Court in April 2022 (case no. 4b O 26/22).

EP 033 protects a telecommunications network and method for time-based network access. According to KPN, the patent is essential for the LTE and NR mobile communications standards.

Infringement case suspended

Xiaomi responded in October of the same year with a nullity action against the German part of EP 033 before the Federal Patent Court in Munich. Then, in September 2023, the court indicated in a qualified notice that it considered the property right to be likely invalid. Previously, the EPO had upheld the patent in a modified form in opposition proceedings initiated by Oppo.

As a result of the qualified notice, Düsseldorf Regional Court’s Chamber 4b suspended the parallel infringement proceedings.

The Federal Patent Court heard the nullity proceedings at the beginning of August. The court had combined these with a further nullity action filed against EP 033, this time by Orope. As a result, the 4th Nullity Senate under judge Sabine Werner declared the patent invalid due to lack of inventive step.

The judges thus confirmed the preliminary assessment (Ref. 4 Ni 88/22 (EP)).

According to JUVE Patent information, KPN will appeal the judgment. This means that the parallel infringement proceedings at Düsseldorf Regional Court remain pending.

Bardehle for Xiaomi

A mixed team from Bardehle Pagenberg filed the nullity action for Xiaomi. While patent attorney Marius Fischer took the lead, litigator Tilman Müller-Stoy and Jan Bösing are also representing the Chinese cell-phone manufacturer in the parallel infringement proceedings. The team is known for its expertise in SEP disputes and represented Oppo in a dispute against Nokia, among others, until the parties settled earlier this year.

However, Xiaomi does not instruct the law firm exclusively. For example, Hogan Lovells is acting for Xiaomi in the current UPC proceedings against Panasonic.

KPN turns to Krieger Mes

KPN relied on the Düsseldorf litigator Axel Verhauwen from the IP boutique Krieger Mes Graf von der Groeben. Patent attorney Nazim Söylemezoglu from the Cologne patent law firm Bauer Vorberg Kayser provided support on technical matters.

Orope, a subsidiary of Oppo, relied on a team consisting of Klaka partner and litigator Constantin Kurtz and patent attorney Martin Thimm from Gulde & Partner. Maximilian Reif from Klaka and two other Gulde partners, litigator Marco Scheffler and patent attorney Nicolas Haße, also played a role.

The two law firms are a well-established team and frequently cooperate in mobile communications proceedings. For example, they represented AVM against Huawei over wifi 6 until they settled in April. However, Hoffmann Eitle had filed the EPO objection against EP 033 for Oppo.