{"id":1254,"date":"2024-12-18T12:46:18","date_gmt":"2024-12-18T12:46:18","guid":{"rendered":"https:\/\/ipfray.com\/?p=1254"},"modified":"2024-12-18T12:53:14","modified_gmt":"2024-12-18T12:53:14","slug":"huawei-wins-unified-patent-court-injunction-against-netgear-over-wifi-6-in-most-important-upc-sep-ruling-to-date","status":"publish","type":"post","link":"https:\/\/ipfray.com\/staging1\/huawei-wins-unified-patent-court-injunction-against-netgear-over-wifi-6-in-most-important-upc-sep-ruling-to-date\/","title":{"rendered":"Huawei wins Unified Patent Court injunction against Netgear over WiFi 6 in most important UPC SEP ruling to date"},"content":{"rendered":"\n
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Context:<\/strong> Many companies are already licensed to Huawei’s WiFi 6 standard-essential patents (SEPs), typically without prior litigation apart from Amazon, which later struck a very conciliatory tone (March 5, 2024 ip fray<\/strong> article<\/a>), and German router market leader AVM (April 15, 2024 ip fray<\/strong> article<\/a>). Netgear is an outlier in certain ways. It has been defending itself for some time, including at a recent trial in the Unified Patent Court’s (UPC) Munich Local Division (LD) (October 30, 2024 ip fray<\/strong> article<\/a>). In the aftermath, Netgear launched the first-ever antisuit attack on the UPC (December 6, 2024 ip fray<\/strong> article<\/a>).<\/p>\n\n\n\n

What’s new:<\/strong> Further to the late-October trial, the UPC’s Munich LD has just granted Huawei a seven-country injunction against Netgear over EP3611989<\/a> (“Method and apparatus for transmitting wireless local area network information”), a WiFi 6 SEP. It is the UPC’s second SEP injunction over a FRAND (fair, reasonable and non-discriminatory license terms) defense, and the first one of commercial relevance as the other dispute had practically settled out already. The injunction covers the three largest UPC member states (Germany, France and Italy) as well as Belgium, Denmark, Finland and Sweden.<\/p>\n\n\n\n

Direct impact:<\/strong> It is a safe assumption that Netgear will appeal the injunction and seek an enforcement stay from the UPC’s Court of Appeal (CoA). It is additionally conceivable that Netgear will request a temporary restraining order (TRO) from the United States District Court for the Central District of California in an attempt to undermine the UPC’s jurisdiction ahead of a U.S. antisuit injunction hearing in late January.<\/p>\n\n\n\n

Wider ramifications:<\/strong> Netgear was previously lucky to avoid a WiFI 6 SEP injunction. The Dusseldorf Regional Court stayed a Huawei v. Netgear<\/em> case over doubts concerning the validity of the asserted patent, but last week the Federal Patent Court of Germany upheld that patent (December 12, 2024 LinkedIn post by ip fray<\/strong><\/a>) in exactly the amended form in which Huawei was asserting it against Netgear as well as AVM (December 26, 2023 ip fray<\/strong> article<\/a>). The Dusseldorf proceedings will now continue and could lead to another injunction in a few months’ time. And tomorrow, the Munich I Regional Court will hold a trial in a Huawei v. Netgear<\/em> case over EP3334112<\/a> (\u201cmethod for transmitting he-lft sequence and apparatus”). The court’s Seventh Civil Chamber goes into those trials with a prepared judgment and can decide swiftly thereafter.<\/p>\n\n\n\n

Note:<\/strong> This article was largely prepared based on ip fray<\/strong>‘s prediction of what the most likely outcome would be.<\/p>\n<\/div>\n\n\n\n

This is now a landmark ruling for the development of the UPC’s body of caselaw. We will study the full ruling as soon as it is available and analyze the reasoning in a follow-up article.<\/p>\n\n\n\n

Today’s decision does not come as a surprise given how the late-October hearing went. Netgear appeared to struggle to defend itself and attempted “Hail Mary” passes (long shots), and its politically charged U.S. lawsuit against Huawei (June 20, 2024 ip fray<\/strong> article<\/a>) looks like a litigation strategy that is removed from technical merits and detached from the commercial reality that Huawei’s terms are widely accepted. The Munich I Regional Court even held in a different WiFi 6 dispute that Huawei overcomplied with its FRAND licensing obligations (March 19, 2024 ip fray<\/strong> article<\/a>). Huawei is a major implementer of standards such as WiFi 6 and known to make less aggressive royalty demands than companies with similarly strong or in most cases even weaker SEP portfolios.<\/p>\n\n\n\n

It is important that implementers of SEPs who are willing licensees stand a chance in court. In this case, however, it appeared that a court could arrive at the decision to grant an injunction on behavioral grounds (all the way up to Netgear’s antisuit injunction request in the U.S.) as well as on the basis of holding that Netgear declined to take a license on FRAND terms. That is a major of part of the reason why this article was prepared for the scenario of an injunction.<\/p>\n\n\n\n

At trial time, Netgear appeared to have a plausible exhaustion argument as we also mentioned in our trial coverage<\/a>. To some extent, Netgear has prevailed on exhaustion with respect to its use of chipsets from one particular vendor. But it appears that the exhaustion defense falls short of a get-out-of-jail-free card. Whenever the relevant patent license agreement between Huawei and a third party expires, Netgear will not have an exhaustion argument left.<\/p>\n\n\n\n

In practical terms, Netgear now has the choice between settling (such as by taking a license to Sisvel’s WiFi 6 pool, to which Huawei contributes) or carrying on with litigation, which will increase its costs without necessarily bringing down the license fees it will have to pay at some point. While the UPC as well as German national courts will decide all cases strictly on the merits, Netgear is not doing itself a favor by seeking an antisuit injunction in these circumstances.<\/p>\n\n\n\n

For Huawei, today’s decision means that it has another winning patent in place for situations in which it needs to enforce WiFi 6 SEPs against unwilling licensees. The fact that Huawei has once again prevailed on FRAND, and now in a new court, strengthens its positions in licensing negotiations.<\/p>\n\n\n\n

Technically, this is the UPC’s third and the Munich LD’s second SEP injunction, but there was no FRAND defense in Philips v. Belkin, a case involving the Qi wireless charging standard (September 13, 2024 ip fray<\/strong> article<\/a>). Last month the Mannheim LD entered an injunction in Panasonic v. OPPO<\/em>, but the parties were already in the process of settling that dispute (November 23, 2024 ip fray<\/strong> article<\/a>).<\/p>\n\n\n\n

Presiding Judge Dr. Matthias Zigann<\/a>, one of the world’s most famous patent judges thanks in no small part to a number of rulings that made headline news and his frequent presence at conferences and public mock trials, announced the decision in open court as far as the technical merits are concerned, but decided to seal the courtroom for the non-technical part. The other members of the panel were Judge Tobias Pichlmaier<\/a>, Judge Edger Brinkman<\/a> (The Hague) and Technically Qualified Judge Patrice Vidon<\/a>.<\/p>\n\n\n\n

Netgear sent only one attorney to the announcement, Freshfields associate Henning Gutheil<\/a>, while a large legal team from Huawei was present. At trial time, both companies had large legal teams in the room and dispatched in-house counsel from other continents.<\/p>\n\n\n\n

Counsel for Huawei: Clifford Chance’s Dr. Tobias Hessel<\/a> (lead), Thomas Misgaiski<\/a>, Lea Prehn<\/a> and Dr. Marie Gessat<\/a>; (for the FRAND part) Bird & Bird’s Christian Harmsen<\/a>, Dr. Matthias Meyer<\/a> and Dr. Joerg Witting<\/a> (“J\u00f6rg” in German); and Braun-Dullaeus Pannen Emmerling patent attorneys Dr. Friedrich Emmerling<\/a> and Dr. Karl-Ulrich Braun-Dullaeus<\/a>. Huawei’s in-house counsel: Emil Zhang, Dylan Li, Dr. Thomas Dreiser, Liang Gao and Wanting Shao.<\/p>\n\n\n\n

Counsel for Netgear: Freshfields’s Dr. Stephan Dorn<\/a> (lead), Dr. Frank-Erich Hufnagel<\/a> (normally first-chair trial counsel, but not in this case), the above-mentioned Henning Gutheil and Diana Baum<\/a>, as well as Samson & Partner patent attorneys Dr. Cletus von Pichler<\/a> and Stefan Koenig<\/a> (“K\u00f6nig” in German). Netgear’s in-house counsel: Anna Lam (Vice President, Legal).<\/p>\n","protected":false},"excerpt":{"rendered":"

The Unified Patent Court’s Munich Local Division has granted Huawei a multi-country injunction against Netgear over a WiFi 6 standard-essential patent.<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"","sticky":false,"template":"","format":"standard","meta":{"nf_dc_page":"","_jetpack_newsletter_access":"","_jetpack_dont_email_post_to_subs":false,"_jetpack_newsletter_tier_id":0,"_jetpack_memberships_contains_paywalled_content":false,"_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[51,50,28,49,12,54],"tags":[],"class_list":["post-1254","post","type-post","status-publish","format-standard","hentry","category-huawei","category-huawei-v-netgear","category-l-icensors-licensees","category-netgear","category-patent-litigation","category-unified-patent-court"],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/ipfray.com\/staging1\/wp-json\/wp\/v2\/posts\/1254","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/ipfray.com\/staging1\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ipfray.com\/staging1\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ipfray.com\/staging1\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/ipfray.com\/staging1\/wp-json\/wp\/v2\/comments?post=1254"}],"version-history":[{"count":3,"href":"https:\/\/ipfray.com\/staging1\/wp-json\/wp\/v2\/posts\/1254\/revisions"}],"predecessor-version":[{"id":1257,"href":"https:\/\/ipfray.com\/staging1\/wp-json\/wp\/v2\/posts\/1254\/revisions\/1257"}],"wp:attachment":[{"href":"https:\/\/ipfray.com\/staging1\/wp-json\/wp\/v2\/media?parent=1254"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ipfray.com\/staging1\/wp-json\/wp\/v2\/categories?post=1254"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ipfray.com\/staging1\/wp-json\/wp\/v2\/tags?post=1254"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}