An epilogue begins in the connected cars battle between Conversant and Daimler, following a win by TomTom. The Federal Patent Court has nullified an important patent held by Conversant. Claimant TomTom had not joined the NPE’s previous settlement with Daimler and continued to fight in the nullity proceedings.
27 May 2021 by Mathieu Klos
The German Federal Patent Court has overturned Conversant patent, EP 17 97 659, which protects mobile communication technology for autonomous transmission in high-speed uplink packet access, and transmission time control.
The judges ruled that Conversant had unlawfully extended the patent (case ID: 2 Ni 28/20).
EP 659 was also part of the connected cars dispute between the NPE and Daimler. TomTom participated as one of several Daimler suppliers. In this instance, Düsseldorf Regional Court found Daimler in breach of EP 659. However, previously the Düsseldorf judges had no doubt as to the patent’s validity.
JUVE Patent is aware that the case involved Continental, as an important supplier of connectivity modules for Daimler cars. TomTom did not join the settlement. Huawei, another major supplier, had already reached a separate settlement with Conversant.
The Federal Patent Court’s recent decision will no longer impact ongoing infringement proceedings. Conversant and Daimler settled their dispute over connected cars patents at the end of April.
TomTom is the only remaining claimant of several original nullity claimants.
However, the Conversant patent is not yet dead and buried. The NPE can appeal the decision at the Federal Court of Justice. A settlement between TomTom and Conversant could also save EP 659. TomTom would then most likely withdraw its suit, which would render the judgment moot.
JUVE Patent is not yet aware if the two companies are talking about such a move.
Conversant carved out two divisional applications from the parent patent EP 659. Several companies filed oppositions to these. Apart from TomTom, they have all withdrawn these, too, as a result of the settlement.
Bardehle Pagenberg partner Tobias Kaufmann, working with lawyers from his firm, had already represented TomTom as intervener for Daimler in the infringement proceedings. The team is also acting for TomTom in other connected cars suits, for instance against Nokia.
In addition, the company brought on board Augsburg-based lawyer Maximilian Ernicke. Previously, Ernicke was an associate for Bardehle.
Most Conversant patents are filed by German-British law firm EIP, via its London patent attorneys. Its lawyers are also conducting the infringement proceedings for Conversant in Germany and the UK.
David Molnia from df-mp Dörries Frank-Molnia & Pohlman took the lead role in the nullity suit before the Federal Patent Court.
His team also handled the technical aspects for Conversant in the infringement proceedings against Daimler. Df-mp is active for Nokia in the connected cars suits.
Daimler and Huawei had originally also taken action against EP 659, but withdrew the claims after their settlements with Conversant.
df-mp Dörries Frank-Molnia & Pohlman (Munich): David Molnia, Dominik Ho, Ben Flocke (all patent attorneys)
EIP (Düsseldorf): Christof Höhne, Florian Schmidt-Bogatzky
Bardehle Pagenberg (Munich): Tobias Kaufmann (lead), Humphrey Morhenn (both patent attorneys); Peter Chrocziel, Anna Giedke, Sebastian Horlemann
Federal Patent Court, 2nd Senate
Monika Hartlieb (presiding judge), Ina Schnurr, Ulrich Himmelmann