Tuesday, June 18, 2013

Patent firm IPCom settles with T-Mobile, will be more active in U.S. with ex-Hitachi patents

IPCom is a patent licensing firm based in the Munich area that acquired a portfolio of cellular standard-essential patents (SEPs) from Bosch, a company that exited the mobile devices business about a decade ago. IPCom has been embroiled in litigation with Nokia and HTC for more than five years, and is also asserting patents against the resale of Nokia and HTC devices by certain carriers and retailers. IPCom also alleged that carriers use certain patents covering network infrastructure components and the provision of services implementing cellular standards. The center of gravity of the IPCom disputes is in Germany, though there is also significant activity in other jurisdictions such as the UK (1, 2) and the U.S., where a declaratory judgment action brought by HTC even reached the Federal Circuit. In 2009 the European Commission was looking at (though not conducting a full-blown investigation of) a complaint by Nokia, in response to which IPCom made a public promise to honor Bosch's FRAND pledge, which the EU's antitrust enforcers welcomed.

Today IPCom announced a global settlement further to which Deutsche Telekom (T-Mobile) is paying for the use of IPCom's patents and all litigation between the two parties is withdrawn. The terms of the agreement were not disclosed, but it's easy to figure that royalty payments are involved and also supported by IPCom director Bernhard Frohwitter's statement that "this agreement will also send a signal to those companies that use these patents without paying license fees for them". IPCom has other licensees including BlackBerry (Research In Motion). Some companies, such as Samsung, licensed the former Bosch patents from their original assignee.

Earlier this year it appeared that Nokia and IPCom were close to a settlement, but they hit an impasse mentioned in a May 2013 UK ruling.

Rumor has it that IPCom is also suing Apple. I have not yet been able to obtain information on this from the Mannheim court, but if and when a public hearing takes place, any litigation becomes discoverable.

IPCom's international litigations are coordinated by Dr. Roman Sedlmaier of the Frohwitter patent law firm. This is a complex cross-jurisdictional effort, involving at some point over 100 cases (including numerous invalidation actions brought by Nokia and HTC in various countries).

The most interesting part of IPCom's press release today is the following quote from IPCom director Christoph Schoeller:

"We are now proceeding with the licensing of a further portfolio of mobile telecoms patents, which we acquired from Hitachi. The Hitachi patents are particularly important in the US market, but also in Europe."

This means IPCom is going to be more active in licensing and, if negotiations fail, litigation in the U.S. than before, where it appears that it was actually HTC's choice to trigger litigation there. The press release reveals the following about the Hitachi deal:

"The Hitachi patents consist of 135 patents in 17 patent families, and cover important aspects of the UMTS standards. The technology is also present in the 3G standards CDMA 2000 and HSUPA. Among the Hitachi patents, two standard-essential patents are particularly important : EP 0957 594 describes the synchronisation of handset and network in the UMTS standard. DE 69735 459 describes a process that controls the transmission strength for a CDMA message transfer system."

The U.S. equivalent of the European patent is U.S. Patent No. 6,507,576 on a "code division multiple access mobile communication system". There are at least two U.S. patents belonging to the same family as the German patent: U.S. Patent No. 6,307,844 and U.S. Patent No. 6,483,816 on a "CDMA communication system and its transmission power control method".

IPCom's overall patent portfolio "currently consists of about 1,200 patents in roughly 160 patent families", including patents declared essential to "global telecoms standards such as 2,5G (GSM/GPRS), 3G (UMTS) and LTE".

This blog primarily reports on litigations between large operating companies. I didn't even blog about several IPCom-related hearings and trials I attended over the last two years. But every once in a while I do talk about NPE activities (particularly if FRAND-pledged SEPs are involved), and today's IPCom announcement caught my interest because of an increased focus on the U.S. market following the Hitachi deal.

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