A new wave of lawsuits has reached the Dutch and German patent courts. Early last week, Nikon filed several suits against the Dutch company ASML and its supplier Carl Zeiss SMT in the Netherlands, Germany and Japan. By the end of the week, ASML and Carl Zeiss hit back with their own suits in the Japanese and US courts. The opponents are fighting over complex machines for the manufacture of semiconductor chips.
2 May 2018 by Laura King
The Nikon patents protect immersion lithography systems, which print circuits onto chips. The huge and complex machines, manufactured by both Nikon and ASML, are distributed to a select number of chip manufacturers around the world. The technology relies upon high-quality optical lenses. ASML use the lenses from Carl Zeiss SMT in its lithography systems.
Nikon filed a suit against ASML and Carl Zeiss to cease and desist from the sale of its products, and for damages. The Japanese group validated its two European patents EP 1.881.521 and EP 2.157.480 at the Regional Court of Mannheim, filing no less than 11 patent infringement suits against ASML at the District Court of The Hague.
In retaliation, ASML accused Nikon of infringing more than ten of its patents from a broad product palette in the manufacture of semiconductors, flat screens and digital cameras.
In 2001, Nikon sued ASML in the United States for infringement of the technology it developed and patented. In 2004, the parties agreed on a comprehensive settlement and cross-licensing agreements that were valid until December 2009.
The companies had agreed not to enforce any patent infringement claims in the years following until December 2014; the current dispute shows that the companies are unable to agree on any license extension.
Parallel cases in Germany
Nikon is represented by an international team of litigators from Hogan Lovells and Freshfields. This is the first time the German Freshfields team has represented Nikon before the German patent courts. However, the law firm has often shared clients with the patent lawyers at Hogan Lovells. Both patent teams are Apple’s first choice for German proceedings, for example, and the large number of lawsuits filed in the Netherlands sees Nikon working closely with the respective Dutch patent teams.
The Nikon vs. ASML/Carl Zeiss SMT case is already considered a possible model UPC case for when the new court is up and running, expected at the beginning of next year. It has strong international aspects as a result of the proceedings in the Netherlands and Germany, and its complexity necessitates large and international teams.
In contrast to the current situation, Nikon would take one case before the UPC, instead of 13 cases at various courts. Internationally, the Nikon case is being managed by Jack Londen, a partner at Morrison Foerster’s San Francisco office. While Londen conducted the first round of the dispute, taking place largely before US courts, a large in-house team from Japan is also involved.
Although the lawsuits are still new, ASML and Carl Zeiss had already prepared their defence due to the length of the ongoing saga. In Germany, Hoyng ROKH Monegier’s team led by partner Haft handles the case for Carl Zeiss, with whom he has close ties. K+L Gates partner Thorsten Vormann also provided counsel in the run-up to the trial.
It is considered certain that ASML and Carl Zeiss will be represented in the lawsuits before the Dutch courts by Willem Hoyng, name partner of Hoyng ROKH Monegier from the firm’s Amsterdam office. According to reports, Hoyng was already in charge of mediation before the suits were filed. (Co-author Mathieu Klos)
Freshfields Brukhaus Deringer: Frank-Erich Hufnagel, Wolrad Prinz zu Waldeck und Pyrmont (both Düsseldorf), Rutger Kleemans (Amsterdam); associates: Matthias Beer (Munich), Ruben Laddé (Amsterdam)
Hogan Lovells: Andreas von Falck, Alexander Klicznik (both Düsseldorf), Bert Oosting, Klaas Bisschop, Ruud Van der Velden (all Amsterdam)
Hoffmann Eitle: Mark Jones (London), Christopher Furlong (Munich, both patent attorneys) – market information
Arnold Siedsma (Amsterdam): Arjen Hooiveld (patent attorney) – market information
Morrison Foerster (San Francisco): Jack Londen – market information
For ASML/Carl Zeiss SMT
Hoyng ROKH Monegier (Düsseldorf): Klaus Haft, Christian Osterrieth, Tobias Hessel, Stefan Richter, Willem Hoyng (Amsterdam); associates: Eva Thörner, Moritz Schumacher
K&L Gates (Frankfurt): Thorsten Vormann; associates: Isabel Kainer-Pfuhl, Marc-Ruben Hagedorn
In-house (Oberkochen): Andreas Zeiler (head of patent strategy), Frank Wedekind (Carl Zeiss AG patent department)