Sisvel and Mitsubishi, and Xiaomi sign patent licensing deal to settle ongoing litigations

Recently, Sisvel and Mitsubishi jointly announced that the companies have entered into a patent license agreement covering the standard-essential patents (SEP) of Mitsubishi Electric and Sisvel in the field of mobile communication. This deal brings to an end the global dispute between the three companies, which has spanned the courts in China, Germany, Italy, the Netherlands, and the United Kingdom since 2019.

Mitsubishi Corporation (“Mitsubishi”) is a Japan-based global integrated business enterprise with multiple business groups operating across diverse industries. One such group (Mitsubishi Electric Corporation) focuses on telecommunication solutions and owns a number of technologies, including the patented technologies and standard-essential patents covered under this deal. Sisvel is a world leader in managing IP portfolios on behalf of patent holders. Among other areas, Sisvel also operates patent pools and joint licensing programs in the fields of mobile communication, wireless local area networking 802.11, video coding, digital video broadcasting, recommendation engines, and broadband access to data networks.

Mitsubishi has licensed its UMTS and LTE patent portfolio to Sisvel. The portfolio comprises 120 patent families (with around 82 patent families for the 3G standard) covering over 1800 individual patents (of which around 107 patents are for the LTE standard). According to Sisvel, “The company demands a license rate of €0.35 per handset for 3G. However, this amount rises to €0.53 for LTE. Licensees must pay €0.88 for both licenses together. But, because Xiaomi has not signed up for the MCP program, the agreement only covers Sisvel and Mitsubishi patents. The agreement does not cover patents owned by other MCP licensors.”

Xiaomi is a China-based technology company with smartphones, IoT products, and internet business at its core. It is an active participant in the 5G standard being adopted around the world. Sisvel says it has combined and licensed various telecommunications licensing programs for the UMTS and LTE standards through its mobile communications program (MCP) since 2018 and was persuading Xiaomi to sign a patent license agreement on these technologies.

Sisvel sued Xiaomi in Italy over four patents, initiated proceedings in the UK to declare its MCP pool license as FRAND, and also that Xiaomi infringed three of its patent and sued at Munich Regional Court on grounds of infringing two UMTS patents with its tablets and mobile phones in Germany. On the other hand, Xiaomi had filed a lawsuit against Sisvel in China’s Beijing Intellectual Property Court, requesting a decision of SEP royalty rates. Now, with this patent license deal in place, it is expected all such litigations would be settled by the parties.