Context: In its standard-essential patent (SEP) disputes with OPPO and Xiaomi, Panasonic is pursuing enforcement actions not only in the Unified Patent Court (UPC) (June 13, 2024 ip fray article) but also in German national courts. To date, no implementer has prevailed on a FRAND defense in the Munich I Regional Court. Most recently, router maker TP-Link lost against Atlas Global (May 24, 2024 ip fray article).
What’s new: Yesterday, the Munich I Regional Court’s 21st Civil Chamber conducted a Panasonic v. OPPO SEP trial (case no. 21 O 9428/23). At the outset, Presiding Judge Dr. Georg Werner explained that his panel is inclined to deem the patent-in-suit, EP2019559 (“radio transmission device and radio transmission method”), to read on the 4G/5G standard, and is unconvinced of OPPO’s assertion that the patent is likely to be invalidated in a parallel proceeding. The courtroom was sealed for the FRAND part.
Direct impact: An injunction looms large now, barring a settlement. OPPO left the German market about two years ago due to Nokia’s SEP enforcement. At the time, OPPO was also being sued by InterDigital. Panasonic brought its cases last summer. It’s unclear whether OPPO intends to stay out of the German market for much longer, given that the company’s disputes with Nokia and Philips were settled. OPPO is also embroiled in German SEP litigation with VoiceAge EVS.
Wider ramifications: Given that SEP cases presently face some delays in the UPC (June 24, 2024 ip fray article) and that no one knows yet how the UPC’s FRAND case law will evolve, it appears that Kather Augenstein‘s strategy of parallel litigation in both court systems (instead of putting all eggs in one basket) is paying off. On November 6, 2024, Panasonic’s assertion of the same patent against Xiaomi will go to trial in Munich.
While there weren’t many people watching this week’s Avago v. Tesla UPC hearing in Munich (June 26, 2024 LinkedIn post by ip fray), the courtroom was packed yesterday for Panasonic v. OPPO.
The trial lasted five hours. Presiding Judge Dr. Werner is known for his calm and unemotional style, and unfazed by various attempts by OPPO to delay the adjudication of the case.
Not only has no defendant ever prevailed on a FRAND defense in Munich but OPPO has not succeeded with a FRAND defense in any German court. In fact, no case is known to ip fray in which OPPO prevailed on FRAND anywhere in the world, other than in China (where OPPO obtained global FRAND determinations against other companies as mentioned in today’s article on Chinese courts now setting global FRAND rates for patent pools. If the past is any indication, an injunction is therefore the most likely outcome.
If Xiaomi is able to make new technical arguments relating to this patent when its own case goes to trial in November, the outcome could be different, but that rarely happens in connection with SEPs. Therefore, the focus in Panasonic v. Xiaomi will likely be on FRAND. Unlike OPPO (and vivo), Xiaomi never left the German market, so an injunction against Xiaomi could make an actual and immediate impact.