Mobile communications

Game, set, no match: Apple beats Qualcomm again

Yesterday, Munich Regional Court decided that Apple's Spotlight search function does not infringe two Qualcomm patents. As Apple gains more time, the effect of the sales ban on older iPhones, which the chip manufacturer landed in December, begins to dwindle. A settlement is still nowhere in sight.

1 February 2019 by Mathieu Klos

©Kaspars Grinvalds/Adobe Stock

Munich Regional Court has dismissed a total of four out of eight lawsuits against the Spotlight function. US chip manufacturer Qualcomm had filed suits against the Spotlight and Siri & Search functions over a total of four European patents. However, the court found that the two functions do not infringe two of these patents (EP1 955 529, EP 1 956 806).

Qualcomm had sued the US parent company Apple Inc. as well as the European subsidiary and the operator of the German Apple stores separately over the two patents (case ID: 7 O 14454/17, 7 O 14459/17, 7 O 14461/17 and 7 O 14456/17).

The 7th Civil Chamber of the Regional Court Munich did not see a patent infringement, with the court unable to identify any implementation of the “standby indication” feature in the plaintiff’s patents. This is because, according to a court press release, an input possibility in standby mode is not present if the user must deliberately open an application first. This, says the court, is the case with the Spotlight and Siri & Search functions up to and including ioS 11.

Marcus Grosch Quinn Emanuel

Marcus Grosch

Originally, the court also wanted to rule in four other cases (case ID: Az. 7 O 14455/17, 7 O 14457/17, 7 O 14460/17 and 7 O 14462/17) which concern the Spotlight Search and Siri & Search functions. Instead, the court has reopened negotiations on these due to the Opposition Division of the European Patent Office publishing a preliminary opinion on the validity of the patents EP 3 094 067 and EP 3 054 658 last Friday. It was not in Qualcomm’s favour.

A final decision on validity is likely to be announced by the Opposition Division in the second half of the year. The Munich Regional Court must now decide whether it considers the patent valid or whether to suspend the proceedings.

Under pressure

Yesterday’s decisions means Qualcomm has failed to deliver the next big blow to Apple. Nevertheless, the US chip manufacturer gained ground. Qualcomm filed a new motion for the imposition of a penalty order concerning two December judgments, which hit the iPhone manufacturer hard.

Frank-Erich Hufnagel

Shortly before Christmas the Munich court found the US and European Apple companies had infringed an important patent for the power supply for electrical amplifiers. The court ordered Apple to stop selling and distributing the affected iPhone models 7, 8 and X (the 2017 version) in Germany. On the same day Apple stopped the sale of the affected iPhones through its stores.

But although Qualcomm enforced both judgments, the affected devices are still available through German retailers. Qualcomm then landed a coup on 20 January. The Munich Court rendered a preliminary injunction, stating that Apple may not claim the infringing iPhones are still for sale at retailers.

Qualcomm has now filled a motion for contempt to ask the court to order Apple to recall its iPhones from German retailers.

No sign of settlement

It remains unclear whether this will induce Apple to sign a new licence agreement, especially given the company’s postive start to the new year. On 15 January Mannheim Regional Court rejected another claim by Qualcomm based on the European Patent EP 2 460 270.

Qualcomm has sued Apple in Germany for the infringement of 13 patents; eight times in Munich, and five in Mannheim. The tally is mixed, with Munich Regional Court dismissing a total of three patents in Apple’s favour and Mannheim Regional Court dismissing one. The Mannheim court also suspended a decision, while Munich has postponed the decision on two Spotlight patents for the present.

On the other hand, Qualcomm can claim the injunctive relief from a patent against the older iPhones. But a lot depends on the next verdict from Mannheim on 19 February. A positive verdict for Qualcomm could further increase the pressure on Apple. If it goes the other way for the chip manufacturer, the effects of the sales freeze could diminish.

Observers believe it is the US proceedings, rather than the German judgmrnts, that will be decisive for resolving the global dispute. Nonetheless, the second round in Germany is about to begin. Qualcomm initially filed nine, then another four patent suits. The latter will be heard by Munich Regional Court in March and Mannheim Regional Court in the summer.

For Qualcomm
Quinn Emanuel Urquhart & Sullivan
(Munich, Mannheim): Marcus Grosch (lead), Johannes Bukow, Rüdiger Lahme (Hamburg, unfair competition); counsel: Jérôme Kommer, Katrin Gerstenberg, Jesko Preuß (Stuttgart); associates: Max Weiler (Hamburg), Andreas Hahne
In-house (San Diego): Don Rosenberg (general counsel), Mark Snyder (head of litigation), Brett Bachtell (senior litigation counsel)

For Apple
Freshfields Bruckhaus Deringer (Düsseldorf): Frank-Erich Hufnagel, Wolrad Prinz zu Waldeck and Pyrmont; associates: Eva-Maria Hering, Max Betz
Samson & Partner (Munich): Tobias Stammberger, Alexander Münster-Horstkotte, Marcus Otten, Matthias Göpfert (all patent attorneys)
In-house (Cupertino): David Melaugh, Andrew Farthing (both litigation)

Regional Court Munich, 7th Civil Chamber
Matthias Zigann (presiding judge)

Read more about the global dispute between Qualcomm and Apple here and here