Lenovo may face a sales ban of laptops and tablets in Germany after the Regional Court Munich ordered an injunction against the company. The action is based on the infringement of a Nokia video coding patent. Previously, the Mannheim Regional Court had rejected one of six Nokia claims against Lenovo in Germany.
8 October 2020 by Mathieu Klos
A global dispute over the infringement of video coding patents between Nokia and Lenovo remains undecided. In Germany, Nokia has claimed that Lenovo infringed six patents essential to the international H.264 Advanced Video Coding standard. The standard is also known as MPEG-4 part 10.
Lenovo achieved the first victory in July, after Mannheim Regional Court dismissed an action brought by Nokia (case ID: 7 0 107/19; EP 12 87 705). However, now the Finnish company has come up trumps at the Munich Regional Court. Last week the court ruled extensively against Lenovo for the infringement of EP 14 33 316. The court ordered an injunction, as well as product recall and damages (case ID: 21 O 13026/19).
The court declared the Chinese computer and mobile phone manufacturer an unwilling licensee. In doing so, the court followed the new FRAND doctrine of the Federal Court of Justice in the Sisvel vs. Haier judgment.
According to media reports, Nokia could provisionally enforce the judgment against a security deposit of 3.25 million euros. But, just a few days later, Lenovo appealed to the Higher Regional Court Munich.
A year ago, the battle in Germany began. Nokia filed a lawsuit against Lenovo with the Eastern District of North Carolina (case ID: 5:19-cv-00427-BO). Shortly afterwards, Nokia also filed two claims in Munich (21 O 13026/19 and 21 O 13026/19), three in Mannheim (2 O 111/19, 7 O 107/19 and 7 O 108/19) and one in Düsseldorf (case ID: 4c O 53/19).
The next ruling in the dispute is expected from Mannheim on 22 December. Additionally, the Mannheim, Munich and Düsseldorf courts will hear three more cases between mid-November and the end of January. Lenovo has also challenged all five Nokia patents before the Federal Patent Court.
The German proceedings are part of a global dispute, which the two opponents are also conducting in India and Brazil.
Currently, patent lawsuits from European and US standard essential patents holders against Chinese mobile phone manufacturers are fashionable. For example, InterDigital has sued Lenovo in London.
On 30 October 2020, the Higher Regional Court ordered a temporary stay of the automatic injunction ordered by the Regional Court against Lenovo. The security deposit is four million euros.
The German lawsuits were prepared by a Bird & Bird team, headed by Düsseldorf partner Christian Harmsen. Bird & Bird is one of Nokia’s regular advisors throughout Europe.
In Germany, Arnold Ruess also works for Nokia. The Düsseldorf-based boutique is responsible for Nokia’s lawsuits against Daimler and its suppliers of connectivity modules, such as Continental.
Patent attorney firm Cohausz & Florack also advises Nokia on a regular basis. For example, Cohausz partner Christoph Walke acts for Nokia in the disputes against Daimler. However, df-mp Dörries Frank-Molnia & Pohlman also supports Nokia in Germany’s connected cars disputes.
Lenovo is a relatively new client before Germany’s patent courts. In any case, the company has not faced many suits in Germany. In 2018 Freshfields Bruckhaus Deringer represented Lenovo in a case brought by patent fund operator IP Bridge before the Mannheim patent courts.
It is no surprise that Lenovo again chose Düsseldorf-based patent litigation partner Wolrad Prinz zu Waldeck und Pyrmont and his Freshfields team for the defence against Nokia. Freshfields represents Lenovo in cooperation with Hoyng ROKH Monegier, as the dispute also concerns Intel chip sets.
Partner Klaus Haft is a former Nokia lawyer. But over the past few years, cooperation between the firm and Nokia has diminished. Often now Hoyng ROKH Monegier is on the side of implementers. One of Haft’s main clients is Intel, although he also litigates for Lenovo in several cases not involving Intel products. This includes a major series of suits by VoiceAge against various mobile communications manufacturers.
Freshfields and Hoyng ROKH Monegier were joined by Maikowski & Ninnemann, a firm experienced in SEP suits for implementers. This expertise is clear in several proceedings alongside Freshfields and Hoyng ROKH Monegier. Here, Maikowski & Ninnemann is working for Lenovo for the first time.
Bardehle is currently Nvidia’s go-to firm. Bardehle represented the chip manufacturer as co-defendant in the first connected cars suits in Germany between Broadcom and VW.
But Christian Harmsen from Bird & Bird has also appeared for Nvidia in the past, in the settlement with NPE Polaris among other cases. His firm has also previously worked for Lenovo.
Bird & Bird (Düsseldorf): Christian Harmsen (lead), Jörg Witting (competition law); counsel: Nick Pearson, Stephan Waldheim (competition law)
Cohausz & Florack (Düsseldorf): Christoph Walke (patent attorney)
In-house: Clemens-August Heusch (global head IPR litigation, Munich), Huw Edwards (senior litigation counsel, Helsinki)
Freshfields Bruckhaus Deringer (Düsseldorf, Munich): Wolrad Prinz zu Waldeck und Pyrmont (lead), Frank-Erich Hufnagel; associates: Nina Bayerl, Stephan Dorn, Max Betz, Dominik Flaig, Fabian Schubach
Hoyng ROKH Monegier (Düsseldorf): Klaus Haft; associates: Lars Baum, Franca Poll-Wolbeck, Carina Höfer
Maikowski & Ninnemann (Berlin): Gunnar Baumgärtel, Christoph Schröder, Felix Gross, Ralf Emig, Andreas Tanner, Sandro Staroske, Frederick Kramer, Matthias Euler (all patent attorneys)
Bardehle Pagenberg (Munich): Johannes Heselberger, Christof Karl (lawyer and patent attorney) Patrick Heckeler (patent attorney), Daniel Seitz
Regional Court Munich, 21st Civil Chamber
Tobias Pichlmaier (presiding judge)
This article was updated on 2 November 2020 to reflect the latest decision by the Higher Regional Court.