The game of cat and mouse continues. In June, Nokia succeeded in obtaining a bench judgment, at the Regional Court Mannheim, which rejected an infringement case brought by Oppo against Nokia. Now the European Patent Office’s Boards of Appeal have invalidated an important Nokia patent following an opposition hearing consisting of various opponents including Oppo, TomTom, Continental, Robert Bosch and Vivo.
For the 3G standard
The Boards of Appeal proceedings concerned Nokia’s patent EP 2 087 626, which relates to adaptive modulation in a 3G network. In particular, it discloses additional modulation information signalling for high-speed downlink packet access. However, the Boards of Appeal invalidated the patent based on a lack of novelty, concluding the patent could not claim priority over the application on which it was based.
Now litigation concerning EP 626 is over in all jurisdictions in which Nokia had enforced the patent, including Germany, the UK and the Netherlands. Overall, ten infringement proceedings are impacted.
Previously, the Finnish company had asserted 15 patents across Germany against Oppo, and three against Vivo – including the current patent in question. The ruling is of special interest to various automotive manufacturers, given that Nokia previously asserted the same patent against Daimler as one of ten patents-in-suit. However, in 2021, the two companies negotiated a licence agreement, ending one of the hardest-fought connected car patent battles in Germany.
An important patent
EP 626 has also been subject to multiple previous infringement proceedings brought by Nokia against competitors. For example, in April 2023, the Regional Court Mannheim confirmed that Chinese smartphone vendor Vivo infringed three standard essential patents, including EP 626. This resulted in Vivo also exiting the German market. Nokia also asserted the same patent against Oppo and OnePlus, in a hearing held on 3 March at the Regional Court Mannheim.
At the end of 2022, the UK Supreme Court rejected permission for Oppo to further appeal in a jurisdictional challenge, leading to a clearer path for infringement and nullity proceedings brought by Nokia to proceed. EP 626 was one of three patents involved in the UK proceedings, alongside EP 2 070 217 and EP 2 981 103. In January 2023, the High Court of Justice in London found that Oppo infringed valid and essential patent EP 103, which is also subject to proceedings in Germany.
Decision in Mannheim
On the other hand, prior to last week’s Boards of Appeal decision, the Regional Court Mannheim issued a bench judgment, rejecting Oppo’s accusations that Nokia infringed the Oppo patent EP 3 672 346 B1, which pertains to the 4G and 5G standards. It is one of eight patents subject to a defensive action by Oppo against Nokia, while the bench judgment – which the judges handed down on the same day of the hearing – is extremely rare in Germany.
Nokia commenced litigation against Oppo in 2021, after the terms of a licensing agreement between the company and Oppo could not be renewed. Both companies have since launched offensive and defensive attacks against each other in Germany and across Europe.
However, Nokia is also demonstrating that it can reach agreements with competitors. Earlier this month, Nokia and Apple signed a new licence agreement starting from January 2024. This is an extension of a previous agreement, which is set to expire at the end of this year. Under the agreement, which covers Nokia’s 5G inventions as well as other technologies, Apple will make payments to Nokia. However, both companies are keeping the terms confidential.
Mixed firms in Germany
A mixed team from international firm Hogan Lovells acts for Oppo in the EPO proceedings, as well as in the parallel infringement actions. In this specific case, patent attorneys Martin Fähndrich and Felix Hütt led for the firm. Partners Henrik Lehment and Steffen Steininger led on FRAND and regarding infringement, respectively.
A team from mixed IP firm Bardehle Pagenberg is the lead counsel for Oppo in its offensive actions. In this instance, Bardehle’s patent attorneys represented the two opponents, TomTom and Robert Bosch.
Bird & Bird is Nokia’s go-to law firm across the European jurisdictions, including Germany, the UK and the Netherlands. Its lawyers often work together with German patent firm, Arnold Ruess. However, Samson & Partner is the patent attorney firm leading for the Finnish mobile communications company in EPO and other invalidity proceedings. It regularly files suits for SEP holders such as Nokia, as well as patent implementers such as Apple or Wiko. In this case, partner Alexander Münster appeared for the patent holder.
Trusted representatives
A large team from IP boutique Vossius & Partner represented Vivo, with the firm engaging both its patent litigators and patent attorneys in proceedings. Daimler’s regular counsel Quinn Emanuel Urquhart Sullivan did not attend as opponents. IP boutique Braun-Dullaeus Pannen Emmerling represented client Continental. Previously, as a co-litigant of Ford, the company has trusted the firm to defend it in a connected cars action by IP Bridge.
For Oppo
Hogan Lovells (Munich): Martin Fähndrich (partner, patent attorney); associate: Felix Hütt (patent attorney)
For TomTom
Bardehle Pagenberg (Munich): Christian Haupt (partner, patent attorney); associate: Humphrey Morhenn (counsel, patent attorney)
For Daimler
Quinn Emanuel Urquhart Sullivan (Munich): withdrew opposition
For Continental
Braun-Dullaeus Pannen Emmerling (Munich): Franck Régis Klein (patent attorney)
For Robert Bosch
Bardehle Pagenberg (Munich): Marius Fischer (patent attorney)
For Vivo Tech/Vivo Mobile Communications
Vossius & Partner (Munich): Thomas Schwarze, Ju Min Kim, Georg Rauh, Frederic Mühlenbruch
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