Koninklijke Philips NV v. Wiko SAS, Case no. ECLI:NL:RBDHA:2017:2719, Koninklijke Philips NV v. Archos S.A., Case no. ECLI:NL:RBDHA:2017:2720, Koninklijke Philips NV v. Asustek Computer Inc., Asus Europe B.V. and Asus Holland B.V., Case no. ECLI:NL:RBDHA:2017:2721, District Court The Hague, 22 March 2017

The present dispute concerns an alleged infringement of the rights of Koninklijke Philips N.V. (“Philips”) as vested in various patents that are considered essential to the UMTS (3G) and LTE (4G) standards as developed by ETSI, a standard-setting organization for mobile communication technologies. According to Philips, Wiko SAS (“Wiko”), Archos S.A. (“Archos”), Asustek Computer Inc., Asus Europe B.V. and/or Asus Holland B.V. (“Asus”) manufacture and sell mobile devices that incorporate technology as protected by one or more patents in Philips’ UMTS/LTE portfolio. Because the licensing negotiations initiated by Philips did not lead to any agreement, Philips initiated proceedings before the District Court of The Hague against the aforementioned companies in order to enforce its rights.

The discussion between the parties subsequently focused on the one hand on the question whether Philips offered a license under FRAND (fair, reasonable and non-discriminatory) conditions as prescribed by ETSI’s IPR Policy, and on the other hand on the validity of the rights invoked by Philips.

As a result of the failed attempt(s) to conclude license agreements throughout 2014 and 2015, Philips lodged a number of proceedings against Wiko, Archos and Asus before the District Court of The Hague in the end of 2015 on the basis of (the Dutch parts of) three European patents. Philips deems these patents essential for the so-called HSDPA/HSUPA protocol as part of the UMTS-standard, which allows for faster (3G+) mobile data transfer.

The present judgments, however, solely concern the alleged infringement of (certain claims of) Philips’ European patent EP 1 623 511 for a “Communication System” (“EP ‘511”); proceedings against the aforementioned defendants are also pending before the District Court of The Hague with regard to Philips’ European patents EP 1 440 525 and EP 1 685 659.

In addition to the FRAND defenses raised by all of the aforementioned defendants, Wiko and Asus contested the validity- and lodged counterclaims for nullification of (the Dutch part of) EP ‘511. In order to streamline the debates between the different parties, the District Court granted Philips’ request to change and align the pleading schedules as set by the District Court for each of the defendants, so as to ‘bifurcate’ the FRAND- and validity aspects of the (pleadings of the) cases.

The latter aspects proved decisive; leaving the FRAND-arguments undiscussed, the District Court follows Wiko and Asus’ line of reasoning and concludes that the invoked claim 1 of EP ‘511 is invalid due to a lack of novelty, as all of the claim’s sub-elements have been disclosed before the priority date of EP ‘511, namely in the CDMA2000 mobile communications standard as developed by the standard-setting organization 3GPP2. The District Court also considers the other claims to be invalid, as Philips did not sufficiently refute Wiko and Asus’ arguments why the other claims should share the fate of claim 1.

The District Court’s conclusions are the same on the basis of Philips’ auxiliary request, because the (technical) feature added by Philips was also disclosed in the aforementioned standard; the District Court therefore annuls (the Dutch part) of EP ‘511 and rejects Philips’ claims in the case against Wiko and the case against Asus. The case against Archos, on the other hand, is adjourned. The reason for this is that even though Archos did not argue the invalidity of the patent, the nullification of the patent has immediate effect vis-à-vis third parties and is therefore also relevant in the case against Archos; under Dutch (case) law, the court in such an event is to adjourn the case until the (in)validity of the patent is established in a final and conclusive judgment (not or no longer subject to an appeal).

A copy of Koninklijke Philips NV v. Wiko SAS, Case no. ECLI:NL:RBDHA:2017:2719 can be read here.

A copy of Koninklijke Philips NV v. Archos S.A., Case no. ECLI:NL:RBDHA:2017:2720 can be read here.

A copy of Koninklijke Philips NV v. Asustek Computer Inc., Asus Europe B.V. and Asus Holland B.V., Case no. ECLI:NL:RBDHA:2017:2721 can be read here.

Headnote: Tim Iserief, NautaDutilh