On Monday, Continental withdrew its anti-suit injunction against Nokia in the US. This was in response to a preliminary injunction from Munich Regional Court. Three days prior, the court found for the second time that the auto manufacturer’s behaviour was incompatible with German law. The court gave Nokia the green light to pursue its German infringement cases against Daimler and its suppliers.
3 September 2019 by Mathieu Klos
On the evening of 3 September it became public that Continental has withdrawn its anti-suit injunction in the US. In May, Continental applied for an anti-suit injunction against Avanci, Nokia and others at the US District Court for the Northern District of California (case ID: 19-cv-2520). Its aim was to have the proceedings against Daimler and its German automotive suppliers prohibited by law. Continental accuses Nokia of violating its FRAND obligations.
Previously, Nokia accused Daimler in Germany of infringing its standard essential patents, and is demanding damages and the rendering of accounts. As a result, a number of Daimler’s suppliers have joined the proceedings, including Continental. The dispute is part of licence negotiations between Daimler, its suppliers and the Avanci patent pool, to which Nokia belongs.
Continental’s decision to cease the anti-suit injunction in the US did not come as a surprise. On 30 August, the Regional Court Munich ruled against the German parent company Continental AG in a preliminary injunction, stating that the anti-suit injunction was incompatible with German law (case ID: 21 O 9512/19).
In early August, the same court issued the same ruling against the US subsidiary of automotive supplier Continental Inc. (case ID: 21 O 9333/19) but for over a month the judgment has had no effect, probably because delivering the judgment has reportedly been difficult.
Continental also announced that it will oppose the Munich judgments. Depending on the outcome of the German PI proceedings, Continental reserves the right to take further steps in the US.
The decision is part of the patent dispute between Nokia and Daimler over 3G and 4G mobile communication standards used in connected cars. The dispute began in spring, when Nokia filed ten patent suits at the regional courts of Düsseldorf, Mannheim and Munich.
Once again, Düsseldorf IP boutique Arnold Ruess has worked with Nokia. Arnold Ruess is advising Nokia in the main trial against Daimler. And again the boutique cooperated closely with in-house IP head, Clemens-August Heusch.
While it is known that Quinn Emanuel represented Daimler early on, the firm representing Continental in the counterclaims to the US anti-suit injunction was not clear. As the July ruling on the anti-suit injunction was issued without an oral hearing, neither Continental nor its legal counsel were present.
After the oral hearing last week in the second proceeding, it is clear that Freshfields’ Düsseldorf team around Frank-Erich Hufnagel is advising the German supplier. Freshfields has a long-standing relationship to Continental. Hufnagel also represents Continental in the main proceedings against Daimler as a co-litigant.
Interestingly, former colleagues meet in this conflict. Arnold Ruess partner Cordula Schumacher was a part of Hufnagel’s team at Freshfields for many years. She joined Arnold Ruess at the end of 2011. The firm had split off from Freshfields’ Düsseldorf IP team a year earlier.
In 2015, Arno Riße also left Hufnagel’s team and moved to Arnold Ruess.
Despite the losses, Freshfields’ team remained present in important proceedings for Apple and Ericsson. It was quickly able to build up a powerful team in the following years.
Arnold Ruess (Düsseldorf): Cordula Schumacher (lead), Arno Riße; associates: Stefania Parise, Tim Smentkowski
In-house (Munich): Clemens-August Heusch (IPR litigation)
Freshfields Bruckhaus Deringer (Düsseldorf): Frank-Erich Hufnagel; principal associate: Eva-Maria Herring; associate: Corin Gittinger
Regional Court Munich, 21st Chamber
Hubertus Schacht (presiding judge)
This article was updated on 05/09/2019 to reflect the latest developments in the US.