Context: This month, Qualcomm’s patent enforcement campaign against Transsion, which is one of the world’s highest-volume smartphone makers and has a license only to Qualcomm’s 5G standard-essential patents (SEPs), became known (mid-July LinkedIn post by ip fray). Qualcomm is asserting non-SEPs and could apparently also sue over patents declared essential to other standards than 5G.
What’s new: A first Qualcomm v. Transsion patent infringement lawsuit in Europe has been discovered. In the Unified Patent Court’s (UPC) Hamburg Local Division (LD), Qualcomm is asserting a satellite positioning system patent against Transsion and some of its German and Dutch resellers.
Direct impact: Transsion sells most of its phones in such markets as India and Africa, and is a fairly little-known brand in Europe by now. At first sight, it appears that Transsion would rather leave a market (or set of markets) in which its presence is almost negligible than commit to a royalty rate that would adversely impact its competitiveness in other world regions. If even OPPO and vivo made that determination, the case would likely be stronger and clearer for Transsion. It’s fairly possible that Qualcomm does not expect to gain decisive leverage in the UPC, but hopes to achieve other goals, such as battle-testing patents with a view to future disputes with other parties and/or obtaining persuasive authority for jurisdictions in which Transsion has a high market share.
Wider ramifications: Patent disputes in which the defendant is licensed to some but not all of the plaintiff’s patents are few and far between. Total-portfolio licensing is prevalent, “Balkanization” or piecemeal resolution a rare exception. The last prominent case in which a defendant held a SEP license but was sued over non-SEPs was Nokia v. HTC (2012-2014). In the Qualcomm-Transsion case, the situation appears even more fragmented, as the budget phone maker may not even be licensed to Qualcomm’s pre-5G cellular SEPs.
The defendants are:
- Tecno Mobile Ltd.
- Shenzhen Transsion Holdings Co., Ltd.
- Max ICT B.V.
- Tekpoint GmbH
- Galaxus Deutschland GmbH
The patent-in-suit is EP2232289 (“Navigation receiver”) and the complaint was filed on July 10, 2024. This is about geopositioning.
Piecemeal resolution through litigation is, as mentioned above, unusual. Qualcomm is known to offer a SEP license without tying a non-SEP license to it. Non-SEPs rarely confer market power, while SEPs do, which is why Qualcomm’s approach of a SEP base license and an optional non-SEP add-on steers clear of tying. There is a different take on that in the UK, with a SEP holder allegedly having the obligation to offer non-SEPs as well, but that is an outlier position and unlikely to be adopted by antitrust watchdogs (May 5, 2024 ip fray article).
If someone takes a SEP license from Qualcomm, but declines to license its non-SEPs, litigation is, like here, a possibility. It’s likely that Transsion is actually prepared to take a license to Qualcomm’s non-SEPs (and SEPs related to other standards than 5G) as well, but that the parties disagree on the rate. As long as they don’t have a deal in place, however, Transsion will presumably dispute that it infringes any valid Qualcomm patents.
Qualcomm may have to become much more active in patent enforcement now than in the past. For a long time, its chipset market power ensured that virtually everyone needed a license, which was a prerequisite to being supplied with baseband processors. Times have changed, partly also for geopolitical reasons. Therefore, ip fray doubts that Transsion will be the only smartphone maker to be sued by Qualcomm in the 2020s. There is potential for disputes in a number of places. Also, should Apple at some point be able to make its own baseband chipsets, it is almost a given that it will reject Qualcomm’s standard license fees.
The panel consists of Presiding Judge Sabine Klepsch, Judge Dr. Stefan Schilling and Judge Peter Agergaard (Denmark).
Qualcomm is represented by Bardehle Pagenberg’s Dr. Jan Boesing (“Bösing” in German). That fact may hurt Quinn Emanuel, which represented Qualcomm against Apple in 2017-2019 (with moderate success: only one of its six complaints succeeded, and even in that case, the appeals court lifted the injunction after a few months on three independent grounds). But it’s not the first time for Bardehle to assert Qualcomm patents: they already did so in the 2000s against Nokia. Against Apple, Bardehle could not have acted due to a clear conflict. They weren’t representing Apple in German infringement proceedings at the time, but were still prosecuting patent applications on Apple’s behalf. By now, Bardehle is also working for Apple again, albeit in a low-profile matter by comparison and with a different partner in charge than in the early 2010s (April 24, 2024 ip fray article).
It is not known yet who represents Transsion in the UPC. In India, its counsel is Saikrishna & Associates.