Context: In an “adult entertainment” industry dispute, one of DISH’s patents is in triple trouble as the Munich I Regional Court did not hold it infringed, the Unified Patent Court’s (UPC) Central Division (CD) revoked it and the Opposition Division of the Europan Patent Office (EPO) revoked it as well, meaning that DISH would need three successful appeals in total in order to win anything over that patent (June 4, 2025 LinkedIn post by ip fray). The fourth blow to DISH’s patent enforcement aspirations came last week with the UPC’s Mannheim Local Division (LD) clearing Aylo of the infringement allegations over a different patent, EP2479680 (“Method for presenting rate-adaptive streams”) (June 6, 2025 LinkedIn post by ip fray).
What’s new: The purpose of this article is to discuss certain holdings that are relevant beyond this case, though ultimately to be resolved on an appeal from this judgment or another:
- The Mannheim LD holds that national patent law on infringement by equivalents must be applied to allegedly infringing acts that occurred prior to June 1, 2023, and in order to achieve harmonization, the UPC will have to develop its own doctrine of equivalents (DOE) for the period starting on that date.
- In the case at hand, the court was able to decide in favor of non-infringement regardless of what particular standard might be applied.
- The patent was upheld in an amended form, and the defendants-counterclaimants had no standing to challenge a dependent claim without defeating the independent claim from which it is derived.
- The permissible number of auxiliary requests is very case-specific. In this case, the large number of validity attacks raised by the defendants as well as the limited number of claim elements that the court actually had to analyze both weighed in favor of allowing a seemingly large number of auxiliary requests.
1. Doctrine of Equivalents
The watershed day in this context is June 1, 2023: the day the UPC opened its doors for infringement complaints. The decision (PDF (in German)) says that for the pre-UPC period, any alleged infringements would have to be analyzed country by country under national law, and for the period since June 1, 2023, the UPC will have to develop its own case law on infringement by equivalents as this is the only way the UPC can achieve its high-priority objective of harmonizing and streamlining patent enforcement in the EU. The Mannheim LD does not, however, believe that the UPC has a mandate for retroactive harmonization (i.e., for the period prior to June 1, 2023).
Neither does the judgment enter into a country-by-country analysis for each part of the European bundle patent in question nor does it propose what standard the UPC should adopt going forward. Instead, it takes a bird’s-eye perspective on the landscape of European case law. Apparently the Mannheim LD understands the case law of the various relevant countries to have a clear common element:
- There must at least be an equivalent effect that is produced by the equivalent means.
Whether there must — as some jurisdictions require — also be an equivalent function that produces the equivalent effect is irrelevant in this case because there is no equivalent effect in the first place.
The decision notes that other differences between the relevant national jurisdictions essentially come down to how the claim language and the specification are weighted when determining the scope of protection.
Only due to redactions, the public version of the judgment does not serve as a “textbook example” of an analysis of equivalents.
2. No standing for isolated revocation of dependent claim
The relationship between independent and dependent claims in a validity context is a little trickier than with respect to infringement. Infringement is determined by analyzing whether each claim limitation is infringed, including all claim limitations that are incorporated by reference to another claim (or to that other claim’s parent(s)). On the validity side, there are two issues:
- If an independent claim is shot down, it must be stricken and that pulls the rug out from under the derivative claims’ feet. The solution is to amend the patent and make the dependent claims independent from the one that got lost. A similar situation can also occur in prosecution if an examiner rejects an independent claim, but would grant a dependent claim if only it became independent, which is a purely editorial task.
- In this DISH v. Aylo case, the defendants were denied an opportunity to strike down any dependent claims without eliminating the independent claim they depended from. The court made an argument that amounts to “no standing because the scope of protection wouldn’t be narrowed anyway.” Put differently, a party has no legitimate interest in getting rid of a dependent claim if the independent claim survives, given that if the dependent claim was infringed, the independent one would be, too (or actually: even more so).
3. Admissible number of auxiliary requests
The Mannheim LD declines to turn auxiliary requests into a pure numbers game. It’s very much a case-by-case decision. Like the Munich LD (and possibly others), the Mannheim LD takes a more permissive approach if the revocation (counter)claimant presented a large number of invalidity contentions. And it looks at how much work it actually is for the court and the parties to discuss the auxiliary requests. Here, there were only four claim elements to understand with a view to novelty and inventive step, and only three with a view to avoiding the impermissible addition of subject matter.
4. Court and counsel
Panel: Presiding Judge Professor Peter Tochtermann, Judge-rapporteur Dirk Boettcher (“Böttcher” in German), Judge Dr. Walter Schober (Vienna, Austria) and Technically Qualified Judge Dr. Dennis Kretschmann.
The following information on counsel was found in a triumphant press release issued today by the Bardehle Pagenberg firm:
Counsel for plaintiffs DISH Technologies and Sling TV: A&O Shearman attorneys-at-law and UPC representatives Denise Benz, Dr. Jan Ebersohl and Celina Kuhn; and Beck Greener patent attorney and UPC representative Nick P. Bebbington.
Counsel for defendants Aylo and Brockwell: Professor Dr. Tilman Müller-Stoy (lead counsel on non-infringement; Attorney-at-Law, UPC Representative, Certified IP Lawyer, Commercial Mediator (MuCDR), Partner); Dr. Georg Anetsberger (lead counsel on invalidity; German and European Patent Attorney, UPC Representative, Partner); Dr. Tobias Wuttke (Attorney-at-Law, UPC Representative, Certified IP Lawyer, Partner); Dr. Martin Drews (Attorney-at-Law, UPC Representative, Counsel); Maggie Huang (German and European Patent Attorney, UPC Representative, Senior Associate); and Saskia Mertsching, LL.M. (Attorney-at-Law, UPC Representative, Associate); and Mishcon de Reya’s Conor McLaughlin (European Patent Attorney, UPC Representative, Managing Associate).