Nokia is seeking to stop the referral of a connected cars lawsuit against Daimler to the CJEU. Yesterday evening, Nokia filed an immediate appeal against the relevant decision of the Regional Court in Düsseldorf. Previously Nokia had transferred two other lawsuits against Daimler from Düsseldorf to Munich.
11 December 2020 by Mathieu Klos
Nokia has resorted to further procedural moves in the connected cars battle against Daimler and its suppliers. Yesterday, the Finnish mobile phone manufacturer filed an appeal against the decision of the Regional Court Düsseldorf to refer one of three Düsseldorf connected cars lawsuits against Daimler to the CJEU (case ID: 4c O 17/19). Clemens Heusch, head of global litigation, confirmed this to JUVE Patent. The Düsseldorf Court had suspended the case on November 26 and addressed an extensive list of questions to CJEU.
The European judges are to clarify whether Nokia is free to decide to whom it offers a FRAND license in a supply chain of connectivity modules. However, the judges from Düsseldorf also want to submit general SEP questions to the CJEU. They result from the Huawei vs. ZTE judgment of the CJEU.
This had given 2015 owners and implementers of SEPs concrete guidelines on how they must behave in license negotiations and in SEP lawsuits. Now the CJEU is to clarify further details of the so-called FRAND dance in the Nokia vs. Daimler case.
The Regional Court had granted Nokia the opportunity to appeal. Nokia made use of this at the last moment.
A referral was generally considered to be a negative development for Nokia because the CJEU proceedings would cause a significant delay. Nokia, however, is keen for a quick decision by the Düsseldorf court in order to force Daimler to conclude a licence as soon as possible. So far, Nokia has received positive rulings from the Mannheim and Munich Regional Courts. Despite an injunction, the two decisions had not persuaded Daimler to conclude a license.
With the appeal, Nokia now wants to prevent the Düsseldorf case from actually coming to the CJEU. Experts told JUVE Patent that a verdict would not be expected for two years at the earliest.
A complaint against a submission to the CJEU is unusual. Huawei and ZTE refrained from taking this step when the Düsseldorf Regional Court referred their case to the CJEU in 2013.
But it will also take several weeks before a decision is reached on the Nokia appeal. The lower Düsseldorf Regional Court is now responsible under German law for deciding whether to accept the appeals. Daimler and its suppliers will be given the opportunity to comment on this. If the court accepts Nokia’s appeal, it would transfer the appeal to one of the two patent senates at the Higher Regional Court, which would then make the final decision.
A referral to the CJEU had already been indicated after the oral hearing in August. To avoid it, Nokia had offered a FRAND license to the tier-one suppliers of the connectivity modules in September. Nokia had rejected this until then. Instead, the Finnish conglomerate had always demanded that Daimler as the OEM had to accept the license for the connectivity modules in its cars. However, the suppliers had not accepted Nokia’s subsequent offer.
In November it was decided to refer to the CJEU. According to information from JUVE, this was well coordinated between the Regional and Higher Regional Court in Düsseldorf. The hurdles for a successful appeal by Nokia are therefore likely to be high.
The other two connected cars cases against Daimler (case ID: 4a O 26/19 and 4a O 27/19) were withdrawn by Nokia at the end of last week. This is possible under German law, as long as they have not yet been heard orally. Nokia subsequently re-submitted both cases to the Regional Court in Munich.
It also became known that Nokia also redirected a SEP lawsuit against Lenovo (case ID: 4c O 34/19) from Düsseldorf to Munich. Apparently Nokia no longer believes that the Düsseldorf court will be able to make quick verdicts. Many patent lawyers now consider that the court will treat SEP claims very cautiously until a ruling by the CJEU.
Meanwhile, there is a growing body of opinion that the two patent courts in Munich and Mannheim might be less reticent than Düsseldorf to deal with SEP cases. Should the referral actually become effective, Peter Meier-Beck, presiding judge of the competition law senate at the Federal Court of Justice yesterday called on the patent courts to refrain from suspending SEP cases.
According to market information platform MLex, at a conference held at the Technical University Berlin Meier-Beck said, “Under no circumstances should we stop working and thinking on the relevant issues and wait for enlightenment from Luxembourg. We will not get it.”
Nokia is regarded as having speculated on this point when it redirected its lawsuits from Düsseldorf to Munich a few days ago. The Regional Court Munich is considered to be very SEP-owner friendly.
Arnold Ruess (Düsseldorf): Cordula Schumacher (lead, FRAND), Arno Riße (lead, tech)
Cohausz & Florack (Düsseldorf): Christoph Walke, Björn Brouwers (patent attorneys)
In-house (Munich): Clemens-August Heusch (IPR litigation)
Quinn Emanuel Urquhart & Sullivan (Munich): Marcus Grosch (lead)
In-house (Stuttgart): Anja Miedbrodt, Karin Setter
Regional Court Düsseldorf, 4c Civil Chamber
Sabine Klepsch (presiding judge), Tobias Schmitz, Sabine Wimmers
Update 18.01.2021: On 15 January, the Düsseldorf patent judges of Chamber 4c at the Regional Court of Düsseldorf upheld their decision from November 2020, to refer certain FRAND issue to the CJEU. As different media now report, the Higher Regional Court must decide on Nokia’s attempt to stop the referral. The next interesting question? Whether the 15th patent senate of presiding judge Ulrike Voß or the 2nd civil senate lead by Thomas Kühnen will decide on the appeal.
Update 19.02.2021: On 17 February, Nokia withdrew its immediate appeal at the Higher Regional Court Düsseldorf. This means that the court no longer has to decide whether the decision of the Regional Court Düsseldorf to refer the case to the CJEU is admissible. The court will now officially send its questions to the CJEU for clarification.
(This article was updated on 18.01.2021 and 19.02.2021 to reflect the latest developments in the case between Nokia and Daimler.)