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2 July 2021PatentsRory O'Neill

Sisvel and Xiaomi end legal dispute with patent licence

Sisvel and Xiaomi have reached a licensing deal over cellular telecommunications patents, ending a global legal dispute which has been before the courts in five countries.

In a statement, the Chinese smartphone maker said it remained “exceptionally judicious” in deciding which patent portfolios to license. The deal sees Xiaomi take a licence to over 1,800 patents covering different cellular standards.

“We are pleased to reach a deal to settle all disputes with Sisvel. Although litigations often make parties confrontational, I have always been optimistic in finding the right value drivers to bring parties to the negotiation table,” said Paul Lin, Xiaomi’s vice president of global business development and IP strategy.

The dispute saw Sisvel and patent owner Mitsubishi accuse Xiaomi of infringing standard-essential patents (SEPs) covering telecommunications standards, including 3G, 4G, and long term evolution (LTE).

Since 2019, the parties have filed litigation in the UK, China, Germany, Italy, and the Netherlands. Sisvel suffered a setback in April when the English High Court ruled that one of the asserted European patents was not essential to the LTE standard, strengthening Xiaomi’s case.

“We are delighted that we have been able to reach an agreement with Xiaomi. Despite the difficulties presented by the COVID-19 pandemic and the adversarial dynamic inherent in the litigation process, we have been impressed with the professional and effective approach of Xiaomi’s licensing team in coming to this deal,” said Sisvel president Mattia Fogliacco.

“Today’s announcement demonstrates that industry leaders such as Xiaomi recognize the value of the Sisvel and Mitsubishi Electric portfolios, and that Sisvel remains committed to find win-win solutions when parties participate in open and constructive dialogue,” Fogliacco added.

Sisvel enjoyed a number of high-profile successes last year, most notably in Germany where the country’s top court ruled in favour of the patent pool operator in a lawsuit against Haier.

The Federal Court of Justice held that Chinese electronics manufacturer Haier had not proven itself a “willing licensee” during negotiations with Sisvel. The decision set a new standard in Germany on how parties must behave during SEP licensing discussions, with Sisvel claiming it would protect patent owners from so-called ‘hold-out’ tactics from unwilling licensees.

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