Anti-suit injunction

InterDigital signs licensing agreement with Xiaomi

InterDigital and Xiaomi have signed a global licensing agreement and ended their worldwide patent disputes. This also brings to an end one of the bitterest battles of the past year over anti-suit injunctions.

6 August 2021 by Mathieu Klos

InterDigital and Xiaomi, patents, licensing agreement After a fierce ASI battle, InterDigital and Xiaomi have agreed on a global SEP licence deal ©H_Ko/ADOBE STOCK

Earlier this week, InterDigital and Xiaomi announced the signing of a global licensing agreement. The Chinese mobile phone manufacturer accepted the licence to InterDigital’s portfolio of standard essential patents after a months-long patent dispute.

The licence grants Xiaomi access to InterDigital’s SEPs concerning cellular wireless (including 3G, 4G and 5G), WiFi and HEVC video technology for its cellular-enabled mobile devices.

The licence is non-exclusive. Furthermore, the two companies did not disclose financial details of the agreement. In addition, Xiaomi recently struck a deal with SEP holder Sisvel that also ended patent litigation with the NPE.

Hard fought ASI battle

InterDigital and Xiaomi were litigating in patent courts in China, India and Germany.

The ASI battle came about after licensing negotiations between Xiaomi and InterDigital were unsuccessful. As a result, Xiaomi sued for a global FRAND licence in Wuhan. Back in September 2020, the Wuhan court issued the ASI and AAASI (case ID: (2020) E 01 Zhi Min Chu 169). At the end of September, Interdigital countered with an AASI and AAASI from the Delhi High Court (case ID. 8772/2020 in CS(COMM) 295/2020). A month later, InterDigital filed the same applications in Munich.

For months, patent experts around the world have closely followed the ever-developing battle over anti-suit injunctions between Xiaomi and InterDigital.

Most recently, the dispute was focused on Munich Regional Court. The court issued positive rulings for InterDigital, which likely increased Xiaomi’s willingness to accept a licence.

Munich centre stage

In February 2021 the Munich court rendered its noted AASI and AAAASI judgment, setting for the first time a fourfold ASI in Germany (case ID: 7 O 14276/29). The court prohibited Xiaomi from enforcing an anti-suit injunction issued by the Wuhan Intermediate People’s Court against InterDigital in Germany.

Cordula Schumacher, Arnold Ruess

Furthermore, the judges ruled that implementers in FRAND disputes filing ASIs in China or elsewhere are unwilling licensees. This reduced the prospects for Xiaomi to successfully defend itself against infringement suits. A short while later, InterDigital therefore increased the pressure and filed three patent infringement suits in Munich (case IDs 7 O 4225/21 and 4226/21, 21 O 4227/21). Initial negotiations were scheduled for February 2022.

In the meantime, Xiaomi filed an appeal against the Munich ASI decision. The 7th Civil Chamber dismissed the appeal. Xiaomi then appealed this decision at Munich Higher Regional Court.

However, the court will now no longer have the opportunity to review the ASI jurisdiction of the first instance. For a good year, the Regional Court Munich has been the go-to court in Germany for global ASI disputes. Numerous SEP holders file AASI applications here against ASI rulings from China.

ASIs, especially from US and Chinese courts, have experienced a hype following a 2019 dispute between Nokia and Daimler over connected cars patents.

Growing teams for main proceedings

In the ASI dispute, both Arnold Ruess and Hogan Lovells acted for the first time in the case for clients InterDigital and Xiaomi.

For the main proceedings, Hogan Lovells established a mixed team of litigators and patent attorneys from its Düsseldorf and Munich offices.

Xiaomi is currently facing numerous SEP lawsuits in Europe and consequently employs a large number of law firms. In Germany, for instance, Simmons & Simmons, among others, represented the Chinese company against Sisvel. Vossius & Partner represents Xiaomi in the dispute with HEVC Advance pool.

Arnold Ruess relied on the technical support of patent attorney firm df-mp. The firm is one of the most active litigation outfits in Germany for cases concerning mobile communications patents.

Andreas von Falck, Hogan Lovells

For InterDigital
Arnold Ruess (Düsseldorf): Cordula Schumacher (lead, FRAND), Arno Riße (lead, tech), Marina Wehler; associates: Jan Wergin, Tim Smentkowski, Lisa Schneider, Tobias Weigand, Chanisar Bangkomnet
df-mp (Munich): Dominik Ho, David Molnia (both patent attorneys)
In-house (Wilmington): Steve Akerley, (VP, head of litigation)

For Xiaomi
Hogan Lovells (Düsseldorf): Andreas von Falck (lead), Alexander Klicznik, Benjamin Schröer, Oliver Bäcker, Lukas Wollenschläge (lawyers); patent attorneys: Andreas Schmid, Niels Gierse, Stephan Stürwald, Cédric Rohr (Munich)