This is an update on everything that has happened in the Unified Patent Court (UPC) since the last roundup on October 26. SEParately (capitalization intended), ip fray published a roundup yesterday of what happened on the standard-essential patent front over the previous seven days (November 1, 2024 ip fray article).
ip fray celebrates the fact that it now has more than 5,000 LinkedIn followers (quite a lot for such a new and highly vertical publication), among them a number of VIPs, but many (particularly Chinese) readers do not get the benefit of those posts. There will be various decisions this month on the editorial format, including what the granular coverage of UPC developments will look like in 2025. The objective is to figure out a way forward that will suit both types of readers: those who prefer weekly summaries and those who want to be in the loop on an as-it-happens or daily basis. ip fray wants to be the number one resource on at least two major topics: UPC and SEPs. And ip fray will also have to balance those interests with the strong community dynamics on LinkedIn, with lawyers asking on an almost daily basis (which is in fact appreciated) to be named in posts on their cases. Stay tuned!
1. Halloween Triple Whammy in Dusseldorf: three new injunctions
The UPC’s Dusseldorf Local Division (LD) handed down three decisions on Thursday (October 31, 2024):
- two preliminary injunctions (PIs) in Valeo v. Magna (automotive supplier dispute) that provide useful clarification on the presumption of ownership as well as validity, and on the fact-intensive nature of the urgency inquiry, and
- a permanent injunction in SodaStream v. Aarke (the plaintiff being a PepsiCo subsidiary) with guidance on the relevance of drawings and distinctions from the prior art to claim construction (rejecting the Formstein or Gillette defense where a patent would be deemed not infringed because a construction resulting in infringement would render it invalid) as well as on the extraordinary remedy (denied in this case) of a right of publication.
While one can always view certain questions of legal policy differently, the clarity and structure of those rulings are top-notch.
2. CoA stays enforcement of injunction with respect to corporate officer defendants
Philips obtained a permanent injunction against Belkin in the Munich LD. In order to enforce the patent in Germany, despite an adverse outcome there that Philips failed to appeal while it could, Philips sued three Belkin corporate officers. The Court of Appeal (CoA), however, takes the position that it takes something more than just being a corporate officer to be enjoined. The CoA therefore stayed, pending the appellate proceedings, enforcement with respect to those individual defendants.
3. First enforcement dispute on horizon in Dusseldorf?
Ortovox v. Mammut has already made history as the first PI that got affirmed by the CoA, which could now give rise to the first contempt motion in the UPC. The hearing in the main proceedings will take place soon. There appears to be a disagreement between the parties over whether an updated version of an accused embodiment complies with the PI. When denying leave to amend the complaint at this very late stage, the Dusseldorf LD told Ortovox it could always bring a contempt motion.
4. Hearing held in presently biggest UPC FRAND case: Huawei v. Netgear (Munich LD)
The short version is that Huawei appears reasonably likely to win a SEP injunction despite Netgear’s two FRAND defenses (one based in antitrust law, the other in contract law), and some of Netgear’s defenses are shockingly weak, but ip fray believes Netgear has a strong policy argument for requesting the adjudication of an exhaustion defense at the merits rather than the enforcement stage, and method claims should be capable of giving rise to patent exhaustion in the UPC just like they do in the United States.
Given the parallel pendency of a U.S. case, it could be that Netgear’s plan is to obtain an antisuit injunction, which would then be the first one to impact the enforcement of a UPC decision.
5. Plaintiffs may have only one opportunity to submit written pleadings concerning a prior-use defense: Dusseldorf LD
In Fujifilm v. Kodak, the defendant raised a prior-use defense and the plaintiff asked for leave for a further written pleading so as to be able to respond to what the defendant said about prior use in its rejoinder. The Dusseldorf LD explained in an order that it is simply due to the structure of UPC proceedings that a plaintiff may have only one opportunity to comment on a prior-use defense in writing, but invited the plaintiff to seize the opportunity to make its case at the upcoming hearing.
6. Three video patent lawsuits with UPC components settled: Nokia v. HP, Dolby v. HP, NEC v. TCL
Nokia announced a license agreement with HP, and Access Advance added HP (which was being sued in the UPC by Access Advance licensor Dolby) and TCL (sued in the UPC by NEC) to its list of licensees.
7. Noteworthy new filings, including one against the world’s most valuable corporation’s AI chips
7.1 ParTec v. Nvidia (Munich LD)
The UPC has its first major AI-related patent lawsuit and the first lawsuit against Nvidia, nowadays the world’s most valuable company.
German supercomputer firm ParTec and its licensing agent are enforcing two patents, one of them with unitary effect, against Nvidia in the UPC, seeking an 18-country injunction. Patents from the same two families are already being asserted against Nvidia customer Microsoft in the Eastern District of Texas.
7.2 ArcelorMittal v. XPENG (Paris LD)
The Luxembourgian-Indian steel giant is asserting a patent on coated steel strips against XPENG, making the latter the first Chinese automaker to get sued in the UPC.
7.3 Nichia v. Endrich (and, by extension, Dominant Opto) (Dusseldorf LD)
An interesting new LED patent case, in this case targeting LEDs incorporated into cars and involving a BMW supplier, has surfaced.
7.4 Barco v. Yealink (PI motion) (Brussels LD)
ip fray has not previously reported on this new filing (neither on its website nor on LinkedIn).
Barco, a Belgian company, makes the ClickShare Conference product and sued Chinese competitor Yealink in the United States, where according to Barco infringement was conceded and a product named WPP30 Presentation Pod removed from the market.
Barco is now asserting EP3732827 (“Method and system for making functional devices available to participants of meetings”), a recently granted patent with unitary effect.
According to a press release, “Barco believes that Yealink infringes some of ClickShare Conference’s patented functionalities [enabling] users to host video calls from their own laptop with their preferred video conferencing platforms, while using the audio and video equipment of the meeting room for a premium wireless Bring Your Own Device (BYOD) experience.”
8. Recent and upcoming hearings
Besides Huawei v. Netgear (item 4 above), the UPC held the following hearings during the last week of October:
- Tuesday, October 29: Advanced Bionics AG v. MED-EL Elektromedizinische Geräte GmbH (revocation) (Paris seat of Central Division (CD))
- Wednesday, October 30: Dexcom v. Abbott (infringement) (Paris LD)
- Thursday, October 31:
- appeal by SharkNinja against Dyson (CoA)
- Hybridgenerator ApS v. HGSystem ApS et al. (evidence preservation) (Copenhagen LD)
The following hearings are slated for next week:
- Monday, November 4: appeals of decisions in Alexion v. Amgen and Alexion v. Samsung Bioepis (CoA)
- Wednesday, November 6: Tandem v. Roche (revocation) (Paris seat of CD)