Context: A number of standard-essential patent (SEP) infringement actions have been brought in the Unified Patent Court (UPC). In one of them, Lenovo v. Ericsson, a motion to amend the complaint for the purpose of seeking an injunction has been denied as untimely, though a follow-on complaint remains a possibility (August 6, 2024 ip fray article).
What’s new: Yesterday, the UPC’s Court of Appeal (CoA) heard its first appeal of an issue that is directly relevant to a judicial determination of whether certain offers are fair, reasonable and non-discriminatory (FRAND). OPPO is seeking access to certain agreements between Panasonic and third parties that may have a bearing on what is actually paid for licenses to Panasonic’s cellular SEPs. Furthermore, this morning Nokia’s head of IoT licensing, Patrik Hammarén, announced a license agreement with payment terminal maker Verifone (August 14, 2024 LinkedIn post by ip fray) that settles a dispute involving two patent assertions in the UPC as well as three in German national court.
Direct impact: Those developments as well as some recent filings of new SEP lawsuits raise the profile of the UPC as a forum for SEP disputes, though litigants have yet to find out how much leverage SEP holders will actually get in the UPC. The relatively quick settlement between Nokia and Verifone will primarily have been driven by other factors, with Verifone presumably not having been prepared to take its chances against a SEP holder who has previously won various injunctions in German courts. The OPPO-Panasonic appeal over FRAND disclosures is too early-stage to result in an indication of whether the UPC is a strong FRAND forum, but it definitely has the potential to provide some clarity with respect to disclosures of relevant third-party agreements and to harmonize UPC case law in a field where the Local Divisions (LDs) in Munich (which is presently more balanced) and Mannheim are diverging.
Wider ramifications: Given that various issues concerning Panasonic’s cases are left to be resolved and potential delays have arisen, the most important SEP trial in the UPC in the near term will likely be Huawei v. Netgear (Munich, last two days of October), with the implementer pursing an aggressive U.S. lawsuit designed to torpedo the European enforcement actions and rejecting terms that the likes of Amazon have ultimately deemed FRAND.
OPPO-Panasonic appellate hearing
The UPC listed a CoA hearing in three related Panasonic v. OPPO cases (APL_32345/2024 UPC_CoA_298/2024, APL_32347/2024 UPC_CoA_299/2024 and APL_32350/2024 UPC_CoA_300/2024) for yesterday (August 13, 2024), before the second panel (Presiding Judge Rian Kalden, Judge Ingeborg Simonsson, Judge Patricia Rombach.
Panasonic sued OPPO and Xiaomi in both Munich and Mannheim, and in either city in the UPC LD as well as in national court. That has already given rise to a visible split between the Munich and Mannheim LDs on some SEP-specific pretrial questions. One of them relates to the use of protected information in other jurisdictions (July 9, 2024 ip fray article), where Munich is more permissive than Mannheim. But the appeal that the CoA heard yesterday was brought two months prior to that decision, so it must relate to an earlier (presumably April 30, 2024) order to produce evidence. In that context, there have also been some differences between the Munich and Mannheim LDs’ decisions.
Rather than engage in too much speculation now, ip fray will await the appellate decision and comment in due course. After the hearing, OPPO’s lead counsel in that case, Dr. Andreas Kramer (Vossius & Partner; Vossius & Brinkhof UPC Litigators), posted a group photo to LinkedIn, but no information has surfaced so far concerning the CoA’s inclination.
Panasonic is represented by the Kather Augenstein firm, with Christopher Weber as counsel of record.
Nokia-Verifone: a SEP dispute that has ceased to be
Five months ago, Nokia sued Verifone for SEP infringement (March 14, 2024 ip fray article), asserting three patents in German national court and two in the UPC (another March 14, 2024 ip fray article).
Nokia says it has now licensed the Western mobile payment terminal industry, but has yet to reach agreements with Chinese companies in that field. There is a similar situation in automotive SEP licensing, though Nokia announced an unnamed Chinese automaker as a licensee a few months ago.
Five months into the process, nothing important had happened in any court, and such negotiations take a bit of time, suggesting that shortly after Verifone saw that Nokia wasn’t going to sit by idly, settlement talks began in earnest. Verifone presumably conducted a rational assessment of its chances to defend itself, considering that Nokia has the serial winner ‘103 patent as well as other battle-tested SEPs to get leverage in Germany.
The possibility of a multi-country UPC injunction may also have contributed, but the Mannheim and Munich I Regional Courts would likely have given Nokia leverage over Verifone prior to a UPC decision, given that those courts tend to accelerate cases over patents they’re already intimately familiar with.
Nokia was represented by Arnold & Ruess (counsel of record for CMS purposes: Jan Wergin), and Verifone by Hoyng Rokh Monegier’s Klaus Haft.