InterDigital prevails against Oppo and OnePlus over SEPs in Munich

For years, InterDigital has fought various mobile phone manufacturers in different countries over SEPs relevant for the 3G, 4G and 5G standards. In Germany, the company filed lawsuits at courts in Mannheim and Munich. At the end of 2023, in the dispute against Oppo, OnePlus and Realme – all of which belong to Chinese group BBK Electronics – the NPE achieved a double success.

InterDigital wins on infringement

In September of last year, the Federal Patent Court upheld the German part of InterDigital’s patent EP 2 127 420 B1 with restrictions, in the nullity action filed by Oppo (case ID: 4 Ni 54/22). EP 420 B1 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.

Shortly before Christmas, however, the 7th Civil Chamber of the Munich Regional Court found that Oppo and OnePlus products infringed the previously restricted patent and ordered the defendants to cease and desist. This included recall of products, as well as information and the rendering of accounts (case ID: AZ 7 O 17302/21).

In summer 2022, Oppo and OnePlus had already withdrawn products from the market following a ruling by the Munich Regional Court in the dispute against Nokia.

Referring to the UK

At the hearing, the defendants argued that they were no longer importing the contested design. According to Oppo, tests had shown that the devices sold in Germany did not support the challenged DRX function. Furthermore, the defendants argued that they were willing to take a licence, but that the sales price set by InterDigital for the calculation of licences was too high.

In their arguments, Oppo and OnePlus referred to the UK High Court judgment in the dispute between InterDigital and Lenovo, in which the judge found that InterDigital’s 5G Extended Offer did not comply with FRAND. Oppo is therefore demanding that InterDigital submit other comparable licence agreements. The court dismissed this request as a hold-out strategy.

Oppo an unwilling licensee

Furthermore, in the opinion of the Munich judges, neither the FRAND objection under antitrust law nor the reference to a possible lack of proportionality stands in the way of an infringement judgment. They also found that the defendant was an unwilling licensee. The judges did not agree with Oppo’s argument that InterDigital’s licence offer was not FRAND, instead describing the defendant’s counter-offer as non-FRAND. They also dismissed Oppo’s references to the UK High Court decision as not relevant in the current dispute.

Arno Riße

Overall, the judges found that the defendants infringed EP 420. According to the judges, even if Oppo currently no longer sells some of its products in Germany, there is a risk of future sales potentially leading to infringement.

JUVE Patent is not yet aware whether  the defendants will lodge an appeal in both the nullity action and the infringement proceedings.

Boutique team for InterDigital

InterDigital relied on Düsseldorf IP boutique Arnold Ruess. The team, led by litigator Arno Riße, is also advising Nokia in the lawsuit against Oppo together with litigators from Bird & Bird.

Here – as in the current case for InterDigital – the well-established cooperation with the patent attorneys of df-mp comes into play once again. Both Dominik Ho and David Molnia are highly recognised for their expertise in telecommunication technology.

Tobias Hessel

Clifford Chance steps up

This was the first time that Clifford Chance acted for Oppo. Partners Tobias Hessel and Stefan Richter brought the mandate when they moved from Hoyng ROKH Monegier to the international full-service law firm at the beginning of 2023.

For the technical issues, the litigators worked together with the patent attorneys of Maikowski Ninnemann, with whom a good relationship has traditionally existed.

The patent attorneys are also working alongside litigators from Clifford Chance and Vossius Brinkhof UPC Litigators for Oppo in the extensive UPC dispute against Panasonic. They also work together with Freshfields Bruckhaus Deringer and Hogan Lovells for Xiaomi.

For InterDigital
Arnold Ruess (Düsseldorf): Arno Riße (lead), Cordula Schumacher (both partners), Marina Wehler (counsel); associate: Tim Smentkowski
df-mp Dörries Frank-Molnia & Pohlman (Munich): Dominik Ho, David Molnia, René Okoampah (all partners, all patent attorneys)

For Oppo/OnePlus/Realme
Clifford Chance (Düsseldorf): Tobias Hessel (lead), Stefan Richter, (both partners); associate: Ramona Sorgenfrei
Maikowski Ninnemann (Berlin): Gunnar Baumgärtel, Ralf Emig (both patent attorneys)

Munich Regional Court, 7th Civil Chamber
Oliver Schön (presiding judge), Anna-Lena Klein, Hubertus Schacht