InterDigital Inc (IDCC)

[Paullee]

After success in Germany InterDigital’s FRAND battle with Lenovo shifts to London
In early May, InterDigital achieved a spectacular victory with an injunction against Lenovo from Munich Regional Court. Now, the epicentre of the global battle has shifted to London, where two FRAND trials are pending. In June, the UK Court of Appeal will review the far-reaching FRAND ruling by High Court judge James Mellor.
10 May 2024 by Mathieu Klos
The injunction, if enforced, prevents Lenovo from selling 4G- and 5G-capable tablets, smartphones and PCs in Germany. ©pressmaster/ADOBE Stock
On 2 May, Munich Regional Court ruled Lenovo may no longer sell mobile devices in Germany that infringe InterDigital’s European patent EP 2 127 420 B1. The court also classified Lenovo as an unwilling licensee, despite the Chinese company having submitted a licence offer. Now, the two opponents will face eachother once more with a FRAND trial soon to begin in London.
First-instance win for InterDigital
The first-instance ruling constitutes a remarkable success for InterDigital, given this is the only lawsuit the company has filed against Lenovo in Germany. InterDigital has not yet enforced the judgment. If it does, Lenovo will no longer be allowed to sell tablets, smartphones and PCs with 4G and 5G capability in Germany. The Chinese company would also have to pay damages.
InterDigital is expected to take this step in order to increase the pressure on Lenovo. Furthermore, Munich Regional Court presiding judge Oliver Schön set a low security deposit of €1 million for smartphones and €3 million for tablets and PCs.
Experts assume that, in the event of enforcment, Lenovo will apply to the Higher Regional Court Munich for a stay of execution so that it may continue selling its devices in Germany.
InterDigital’s crown jewel
EP 420 is becoming one of InterDigital’s most valuable patents on 4G and 5G technology. In September 2023, the Federal Patent Court upheld the German part of InterDigital’s EP 420 with restrictions in the nullity action filed by Oppo (case ID: 4 Ni 54/22). EP 420 protects a method for controlling discontinuous reception, DRX, in a wireless transmit/receive unit, with devices like smartphones using the technology. When a consumer operates a device in DRX mode, this is intended to reduce battery consumption.
InterDigital appealed the validity judgment, with Lenovo then joining the appeal. Shortly before Christmas 2023, however, the 7th Civil Chamber at Munich Regional Court found that Oppo and OnePlus products infringed the patent and ordered the defendants to cease and desist (case ID: 7 O 17302/21).
The recent judgment against Lenovo, also from the 7th Civil Chamber, is thus the second victory for InterDigital concerning this patent. Both companies reacted imediately, with InterDigital stating in a press release, “Following the court’s finding that Lenovo’s behaviour constitutes hold-out, we hope Lenovo reverses course and finally takes a fair and reasonable licence.”
In its own press statement, Lenovo says, “We respect the Munich Court’s decision but do not agree with it given our belief that InterDigital has violated its own legal obligations to license its technology on FRAND terms to either Lenovo or our third-party suppliers.” Lenovo announced that the company will continue to fight for transparency in licensing negotiations and against companies seeking excessive rates for their patent portfolios. “We look forward to the next stage of the proceedings and our appeal.”
Next round at UK Court of Appeal
The next major clash between the two opponents will take place in London on 10 June. The UK Court of Appeal will then hear InterDigital’s appeal against the well-known ruling by UK High Court judge James Mellor from 2023.
In March 2023, Mellor handed down his decision on FRAND-rate setting, which saw the court order Lenovo to pay a FRAND rate of $138.7 million. The judgment also declared both parties’ previous offers as non-FRAND. Later in 2023, presiding judge James Mellor released two further decisions in which he declared Lenovo the “overall winner” of the FRAND trial.
Ultimately, there were several reasons for this. The court found a per unit rate of $0.175 as much closer to Lenovo’s proposal of $0.16, and a “long way” from InterDigital’s contention of a blended rate of $0.53. In addition, the court found the payable lump sum “substantially lower” than InterDigital’s offer of $337 million. Furthermore, the judges found Lenovo the winner regarding comparables, and Lenovo successful on the “top down” and “conduct” aspects of the case.
JUVE Patent understands that the court has scheduled the appeal hearing for Monday 10 June and it is expected to last a week.
Second FRAND trial
While James Mellor’s ruling relates to a licence offer from InterDigital for the cellular patent portfolio until the end of 2023, and thus now only has retroactive effect, Lenovo has initiated a second FRAND trial in the battle.
Lenovo has now asked the UK High Court to set a global licence rate for InterDigital’s entire portfolio, which includes implementation patents as well as SEPs. The court is to calculate the FRAND rate from 2024 onwards.
InterDigital challenged the jurisdiction of the UK High Court, but the court under presiding judge Jonathan Richards dismissed InterDigital’s jurisdictional challenge at the end of April (case ID: HP-2023-000031).
Arnold Ruess against Freshfields
In the German dispute, InterDigital relied again on Düsseldorf IP boutique Arnold Ruess. The team, led by litigator Cordula Schumacher and Arno Riße, was also active for the company in the dispute with Oppo. Here – as in the current case for InterDigital – the well-established cooperation with the patent attorneys of df-mp came into play once again. Both Dominik Ho and David Molnia are highly recognised for their expertise in telecommunications technology.
On the other side of the courtroom sat a Freshfields team led by lead partner Wolrad Prinz zu Waldeck und Pyrmont, supported by patent attorneys from Maikowski & Ninnemann. Both law firms had already advised Lenovo in the disputes with InterDigital in Munich and Mannheim over HEVC patents, which ended with a settlement at the end of 2023. Both law firms also represented Lenovo in a dispute with Nokia.
Arnold Ruess partners Cordula Schumacher and Arno Riße and Freshfields partner Wolrad Prinz zu Waldeck und Pyrmont share a common past. They worked together as associates at Freshfields for a long time before Schumacher and other Freshfields associates set up their own spin-off in 2010. Riße followed Schumacher to Arnold Ruess in 2015.
Kirkland vs Bird & Bird and Gowling
In the UK, InterDigital has a long-standing relationship with Gowling WLG, with co-chair of its global tech team Alexandra Brodie in the lead. Gowling partner Matt Hervey and director Michael Carter, as well as numerous associates, are supporting Brodie on the FRAND aspects. The Gowling team launched the proceedings against Lenovo and was heavily involved in the first FRAND trial that led to the important judgement of James Mellor last year.
But Bird & Bird also plays a large role in the dispute on InterDigital’s side. A team lead by Richard Vary and Katharine Stevens supported InterDigital in the dispute over jursidiction for setting a global FRAND rate for the whole portfolio.
Still fresh
By contrast, the relationship between Kirkland & Ellis and Lenovo is relatively new. The US firm took over from Powell Gilbert, which initially represented Lenovo, shortly after the claims were filed in April 2020. Kirkland & Ellis partner Daniel Lim is running the FRAND trial, while Steven Baldwin leads on the technical aspects. Meanwhile the Kirkland team is also advising Lenovo in another dispute with Ericsson. The Kirkland team also coordinates such battles globally.
German proceedings
For InterDigital
Arnold Ruess (Düsseldorf): Cordula Schumacher (lead), Arno Riße, Marina Wehler (all partners), Tim Smentkowski (counsel); associate: Julius Winkler
df-mp Dörries Frank-Molnia & Pohlman (Munich): Dominik Ho, David Molnia, René Okoampah (all partners, all patent attorneys)
For Lenovo
Freshfieds Bruckhaus Deringer (Düsseldorf/Munich): Wolrad Prinz zu Waldeck und Pyrmont (lead), Nina Bayerl (both partners); associates: Corin Gittinger, Eva Acker, Caroline Horstmann
Maikowski Ninnemann (Berlin): Gunnar Baumgärtel, Ralf Emig (both patent attorneys)
In-house: Taylor Ludlam (director global litigation), Frank Oliver Allner (managing director Germany)
Munich Regional Court, 7th Civil Chamber
Oliver Schön (presiding judge), Hubertus Schacht, Katalin Tözsér
UK proceedings
For Lenovo
Blackstone Chambers (London): Michael Bloch, Ravi Metha, Femi Adekoya
Kirkland & Ellis (London): Daniel Lim, Steven Baldwin, Nicola Dagg, Gabriella Bornstein, Oscar Robinson (partners); Ashley Grant
For InterDigital
Three New Square (London): Douglas Campbell
Brick Court Chambers (London): Joanne Box
Bird & Bird (London): Richard Vary and Katharine Stevens (both partners)

https://www.juve-patent.com/cases/after-success-in-germany-interdigital-lenovo-frand-battle-shifts-to-london/