Semiconductors

Taylor Wessing represents Globalfoundries in Germany

Globalfoundries' lawsuits against chip manufacturer TSMC and some of its main customers have been pending in German and US courts for three weeks. It is only now that the legal teams are becoming clear. Taylor Wessing is representing the chip manufacturer in the German case before the regional courts in Mannheim and Düsseldorf. The defendant Apple relies on Hogan Lovells. Qualcomm and EBV are working with Bird & Bird.

17 September 2019 by Mathieu Klos

Globalfoundries is suing TSMC and others over its chip manufacturing patents, but only now are the legal teams becoming clear ©Tiko/ADOBE STOCK

For the most part, the dispute over chip technology is taking place before US courts. At the end of August, Globalfoundries, which also has a plant in Dresden, filed patent suits against its competitor Taiwan Semiconductor Manufacturing Company and 19 of its major customers and downstream electronics companies. The list of defendants includes such prominent names as Apple, Broadcom, Cisco, Google, Motorola, Nvidia and Qualcomm.

Globalfoundries accuses TSMC of infringing 16 patents with its chip manufacturing process. These protect manufacturing processes with structure widths of 7, 10, 12, 16 and 28 nanometres.

The US company filed the lawsuits with the U.S. International Trade Commission (ITC), the U.S. Federal District Courts in Delaware and the Western District of Texas as well as the regional courts of Düsseldorf and Mannheim in Germany.

Globalfoundries wants to stop the further import of TSMC chips to Germany and the US. In most cases, according to Globalfoundries, major customers and electronics retailers are the actual importers of the allegedly patent-infringing products.

Globalfoundries is demanding compensation from TSMC for the illegal use of its technology. It claims the Taiwanese company has made tens of billions in revenues with the allegedly infringing products. According to reports, however, the real goal of this massive wave of lawsuits is a quick licence settlement.

The German cases

While the US lawsuits are mainly directed against TSMC, in Düsseldorf Globalfoundries is suing Apple’s US parent company (case ID: 4b O 65/19) and Qualcomm (case ID: 4b O 66/19) over three patents.

Dietrich Kamlah, Taylor Wessing, patent litigation, Munich

Dietrich Kamlah

In Mannheim, Globalfoundries has filed suits against Apple’s German distributor over three patents (case ID: 2 O 103/19) and EBV Elektronik over two patents (case ID: 2 O 104/19). EBV is a German wholesaler of electronic components and a subsidiary of Avnet.

All claims refer to the German patents DE 102011002769, DE 102011004320 and DE 102012219375.

Globalfoundries enforced 13 US patents in the US, including two complaints to the ITC, 13 to the Federal District Court Western District of Texas and six to the Federal District Court in Delaware.

A first for Globalfoundries

Globalfoundries is so far an unknown quantity in Europe when it comes to patent litigation. The German patents in question were filed by patent attorneys at Grünecker. Although the firm has recently handled several chip technology lawsuits, it is not litigating on behalf of Globalfoundries – presumably because of a conflict with Broadcom. The latter chip manufacturer is also one of TSMC’s major customers subject to a lawsuit.

Oliver Jüngst, Bird & Bird, patent litigation

Oliver Jüngst

Most German patent practices from international law firms are also excluded from the action. Too many of the companies sued by Globalfoundries have strong relationships with German patent teams.

A Munich team led by Dietrich Kamlah of Taylor Wessing represented Globalfoundries in court. The firm has experience in mobile communications lawsuits, having represented Ericsson and Asus for example. However, so far it is under the radar in semiconductor lawsuits. The current case is likely the team’s biggest at present. Patent attorney Joel Nägerl from Zimmermann & Partner, who has recently been involved in numerous proceedings for Samsung, is also working on the case.

According to sources, Latham & Watkins is leading the US case. The firm has ties to the chip manufacturer through Silicon Valley partner Douglas Lumish.

United against a new enemy

In the past few days, the counsel involved on the defendant side has become clearer. Bird & Bird partner Oliver Jüngst is supporting EBV Electronics against the Globalfoundries claim in Mannheim. Jüngst has advised EBV previously. This is as well as his involvement in other semiconductor disputes for Mouser, another wholesaler of electronic components.

Recently it became public that Jüngst also represents Qualcomm in the dispute in Düsseldorf. This is the first time he has acted for the semiconductor manufacturer. In the past, Qualcomm has always relied on Quinn Emanuel Urquhart & Sullivan, for example in the extensive battle over chips in older iPhone models.

Andreas von Falck, Hogan Lovells, Düsseldorf, patent

Andreas von Falck

Furthermore, Apple has appointed attorneys in Germany. The choice of Hogan Lovells partner Andreas von Falck to work alongside the iPhone producer in its proceedings at the Mannheim court comes as no surprise. Hogan Lovells is one out of three standard advisors for Apple in Germany.

Apple always relies on Freshfields Bruckhaus Deringer and Hogan Lovells in Europe. In addition, Hoyng ROKH Monegier has played a role since Apple’s high-profile battle against Qualcomm. Hoyng ROKH’s German team also has excellent connections to Intel.

Although TSMC does not face a lawsuit in Germany, it is considered certain that the company will join the dispute as a co-defendant and assume the leading role in the defence. Which firm will represent TSMC in the German and US proceedings is as yet unknown.

For Globalfoundries
Taylor Wessing
(Munich): Dietrich Kamlah; associate: Michael Schächinger
Zimmermann & Partner
(Munich): Joel Nägerl (patent attorney)

For Apple
Hogan Lovells (Düsseldorf): Andreas von Falck

For Qualcomm
Bird & Bird (Düsseldorf): Oliver Jüngst

For EBV Elektronik
Bird & Bird (Düsseldorf): Oliver Jüngst

Regional Court Düsseldorf, 4b Civil Chamber
Daniel Voss (presiding judge)

Regional Court Mannheim, 2nd Civil Chamber
Holger Kircher (presiding judge)

This article was updated on 11/10/2019 to reflect the latest developments in Germany.

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