Intellectual Ventures brings multi-party telecom fight to Paris Court of Appeal

Today, the judicial panel around presiding judge Veronique Renard will decide whether a patent belonging to NPE Intellectual Ventures, EP 1 694 020, is infringed and valid by multiple parties. In September 2021, the Paris Judicial Court invalidated the patent-in-suit due to added matter (case ID: 17/13837).

Intellectual Ventures secures appeal

At the time, the first-instance court set a significant financial hurdle for an appeal. While the judges ordered the NPE to deposit €1.4 million if it wanted to continue fighting in the second instance, it also has the discretion to accept an appeal even if the party does not make a payment. As such, JUVE Patent cannot confirm if Intellectual Ventures deposited the required security or not.

Intellectual Ventures accuses various telecommunication companies of infringing EP 020, which protects a multicarrier modulation system and method. The NPE claims it as essential to the ADSL norm. In 2017, it filed suits against Orange and Bouygues Télecom after making a licence offer.

Then there were less

The defendant brought in DSL equipment manufacturers ECI Télécom, which was taken over by US-based software company Ribbon Communications, as well as Infineon and Lantiq as third-party defendants.

Furthermore, Huawei, Sagemcom, ZTE and Sercomm – suppliers of DSL boxes to Orange – also joined the suit as voluntary co-litigants. According to JUVE Patent research, however, Huawei will not take part in the appeal hearing due to previous settlements.

Further disputes are pending regarding two other Intellectual Ventures patents in France. In 2021, the EPO revoked EP 2 146 439, with the French proceedings stayed until the EPO Boards of Appeal decide on the patent’s validity. With regards to EP 1 327 374, in November 2022 the Paris Judicial Court revoked some of the patent’s claims due to lack of novelty, while also dismissing the infringement claims. An appeal is pending.

Double bill for the defence

All advisors have represented their clients since the beginning of the dispute. On the defendant side, Casalonga partner Marianne Gabriel, who represents Sagemcom, will present the arguments concerning undue extension of the patent. Linklaters partner Pauline Debré will plead on lack of novelty and inventive step.

Each of the representatives for the operators will then present their arguments regarding the alleged infringements made against their client. A team around August Debouzy partner Grégoire Desrousseaux represented Huawei, which is no longer involved, in the first-instance trial.

For Intellectual Ventures
Bardehle Pagenberg (Paris): Julien Fréneaux, Clément Jaffray (both partners)

Bouygues Télécom
Hoyng ROKH Monegier (Paris): Sophie Micallef (partner); associate: Agathe Caillé (counsel)

For Orange
Hoyng ROKH Monegier (Paris): Amandine Métier, Sabine Agé (partners); associate: Charlotte Cuny

For SFR
Loyer & Abello (Paris): Guillaume Dubos, Michel Abello (partners)

For Broadcom
Bird & Bird (Paris) Anne-Charlotte Le Bihan (partner); associates: Laurent Labatte (counsel), Eva Kessi

For Infineon
Jones Day (Paris): Thomas Bouvet (partner); associate: Philippe Marchiset

For Intel
Linklaters (Paris): Pauline Debré (partner); associates: Laetitia Nicolazzi, Marion Delvallet

For Sagemcom
Casalonga (Paris): Marianne Gabriel, Pascaline Vincent, Francis Zapalowicz (patent attorney) (all partners)

For ZTE
Taliens (Paris): Jean-Frédéric Gaultier (partner)

For ECI Telecom (now Ribbon)
Darkanian & Pfirsch (Paris): Augustin Pfirsch (partner)

For Sercomm
BRG (Paris): Richard Rondoux (partner)

Court of Appeal, Paris (Division 5, 2nd chamber)
Véronique Renard (presiding judge); Laurence Lehmann, Agnès Marcade (judges)