Panasonic’s global SEP battle with Xiaomi and Oppo kicks into high gear

In July 2023, after years of negotiations, the Japanese electronics company Panasonic launched a global patent dispute with the two Chinese implementers Xiaomi and Oppo. All patents-in-dispute are relevant for the WCDMA and LTE standards.

It is also the most extensive series of SEP lawsuits at the Unified Patent Court to date. Panasonic filed a total of twelve lawsuits against both implementers at the UPC local divisions in Mannheim and Munich. However, the Japanese company did not limit its actions to the new court, but also applied for injunctions against the two companies at the regional courts in Mannheim and Munich. Four lawsuits against Xiaomi and one lawsuit against Oppo are pending in Munich. Xiaomi is also facing three injunction claims in Mannheim.

It is considered likely that Xiaomi and Oppo will launch nullity actions against the patents-in-suit in Germany and at the UPC. However, according to JUVE Patent sources, they have not yet taken this step. The lawyers of both companies are currently preparing their defence briefs. These are usually accompanied by revocation actions.

FRAND deadline in the UK

In London, the High Court has already heard the case management proceedings. Panasonic had sued Xiaomi and Oppo on the basis of four patents.

Last week, the UK High Court headed by Richard Meade ordered an initial FRAND trial for both implementers in the fourth quarter of 2024 (case ID: HP-2023-000025). Two technical trials based on Oppo’s request for invalidity will only start two and four months after the FRAND trial. Both, Oppo and Xiaomi are questioning the validity of the patents-in-suit in the UK.

Thus, the court is following previous reasoning from London, in that courts should first clarify the FRAND rate before entering into the often lengthy technical trials. As a result, UK proceedings could become quicker, and thus establish the UK High Court as the central court worldwide for determining FRAND rates.

Richard Meade

Panasonic and Xiaomi had previously agreed to accept a global FRAND rate set by the court. While Panasonic wanted to attach certain conditions to this, Xiaomi pushed for a greatly accelerated procedure for the summer of 2024 in order to anticipate the first injunctions of the UPC and the German courts, which could also come in the fourth quarter of 2024. Richard Meade took a slightly different view and suspended the technical trials against Xiaomi for the time being.

Autumn 2024 will be decisive

In contrast, Oppo focused entirely on the technical trials and did not commit to accepting a FRAND rate from the court.

In the course of the two London hearings on November 3 and 8, Panasonic also changed its position on an important detail. The company dropped its original waiver of the enforcement of possible injunction judgments from Germany or the UPC. As a result, the Japanese company reserves the right to enforce such judgments despite the FRAND trial in London.

The courts in mainland Europe have not yet scheduled any oral hearings. However, if they stick to their timetables, judges could issue the first rulings in the fourth quarter of 2024. Xiaomi and Oppo may then face their first injunctions on the continent in this dispute.

Munich court has form

Oppo is well aware that the Munich court in particular does not shy away from issuing injunctions in global patent disputes. For instance, in 2022 the Chinese handset maker was forced to withdraw from the German market after Munich Regional Court issued two injunctions in the dispute with Nokia. The 21st Civil Chamber under presiding judge Georg Werner handed down the ruling. The same chamber will now hear five national Panasonic lawsuits against Xiaomi and Oppo.

The fact that Panasonic filed fewer lawsuits against Oppo in Germany than it did against Xiaomi is likely a consequence of the two rulings and Oppo’s withdrawal from the German market.

In addition to the claims in Europe, proceedings are also pending in China.

Xiaomi and Oppo ready their defence

Georg Werner

According to JUVE Patent research, the two Chinese implementers are relying on long-established advisors. Hogan Lovells and Freshfields Bruckhaus Deringer are representing Xiaomi. Clifford Chance and Vossius & Partner and Brinkhof are acting for Oppo. The firms Vossius and Brinkhof are conducting the UPC proceedings in Mannheim under their joint UPC umbrella brand Vossius Brinkhof UPC Litigators.

In the UK proceedings, James Marshall is representing Oppo. He recently moved from Taylor Wessing to Pinsent Masons and took the client relationship with him. Kirkland & Ellis are advising Xiaomi. The firm’s patent team is no stranger to patent litigation, having conducted numerous proceedings for Chinese implementers including Lenovo as well as Xiaomi.

Extensive counsel

For Panasonic
Bristows (London): Sophie Lawrance, Richard Pinckney (both partners); associates: Matt Raynor, Eden Winlow, Edwin Bond (UK national cases)
8 New Square (London): Isabel Jamal (barrister; UK national cases)
Monckton Chambers (London): David Gregory (barrister; UK national cases)

Christopher Weber

Kather Augenstein (Düsseldorf): Christof Augenstein (lead FRAND), Miriam Kiefer, Christopher Weber (technical lead), Sören Dahm (all partners); associates: Benjamin Pesch, Carsten Plaga, Benedikt Walesch, Katharina Brandt, Sophie Prudent, Robert Knaps, Melissa Lutz, Marco Berlage (German national and UPC cases)
RCD Patent (Herzogenrath): Thilo Schmelcher (patent attorney; German national and UPC cases)
Kutzenberger Wolf & Partner (Cologne): Thilo Schwöbel, Gordian Presche (both patent attorneys; German national and UPC cases)
In-house (Osaka): Andrew Yen (Chief IP Counsel)

Steven Baldwin

For Xiaomi
Kirkland & Ellis (London): Steven Baldwin, Nicola Dagg (both partners); associates: Sheenal Singh, Ashley Grant, Andrew Marks (UK national cases)
Blackstone Chambers (London): James Segan (barrister; UK national cases)
Monckton Chambers (London): Ligia Osepciu (barrister; UK national cases)
Hogan Lovells (Düsseldorf/Munich): Andreas von Falck (lead), Henrik Lehment, Benjamin Schröer, Steffen Steininger, Andreas Schmid, Martin Fähndrich (both technical advice; all partners); counsels: Oliver Bäcker, Felix Banholzer; associates: Vanessa Zipperich, Johannes Thierfelder, Anna Wendl, Leonard Hollander, Aaron Stumpf, Theresa Storr (all lawyers), Cédric Rohr, Niels Gierse, Alexander Lebschy, Sabrina Smyczek (all patent attorney; Munich national and UPC cases)
Freshfields Bruckhaus Deringer (Düsseldorf/Munich): Wolrad Prinz zu Waldeck und Pyrmont, Frank-Erich Hufnagel; associates: Corin Gittinger, Eva Acker, Kilian Seidel (Mannheim national and UPC cases)
Maikowski & Ninnemann (Berlin): Gunnar Baumgärtel (patent attorney; Mannheim national and UPC cases)

For Oppo
Pinsent Masons (London): James Marshall, Mark Marfé (partners; UK national cases)
8 New Square (London): Andrew Lykiardopoulos (partner; UK national cases)
Clifford Chance (Düsseldorf): Tobias Hessel, Stefan Richter (both partner); counsel: Thomas Misgaiski; associates: Nicolas Hohn-Hein, Judith Dany, Lea Prehn, Yang Cao (Munich national and UPC cases)
Vossius Brinkhof UPC Litigators (Amsterdam, Düsseldorf, Munich): Andreas Kramer, Rien Broekstra (both lead), Daan de Lange, Mark van Gardingen, Ju Min Kim, Thomas Schwarze (both patent attorneys, all partners); counsel: Hannes Obex, Boukje van der Maazen; associates: Jonathan Santman, Isabelle Kleinveld, Maarten Groeneveld and Charlotte Tiems, Andreas Ditler, Ingo Lummer  (both patent attorneys; Mannheim UPC cases)
Maikowski & Ninnemann (Berlin): Gunnar Baumgärtel (patent attorney; Munich national and UPC cases)

Unified Patent Court, local division, Munich
Matthias Zigann (presiding judge), Tobias Pichlmaier, András Kupecz

Unified Patent Court, local division, Mannheim
Peter Tochtermann (presiding judge), Holger Kircher, Edger Brinkman

High Court of England and Wales, London
Richard Meade (presiding judge)

Mannheim Regional Court, 14th Chamber
Dirk Böttcher (preciding judge)

Munich Regional Court, 21st Chamber
Georg Werner (presiding judge)

An overview of all European disputes and patents

UPC local division Munich: EP 3 024 163 against Oppo and Xiaomi (case IDs: ACT_545619/2023 and ACT_545620/2023); EP 2 584 854 against Oppo and Xiaomi (case IDs: ACT_546122/2023 and ACT_546092/2023); EP 2 197 132 against Oppo and Xiaomi (case IDs: ACT_545562/2023 and ACT_545535/2023)

UPC local division Mannheim: EP 3 096 315 against Oppo and Xiaomi (case IDs: ACT_545604/2023 and ACT_545606/2023); EP 2 568 724 against Oppo and Xiaomi (case IDs: ACT_545551/2023 and ACT_545615/2023); EP 2 207 270 against Oppo and Xiaomi (case IDs: ACT_545770/2023 and ACT_545817/2023)

UK High Court: EP 2207289, EP 3471443, EP3598826 and EP3096315 against Xiaomi and Oppo (case ID:HP-2023-000025)

Regional Court Mannheim: EP 1901466, EP 2665193 and EP 3151590 against Xiaomi (case ID: 14 O 67/23)

Regional Court Munich: EP 2019559, EP 3026834, EP 2958386 and EP 2464042 against Xiaomi (case IDs: 21 O 9429/23 and 21 O 9854/23, 21 O 9855/23 and 21 O 9856/23) and EP 2019559 against Oppo (21 O 9428/23)