Sisvel and Archos reach international FRAND settlement

In summer 2019, Mitsubishi Electric and non-practicing entity Sisvel brought an infringement case before the UK High Court (case ID: HP-2019-000014). The infringement complaint is against five defendants over 12 cases. Previously, this included French electronics company Archos. The four other defendants are Xiaomi, Sun Cupid Technology, Nuu Mobile UK and Oppo.

The patents in question are EP 1 471 657 and EP 2 254 259, owned by Mitsubishi, and EP 1 925 142 owned by Sisvel. All three patents in dispute are part of a patent pool owned by Sisvel and concern 4G technology.

Now, claimants Mitsubishi and Sisvel have reached a global agreement on FRAND licences with Archos. The licence covers the three disputed patents, as well as Sisvel’s entire MCP patent pool portfolio. Archos is thus no longer party to the proceedings.

All eyes on London

Although Archos has settled with Sivel, the other four defendants still dispute the infringement claims over three patents and a technical trial is scheduled for December 2020. Also, the parties have scheduled a Case Management Conference for 1 December to 2 December. This hearing will decide the next steps of the case and determine the following technical and FRAND trials.

It is unsurprising that Sisvel is looking to the UK to secure a global FRAND licence. This week, the Supreme Court has heard two of the biggest FRAND cases in Europe. However, defendant Xiaomi is challenging the jurisdiction of the UK courts in deciding global licences.

This dispute illustrates the perception of the UK as the go-to jurisdiction in which to enforce global licences. A case will also be heard in Italy, although there are no details yet.

Return to The Hague

Sisvel owns a portfolio of over 450 patents in its MCP pool, including EP 2 139 272 and EP 1 129 536 which are disputed in the Netherlands. The patents are a ‘method and system for attaching a mobile equipment to a wireless communication network’ and ‘data transmission in radio systems’ respectively. Both are SEPs. However, the dispute over these patents in the Netherlands against Archos has been settled, because the licence agreed in the UK is global in scope.

In addition, in August Sisvel was denied a preliminary injunction against Xiaomi in the Netherlands for patent EP 1 111 997, as well as European patent EP 1 129 536. The preliminary injunction proceedings are part of the wider conflict between Sisvel and Xiaomi in the Netherlands, and the UK. An oral hearing about patent EP 536 will take place in the Netherlands in February 2020.

Sisvel has undergone previous litigation proceedings in the Netherlands, but this is the first to concern its MCP programme. Nevertheless, proceedings against Xiaomi and the other defendants that have not yet settled, are ongoing.

Recent developments

Gertjan Kuipers

De Brauw Blackstone Westbroek partner Gertjan Kuipers leads the case for Sisvel in the Netherlands. Previously, De Brauw and Kuipers have worked with Sisvel on other cases before the Dutch courts. De Brauw worked with Dutch patent attorneys from De Vries & Metman in the preliminary injunction case.

Amsterdam-based firm Brinkhof is acting for Xiaomi in the preliminary injunction and infringement proceedings. The case against Sisvel is the first in which Brinkhof has acted for Xiaomi. Previously, Brinkhof also acted for Archos.

Nicola Dagg

Xiaomi is also a new client for Kirkland & Ellis. The case is led for Kirkland by partner Nicola Dagg, who joined the London office in 2018 to head its IP litigation capacities in London. The London office of Bird & Bird is acting for Sisvel and Mitsubishi.

However, now defendants Sun Cupid Technology and Nuu Mobile UK are representing themselves. Although originally represented by London-based law firm Origin, the two parties have parted ways and it is unknown which firm will take over the case. (Co-author: Konstanze Richter)

UK

For Mitsubishi and Sisvel
Bird & Bird (London): Richard Vary, Jane Mutimear

For Archos
Pinsent Masons (London): David Lancaster, Christopher Sharp (lead); Mark Marfé, Liz Cooper

For Xiaomi
Kirkland (London): Nicola Dagg, Steven Baldwin, Alexander Kritharidis, Rory Clarke

Sun Cupid Technology
In-house: unknown

Nuu Mobile UK
In-house: unknown

Oppo
Taylor Wessing (London): James Marshall

The Netherlands

For Sisvel
De Brauw Blackstone Westbroek (Amsterdam): Gertjan Kuipers

Archos
Brinkhof (Amsterdam): Daan de Lange, Rien Broekstra, Boukje van der Maazen

Xiaomi
Brinkhof (Amsterdam): Richard Ebbink, Daan de Lange

Oppo
Brinkhof