Sisvel, Mitsubishi lose first round of SEP infringement case
Sisvel and Mitsubishi have suffered a loss in their infringement suit against several Chinese mobile phone manufacturers, as the English High Court ruled that a standard-essential patent (SEP) is not integral to 4G telecom standards.
The decision was handed down on Monday, April 26, by Justice James Mellor.
The pair of companies are both members of a 3G and 4G patent pool called MCP, administered by Sisvel.
The dispute began in 2019 when Mitsubishi and Sisvel sued a number of companies in the UK, including Xiaomi, Archos and Oppo/ OnePlus for infringing patents essential to the cellular standards. Sisvel also sued Xiaomi in Italy, the Netherlands and Germany.
The disputed patents named in the complaint were European patent (EP) numbers 1 471 657 and 2 254 259, owned by Mitsubishi, and EP 1 925 142 owned by Sisvel.
According to Sisvel, it has been combining and licensing programmes for its Universal Mobile Telecommunications Service (UMTS) for 3G standards and Long-Term Evolution (LTE) for 4G standards through the MCP pool.
FRAND terms
Sisvel and Mitsubishi argued that the Chinese companies in the suit should be subject to an injunction preventing infringement of the patents unless they enter into a licence on fair, reasonable and non-discriminatory (FRAND) terms
The companies asked the High Court to determine the question of what a global FRAND royalty rate should be and in the suit brought against Xiaomi, Sisvel demanded confirmation that its MCP pool licence was FRAND.
In April 2019, Xiaomi and Oppo pressed charges against Sisvel in Beijing Intellectual Property Court and Guangzhou Intellectual Property Court requesting Sisvel halt its acts of monopoly infringement.
In October 2019, Mitsubishi and Sisvel reached a global agreement on FRAND licences with Archos, covering the three disputed patents, as well as Sisvel’s entire MCP patent pool portfolio.
The decision handed down this week concerned the Sisvel-owned ‘142 patent, entitled “Radio Link Control Unacknowledged Mode Header Optimization”, which covers the signalling of structure in a digital signal in 3G and 4G mobile telephone networks.
Failure of ‘conceptual argument’
During this week’s proceedings, the Chinese companies countered that the patent was not essential to the LTE standard, and denied infringement.
Justice Mellor found in favour of this argument, holding that “despite the elaboration and effort which the claimants have devoted to the claim for infringement of EP142”, Sisvel and Mitsubishi had failed to “make their case in conceptual terms” and that, consequently, “EP142 is not essential to LTE”.
“In any event, the claim for infringement of EP142 fails whether on the claims as proposed to be amended or on the claims as granted for the reasons set out above. Those reasons apply irrespective of the proposed amendments,” he said.
This latest development in this pan-European litigation battle comes as a further blow to Sisvel. In November 2019, the District Court of The Hague found that one of Sisvel’s patents was non-essential, rejecting its patent infringement action against Xiaomi.
A few months later, in March 2020, the Court of Appeal of The Hague denied a preliminary injunction against the Chinese company.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
Today’s top stories
China's new five-year plan targets ‘hi-tech’ IP
