Nordic IPR Forum: Nokia litigation head talks strategy

Richard Vary, global head of litigation at mobile telephone company Nokia, has been discussing how to get the most out of patent litigation on the same day his company won an injunction against HTC in Germany.

Likening litigation to football, Vary said it is impossible to have an all-encompassing strategy because of the number of different factors at play (most notably, the opponent). But there are some useful things to know when planning litigation.

Nokia is involved in multiple court cases in several jurisdictions, but Vary highlighted Germany as particularly prominent because of the speed of court decisions and bifurcation, which splits validity and infringement proceedings in a way that can favour patentees.

Picking which court to sue in can be crucial, he said, citing an example of when one party sued another in a Dusseldorf court and was then countersued in Mannheim. Because the Mannheim court reached its judgment quicker, the countersuit was decided first.

“The choice between two German courts … was critical to the outcome of litigation,” he said.

Mannheim’s court is extremely popular with patent owners because of the speed with which injunctions can be obtained, often well before validity has been decided.

But Vary said there are things companies can do to slow this down or to pre-empt the German court. In the UK, he said it may be possible to expedite proceedings to obtain a invalidity judgment  before the Mannheim court has completed the case.

The German courts will normally acknowledge that UK decision and stay the infringement proceedings, meaning companies that might otherwise have been issued with an injunction based on a potentially invalid patent can prevent that happening.

There is another advantage to litigating in the UK, especially for defendants. “You have to be consistent with your construction [in the UK] … because invalidity and infringement are decided at the same time,” said Vary.

This contrasts with Germany, where companies can claim broad coverage for a patent in infringement proceedings but narrow coverage before the court assessing validity, giving patentees an advantage in both sets of proceedings. English courts will grant substantial costs awards to winning parties, perhaps discouraging litigation if companies are unsure of their ground.

Unfortunately though, while “English courts have accepted that an English judgment will be of use to a German court, so use that as a reason to expedite”, Vary pointed out that they can’t expedite several cases at once. When many patents are at issue, it can close down this strategic avenue for defendants.

Vary also spoke about Nokia’s experience of courts in China and the US, noting  that far fewer cases get to trial in the US and most of those that do are at the International Trade Commission.  While in Germany, trials happen in approximately one third of cases, Nokia’s experience in the US is of five out of 100 cases reaching trial.

China, which is the venue for more cases than anywhere else and also has split validity and infringement cases, can be a dangerous place to sue or be sued because it is not certain whether validity or infringement will be decided first. In Vary’s experience, it may depend on who the case is against and which side of it a European company is on as to which is decided first.

The 10th Annual Nordic IPR Forum is taking place in Stockholm, and finishes tomorrow.