Case Law post CJEU ruling Huawei v ZTE
gb jp cn

Back to main 4iP Council site

HTC Europe Co. Ltd., HTC Corporation vs IPCom GmbH & Co.

21 September 2016 - Case No. 60228/2010 R.G.

http://caselaw.4ipcouncil.com/italian-court-decisions/ip-court-milan/htc-europe-co-ltd-htc-corporation-vs-ipcom-gmbh-co

A. Facts

The proceeding concerned HTC Europe Co. Ltd., HTC Corporation (“HTC”) seeking the invalidation of the Italian portion of three patents owned by IPCom GmbH & Co. (“IPCom”) (EP1236368, EP1226692 and EP913979), arguing that the patentability requirements were not met.Specialized IP Court of Milan, 21 September 2016 – HTC Europe Co. Ltd., HTC Corporation vs IPCom GmbH & Co. Pg 2, para 1. Furthermore, HTC also requested a declaration of non-infringement of those patents for its phones that implemented UMTS and SAP standards. [155]

IPCom argued that all the plaintiffs’ claims were unfounded and counterclaimed that a series of cellphones produced by HTC, which used the UMTS technology, were infringing the Italian portion of the patent EP1226692. [156]
 

B. Court’s reasoning

The court declared that the Italian portion of the European patent EP1236368BI, owned by IPCom, was partially invalid due to the lack of inventive step (limited to the claims nº 1, 2, 3, 4, 5, 26 and 27) and not infringed. [157]

After technical analysis, the court ruled that EP913979 was valid, but that the SAP – Sim Access Profile – technology used in HTC mobile phones was outside of the scope of the protection of the patent, which means that the patent was not infringed. [156]

Patent EP1226692 was found valid and IPCom argued that the patent qualified as essential for the purposes of applying UMTS technology and that every phone that implemented and complied with that technology would be infringing that patent. [156] The court highlighted that, accordantly to the guidelines of ETSI, declaring a patent as essential is a unilateral act of the patent holder and that ETSI does not confirm or deny that the patents that were declared as potentially essential are actually essential. [158] After a technical investigation of the infringement claims, the court ruled that the patent was not infringed by HTC’s phones. [157]

Certified and declared that HTC’s phones using UMTS and SAP technologies are not considered to be infringing the Italian portions of Patents EP1236368, EP1226692 and EP913979 owned by IPCom. [156]

  • [154] Specialized IP Court of Milan, 21 September 2016 – HTC Europe Co. Ltd., HTC Corporation vs IPCom GmbH & Co. Pg 2, para 1.
  • [155] Ibid, Pg 2, para 2.
  • [156] Ibid
  • [157] Ibid, Pg 19.
  • [158] Ibid, Pg 16, para 4.2.