Non-essential patents

Paris court disappoints in Conversant vs LG

The high-profile dispute between Conversant Wireless and LG over mobile phone patents reaches an unspectacular end. The Court of Appeal in Paris has now declared the patents non-essential (case-ID: RG 15/17037). Many hoped for a decision that would set FRAND licences.

18 April 2019 by Konstanze Richter

Conversant Wireless, LG, non-essential patents The Court of Appeal in Paris declares Conversant's patents as non-essential, in an anti-climactic result for many in the telecommunications industry. ©ChiccoDodiFC/Adobe Stock

In the first instance, the Tribunal de Grande Instance found five patents owned by non-practicing entity Conversant Wireless, previously Core Wireless, to be non-essential (case ID: 14/14124). Conversant lodged an appeal against that decision.

No FRAND necessary

In the second instance, the dispute revolved around only two intellectual property rights (EP 950 330 BI, EP 978 210 Blet). However, the appellate court followed the opinion of the first instance court in dismissing Conversant Wireless’ claims for damages. It also dismissed all counterclaims by LG.

Denis Monégier du Sorbier, Hoyng ROKH Monégier, Paris

Denis Monégier du Sorbier

This made it unnecessary for the court to set FRAND rates, which originally brought the case into focus for the international patent community. It was hoped that, for the first time, a French court would also set a globally-valid FRAND rate for mobile phone licences. These hopes are now dashed.

“It seems that the only courts in Europe willing to set a global FRAND rate are the British,” says one observer. This is in reference to the recent Unwired Planet vs Huawei case at the UK Court of Appeal in London, which caused a stir with its decision to set a global FRAND licence for the SEPs of Unwired Planet.

German courts, too, are cautious on the question of FRAND licence fees. The Higher Regional Court Düsseldorf confirmed the approach of the London judges as FRAND-compliant, but stated it is not a benchmark for all subsequent licence agreements.

For the first time since the introduction of a new law in France, part of the oral hearing in the civil proceedings took place in camera. This is to protect trade secrets. Only certains parts of criminal cases have so far been conducted in camera.

New counsel for Conversant

Conversant Wireless was represented by then-Reed Smith litigator Marina Cousté in the first instance. Cousté later moved to the patent practice of Simmons & Simmons. IP firm Hoyng ROKH Monégier only came to the case in the second instance, representing the NPE Conversant for the first time.

Paris patent litigator Cyrille Amar advised the defendant LG from the first instance.

Conversant Wireless is also battling mobile phone manufacturers in other countries. One case against ZTE is pending at the Düsseldorf Regional Court. The NPE is represented by EIP and the Chinese mobile phone company by Taliens.

In England, parallel proceedings are pending at the High Court of London, with Bristows representing ZTE. EIP is again representing Conversant.

For Conversant Wireless
Hoyng ROKH Monégier (Paris): Denis Monégier du Sorbier, Benoît Strowel, Lukasz Wlodarczyk (patent attorney and lawyer)

For LG
Amar Goussu Staub (Paris): Cyrille Amar, Grégoire Goussu

Court of Appeal, Paris, Department 5, chamber 1
David Peyron (presiding judge), Isabelle Douillet, François Thomas