Conversant and Daimler end connected cars dispute

The settlement between NPE Conversant and Daimler apparently came into effect last week. Several sources close to the disputing parties confirmed the latest development. At the end of last week, Conversant and Daimler withdrew most of the suits before the German patent courts and the European Patent Office. Further details of the agreement are so far unknown.

JUVE Patent is also unaware whether the settlement includes all of Daimler’s suppliers. Numerous suppliers supported Daimler in the dispute with NPE Conversant, such as Continental, Bosch, Burry and TomTom. However, it is already known that Huawei, and Samsung-owned Harman Becker, has already reached a separate settlement with Conversant. Both are tier 2 suppliers of Daimler. These settlements ended a large part of Conversant’s claims.

Meanwhile, Continental also confirmed a licence to the Conversant SEPs. Continental has ended its legal proceedings with Conversant.

In 2019, Conversant sued Daimler at the Regional Court Munich for infringement of four standard essentials patents (SEPs), all of which protect mobile communications standards such as LTE (case IDs: 21 O 11384/19, 21 O 17752/19, 21 O 17753/19, 7 O 17751/19). Conversant had only filed suits in Germany.

One success for Conversant

So far, the Regional Court Munich had decided only on case 21 O 11384/19. In October 2020, the court found Daimler to have infringed European patent EP 2 934 050. The patent, which protects an apparatus and method for providing a connection, is used in connectivity modules in certain cars and is considered essential for the LTE standard.  The court also considered Daimler as an unwilling licensee. However, Daimler later appealed the judgment (case ID: 6 U 6214/20).

Daimler also requested that the Higher Regional Court Munich stay the provisional enforcement of the first-instance judgment. In November, the court agreed, ordering the Regional Court Munich to significantly increase the security (case ID: 6 U 6214/20 Kart). Until then, Conversant had refrained from enforcement.

Law suits withdrawn

The Regional Court would not have heard the other three suits until November 2021. The suits concerned European patents EP 33 00 421, EP 32 67 722 and EP 17 97 659. Responding to enquiries from JUVE Patent, the Munich patent courts confirmed that the parties withdrew all actions.

Daimler and its interveners filed EPO oppositions against the granting of the first two patents. The parties challenged the latter at the German Federal Patent Court with a nullity suit. However, EP 2 934 050 has since expired.

Daimler and its interveners have withdrawn the oppositions against EP 421 and EP 722, as well as the nullity suit against EP 659. According to JUVE Patent information, one supplier is continuing its action at the Federal Patent Court.

Nokia and IP Bridge remain as last claimants

By October 2020, Sharp had reached an agreement with Daimler. The Japanese company and Conversant are members of the Avanci patent pool. Nokia and IP Bridge are also members of the pool, which offers licensing solutions for mobile communications standards for the automotive industry.

The latest settlement leaves Nokia and IP Bridge as the last claimants from the Avanci pool against the automotive industry. In 2019, Nokia filed ten suits against Daimler in Düsseldorf, Mannheim and Munich.

Following a win in Mannheim, in December the Regional Court Düsseldorf filed a claim at the CJEU. The claim aimed to clarify important FRAND issues. Furthermore, IP Bridge filed two claims in Mannheim and one in Munich.

Recently , the Mannheim Regional Court ruled on the first of these cases, rejecting IP Bridge’s claim (case ID: 7 O 41/20). The judges decided that Daimler does not infringe the patent. Further details are not yet public.

The decision shows, however, that the German patent courts will not wait until the CJEU has ruled on the referral from Düsseldorf before deciding on connected cars cases. In June, the Munich Regional Court will hear another action brought by Nokia against Daimler.

JUVE Patent is not yet aware of the exact reasons behind the comprise reached by Conversant and Daimler. But, say trial observers, it is likely that the Düsseldorf court’s submission to the CJEU increased the willingness of both companies to settle.

Through thick and thin

The parties and their litigators in the connected cars disputes before the German patent courts have known each other since the early days of the dispute between Nokia and Daimler. They have remained mostly unchanged over the past 26 months.

Conversant worked with EIP, as it has in many other proceedings in the UK and Germany. Düsseldorf partner Christof Höhne played the lead role, with technical expertise from the patent attorneys of df-mp Dörries Frank-Molnia & Pohlman.

Daimler relied on teams from Quinn Emanuel Urquhart & Sullivan led by Marcus Grosch for all connected cars cases.

However, IP Bridge’s lawsuits against Daimler have reshuffled the cards once again. IP Bridge is represented by Wildanger Kehrwald Graf v. Schwerin. The Düsseldorf-based law firm had previously represented Sharp against Daimler.

Instead of Quinn Emanuel, Daimler chose Hogan Lovells to defend against the IP Bridge claims. Hogan Lovells is also representing Peiker as a co-defendant for Daimler in numerous other lawsuits.

Source：www.juve-patent.com

Author：Mathieu Klos

Editor：IPRdaily-Vapor