“Panasonic Launches Global Patent Dispute Against Xiaomi and Oppo: A Comprehensive Overview”

In a landmark move, Japanese electronics giant Panasonic has launched a global patent dispute against Chinese tech companies Xiaomi and Oppo. The patents in question are relevant for the WCDMA and LTE standards. This marks the most extensive series of Standard Essential Patents (SEP) lawsuits at the Unified Patent Court (UPC) to date.

Panasonic has filed a total of twelve lawsuits against both implementers at the UPC local divisions in Mannheim and Munich. In addition to the UPC, the Japanese company has also sought injunctions against the two companies at the regional courts in Mannheim and Munich. Xiaomi is currently facing four lawsuits in Munich and three injunction claims in Mannheim, while Oppo is facing one lawsuit in Munich.

While it is expected that Xiaomi and Oppo will launch nullity actions against the patents-in-suit in Germany and at the UPC, sources indicate that they have not yet taken this step. The legal teams of both companies are currently preparing their defence briefs, which are typically accompanied by revocation actions.

In London, the High Court has already heard the case management proceedings. Panasonic had sued Xiaomi and Oppo on the basis of four patents. Last week, the UK High Court, led by Richard Meade, ordered an initial FRAND (Fair, Reasonable, and Non-Discriminatory) trial for both implementers in the fourth quarter of 2024. Two technical trials based on Oppo’s request for invalidity will only start two and four months after the FRAND trial. Both Xiaomi and Oppo are questioning the validity of the patents-in-suit in the UK.

The court is following previous reasoning from London, in that courts should first clarify the FRAND rate before entering into the often lengthy technical trials. As a result, UK proceedings could become quicker, and thus establish the UK High Court as the central court worldwide for determining FRAND rates.

Panasonic and Xiaomi had previously agreed to accept a global FRAND rate set by the court. However, Panasonic wanted to attach certain conditions to this, while Xiaomi pushed for a greatly accelerated procedure for the summer of 2024 in order to anticipate the first injunctions of the UPC and the German courts, which could also come in the fourth quarter of 2024. Richard Meade took a slightly different view and suspended the technical trials against Xiaomi for the time being.

In contrast, Oppo focused entirely on the technical trials and did not commit to accepting a FRAND rate from the court. During the two London hearings on November 3 and 8, Panasonic also changed its position on an important detail. The company dropped its original waiver of the enforcement of possible injunction judgments from Germany or the UPC. As a result, the Japanese company reserves the right to enforce such judgments despite the FRAND trial in London.

The courts in mainland Europe have not yet scheduled any oral hearings. However, if they stick to their timetables, judges could issue the first rulings in the fourth quarter of 2024. Xiaomi and Oppo may then face their first injunctions on the continent in this dispute.

Oppo is well aware that the Munich court in particular does not shy away from issuing injunctions in global patent disputes. For instance, in 2022 the Chinese handset maker was forced to withdraw from the German market after Munich Regional Court issued two injunctions in the dispute with Nokia. The 21st Civil Chamber under presiding judge Georg Werner handed down the ruling. The same chamber will now hear five national Panasonic lawsuits against Xiaomi and Oppo.

The fact that Panasonic filed fewer lawsuits against Oppo in Germany than it did against Xiaomi is likely a consequence of the two rulings and Oppo’s withdrawal from the German market. In addition to the claims in Europe, proceedings are also pending in China.

According to JUVE Patent research, the two Chinese implementers are relying on long-established advisors. Hogan Lovells and Freshfields Bruckhaus Deringer are representing Xiaomi. Clifford Chance and Vossius & Partner and Brinkhof are acting for Oppo. The firms Vossius and Brinkhof are conducting the UPC proceedings in Mannheim under their joint UPC umbrella brand Vossius Brinkhof UPC Litigators.

In the UK proceedings, James Marshall is representing Oppo. He recently moved from Taylor Wessing to Pinsent Masons and took the client relationship with him. Kirkland & Ellis are advising Xiaomi. The firm’s patent team is no stranger to patent litigation, having conducted numerous proceedings for Chinese implementers including Lenovo as well as Xiaomi.

This extensive legal battle is set to be a landmark case in the world of tech patents, with the outcome likely to have significant implications for the global tech industry. The autumn of 2024 will be a decisive period, with the first rulings expected to be issued and the first injunctions potentially being enforced.