Xiaomi hit by FRAND lawsuits in France and India

Proceedings have been launched in France and India concerning a fair reasonable and non discriminatory (FRAND) dispute over 4G patent technology involving China’s largest handheld maker Xiaomi and US-based patent holders Sun Patent Trust.

In a legal wrangle that began some five years ago, Xiaomi has been accused of unlawfully using Sun Patent Trust’s standard essential patents (SEPs) and proceedings have been brought at the Paris Judicial Court and the High Court of New Delhi, India.

The case concerns Xiaomi’s use of Long Term Evolution Advanced (LTE-A) technology patents, which provide 4G communication standards; the lawsuits are valued at around $300m.

The Paris court will concentrate on resolving and determining a licensing agreement on a worldwide portfolio of 167 patent families of SEPs, under FRAND terms. Xiaomi has been accused of using the technology in nearly all 4G enabled devices it produced since late 2018.

In India, Sun Patent Trust will initiate patent infringement proceedings that will seek to enforce financial remedies against the Chinese firm for its use of the SEPs in respect of this major market.

So far, the usual venues for resolving and setting global FRAND rates have been the US, UK and China. Sun Patent Trust said it chose France as “part of a novel approach to resolving international disputes in relation to SEPs”.

It has also settled on France as the venue because it is the home country for European Telecommunications Standards Institute (ESTI) – the standards body dealing with telecommunications, which will be called on as an expert witness.

It adds that the French legal environment provides an “influential perspective over an international IP dispute, allowing it to be swiftly settled across other jurisdictions”.

Sun Patent Trust, which acquired many of the patents from Japanese electronics firm Panasonic, first approached Xiaomi in 2019. In a press release, it says since then, the “Chinese firm’s behaviour has signalled that is has no intention to arrive at FRAND licensing terms”.

The proceedings launched by Sun Patent Trust is separate to the set of 24 lawsuits launched in November 2023 by Panasonic against Xiaomi and Chinese electronics-maker Oppo globally.

Joseph Casino, managing trustee at Sun Patent Trust, commented that the trust aims to be “reasonable, open and transparent in all negotiations and this is only the second time it has had to resort to litigation since formation in 2015”.

Casino urged Xiaomi “to come to the table and agree FRAND terms”, adding that “SEPs are not designed to be punitive. They are meant to facilitate the adoption of technology by having reasonable licensing for everyone in the market”.

Hoyng ROKH Monegier is representing Sun Patent Trust in France while Anand and Anand is representing Sun Patent Trust in the High Court of New Delhi, India.

Sun Patent Trust was established in 2015 and owns more than 5,000 patents and pending applications. The portfolio includes protection in North America, Europe and Asia.

Xiaomi’s first quarter results showed that adjusted net profit increased by 100.8% year on year to RMB6.5bn (US$915m).