One of France's biggest patent battles begins, as Intellectual Ventures fights telecommunications operators and phone manufacturers in Paris. Defendants include Bouygues and Orange. At the oral hearing, as the number of participants exceeded the number of people allowed in the court room, several interested parties followed the hearing by video.
5 May 2021 by Konstanze Richter
Parties consider it one of the most important patent cases in Europe. This week in Paris, the beginning of an extensive series of proceedings over DSL technology saw NPE Intellectual Ventures battle telecommunications operators. Proceedings are especially focused in France and Germany.
Intellectual Ventures accuses various telecommunications companies of infringing patent EP 16 94 020, which protects a multicarrier modulation system and method.
In France, Intellectual Ventures first approached Orange with a licence offer in 2015. After Orange failed to respond, in October 2017 the patent holder filed suits against it and Bouygues Télecom. The defendant brought in DSL equipment manufacturers ECI Télécom, Infineon and Lantiq as third-party defendants.
Furthermore, Huawei, Sagemcom, ZTE and Sercomm, equipment suppliers to Orange, also joined the suit as voluntary interveners (case IDs: 17/13837, 17/13838 and 17/13839).
In January 2020, the Judicial Court of Paris ruled on splitting the proceedings. Therefore, on Monday and Tuesday, the court heard the validity and infringement proceedings. In the event that the Paris court considers the patent valid and infringed, it will schedule another oral hearing on FRAND issues.
The court discussed the question of validity in great detail. The defendants question the validity on the grounds of added matter. Since, according to the defendants, Intellectual Ventures extended the patent, its scope is no longer covered by the basic patent.
Another argument brought forth is that the patent lacks novelty, due to a publication on the technology between the date of priority and the date of filing. With regards to infringement, the court discussed the question of patent exhaustion.
During the oral hearing, the defendants referred to the German parallel proceedings. In February 2020, the 5th Senate of the Federal Patent Court declared parts of EP 020 invalid and upheld it only in a limited form (case-IDs: 5 Ni 50/16 and 5 Ni 51/16). In Germany, Intellectual Ventures is opposing three major network operators in Deutsche Telekom, Telefonica/O2, and Vodafone.
Due to the pandemic, court room 4.04 at the Judicial Court in Paris allowed just 35 people inside. As such, other involved and interested parties were able to follow the proceedings via video.
The 3rd chamber, which is specialised in IP matters, has tried and tested video hearings in three other oral hearings since the French authorities announced another lockdown in April. The court has organised each case as a mix of lawyers being present in the courtroom, and onlookers being present via video.
The hybrid model gives parties the chance to follow the proceedings without having to travel during the pandemic. At the same time, parties can avoid having to postpone the oral hearing. The judgment is scheduled for 23 September 2021.
Intellectual Ventures relies on Bardehle partner Julien Fréneaux, who has experience representing NPEs. He also litigated for IPCom in proceedings against Lenovo and Xiaomi. In the German proceedings, Bardehle has advised Intellectual Ventures from the start with a mixed team of patent attorneys and lawyers. Tilman Müller-Stoy and patent attorney Hans Wegner head the team.
Fréneaux faced a renowned team from Hoyng ROKH Monegier Véron. Sophie Micallef and Amandine Métier presented the pleas before the Judicial Court for telecommunications operators Bouygues Télécom and Orange. In the German proceedings, Deutsche Telekom also works with Hoyng.
Furthermore, Huawei and its lawyers are said to play a particularly active role in the defence community. In France, the Chinese mobile phone manufacturer retained renowned litigator Grégoire Desrousseaux of August Debouzy.
In Germany, Preu Bohlig partner Christian Donle and patent attorney Friedrich Emmerling have been a dedicated team from the beginning of the case.
Formerly a partner at patent attorney firm Prüfer & Partner, Emmerling joined forces with Braun-Dullaeus at the end of 2018.
The third-party defendants and interveners also assembled experienced teams of lawyers in the defence (all public knowledge).
For Intellectual Ventures
Bardehle Pagenberg (Paris): Julien Fréneaux, Marie-Léa Rols, Clément Jaffray
Bouygues Télécom & Orange
Hoyng ROKH Monegier Véron (Paris): Amandine Métier, Sophie Micallef, Sabine Agé; associates: Agathe Caillé, Annabelle Divoy, Charlotte Cuny
Loyer & Abello (Paris): Michel Abello, Guillaume Dubos
Bird & Bird (Paris) Anne-Charlotte Le Bihan
August & Debouzy (Paris): Grégoire Desrousseaux, Abdelaziz Khatab
For Infineon Technologies
Jones Day (Paris): Thomas Bouvet
Linklaters (Paris): Pauline Debré
Casalonga (Paris): Caroline Casalonga, Marianne Gabriel, Francis Zapalowicz (patent attorney)
Taliens (Paris): Jean-Frédéric Gaultier
For ECI Telecom
Darkanian & Pfirsch (Paris): Augustin Pfirsch
Grünecker (Munich): Ulrich Blumenröder, Wolfgang Neubeck (patent attorney, Paris), Ute Stephani (all in German proceedings)
BRG (Paris): Richard Rondoux
Judicial Court of Paris, 3rd chamber, 1st section, Paris
Nathalie Sabotier (presiding judge)