EPLAW PATENT BLOG

NL – Vringo / ZTE (FRAND)

Posted: November 5th, 2014

ZTE Corporation et al. v. Vringo Infrastructure Inc., District Court The Hague, Summary proceedings, 24 October 2014, case number / case list number: C/09/470109 / KG ZA 14-870, with thanks to Bart van den Broek, Hoyng Monegier, for sending in the judgment in Dutch and English, as well as a summary in English

Vringo is the owner of a portfolio of patents relating to 2G/3G/4G telecommunication equipment. The portfolio was transferred to Vringo by Nokia Corporation (“Nokia”). Nokia and thereafter Vringo have offered ZTE a license under the standard essential patents (SEPs) in this portfolio under (in Vringo's opinion) “fair reasonable and non-discriminatory” (FRAND) conditions. Despite these offers, ZTE did not conclude a license agreement.

Starting in 2012, Vringo has instituted multiple infringement proceedings against ZTE, including in Germany, France, the UK, India, Brazil and recently in The Netherlands. In December 2013, the Landgericht Mannheim issued an injunction against ZTE to stop infringement of one of Vringo’s patents (“EP 119”).

On the basis of EP119, Dutch customs recently detained a number of ZTE’s UMTS-infrastructure products. In preliminary injunction proceedings instituted at the District Court The Hague, ZTE requested the release of these products and a prohibition against further border detention measures.

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Referring to the recent decisions by the European Commission in the Motorola- and Samsung-cases, ZTE argued that Vringo’s enforcement measures violated its FRAND-obligations and constituted an abuse of a dominant position in accordance with article 102 EU-Treaty. The President disagreed and distinguished the case from the Motorola-case, in which Apple had been considered “willing” to conclude a license under FRAND-conditions. The President did not agree with ZTE that it could equally be considered a “willing licensee” stating that it could not be assumed for now that ZTE is in genuine pursuit of a license. The President also concluded that ZTE’s invalidity – and non-infringement arguments could not result in the release of the detained UMTS-products.

Following the detention of the products by customs, Vringo has started proceedings on the merits at the District Court The Hague in which the destruction of the detained products is requested. These proceedings are still pending. ZTE has until November 21, 2014 to appeal the decision of the President in the preliminary injunction proceedings.

Read the decision (in Dutch) here.

Read the decision (in English) here

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