This is the most significant case in France in the field of essential patents and FRAND licensing currently pending before the Paris Court. It concerns a patent infringement action, accompanied by a counterclaim for invalidity of the patent, and a FRAND issue.

There were three parallel actions in France based on the same patent and opposing INTELLECTUAL VENTURES to :

• - Orange,
• - Bouygues Telecom,
• - SFR,
  alongside related proceedings in Germany.

In this particularly complex matter, we successfully obtained preliminary decisions dividing the case into 3 phases :

1. validity of the patent and existence of infringement
2. exhaustion of rights and contractual issues
3. FRAND related matters and damages
   (Paris Court references : RG 17/3837 and 17/3838)

On the merits, we successful obtained two favorable decisions from the Paris Court of first instance (September 23, 2021), which followed our arguments regarding the extension of the patent beyond the prior application as filed, declared the opposed claims of the patent invalid and rejected all INTELLECTUAL VENTURES’ requests.

INTELLECTUAL VENTURES appealed decisions dated September 23, 2021 (Court of Appeal references : RG 22/01207 and 22/01209).

Before the Court of Appeal, the parties disputed the scope of the appeal. INTELLECTUAL VENTURES argued that the entire case, including FRAND-related claims, had been transferred to the Court of Appeal and sought protection of confidential FRAND-related evidence. The defendants, however, maintained that only Phase 1 (validity and infringement) was on appeal, and that Phases 2 and 3 remained stayed before the Court of First Instance.

On May 11, 2023, the Managing Judge of the Paris Court of Appeal ruled in our favor. The Court ordered that the hearing would be limited to validity and infringement, and that the scope of the appeal, including whether FRAND issues had been transferred, would only be addressed if the initial decisions were overturned.

The oral hearing before the Paris Court of Appeal took place on March 21, 2024, and on June 28, 2024, the Court upheld both first instance decisions, confirming the revocation of the patent invoked by INTELLECTUAL VENTURES.

The Court also clarified – although it was not required to do so – that Phases 2 and 3 had not been transferred to the Court of Appeal and remained pending before the Court of First Instance, in line with our legal position.
INTELLECTUAL VENTURES has since lodged an appeal before the French Supreme Court. The proceedings are still pending.

This matter was listed in the JUVE Patent’s top 10 French patent cases 2024 and in the JUVE Patent’s top 10 patent cases in Europe 2024. See also JUVE comment here.

Traduction en cours