Context: With respect to standard-essential patents (SEPs), Philips is (at it must be) a licensor (September 13, 2024 ip fray article). But Philips also holds non-SEPs protecting unique features of its products, and in that context, it uses patents as the exclusionary rights that they generally are under the law. That includes the pursuit of preliminary injunctions (PIs). ip fray tracks the evolution of the UPC’s case law closely and reported on, inter alia, a Dyson v. SharkNinja PI (June 6, 2024 ip fray article).
What’s new: The Unified Patent Court’s (UPC) Hamburg Local Division (LD) has published an ex parte PI order (PDF( in German)) of one week ago that was sought by Philips against Shenzhen Yunding Information Technology Co., Ltd., a rival toothbrush maker. The purpose here was to prevent and terminate the presentation of a product at a major trade show, in this case Internationale Funkausstellung (IFA), an annual event in Berlin for the consumer electronics industry. The order includes the seizure of the presumed-infringing products at the booth, and they will be held until Philips’s claim for their destruction will be decided at the end of the main proceedings.
Direct impact: The order came down on the third of four trade show days, and the show ended on Tuesday (September 10, 2024). The dispute will likely continue now, but within the framework of the full-blown merits proceedings.
Wider ramifications: Ahead of or during trade shows, ex parte PIs are requested often, such as by chipmaker Infineon against Innoscience, though not in the UPC in that case (June 16, 2024 ip fray article). As part of ip fray‘s tracking of UPC case law, two other UPC decisions were discussed today on LinkedIn. One of them keeps an infringement claim and the related revocation counterclaim together in the Dusseldorf LD, and the other reveals that Qualcomm successfully challenged a decision by the European Patent Office (EPO) concerning a SEP with unitary effect.
Procedurally, Philips v. Yunding is interesting in two respects:
- Ahead of IFA, Philips’s lawyers sent a case-and-desist letter to Yunding, and according to the order, a cease-and-desist covenant was made. But Philips then realized at IFA that Yunding was not actually complying.
- Philips first filed its PI request with the Munich LD, but almost immediately withdraw and refiled in Hamburg. Presumably the busy (or maybe temporarily understaffed) Munich LD was unable to make a decision during the extremely short time frame that mattered to Philips and recommended refiling elsewhere.
The decision came down ex parte, i.e., without hearing the defendant. It’s obvious that there wasn’t enough time for that. As for the merits, the court presumed infringement based on Yunding having made a cease-and-desist commitment without contesting infringement. For validity, the key consideration was that three different patent offices independently searched for prior art and granted the application.
Yunding then had to hand over the presumed-infringing trade show exhibits to what is called a marshal in the United States or a bailiff in Britain. They will be kept until a decision has been made on Philips’s destruction claim.
The patent-in-suit, EP3197316 (“Systems and methods for providing motivation feedback to a user before brushing”), covers the transmission of data that serves the purpose of giving some motivating feedback to the user between two brushing processes.
The order was handed down by Presiding Judge (and here, judge-rapporteur) Sabine Klepsch, Judge Dr. Stefan Schilling and Judge András Kupecz.
Philips is represented by Eisenfuehr Speiser’s Soenke Scheltz. While it appears that Philips’s SEP cases in Germany and the UPC are now being litigated by former Eisenfuehr and now Bardehle Pagenberg partner Dr. Tilman Mueller (though Eisenfuehr patent attorneys are involved in the Belkin dispute), Eisenfuehr is apparently still enforcing non-SEPs for Philips.
Counsel for the defendant is not known yet as this was an ex parte decision.