FRAND

Federal Court of Justice considers SEP questions in IP Bridge dispute

After the highest German court established current FRAND case law in Sisvel vs. Haier, it is now considering further questions on SEP claims in IP Bridge's dispute with HTC and TCT. But these latest FRAND cases are before patent senate, rather than the antitrust senate.

4 April 2022 by Mathieu Klos

IP Bridge, Federal Patent Court In IP Bridge vs. HTC and TCT, the parties await reasoning from the German Federal Court of Justice over important FRAND and SEP questions ©BGH

Back in January 2022, the Federal Court of Justice upheld two IP Bridge LTE patents, EP 21 78 232 and EP 22 94 737. Since 2016, the Japanese patent pool has enforced them against mobile phone manufacturers HTC and TCT, among others.

In mid-January 2022, the court confirmed EP 232 with amendments (case ID: X ZR 4/20). A few days later, it then confirmed EP 737 in full (case ID: X ZR 14/20). The court had already upheld IP Bridge’s third patent-in-suit with amendments in June 2021 (case ID: X ZR 39/19), EP 09 91 054), which is relevant for the UMTS standard.

The three decisions pave the way for another decision by the Federal Court of Justice on SEP claims and FRAND issues.

IP Bridge in focus

Higher Regional Court in Karlsruhe had ordered phone manufacturer TCT to pay injunctive relief, provide information and pay damages for infringement of EP 737 in February 2022. The court allowed an appeal against the injunction, which TCT lodged shortly thereafter. The case involves important FRAND issues, which hinge on a decision from the highest German patent court (case ID: X ZR 21/22).

One question the Federal Court of Justice will clarify is whether the SEP holder can be considered to have met obligations for a FRAND-compliant offer, if the offer is compliant for the average licence seeker but not for individual market participants based on their business.

In addition, the court is to clarify whether a change in how a licence fee is calculated is possible. An example is the change from an already-practiced, FRAND-compliant per-unit royalty to a percentage royalty. But, if proposed by the implementer, the court must find it FRAND-compliant. The Federal Court of Justice has not yet set a date for the oral proceedings.

However, with regard to information and damages, the Higher Regional Court in Karlsruhe denied TCT leave to appeal to the Federal Court of Justice. On 15 March 2022, TCT’s appeal against the denial of leave to appeal failed. In the parallel case concerning EP 054, TCT also filed an appeal against the denial of leave to appeal against the ruling of the lower court.

The Federal Court of Justice has not yet ruled on this. However, the case no longer concerns an injunction, since the patent has now expired.

Federal Court of Justice impending

HTC’s appeal against an injunction has been pending at the highest German patent court for some time. In November 2020, the Higher Regional Court Karlsruhe found that HTC infringed EP 737  (case ID: X ZR 123/20).

The Federal Court of Justice has not yet set a trial date for this. But since both proceedings concern EP 737, a joint hearing is likely. The 10th Civil Senate will hear both cases, even though each involves SEPs and FRAND issues.

In contrast, in 2020 and 2021 the court’s antitrust senate set current German FRAND case law guidelines in Sisvel vs. Haier I and II. Parties also eagerly awaited a decision in the dispute between Philips and Wiko over another SEP, EP 18 15 647. However, the antitrust senate did not issue another FRAND decision because the Federal Court of Justice declared EP 647 null and void in December. This settled the appeal in the infringement proceedings.

Industry importance

Following the three nullity judgments, the Federal Court of Justice’s next FRAND decisions will be the two infringement cases in IP Bridge vs. HTC and TCT – unless the parties settle prior to the hearings.

However, the court’s clarification of issues is important for a whole range of mobile phone and car manufacturers. According to JUVE Patent information, IP Bridge – which the Japanese government supports – has also filed lawsuits over EP 737 against manufacturers Oppo and Ford.

In addition, IP Bridge is taking action against Huawei, ZTE and Xiaomi in Germany. It recently settled lawsuits against Apple, Tesla, Daimler and Volkswagen.

IP Bridge assigns a team

IP Bridge’s current campaign is likely to be one of the largest series of lawsuits currently ongoing in Europe. As such, the Japanese patent pool has assigned the German cases to combined teams of lawyers and patent attorneys from different law firms.

Wildanger Kehrwald Graf v. Schwerin & Partner lawyers lead the proceedings against TCT, working alongside the patent attorneys of Hoffmann Eitle. Against TCT, mixed Munich IP firm Hoffmann Eitle is responsible for two of the infringement proceedings.

Georg Siegert, Hoffmann Eitle

Georg Siegert

In addition, Wildanger and Hoffmann Eitle led the settled lawsuits against Apple, which according to market knowledge was represented by Freshfields Bruckhaus Deringer. Recently, Wildanger and Cohausz & Florack  also led infringement proceedings against Oppo, which the parties have settled. Oppo was also present with the latter firm in the invalidity proceedings concerning the IP Bridge patents.

On the other hand, in proceedings against HTC, the patent attorneys of Hoffmann Eitle worked together with Quinn Emanuel’s litigators.

With the help of EIP and df-mp, IP Bridge is bringing lawsuits primarily arising from LTE patents against Chinese mobile phone manufacturer Huawei, represented by Hoyng ROKH Monegier and Braun-Dullaeus Pannen Emmerling, ZTE, represented by Taliens, and Xiaomi, which according to public knowledge is represented by Freshfields Bruckhaus Deringer and Maikowski & Ninnemann.

Connected car lawsuits ongoing

According to JUVE Patent information, Hoffmann Eitle and Wildanger also lead IP Bridge’s connected cars lawsuits against four car manufacturers. Here, IP Bridge is mainly acting as a member of the Avanci patent pool, such as in the infringement case against Daimler which ran until 2021. However, Hogan Lovells is supporting Daimler as it continues to challenge EP 737 at the Federal Court of Justice.

Thomas Lynker, Taliens, Orckit IP

Thomas Lynker

IP Bridge also filed suit against Tesla. However, according to JUVE Patent information, the dispute has since been settled. New lawsuits against Volkswagen were also quickly settled by the conclusion of an Avanci licence. On the other hand, lawsuits concerning EP 737, against Ford among other are still running intensively. Here, Hogan Lovells represents the car maker.

Mixture of advisors

For IP Bridge:
Hoffmann Eitle (Munich): Georg Siegert, Markus G. Müller, Roland Schieren (all patent attorneys), Clemens Tobias Steins, Mike Gruber
Rohnke Winter (Karlsruhe): Christian Rohnke (nullity appeal proceedings over EP 737)
Quinn Emanuel Urquhart & Sullivan (Mannheim): Johannes Bukow, Felix Trumpke, Katrin Gerstenberg
Wildanger Kehrwald Graf v. Schwerin & Partner (Düsseldorf): Peter-Michael Weisse, Jasper Meyer zu Riemsloh; associates: Stefan Berkemeier, Ole Dirks
EIP (Düsseldorf): Christof Höhne, Florian Schmidt-Bogatzky; associate: Dimitri Kosenko, (attorneys-at-law)
Cohausz & Florack (Düsseldorf): Christoph Walke (patent attorney)
df-mp Dörries Frank-Molnia & Pohlman (Munich): Dominik Ho (patent attorney)

For TCT
Taliens (Munich): Thomas Lynker (lead), Christian Werner

Clemens Plassmann

For Daimler
Hogan Lovells (Düsseldorf): Martin Faehndrich

For HTC:
MERH-IP (Munich): Wolfgang Reichl, Björn Duling (both patent attorneys) (public knowledge)
Hogan Lovells (Düsseldorf): Clemens Plassmann (lead); associates: Felix Banholzer, Cédric Maurice Rohr (patent attorney)

For Oppo
Wuesthoff & Wuesthoff (Munich): Axel Katérle, Jakob Schott (both patent attorneys – public knowledge)
Simmons & Simmons (Munich): Thomas Gniadek (lead); associate: Sebastian Kratzer

German Federal Court of Justice, 10th Senate, Karlsruhe
Klaus Bacher (presiding judge), Fabian Hoffmann, Hermann Deichfuß, Nina Franziska Marx, Tim Crummenerl (X ZR 14/20 regarding EP 737)
Klaus Bacher (presiding judge), Fabian Hoffmann, Hermann Deichfuß, Helga Kober-Dehm, Tim Crummenerl (X ZR 4/20 regarding EP 232)
Klaus Grabinski (presiding judge), Fabian Hoffmann, Nina Franziska Marx, Helga Kober-Dehm, Hartmut Rensen (X ZR 39/19 regarding EP 054)