Video streaming technology

Higher Regional Court confirms victory for DivX and Eisenführ against Netflix

A series of global disputes between video coding company DivX and the streaming platform Netflix has seen the latter hit with two cease and desist orders in Germany. The Higher Regional Court in Karlsruhe has confirmed that Netflix infringed two of DivX's patents through its High Efficiency Video Coding (HEVC) as part of its platform. The orders mark the next step in a series of proceedings that stretch across Brazil, the US and Germany.

22 July 2022 by Amy Sandys

DivX, Netflix Netflix and DivX are embroiled in legal disputes across a number of countries including Germany, the US and Brazil. ©Diego Cervo/ADOBE STOCK

The German arm of a series of international battles between Netflix and DivX has seen the streaming giant hit with two cease and desist judgments from the Mannheim Regional Court. The Higher Regional Court Karlsruhe has upheld the decisions, although validity proceedings remain pending at the European Patent office and in Munich.

Codifying codecs

Patents EP 26 61 696 and EP 34 67 666 both protect streaming technology that allows computers to interpret data and display data visually as a video. They also cover two other aspects of online video streaming, such as the ability to skip forward and backwards within a video, as well as a way of changing the video quality to cope with changing bandwidth.

The rulings, handed down by Mannheim judge Peter Tochtermann and confirmed by judge Andreas Voß in Karlsruhe, are part of a series of global legal actions between the two companies. DivX already has a number of licensing agreements for its patents and products, which includes Samsung as a licensee.

At the same time, invalidity proceedings regarding EP 696 are pending at the Federal Patent Court in Munich. EP 666 is also in opposition at the EPO. The hearing for EP 666 is set to take place in January 2023, although it is expected that the hearing will confirm the preliminary opinion of validity.

DivX moves globally

DivX is currently assessing the situation for potential damages from Netflix. However, these are not expected to be substantial. It is likely the current litigation is geared towards encouraging the company to the negotiating table. DivX has multiple HEVC patents in its patent portfolio available for licence.

Now, the group will be looking into Netflix’s code to ensure that it is not still using DivX’s technology as part of its streaming platform.

The move comes as part of a series of global disputes, including action in the US and Brazil. In the latter, Netflix was met with an injunction on using DivX’s technology and fined R$50,000 (Brazilian Reals).

DivX turns to Eisenführ Speiser

Volkmar Henke, Eisenführ Speiser, patent litigation

Volkmar Henke

A team led by Volkmar Henke and Sönke Scheltz from mixed IP firm Eisenführ Speiser is representing DivX in the German proceedings.

This is the first time that the firm has worked with DivX, having worked with the company on this case for the last two years.

In the US, DivX is working with Tensegrity Law Group as part of its action against Netflix.

Representing Netflix was a team from Quinn Emanuel Urquhart & Sullivan led by Marcus Grosch. This is not the first time that the US firm has represented the streaming platform. Quinn Emanuel has represented Netflix in previous litigation against Broadcom over video streaming technologies. The firm often acts for other large mobile communication companies, such as Google and Blackberry.

Marcus Grosch

For DivX
Eisenführ Speiser (Hamburg):Volkmar Henke, Sönke Scheltz (partners, both lead), Jochen Ehlers (partner, patent attorney); associate: Karin Rosahl (patent attorney).

For Netflix
Quinn Emanuel Urquhart & Sullivan (Munich): Marcus Grosch (partner, lead); of counsel: Julia Nobbe; counsel: Katrin Gerstenberg, Jan Axtmann; associate: Timo Merle

Regional Court Mannheim, 7th Civil Chamber
Peter Tochtermann (presiding judge)

Higher Regional Court Karlsruhe:
Andreas Voß (presiding judge)