Under fire in Germany in three separate infringement actions by Huawei, HMD Global Oy is enlisting the US courts for help. HMD last week made what it calls a “a single, narrowly tailored” discovery request under 28 USC 1782: “all” agreements between Huawei and Samsung Electronics Co., including one which brought to a close global infringement litigation in 2019. According to the Finnish mobile device maker, that settlement involved “materially better” terms than what Huawei is offering HMD, making Huawei’s offer to HMD non-Frand. While the Munich District Court and Munich Higher Regional Court will consider the Samsung licenses, they will not order Huawei to produce them.
The terms of Huawei’s 2019 settlement with Samsung Electronics and its affiliates were “materially better” than those being offered to HMD Global, defeating Huawei’s representations to the contrary in Germany’s Munich District Court, HMD Global told a US court last week.In an ex-parte filing made pursuant to 28 USC 1782 — which permits parties to seek discovery in the US of information material in foreign proceedings (see here) — HMD requests “all agreements” between Samsung, Samsung Electronics America and Samsung Semiconductor, “including any agreement concerning the 2019 settlement between” Huawei and Samsung referred to in a 2020 White Paper by Huawei titled “The Foundation of Innovation.”
HMD maintains (see here) that the documents are necessary to defend itself in Huawei’s enforcement campaign in Germany, where it has lodged three separate infringement lawsuits against the Finnish mobile device maker over patents declared essential to the 4G and 5G Wi-Fi standards.
“In those three actions, HMD argues that Huawei cannot maintain its claims against HMD for injunctive relief, recall, and destruction of allegedly infringing devices, because Huawei failed to provide HMD with proposed license terms that are fair, reasonable and non-discriminatory, or FRAND,” the application states.
“HMD asserts that Huawei provided Samsung with license terms materially better than those it offered HMD, and thus Huawei’s proposed terms to HMD could not be FRAND. To establish this defense, HMD must review the terms found within Huawei’s licenses to Samsung. This application seeks those terms,” HMD adds.
US Judge Nathaniel M. Cousins of the Northern District of California on Friday (see here) ordered HMD and Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. and Samsung Semiconductor, Inc. to meet and confer.
“While this Court in the past routinely allowed ex parte 1782 applications, that procedure is no longer feasible following the Ninth Circuit’s decision in CPC Patent Techs. PTY Ltd. v. Apple, Inc., 34 F.4th 801, 807- 08 (9th Cir. May 18, 2022), requiring all parties to a miscellaneous § 1782 action assigned to a magistrate judge to consent or decline the jurisdiction of a magistrate judge under 28 U.S.C. § 636(c),” Cousins wrote.
HMD Global and Samsung were given until April 4 to file a joint discovery letter brief and make their respective requests for a protective order, if necessary.
In its White Paper, Huawei recalled that in 2016, “Huawei and Samsung filed multiple patent infringement lawsuits against each other in China and the United States,” and that three years later, “Samsung reached a settlement with Huawei and paid Huawei licensing fees.”
In all, the agreement (see here) brought to an end an estimated 40 infringement actions, including in the Northern District of California.
HMD Global’s US application asserts that if Huawei’s offer to HMD Global is indeed non-Frand, it would bar, under European law, Huawei’s effort to enjoin HMD Global in Germany. That, in turn, renders the Samsung license “central” to HMD’s defense, HMD alleges.
“But there is a snag,” HMD continues. “Although the German courts will consider Huawei’s licenses to Samsung if HMD can obtain them, HMD cannot obtain these licenses from the German courts.”
The Section 1782 filing gives a snapshot of the parties’ dispute overseas, where HMD successfully defeated Huawei’s allegations of infringement on two of three Huawei standard essential patents, or SEPs.
The remaining SEP — and HMD’s related nullity action — remain pending in the courts of first instance.
HMD says that although Huawei has appealed the noninfringement holding to the Munich Higher Regional Court “that does not mean that the record is closed.”
Instead, it continues, “the court will consider evidence not asserted in the court of first instance if, among other reasons, the facts presented were unknown to the presenting party during the first instance proceedings.”
The trio of cases by Huawei are not HMD's only headache in Germany.
A decision by the Higher Munich Regional Court is expected later next month (see here) in a lawsuit brought by VoiceAge EVS, which also accuses HMD of infringing a 4G SEP and prompted a defense by HMD of violations by the SEP owner of Frand principles.
The case was argued in October, but beforehand, the court issued a legal notice on a preliminary position regarding the steps needed to judge whether VoiceAge abused its market power and whether Frand conditions for licensing European Patent 3,337,077 had been met.
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