Context: Nokia has filed standard-essential patent (SEP) enforcement against payment terminal provider Verifone (previous ip fray article).
What’s new: This is a follow-up to the previous article as the patents-in-suit have become known.
Direct impact: Verifone is unlikely to avoid being held to infringe: two of the patents-in-suit have previously won Nokia injunctions in Germany and a third one was apparently deemed essential, though the case was stayed at the time over validity doubts that Nokia managed to dispel in the parallel nullity proceeding.
Wider ramifications: Nokia continues to harden its portfolio through a mix of slam dunks based on prior cases (which also enable the courts to go faster than usual from filing to ruling) and assertions that may help to identify additional winners. And with a view to the debate over the EU SEP Regulation, one must wonder how it is in Europe’s interest to deprive a European company like Nokia of access to swift court rulings in EU jurisdictions when dealing with a non-European implementer like Verifone. Balance and transparency are laudable objectives. Mere delay is not.
Nokia’s initial filings against Verifone are of substantially smaller scale than against Daimler in 2019 or OPPO in 2021, yet likely to be more than sufficient to result in some injunctions.
Nokia is now suing only in Munich and Mannheim, not Dusseldorf, where its results in the Daimler and OPPO disputes were dissatisfactory. The Dusseldorf part of the Daimler dispute gave rise to a preliminary reference to the European Court of Justice of a supply-chain licensing question, and against OPPO various cases were stayed without the court stating any reasons.
Nokia is asserting five cellular SEPs (no WiFi SEPs yet): one patent each in the UPC Local Divisions in Mannheim and Munich, two in the Munich I Regional Court, and one in the Mannheim Regional Court. The latter case is the most likely one to lead to the first injunction against Verifone, and potentially even before the end of this calendar year as the court is highly familiar with the patent-in-suit, EP2981103 (title: “allocation of preamble sequences”). In August 2020, the Mannheim Regional Court’s 2nd Civil Chamber (Presiding Judge: Dr. Holger Kircher) enjoined Daimler over this one; less than two years later, OPPO; and in 2023, vivo.
Not only did the ‘103 patent enable Nokia to prevail in Mannheim but the Hague District Court and the England & Wales High Court of Justice also deemed it standard-essential. A Swedish court took a different position on validity, but that patent has never been successfully challenged in Germany.
In the Daimler, OPPO and vivo disputes, Nokia also asserted a second patent from the same family. Not so this time around, where the whole campaign is also much smaller. By focusing on only one of the two patents from that family, Nokia makes it even easier for the Mannheim Regional Court to put this case on a moderately accelerated schedule.
But there is another patent from the same family in play in the UPC’s Mannheim Local Division, where Nokia is asserting EP3799333. Judge Dr. Kircher will almost certainly be on that panel as well. If Nokia prevailed on EP’333 in the UPC, it would get the benefit of a multi-country injunction and it would have a patent to use in other UPC actions (though not for a long time, as the patent will expire in October 2027).
In the UPC’s Munich Local Division, Nokia is asserting EP2243229 (title: “method and apparatus for conveying antenna configuration information via masking). That one won’t expire before January 2029, so if Nokia prevailed on this one, it would still have an interesting enforcement window left.
The only court where Nokia has brought more than one assertion against Verifone so far is the Munich I Regional Court. In August 2022, that court’s 21st Civil Chamber (Presiding Judge: Dr. Georg Werner) granted Nokia an injunction against OPPO over EP3557917 (title: “method and apparatus for providing efficient discontinuous communication”). That one is now being asserted against Verifone.
The other patent-in-suit in the Munich I Regional Court is EP3396868 (title: “method and apparatus for conveying antenna configuration information”). That one was, for all practical purposes, already deemed essential by the Munich court when it stayed the action in January 2023 over doubts concerning the patent’s validity. But the patent was not declared invalid, and it’s now coming back with a vengeance against a new defendant.
In terms of the technical merits of those cases, the question is not whether Verifone will lose, but over how many patents (almost certainly more than one, given the litigation history of those patents) and how quickly. Of course, a new dispute also means a new FRAND defense with its own fact pattern. Given that Nokia typically manages to sign up licensees without having to litigate, the fact that Verifone has not taken a license in a number of years makes it rather likely that it will be deemed an unwilling licensee, but it’s too early to know for sure.