InterDigital prevails against Oppo and OnePlus over SEPs in Munich

InterDigital could recently celebrate two successes in its ongoing dispute with multiple mobile phone manufacturers. After the Federal Patent Court upheld a SEP with restrictions, the Munich Regional Court ruled that Oppo and other patent users were infringing the same patent with their products.

For years, InterDigital has fought various mobile phone manufacturers in different countries over SEPs relevant for the 3G, 4G and 5G standards. In Germany, the company filed lawsuits at courts in Mannheim and Munich. At the end of 2023, in the dispute against Oppo, OnePlus and Realme – all of which belong to Chinese group BBK Elektronics – the NPE achieved a double success.

InterDigital wins on infringement

In September of last year, the Federal Patent Court upheld the German part of InterDigital’s patent EP 2 127 420 B1 with restrictions, in the nullity action filed by Oppo (case ID: 4 Ni 54/22). EP 420 B1 protects a method for controlling discontinuous reception, DRX, in a wireless transmit/receive unit, with devices like smartphones using the technology. When a consumer operates a device in DRX mode, this is intended to reduce battery consumption.

Shortly before Christmas, however, the 7th Civil Chamber of the Munich Regional Court found that Oppo and OnePlus products infringed the previously restricted patent and ordered the defendants to cease and desist. This included recall of products, as well as information and the rendering of accounts (case ID: AZ 7 O 17302/21).

In summer 2022, Oppo and OnePlus had already withdrawn products from the market following a ruling by the Munich Regional Court in the dispute against Nokia.

Referring to the UK

At the hearing, the defendants argued that they were no longer importing the contested design. According to Oppo, tests had shown that the devices sold in Germany did not support the challenged DRX function. Furthermore, the defendants argued that they were willing to take a license, but that the sales price set by InterDigital for the calculation of licences was too high.

In their arguments, Oppo and OnePlus referred to the UK High Court judgment in the dispute between InterDigital and Lenovo, in which the judge found that InterDigital’s 5G Extended Offer did not comply with FRAND. Oppo is therefore demanding that InterDigital submit other comparable licence agreements. The court dismissed this request as a hold-out strategy.

Oppo an unwilling licensee

Furthermore, in the opinion of the Munich judges, neither the FRAND objection under antitrust law nor the reference to a possible lack of proportionality stands in the way of an infringement judgment. They also found that the defendant was an unwilling licensee. The judges did not agree with Oppo’s argument that InterDigital’s licence offer was not FRAND, instead describing the defendant’s counter-offer as non-FRAND. They also dismissed Oppo’s references to the UK High Court decision as not relevant in the current dispute.

Overall, the judges found that the defendants infringed EP 420. According to the judges, even if Oppo currently no longer sells some of its products in Germany, there is a risk of future sales potentially leading to infringement.

JUVE Patent is not yet aware whether  the defendants will lodge an appeal in both the nullity action and the infringement proceedings.