The cross-border dispute has so far seen judgments in the Netherlands, Germany and the UK with very different outcomes, including FRAND decisions at the The Hague and Mannheim patent courts.

The judgment is a surprise for Asus, after the regional court in The Hague found Philips’ European patent EP 1 623 511 invalid and not infringed in June 2017. The patent is essential for the UMTS standard. The regional court did not consider the FRAND issue.

In contrast to the ruling, the Court of Appeal has now found Asus an unwilling licensee and last week rejected its FRAND defence.

The court was of the opinion that Asus prolonged the negotiations and thereby showed unwillingness to agree on a licence. The premise for this, however, was that the court, unlike the lower court, considered the patent to be valid. It also affirmed an infringement by the mobile phone manufacturer.

According to JUVE information, Philips enforced the verdict earlier this week. As a result, Asus may not sell any mobile phones with UMTS in the Netherlands at present. Asus is likely to appeal to the Supreme Court.

European battle

Unlike the Dutch court, in November 2017 Mannheim Regional Court found Asus to be a willing licensee. Furthermore, it ruled that Philips did not sufficiently disclose its contracts and so its Dutch offer could not be considered FRAND. Nevertheless, the German court also considered Philips’ patent to be valid and infringed by Asus.

Whereas the Mannheim court allowed Asus to make subsequent improvements after the complaint had been filed, the Dutch court only considered the two parties’ negotiation efforts up to the date the claim was filed.

In the third patent case, the London High Court also ruled in favour of Philips. The UK patent is valid and infringed by Asus. In the meantime Asus has filed an appeal. But London has not yet seen a FRAND judgment in this dispute. The High Court will hear this trial next year.

Philips filed the lawsuits in 2015, intitally suing Asus, Archos, HTC and Wiko for patent infringement. The company claimed the defendants infringed three patents related to the UMTS and LTE standards in the Netherlands, as well as in the UK. The other two Dutch cases will be heard in June.

In Germany more than 14 patents are in dispute before the Mannheim and Düsseldorf patent courts. Four of the patents are SEPs. All others are implementation patents.

Some of the Mannheim infringement proceedings are already in appeal before Karlsruhe Higher Regional Court. Further suits are pending before the French patent court.

Different approach to FRAND

In addition to the patent dispute between Intellectual Ventures and the German mobile phone industry, the Philips’ lawsuits are the largest series in Europe for mobile phone patents.

The Dutch judgment is a major talking point throughout Europe. After the British patent court’s verdict in the Unwired Planet vs Huawei case, many in the patent community believed it was a sign the British court is becoming more SEP-owner-friendly.

Now, with the latest ruling, they say the same about the Dutch patent court.

While SEP holders in the UK can hope for a global licence based on a national patent, in the Netherlands it is now possible to get an injunction in a FRAND dispute. German patent courts, on the other hand, are very hesitant in granting these.

The only rulings to date where an injunction was granted in a FRAND case are those from the Regional Court Düsseldorf in the MPEG LA case. The patent pool enforced the judgments against Huawei and ZTE around the end of 2018. However, those judgments were based on the patent pool’s proven and transparent licensing system.

Love affair

Philips is working with its go-to law firm Hoyng ROKH Monegier for the proceedings at The Hague. The international IP firm also conducts the Paris proceedings. In Germany, the Dutch company has a long-standing relationship to Eisenführ Speiser. The mixed IP firm represents Philips in the German proceedings with both patent attorneys and litigators.

On the other side of the Channel, Bristows steers the suits before the London patent courts.

Taylor Wessing came into contact with Asus through the liaison office in Menlo Park, California.The firm represents Asus throughout Europe in this dispute.

In Germany the roles are clearly divided. The Munich team advises on the SEP proceedings, while the Düsseldorf team handles proceedings concerning implementation patents.

For Philips

Hoyng ROKH Monegier (Amsterdam): Bart van den Broek (lead), Geert Theuws, Roeland Grijpink, Robin van Kleeff (technical), David Owen, Andrew Lin (both patent attorneys)

In-house (Uetrecht): Ewoud Caspers (senior legal counsel IP&S), Kevin Scott (principal licensing counsel IP&S, Redhill)

For Asus

Taylor Wessing (Eindhoven/Amsterdam): Wim Maas (lead), Eelco Bergsma, Bram Nijhof, Ilse Werts

De Vries & Metman (Amsterdam): Ferry van Looijengoed (patent attorney)

Gerechtshoven The Hague

Rian Kalden (presiding judge), M. Bonneur, M. van der Burg