Context: In Europe, patentees increasingly seek, and from time to time obtain, ex parte (i.e., without the non-movant being heard) preliminary injunctions (PIs) ahead of trade shows. Generally, German courts will order briefing and hold a hearing on a PI request unless the facts are extraordinarily clear. But a year ago, the Unified Patent Court’s (UPC) Dusseldorf Local Division (LD) granted an ex parte PI against a bicycle maker ahead of the Eurobike 2023 trade show (PDF). And the build-up to Mobile World Congress (MWC) in Barcelona is “Groundhog Day” for ex parte requests to seize allegedly-infringing products at the show.
What’s new: From Tuesday to Thursday (June 11-13, 2024), the PCIM trade show and conference for power electronics, intelligent motion, renewable energy and energy management took place in Nuremberg, Germany (webpage). At that event, Power Electronics News learned China’s Innoscience had been barred from presenting certain products involving gallium nitride (GaN) technology: the Munich I Regional Court granted rival Infineon an ex parte PI just before the trade show. It may have been the first-ever ex parte patent PI granted by a German national court without having seen a protective writ that the court would have deemed unavailing. On Thursday, Innoscience confirmed this fact (June 13, 2024 Innoscience press release), but not without clarifying that the PI related only to the trade show as opposed to Innoscience’s activities in the German market in general.
Direct impact: Innoscience disputes that the asserted patent deals a major blow to its business. At any rate, ex parte PIs in Germany are somewhat similar to temporary restraining orders in the United States in the sense that the same court will make a second decision after a PI hearing at the enjoined party’s request. In this case, the trade show is over, but Innoscience doesn’t concede infringement of a valid patent and may seek (at the end of the main proceedings, which will involve about a year of pretrial proceedings and a full trial) to recover costs (potentially also wrongful-enforcement damages).
Wider ramifications: The Munich I Regional Court, which previously achieved that the European Court of Justice lowered the hurdle for patent PIs, may have felt particularly comfortable about its decision in light of the above-mentioned decisionb y the UPC’s Dusseldorf LD. There is a possibility of UPC case law, particularly if it benefits plaintiffs, influencing national courts in UPC member states such as Germany.
ip fray has requested more information on this case from the Munich I Regional Court.
Three months ago, Infineon announced a patent infringement complaint against Innoscience over a “United States patent relating to gallium nitride (GaN) technology” (March 14, 2024 Infineon press release).
Here’s the complaint (Northern District of California, case no. 3:24-cv-01553):
The patent-in-suit is U.S. Patent No. 9,899,481 (“electronic component and switch circuit”). Infineon is headquartered in Germany, but the entity owning this patent is a foreign subsidiary named Infineon Technologies Austria AG. In the U.S., Infineon is seeking a permanent injunction. In response to the U.S. complaint, Innoscience issued a press release that said only a small fraction of its products and not its core technologies would be impacted, and pointed to its own portfolio of more than 800 patent applications around the world (March 21, 2024 Innoscience press release).
Should Infineon have relied on the same small patent family in the Munich PI case, the only option would have been German Patent No. DE102017100947B4. The UPC does not have juridiction over national patents, so it would not have been an option.
Update: The Munich I Regional Court confirmed, subsequently to publication of this article, that this is indeed the patent underlying the injunction, and provided the case number (21 O 6744/24) as well as the date of the injunction (June 12, 2024).
In a press release commenting on the German PI, Innoscience stressed that “[t]he claims of the single patent are directed to packaging, not the core technologies of GaN transistors (nor InnoScience’s valued GaN wafers)” (June 13, 2024 Innoscience press release). The statement mentions “several other patent lawsuits” filed by Infineon against Innoscience (of which only the U.S. action and the German PI case are known) and further elaborates:
“Of significant importance, the lawsuits only concern a small fraction of InnoScience’s packaged high-voltage (650V-700V) GaN transistors and wafers, low-voltage devices, integrated solutions, bi-directional devices, mid-voltage devices and certain packaged transistors.”
Innoscience alleges an Infineon tactic of threatening with a PI motion in Nuremberg (a court that only gets about a dozen patent cases per year, but it’s in the city in which the PCIM show just took place) only to then file the actual motion in Munich. Recipients of cease-and-desist letters in German patent disputes can’t rely on such a statement on venue, which does not result in binding forum selection.
Update on June 21, 2024: Infineon has meanwhile responded to ip fray‘s inquiry and says “Infineon has never announced or suggested that a PI motion would be filed at the Nuremberg Regional Court.” Moreover, ip fray believes Innoscience could have filed a protective writ with a nationwide German register of protective writs, in which case the Munich court would have had electronic access.
A cease-and-desist letter is not generally necessary to have a claim. It has implications for the allocation of court fees and recovery of litigation expenses, and according to the jurisprudence of the Federal Constitutional Court of Germany, it is a de facto requirement for an ex parte injunction as the other party’s right to be heard would be violated in the alternative.
The Munich I Regional Court, based on what Innoscience claims, must have granted the ex parte PI without having seen a protective writ. This could be the first case at least in recent history in which a German national court would have granted an ex parte patent PI on that basis. So far, the case law strongly suggested that an ex parte grant was warranted only if the non-movant filed a protective writ and the court found that writ totally unpersuasive. But failure to file a protective writ could also be a reason.
Innoscience is also defending against GaN-related patent assertions by a U.S. company, Efficient Power Conversion (EPC) (Wikipedia page). A year ago, the United States International Trade Commission (USITC or ITC) instituted an investigation of a complaint over four patents (June 28, 2023 ITC notice). According to Innoscience, the Patent Trial & Appeal Board (PTAB) of the United States Patent & Trademark Office (USPTO) has instituted reviews of all four patents-in-suit because in each case, “there is a reasonable likelihood that Petitioner [Innoscience] would prevail with respect to at least one of the claims challenged in the Petition” (April 4, 2024 Innoscience press release).
GaN is not a completely new technology. It has been in use since the 1990s, and more than a decade ago LG brought a GaN patent complaint against Osram with the ITC. But the ability of GaN transistors to operate at far higher voltages (which is apparently the target of Infineon’s complaint) and temperatures than gallium arsenide (GaAs) equivalents creates ever more opportunities, also with respect to THz (terahertz) and 5G base stations. In recent years, GaN power transistors have started to play an increasingly important rule in power supplies of electronics devices for the purpose of converting general-purpose AC electricity to low-voltage DC. Those trends make it likely that there will be more news not only from the two disputes mentioned in this article, but also from additional cases to be filed in the future.