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Paris First Instance Court, 3rd ch. 1st sect. - SAGEMCOM BROADBAND SAS and others v/ INTELLECTUAL VENTURES II LLC

Decision date

2021-09-23

Decision No.

17/3837 and 17/3838

Nature

Patent

Country

France

Jurisdiction

Paris First Instance Court

Parties

SAGEMCOM BROADBAND SAS and others v/ INTELLECTUAL VENTURES II LLC


SAGEMCOM BROADBAND SAS was represented by the CASALONGA team, composed of Marianne Gabriel and Pascaline Vincent, attorneys-at-law at the Paris and Toulouse Bars, respectively, and Francis Zapalowicz, patent attorney, in one of the most important FRAND matter in the telecom industry (ADSL) that is pending before the Paris Court of Appeal.

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.

This matter was listed in the JUVE Patent’s top 10 French patent cases 2021 and in the JUVE Patent’s top 10 patent cases in Europe 2022. See also JUVE comment here.