Oppo infringed Panasonic SEP says local division Mannheim in first FRAND ruling

Today the UPC has handed down its first FRAND judgment. In a surprising turn of events, the local division Mannheim has banned Oppo from selling certain mobile devices in the UPC territory and rejected the Chinese company's FRAND counterclaim. The dispute with Oppo had been considered over for weeks.

 

The ruling from Mannheim comes despite Panasonic and Oppo having, in principle, already agreed to settle their global patent dispute in October. The courts involved are also aware of this. However, as the parties still need to clarify the final details and sign the settlement agreement, Panasonic’s lawsuits against Oppo are still formally pending before the relevant courts in Germany and the UPC.

 

The judges’ panel at the local division Mannheim around presiding judge Peter Tochermann did not want to miss this opportunity. The judges have thus now published their judgment in one of several lawsuits filed by Panasonic against Oppo. The court had originally planned to announce a verdict on 6 December.

 

The four UPC judges have ruled that Oppo infringes Panasonic’s EP 2 568 724. As a result, Oppo is no longer allowed to sell 4G-enabled smartphones such as the OPPO Find X5 Pro and smartwatches in Germany, France, Italy, Sweden, and the Netherlands. The SEP protects a radio communication device and method (case ID: ACT_545551/2023 UPC_CFI_210/2023.

 

The court also ordered Oppo to pay provisional damages of €250,000 and dismissed Oppo’s nullity action against EP 724 and the FRAND counterclaim that Oppo had filed during the ongoing proceedings.

 

 

Legally qualified judges Peter Tochtermann, Dirk Böttcher, Edger Brinkman and technically qualified judge Klaus Loibner rejected the FRAND counterclaim as admissible but unfounded. In their opinion, Oppo had obviously not behaved in a FRAND-compliant manner.

 

The FRAND part of the judgment is 26 pages long and gives very detailed reasons. It deals with issues such as how the UPC should interpret the CJEU’s Huawei vs ZTE ruling, and FRAND rate-setting. The reasoning also mentions the UPC’s relationship with the UK court and the European Commission’s amicus curia brief filed in the proceedings between VoiceAge and HMD at the Higher Regional Court Munich. Apparently, the judges felt the need to comment extensively on FRAND.

 

The ruling is therefore likely to attract a great deal of attention and play an important role in future FRAND proceedings at the UPC. However, the economic implications of the decision are no longer as far-reaching because the two companies had already agreed on a settlement.

 

Nevertheless, Oppo can still appeal the ruling to the Court of Appeal. In order for it to take effect, Panasonic would have to deposit a security with the Mannheim local divison.

 

 

Since August 2023, Panasonic has filed eight national and twelve UPC lawsuits against its competitors Oppo and Xiaomi. All patents-in-dispute are relevant for the WCDMA and LTE standards.

 

On October 7 the local division Mannheim held the SEP hearing in Oppo vs Panasonic. For two days, the panel headed by Peter Tochtermann heard whether Oppo infringed Panasonic’s EP 724. The court also heard Oppo’s revocation claim and the FRAND defence.

 

However, the hearing played out against the backdrop of a recent ruling by the UK Court of Appeal dubbing Panasonic an unwilling licensor. The UK judge obliged the company to accept an interim licence for Xiaomi (case ID: CA-2024-001709). Xiaomi had asked the UK High Court to set a FRAND rate and applied for an interim licence. Although Oppo did not join this claim, it nevertheless had an impact on the UPC hearing in Mannheim. In October Panasonic and the two Chinese implementers quickly agreed to settle the dispute in general.