Context: Xiaomi is frequently sued over patents in Europe, particularly in Germany, because of its significant market share. But it defends itself vigorously, affords first-rate lawyers, and has repeatedly achieved strong results. For example, Xiaomi won the first-ever UK interim patent license last year (October 3, 2024 ip fray article), in a case where the circumstances were distinct from all subsequent matters of this kind. A few years ago, Xiaomi played a tactically advanced game against Philips, which is a sophisticated litigant. Last month, Xiaomi was the key challenger who won the invalidation of a patent asserted by Longhorn entity Ox.
What’s new: Today, Xiaomi has dealt Atlantic IP’s portfolio company Nera a third blow in a row. After achieving one formal and one informal stay of Nera cases in German national court, Xiaomi has been cleared of infringement of a narrowed version of a patent asserted in the Unified Patent Court (UPC): EP2642632 (“Wireless power receiver and method of manufacturing the same”), a former LG patent. The Hamburg Local Division (LD) announced the ruling in open court today.
Direct impact: Nera, with Atlantic IP presumably making the actual decisions, can now either aim for a face- and cost-saving exit, recognizing that Xiaomi is a difficult and resilient target, or continue to litigate in hopes of a reversal of fortunes in the further (particularly appellate) proceedings, taking the risk of achieving nothing and having to reimburse legal fees.
Wider ramifications: Non-practicing entiites (NPEs) often achieve good results by asserting patents in the UPC and/or German national court. But some campaigns fail to get traction. It happens all the time that NPEs regret their choice of the first defendant. If the first target turns out harder than expected, it can decimate a portfolio (or worse), making it all the harder to persuade similarly-situated companies to pay up for a license. First impressions last.
The common pattern of all three Nera v. Xiaomi cases is that the patents-in-suit face serious validity issues:
- On May 6, 2025, the Dusseldorf Regional Court heard case no. 4c O 22/24 over EP2946706 (“Mobile terminal”), a patent originally obtained by German security company Giesecke & Devrient and temporarily assigned to Aire Technology. The court voiced strong doubts about the validity of the patent and stayed the proceedings pending the resolution of the parallel nullity proceedings. Xiaomi consented to the stay, which saved the court the trouble of having to take a position on the infringement allegations.
- In a parallel Munich case (21 O 4817/24), the Bundespatentgericht (Federal Patent Court of Germany) rendered a negative non-binding preliminary opinion on the eve of the trial, triggering its cancelation on short notice. The court rescheduled everything so the new trial won’t take place until at least one week after the Federal Patent Court hearing.
- In the UPC case decided today (Â ACT_19746/2024), the patent was held invalid in its granted form. The first auxiliary request failed as well. Only the second auxiliary request succeeded, but what remained of the patent was not held to be infringed.
That list of outcomes is even more disappointing for Nera when considering that its counsel actually has a very good track record of making NPEs money, raising the question of whether there is an issue affecting the portfolio or at least the patents Nera deemed its strongest ones for litigation purposes.
Procedurally, Nera can turn this around. Not all negative non-binding preliminary opinions actually result in invalidation, though very often they do. On appeal, patents are sometimes revived. Today’s UPC decision is also appealable, so Nera can try to get a better outcome on the validity side or an infringement ruling even if the validity outcome was the same. Xiaomi, however, can still push for the complete invalidation of the patent-in-suit.
Xiaomi is generally licensing-oriented, but it appears that it does not settle easily once it identifies opportunities to defend itself successfully against a patent assertion campaign.
Court and counsel
Panel: Presiding Judge Sabine Klepsch, Judge Dr. Stefan Schilling, Judge Sam Granata (Brussels, Belgium) and Technically Qualified Judge Johannes Mesa Pascasio.
Counsel for Nera: Peterreins Schley’s Dr. Thomas Adam, Constanze Wedding, Felix Gloeckler (“Glöckler” in German) and Martin Obster.
Counsel for Xiaomi: Freshfields’s Wolrad Prinz zu Waldeck und Pyrmont, Eva Acker (counsel of record) and Carlotta Mannes, and Maikowski & Ninnemann patent attorneys Dr. Gunnar Baumgaertel (“BaumgĂ€rtel” in German), Dr. Frederick Kramer, Dr. Barbara Sandhoefer (“Sandhöfer” in German) and Dr. Sandro Staroske.