Huawei's and ZTE's mobile phones infringe two of Conversant's SEPs. Düsseldorf Regional Court has now prohibited the two companies from selling UMTS-enabled devices in Germany. Meanwhile, the Supreme Court of China has prohibited the non-practising entity from enforcing the rulings against Huawei. Now the German courts could see the next anti-anti-suit battle.
2 September 2020 by Mathieu Klos
Just one day after the UK Supreme Court in a landmark decision declared the UK patent courts competent for Conversant’s lawsuits against Huawei and ZTE, Düsseldorf Regional Court has ruled on the German case. According to the judges, the two Chinese mobile phone companies have infringed two of three SEPs over which Conversant sued in 2018.
Last Thursday the court prohibited Huawei from selling UMTS-enabled mobile phones and tablets in Germany. The court also prohibited ZTE from selling UMTS-enabled mobile phones in Germany. However, this is conditional on Conversant enforcing the judgments.
ZTE filed an immediate appeal. It is not known whether Huawei has also appealed. Due to the potentially drastic consequences, it is considered very likely that both companies will file an urgent application with the Higher Regional Court Düsseldorf to stop the enforcement
Huawei chose a further defense strategy and applied to the Supreme Court of China for an anti-suit injunction against the decisions of Düsseldorf Regional Court. JUVE Patent understands the Chinese court prohibited Conversant from enforcing the Düsseldorf judgments on 28 August (case ID: 2019 Zui Gao Fa Zhi Min Zhong No.732, 733, 734 Part I).
This could lead to another anti-anti-suit injunction between a German and foreign court. This happened for the first time between the Regional Court Munich and US courts. In the dispute between Nokia and Daimler, its co-litigant Continental had applied to a US court for an anti-suit injunction. The Regional and the Higher Regional Courts of Munich declared it to be incompatible with German law.
In 2018, Conversant sued Huawei and ZTE in Düsseldorf based on three European patents (EP1797659, EP1173986 and EP1878177). The three patents protect LTE and UMTS technology. Conversant acquired them from Nokia in 2014.
Conversant also filed lawsuits against LG concerning the same patents at the Regional Court Munich. The NPE called for injunctive relief and damages.
Conversant is conducting parallel proceedings before the London High Court and in France. Proceedings also took place in the US.
The Düsseldorf patent judges of Chamber 4b found Huawei and ZTE have infringed EP 659. As a result, they ordered an injunction. The FRAND defence invoked by the two companies was unsuccessful because, according to the judges, Huawei showed no willingness to negotiate a licence with Conversant. ZTE, however, had done so, but its offer did not comply with the FRAND rules (case IDs: Huawei 4b O 30/18 and ZTE 4b O 31/18).
In two other rulings, the judges ordered both companies to pay damages and render accounts (case IDs: Huawei 4b O 48/18 and ZTE 4b O 6/19). However, as EP 986 expired in the course of the proceedings, this was no longer a matter of injunction.
The suits concerning the third patent EP 177 (case IDs: Huawei 4b O 49/18 and ZTE 4b O 7/19) are currently suspended while the court awaits the outcome of the opposition proceedings before the European Patent Office.
Conversant was less successful in the case against LG at the Regional Court Munich than it was in Düsseldorf. The Munich court dismissed the suit concerning EP 986. Conversant appealed against this decision. The court stayed the infringement proceedings concerning EP 659.
According to JUVE Patent’s information, Huawei and ZTE had filed nullity suits against both patents with the Federal Patent Court.
Now that the Supreme Court has confirmed the jurisdiction of the UK courts, the High Court can continue the FRAND trial between the three companies. The FRAND trial should have been heard in April, but was postponed to February 2021 due to the corona pandemic.
EP 177 and EP 659 are also part of the UK proceedings. A technical trial before the High Court at the beginning of the year concerned one main European patent, EP 177, and its two divisional patents. The court revoked one divisional patent. In early July 2019, the same court found EP 659 infringed but invalid for added matter.
Conversant Wireless works with EIP not only in the UK but also in Germany. EIP’s Düsseldorf-based partner Christoph Höhne took over the case from his London colleague Gary Moss, who also represented the company in the proceedings against Huawei and ZTE up to the Supreme Court.
Höhne also represents Conversant in connected cars lawsuits against Daimler and Tesla in Germany. EIP always works with the patent attorneys of df-mp, who are experienced in mobile phone proceedings.
Huawei, as in previous cases in Germany, is relying on Preu Bohlig partner Christian Donle and patent attorney Friedrich Emmerling of Braun Dullaeus Pannen Emmerling.
For Conversant Wireless
EIP Europe (Düsseldorf): Christof Höhne (lead), Florian Schmidt-Bogatzky, Isabelle Schaller, Dimitri Kosenko, Elisa Beckamp
df-mp Dörries Frank-Molnia & Pohlman (Munich): David Molnia, Dominik Ho, Ben Flocke (all patent attornies)
Taliens (Munich): Thomas Lynker (lead), Christian Werner, Thomas Reitmann
K&L Gates (Munich): Benjamin Fechner (patent attorney)
In-house (Düsseldorf): Juliane Buchinski (Lead IP Litigation Europe)
Regional Court Düsseldorf, 4b Chamber
Daniel Voß (presiding judge), Lena Gräwe, judge Schröder