Context: Since the previous overall (i.e., covering appeals as well as first-instance proceedings) UPC roundup of two weeks ago (September 14, 2024 ip fray article). a special roundup covered several appellate decisions (September 25, 2024 ip fray article). This article discusses one appellate ruling (the first affirmance of a preliminary injunction (PI)) that has come down since the previous appellate roundup as well as a host of developments in the Court of First Instance (CFI), i.e., the Central Division (CD) and the Local Divisions (LDs), to the extent that those were not covered in dedicated ip fray articles during that period. Everything was previously discussed on LinkedIn, but as a service to email subscribers and other readers, and for future reference, this article provides a structured overview.
1. First PI affirmance: Ortovox v. Mammut
Despite a laundry list of grounds, the Dusseldorf LD’s Ortovox v. Mammut PI has been upheld by the Court of Appeals (CoA). This is a three-out-of-three clean sweep for Ortovox and its lawyers from Kather Augenstein: this started as an ex parte injunction and was upheld by the Dusseldorf panel.
2. Settlements
2.1 Quick settlement: Dolby v. Optoma (Dusseldorf LD)
After Nokia’s license deal with Verifone (August 14, 2024 ip fray article), Dolby’s license deal with Optoma is already the second settlement of a standard-essential patent (SEP) dispute litigated (at least in part) ín the UPC.
Optoma makes home and office projectors. Thisis about audio codec patents that can be licensed through Vectis IP’s Opus pool.
It took only about four months from filing to settlement — a win for Dolby and its lawyers from Bardehle Pagenberg.
2.2 Settlement looming large: Innovative Sonic v. Lenovo
The next settlement of a dispute being litigated (in part) in the UPC may be within striking distance unless there is some other reason for which Innovative Sonic (an ASUSTeK affiliate) and Lenovo agreed to stay, for a couple of months, a UPC Dusseldorf litigation.
There is no reference to a procedural reason such as a decision coming up in a parallel proceeding, making settlement discussions the most likely reason.
If the settlement materializes, it’s a win for Dr. Alexander Reetz, Dr. Christoph Walke and their team from the Wildanger and Cohausz & Florack firms.
3. FRAND procedures: Panasonic v. Xiaomi and Panasonic v. OPPO
3.1 Panasonic v. Xiaomi (Munich LD): no stay pending UK FRAND determination (for now)
In light of an upcoming UK FRAND determination, and presumably in the wake of Mr Justice Meade’s letter to his UPC and German colleagues (July 31, 2024 ip fray article), Xiaomi moved the LD for a stay of Panasonic’s actions. Presiding Judge (and here, judge-rapporteur) Dr. Matthias Zigann referred the matter to the panel, but his recommendation is to discuss the stay only at the November and January trials, as opposed to vacating the trial dates.
By the time the panel decides, and almost certainly before a UPC Munich trial where it would be considered if Judge Dr. Zigann’s recommendation was adopted, the court may already have the benefit of a UK appellate ruling, which could even come down to the declaration of an interim license and, therefore, a full defense to any infringement claims (September 22, 2024 ip fray article). To try someone who already has a license would be a gross miscarriage of justice. It’s not just about the decision: it’s that no one who has a license, which would be the case if the appeals court in London declared that Xiaomi has one, should have to show up at a trial in the first place.
The appellate outcome could also be a recommendation to seek an antisuit injunction, with a stern warning to Panasonic that the pursuit of an anti-antisuit injunction in another jurisdiction would constitute a breach of a commitment to a UK court and result in severe sanctions. In the latter scenario, it would also make sense for the UPC and German courts to vacate the trials.
A UK antisuit injunction against which Panasonic could not take any action would appear to undermine the authority of the UPC and/or German courts, but the reality is that the facts in this dispute are special: Panasonic wanted a UK determination until Xiaomi also wanted it, so this is a case where the two sides have, in fact, put the dispute aside already. There is nothing to be adjudicated anymore in the UPC or in Germany, plain and simple. It is a waste of court and party resources.
ip fray, which has recently broken the news on various SEP developments (with an even split between news favoring SEP holders and implementers) has been first to find out about an EU antitrust complaint by Xiaomi over Panasonic’s tactics (September 25, 2024 ip fray article). The European Commission’s Directorate-General for Competition (DG COMP) already disagrees sharply with Germany’s intellectually dishonest Sisvel v. Haier case law that, in DG COMP’s well-reasoned opinion, contravenes EU law. While HMD may remain enjoined anyway given the facts in that case, Xiaomi’s case is now a clear one of a willing licensee: UK court documents and the facts that were pled in open court in London leave no room for reasonable doubt about that. Xiaomi’s motions to stay would actually provide a convenient exit for the UPC as well as German national courts, which have plenty of other SEP cases to handle where (unlike in Panasonic v. Xiaomi) there has not been a procedural agreement between the parties to have everything resolved in the UK.
The Panasonic-Xiaomi situation is going to be a litmus test for the UPC as a SEP venue, but also for German national courts. The Munich LD has missed out on the first opportunity to pass that test, but the rapporteur’s recommendation is not binding on the panel and just recently, as discussed further below (section 9), a panel even overruled a rapporteur after a formal decision.
3.2 UPC Mannheim sets SEP/FRAND trial schedule (week of October 7) in Panasonic v. OPPO and Panasonic v. Xiaomi
The Mannheim LD’s Presiding Judge (and here, judge-rapporteur) Dr. Peter Tochtermann has scheduled three to four trial days in Panasonic’s parallel cases against OPPO and Xiaomi for the week of October 7:
- Monday, October 7: technical merits (same SEP against both parties)
- Tuesday, October 8: OPPO’s FRAND defense and counterclaim
- Wednesday, October 9: Xiaomi’s FRAND defense (as stated in the previous section, there may simply not be any basis to invite Xiaomi to the trial in the first place, and the outcome of the UK appeal could clarify this in a helpful manner)
- Thursday, October 10: reserved in case some extra time is needed
It is difficult to form an opinion on OPPO’s FRAND defense. If Panasonic seeks supra-FRAND royalties, which is possible in light of its attempt to renege on its commitment to a UK FRAND determination, OPPO can’t be lawfully enjoined, provided that it did the bare minimum required under Huawei v. ZTE in DG COMP’s (and ip fray‘s) opinion, whic his to declare its willingness to take a license on FRAND terms. Should Panasonic’s royalty demand be validated by a full-blown FRAND determination (if anything less served as the basis of an injunction, it would make mockery of the rule of law), then it depends on OPPO’s conduct. Only then. Strict sequentiality is an unconditional requirement (August 4, 2024 ip fray article) as long as UPCland and Germany are EU member states unless the EU overrides Huawei v. ZTE.
No court can be forced to be on the right side of history. But if DG COMP remains committed to the clear message in its amicus brief in VoiceAge EVS v. HMD, it will sooner or later be able to put the matter before the European Court of Justice. To his credit, Judge Dr. Tochtermann did not adopt the amalgamated approach of some of his colleagues even on the same court until the Federal Court of Justice decided Sisvel v. Haier. Now he has DG COMP on the side of the views he rightly took a few years ago.
There are more than enough implementers out there whom the UPC can enjoin even under the correct standard, faithfully applying Huawei v. ZTE.
3.3 UPC Mannheim won’t hear Panasonic’s FRAND expert in OPPO trial
It would be unfair to Panasonic to conclude, from a failed attempt to have its FRAND expert testify in the OPPO trial, that its FRAND arguments are deficient. It’s quite possible that they believe they are in a strong position, but wanted to further optimize it. Too late, though. Presiding Judge (and here, judge-rapporteur) Dr. Peter Tochtermann denied the motion.
4. Qualcomm appeals EPO decision on Unitary Patent and succeeds without a fight
A purely procedural decision shows that the European Patent Office (EPO) quickly made amends after Qualcomm appealed a decision regarding the unitary (EU-wide) effect of a patent application to the UPC.
5. Consolidation through connection joinders and other measures
5.1 Connection joinder denied in Insulet v. EOflow (parallel PI proceedings)
Insulet is seeking a PI against EOflow in the Central Division (Milan seat) and against its Italian distributor in the Milan LD. But the CD’s panel (Presiding Judge and judge-rapporteur Andrea Postiglione, Judge Anna-Lena Klein (of Munich I Regional Court fame) and Technically Qualified Judge Uwe Schwengelbeck) affirmed the rapporteur’s denial of a connection joinder.
The Court of Appeal recently explained that “a joinder pursuant to R. 340 RoP cannot result in the referral of an action to another division beyond the possibilities provided for referral of actions in Art. 33 UPCA.”
Two judges serve on either panel, making inconsistent decisions unlikely, but different outcomes could still result from different facts and arguments.
5.2 Dusseldorf LD hears GRUNDFOS v. Xinhu infringement claim and revocation counterclaim together
In this case, there was no dispute over which UPC division should hear the claims that the court would have had to resolve. This way, the court can proceed directly to the appointment of a technically qualified judge.
Panel: Presiding Judge (and here, judge-rapporteur) Ronny Thomas, Judge Sabine Klepsch filling in for Judge Dr. Bérénice Thom and Judge András Kupecz.
6. Revocation counterclaim against registered owner of patent-in-suit is always appropriate: Munich LD
In Heraeus v. Vibrantz, the Munich LD’s Presiding Judge (and here, judge-rapporteur) Dr. Matthias Zigann explained that a revocation counterclaimant can name the registered patent holder as the counterclaim defendant without having to conduct any further inquiry into who actually owns the material rights.
7. Amendments to complaints and defenses
7.1 Amendment of complaint after narrowing of patent in parallel validity proceeding allowed by Munich LD
In Heraeus v. Vibrantz (see section 6 above for the link), another question was addressed in a separate order. The plaintiff was allowed to amend its complaint with respect to Germany after the patent got narrowed (for example, a “metal sintering composition” claim got thrown out, but there still are method claims in the patent) by the Federal Patent Court. Presiding Judge (and here, judge-rapporteur) Dr. Zigann did not deem the amendment untimely, nor does it impede the other party’s defenses. He generously gave the defendant 30 extra days anyway.
7.2 It’s not an amendment if it’s merely consistent with the original claim: Paris LD
In I.G.B. v. Unilever, the defendant’s demands (such as for security amounts in certain injunctive-relief scenarios) were plainly consistent with the prior position and therefore not subject to a Rule 263 RoP analysis of timeliness and potential prejudice to the other side.
7.3 Abandonment of infringement claim gives rise to legitimate declaratory judgment claim: The Hague LD
Dexcom was allowed to seek declaratory judgment of non-infringement by a particular accused product after Abbott dropped the related infringement claim.
8. Extension of deadline due to CMS issues: CD Paris
Edwards Lifesciences was granted additional time to file an infringement counterclaim to a revocation claim by Meril Lifescience because there were issues with the case management system (CMS).
9. Bad news for self-representation: CD Paris panel reverses rapporteur
This will presumably be resolved by the Court of Appeal, but at least with respect to access to confidential information, the Paris seat of the CD does not accept self-representation in the form of a patent attorney representing a company he owns and runs. This is a small company’s case against Microsoft. The judge-rapporteur originally allowed this kind of self-representation, but the panel reversed and opened the door to an appeal.
10. New SEP filing: KPN v. OPPO (The Hague LD)
Dutch telecommunications carrier KPN, which holds a number of cellular SEPs, is suing OPPO in the Hague LD.
11. Future hearings and trial dates: Dusseldorf LD plans far ahead
The Dusseldorf LD has already published a trial date that is almost nine months off: a June 17, 2025 trial in Dolby v. HP, an SEP case in which Access Advance is an intervenor.