Sisvel initiated several proceedings in The Netherlands against phone manufacturers Xiaomi, Wiko and BBK (Oppo and OnePlus), invoking a variety of standard-essential patents of its Mobile Communication Program (MCP). In the present case against Xiaomi, the District Court of The Hague considered EP 272 non-essential to the LTE standard (ECLI:NL:RBDHA:2020:11108).

Sisvel is the proprietor of a significant number of standard-essential patents (SEP’s), essential to the 3G (UMTS) and 4G (LTE) standards. These SEP’s are licensed through its MCP against fair, reasonable and non-discriminatory (FRAND) conditions further to Sisvel’s FRAND commitments towards ETSI. One of the patents in its portfolio is EP 2 139 272 (EP 272) relating to a ‘method and system for attaching a mobile equipment to a wireless communication network’. Sisvel acquired EP 272 from Nokia, which registered EP 272 with ETSI as essential to the LTE standard and is a ETSI member too.

As Xiaomi, but for instance also Wiko and BBK, failed to take a license from Sisvel thus far, Sisvel initiated a number of proceedings in The Netherlands against these parties. In May 2020, the District Court of The Hague first found another of Sisvel’s SEP’s, EP 1 129 536, invalid in the cases of Sisvel v BBK and Sisvel v Wiko (ECLI:NL:RBDHA:2020:4632). In the present case, EP 272 has now been held non-essential to the LTE standard.

In its decision the court thereto elaborates, shortly summarized, that the MME in the LTE standard does not directly communicate with the P-GW as required by the patent, but with the S-GW. Sisvel did not argue that the S-GW should be considered a gateway support node as claimed in the patent. Instead, Sisvel argued that the S-GW is nothing more than an intermediary or conduit, which only function is to forward messages from the MME to the P-GW. The court, however, noticed and established that the S-GW adds its own TEID (Tunnel Endpoint Identifier) to any messages it forwards to the P-GW. Accordingly, the court held that the S-GW could not merely be considered an intermediary or conduit as messages are being altered. This meant that the method described in the LTE standard for setting up a communication channel diverges from the method claimed and protected by EP 272. For this reason, EP 272 was considered non-essential to the LTE standard. By applying the LTE standard, Xiaomi’s mobile devices thus do not infringe upon EP 272.

Noteworthy in this respect is that earlier in 2020 in the case of Sisvel v Sun Cupid et al. (ECLI:NL:RBDHA:2020:1675), the District Court of The Hague in fact awarded an injunction against Sun Cupid and NUU Mobile based on the very same patent. The striking difference, however, is that this injunction was granted in view of the nonappearance (and therewith undefended action) on the side of Sun Cupid. With Sisvel invoking EP 272 in the United Kingdom, Germany and Italy against Xiaomi as well, it will be interesting to see whether or not the courts in these jurisdictions agree with the judgment of the Dutch court.

At this moment various proceedings initiated by Sisvel against BBK and Wiko are still pending for judgments in January and February 2021, although there is a decent chance that such judgments will only be given in the second quarter of 2021.