07/10/2024
In our recent article discussing case statistics released by the Unified Patent Court (UPC), we noted telecommunications as the field of technology that saw the most patent infringement disputes in the first year of the UPC (see the full article here for more details). The present article will draw out a couple of interesting points that are worth noting about how the disputes in this area are developing.
The first is that we are seeing Standard Essential Patent (SEP) holders make use of the UPC. A notable example is Panasonic filing a number of lawsuits against Xiaomi and Oppo, with Xiaomi and Oppo filing counterclaims for revocation of the Panasonic patents.[1] Another example is Philips filing a suit against Belkin, which the UPC recently decided on in favour of Philips, issuing its first ever SEP related injunction.[2] Lenovo has also brought an infringement action before the UPC against Ericsson,[3] and Nokia had brought patent assertions against Verifone,[4] although this latter dispute has now been settled. [5]
Whilst it is still too early to gauge exactly the impact of the UPC on SEP holders, these cases demonstrate that SEP holders have not been afraid in trialling the UPC as a way to enforce their rights. It is too early to say whether the initial expectations of the UPC being a pro-patentee forum will turn out to be true or not in the long run, and it should be noted that uncertainties still remain, for example how the UPC will handle a FRAND defence. However, the UPC’s recent decision to issue an SEP-based injunction in favour of Philips will further raise the profile of the UPC as a viable forum for settling SEP disputes.
The second development worth highlighting is that OEMs in the automotive industry are increasingly involved in disputes before the UPC, brought by licensing entities with rights relating to the telecoms sector
From the patent holder side, examples include the infringement cases brought by Avago (Broadcom) against Tesla, one relating to a power control system (EP1612910) and the other to a programmable hybrid transmitter (EP1838002), both of which have gone the way of Tesla at first instance[6], as well as various lawsuits by Network System Technologies against Audi and Volkswagen for infringement of its patents (relating, for example, to integrated circuits and data communication).[7]
From the side of the automotive sector, Toyota is seeking to revoke in Germany a patent held by Neo Wireless,[8] and Bentley is attempting to revoke patents held by Network Systems Technologies.[9] Neo Wireless have been active in pursuing lawsuits in the US against various car manufacturers in order to obtain patent licenses fees, and the revocation action by Toyota at the UPC appears designed to counter similar pressures in Europe. The Neo Wireless case in particular is interesting from a legal perspective for clarifying the importance of properly filing the opt-out from the jurisdiction of the UPC. The patentee had initially intended to opt out of the jurisdiction of the UPC, but failed to file the opt-out in the name of all of the patent assignees (namely Neo Wireless based in the US and Neo Wireless GmbH the German assignee), thereby opening the door to a counter attack by Toyota.
Similarly, although it is reported that some automotive companies have already settled with Network System Technologies over its patent licensing requests, Bentley remains in continuing to challenge the validity of the patents (EP1875683, EP1552399, and EP1552669). There is a suspicion that the strong position enjoyed by patent holders who file actions at the UPC is being used to apply additional pressure on potential licensees of SEPs in order to make them settle, and that this advantage is perhaps more easily taken up by patent licensing entities.
Large automotive players becoming involved in such disputes is unsurprising in view of vehicles being increasingly intelligent and interconnected. It is noteworthy that as yet there does not appear to be any UPC disputes between the major SEP holders[10] and the automotive giants. This is despite members from both sides being active before the UPC and in relation to technological areas that are very close to one another, if not already overlapping.
It will be interesting to see whether this trend will continue, or whether we will begin to see such disputes emerge before the UPC as the OEMs continue to adopt telecoms technology into their products. This may well depend on the outcome of the wider ongoing negotiations between SEP holders and car manufacturers regarding the implementation of Standard Essential technologies in the automotive sector, and whether commercial solutions (e.g. the licencing platform Avanci) continue to be acceptable to both sets of parties.[11]
This content is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
[1] E.g. ACT_545615/2023, ACT_546122/2023 & ACT_545551/2023. See also the recent UPC decision: English translation final OPPO OROPE Panasonic.pdf (unified-patent-court.org)
[2] ACT_583273/2023. See also the recent UPC decision (in German): EEE4E190FDD54363A7EE8732A1106AE3_de.pdf (unified-patent-court.org)
[3] E.g. ACT_5324/2024 (asserted by Lenovo’s subsidiary Motorola)
[4] ACT_13491/2024
[5] See e.g. Summer of settlements: Nokia, Seoul Semiconductor and NST end disputes (juve-patent.com)
[6] ACT_462984/2023 & ACT_463258/2023
[7] ACT_597691/2023, ACT_597692/2023 & ACT_597693/2023
[8] ACT_579176/2023
[9] E.g. ACT_18884/2024
[10] For the main SEP holders see e.g. the list here compiled by IAM
[11] See for example this article by Finnegan discussing the issue – IP Transactions, Professional Perspective – Future of SEP Licensing in the Auto Industry | Articles | Finnegan | Leading IP+ Law Firm
