The Judicial Court of Paris has once again dismissed claims brought by Intellectual Ventures over a mobile communications patent. The NPE had filed infringement suits against Bouygues Telecom and SFR. Huawei joined the dispute.
22 November 2022 by Konstanze Richter
The current case concerns Intellectual Ventures’ patent EP 1 327 374, which protects service priorities in multi-cell networks. The patent was originally filed by Nokia, which later transferred the rights to Spyder Navigations. Today, Intellectual Ventures holds the rights to the patent.
The patent expired in October 2021, therefore the dispute primarily concerns damages.
Intellectual Ventures accuses the two French telecommunications companies Bouygues Telecom (case ID: 18/00406) and Société Française du Radiotéléphone (SFR) (case ID: 18/00407) of infringing EP 374 within their networks since 2013.
The patent comprises a total of 24 claims. According to the claimant, the defendants use the technology protected by claims 1 and 15 when transmitting data from base stations equipped with 2G, 3G and 4G technology to users’ devices via rrConnexionRelease message.
Claim 1 protects “a method for determining a cell allocation for a user in a wireless network, the network comprising a plurality of cell types and users having at least one of a plurality of service types, including defining a priority table comprising, for each service type, a priority for each cell type”.
Wheareas claim 15 refers to “a wireless communication network having a plurality of cell types for supporting users having at least one of a plurality of service types, wherein there is defined a priority table in which for each service type there is defined a priority for each cell type”.
Huawei joined the two lawsuits as a supplier of network equipment to SFR and Bouygues Telecom. The defence argued that the patent specification did not teach any additional step following the establishment of the priority table. Therefore, a person skilled in the art would be unable to carry out the invention in the presence of several cells of identical type and technology. Furthermore, the defendants argued that the patent claims also lack novelty.
The court heard both proceedings together, which is rare in France. The judges found that the patent sets out the invention in a manner sufficiently clear and complete for a person skilled in the art to carry it out.
However, the judges found EP 374 invalid due to lack of novelty in view of US patent US 6 094 581 from 1997 and therefore dismissed the infringement suit. It is not yet known whether Intellectual Ventures will appeal.
The action is part of a series of proceedings that began in Germany when Intellectual Ventures filed suit against network operators Deutsche Telekom, Telefonica/O2 and Vodafone. In 2018, the NPE then sued various defendants in France over three mobile communications patents.
In September 2021, the Judicial Court of Paris invalidated Intellectual Ventures’ patent EP 16 94 020. The appeal in this case is pending. In the case of EP 21 46 439, the EPO Opposition Division revoked the patent in autumn 2021. The appeal before the EPO Boards of Appeal is ongoing. In May 2022 the French case was stayed pending the Boards’ decision.
Currently Intellectual Ventures is fighting over four of its patents in France. In all the proceedings Bardehle Pagenberg is representing the NPE. A team led by Paris partner Julien Fréneaux acted for Intellectual Ventures in the battle over EP 16 94 020 and against SFR over EP 13 04 002
The defendants also retained advisors who had worked for them in other disputes in France. Hoyng ROKH Monegier advised Bouygues Telecom, while Loyer & Abello assisted SFR, the latter being involved in all four proceedings in France.
Huawei, which joined the disputes, relied on August Debouzy, as it had in the other proceedings. The advisors are dually qualified as lawyers and patent attorneys and handled both technical and legal issues. As in the German case, Huawei plays a very active role in the French proceedings as co-litigant.
The team led by partner Grégoire Desrousseaux also took the lead in an EPO opposition of six opponents against EP 439, which the Opposition Division revoked.
For Intellectual Ventures (case IDs: 18/00406 and 18/00407)
Bardehle Pagenberg (Paris): Julien Fréneaux (partner), Marie-Claude Pellegrini (partner and patent attorney); associate: Clément Jaffray
Bouygues Télécom (case ID: 18/00406)
Hoyng ROKH Monegier (Paris): Sophie Micallef, Denis Monégier du Sorbier (partners); associate: Charlotte Cuny
Regimbeau (Paris): Anne-Laure Deleuze (patent attorney)
In-house (Paris): Emmanuel Paret (IP Counsel), Guillaume Dufey (Litigation Counsel)
For SFR (case ID: 18/00407)
Loyer & Abello (Paris): Guillaume Dubos, (partner); associate: Stéphanie Rollin de Chambonas
In-house (Paris): Claire Chamard (head of IP)
For Huawei (case IDs: 18/00406 and 18/00407)
August Debouzy (Paris): Grégoire Desrousseaux (partner); associates: Martin Brion, Candice Dupin
Judicial Court of Paris, 3rd Chamber
Nathalie Sabotier (presiding judge), Arthur Courillon-Havy, Linda Boudour