The NFC licensing programme, which France Brevets markets together with its partner NFC Technology LLC, includes patents by the companies Inside Secure and Orange. The licenses for Samsung are the result of a settlement between the parties, for which the German proceedings were one of the decisive factors. Apart from Samsung, LG (2014) and Sony (2016) have already purchased licenses from the portfolio. “The NFC patents protect important, highly developed technologies, from which other important market participants can now also profit, for example when paying by mobile phone,” explains Gottfried Schüll of Cohausz & Florack (C&F), who represents France Brevets.
The patents purchased by France Brevets protect high-quality innovations resulting from private – in particular medium-sized – and public technology research. The company’s strategy is to arrange these patents into a portfolio and to grant licenses to international companies. In doing so, France Brevets acts completely in accordance with patent law: it is committed to ensuring that inventors draw a reasonable return on their research investment.
Lawyer Monthly: Please tell me about your involvement in the deal?
Gottfried Schüll: The German team consisting of myself at COHAUSZ & FLORACK as key account and Axel Verhauwen at Krieger Mes represented France Brevets in multi-patent infringement actions filed at the Landgericht Dusseldorf against Samsung as well as the corresponding nullity proceedings initiated by Samsung at the Bundespatentgericht in Munich.
The infringement actions against Samsung have been preceded by infringement actions against LGE and HTC. While the LGE proceedings have been settled at an early stage the cases against HTC are pending. In these HTC cases victorious verdicts have been obtained by which the German first instance courts confirmed infringement and validity of Near Field Communication (NFC) patents. Also against this background France Brevets granted to Sony a worldwide royalty-bearing patent license.
Lawyer Monthly: Why is this a good deal for all involved?
Gottfried Schüll: France Brevets licensing program for NFC grants device manufacturers access to the patents on embedded security solutions especially for mobile devices based on secure wireless short range communication. The licensing program addresses various categories, such as smartphones, and offers a wide range of services such as mobile payment.
Samsung as LGE and Sony by the actual deal got access to the NFC patent portfolio of France Brevets covering past and future products. France Brevets confirmed its capability to execute patent and licensing strategies that best serve the interests of the patent holders and partners of France Brevets.
Lawyer Monthly: What challenges arose? How did you navigate them?
Gottfried Schüll: The patents asserted partially relate to standardized NFC technologies but the relevant standards do not have to be used e.g. in smartphones as alternative technical solutions are available. This is proven by the fact that products of competitors are making use of such alternatives which make the implementation of the relevant standards optional.
In the ground-breaking HTC proceedings we have been able to convince the court that under these conditions the requirements imposed by the FRAND jurisdiction developed by German and EU courts are not applicable and accordingly there are no FRAND restrictions to the enforcement of the injunction claim.
This article was first published in Lawyer Monthly - 77/2016.
Picture credits: Fabio Balbi - Fotolia.com