This article discsses several recent Unified Patent Court (UPC) rulings and developments since the previous roundup (August 24, 2024 ip fray article) except for those that have already been discussed in dedicated articles. Some (but not all) of these items have been discussed by ip fray on LinkedIn.
Now that the summer vacation season is over, the interval between such roundups may be shorter.
1. UPC appoints head of alternative dispute resolution
On Monday (September 9, 2024), the UPC announced the appointment of Mr Aleš Zalar as the Director of its Patent Mediation and Arbitration Centre (PMAC).
2. Hurdle for expedited appeal is high
“The possibility that the Munich Local Division might grant an injunction on the basis of a patent that has been upheld by the Court of First Instance but may subsequently be revoked by the Court of Appeal, is not sufficient to justify expediting the appeals.”
Court of Appeal (CoA) in Edward Lifesciences v. Meril
3. Untimely addition of defendant
In Panasonic v. OPPO, the Munich Local Division (LD) denied the addition of a company named OTECH, given that it wouldn’t have been difficult for the plaintiff to research that entity’s existence and function way sooner. Part of OPPO’s argument was that a post on a website (which by the way used to belong to ip fray‘s founder) informed the patent litigation community of a German national court ruling enjoining OTECH.
4. Untimely request for discovery order against moving party
In a different case that is part of the same standard-essential patent (SEP) enforcement campaign by Panasonic, but in a different LD and with a different defendant (Xiaomi), Panasonic benefited from an untimeliness finding. The Mannheim LD decided (PDF (German)) that a proffer of three comparable SEP license agreements by the defendant, along with restrictions on how two of those could be used (that went beyond the existing protective order in the case) or a (sort of auxiliary) request for an order against one particular Xiaomi entity to produce the documents, came a few months too late. After Panasonic obtained such an order against itself in late April, and possibly even sooner, Xiaomi should have started to take the necessary steps so as to be able to keep the case schedule. Presiding Judge (and here, judge-rapporteur) Dr. Peter Tochtermann also didn’t like the fact that Xiaomi wanted the order to produce documents to be directed at a Xiaomi entity in the Hong Kong Special Administrative Region (see item 8 of ip fray‘s August 6, 2024 UPC roundup), which would have been a recipe for delay.
The upshot is that those license agreements between Xiaomi and third parties have not and will not enter the record, and Xiaomi’s related pleadings are stricken.
5. Denial of existence of feature can be confidential
In Ona Patents v. Apple, the Dusseldorf LD’s Presiding Judge (and here, judge-rapporteur) Ronny Thomas granted Apple far-reaching protection of confidential information: even the denial of an accused product coming with a given feature can, in principle, be deemed a legitimate secret. ip fray hopes that this will not lead to major overredactions in this case as well as in others.
6. No referral to Central Division without parties’ consent
In Med-El v. Advanced Bionics, the CoA clarified that Art. 33(3)(c) of the UPC Agreement (UPCA) predicates the referral of an infringement case to the Central Division (CD) on “the agreement of the parties.”
7. Jurisdiction over cross-border infringement cases
Affirming a denial by the Mannheim LD to dismiss a case for lack of jurisdiction, the CoA provided clarification on territorial jurisdiction that is particularly relevant to other cases involving internet streaming of multimedia content. The focus is on the country or countries in which the alleged damage occurs. Questions of indirect infringement are not resolved at the stage of purely jurisdictional analysis.
8. Party can’t seek replacement of TQJ unless there is conflict of interest
In Valeo v. Magna, the Court of First Instance (CFI) clarified that parties can comment on who should be a court-appointed technical expert, but they can’t request the replacement of a technically qualified judge (TQJ) based on what the relevant field of specialization is. Only a conflict of interest would count.
9. Decisions on security for litigation costs
A CoA decision on security reveals that Ballinno is no longer seeking a preliminary injunction against Kinexon and European soccer body UEFA, but is at this point merely litigating over costs (LinkedIn post by ip fray).
In SodaStream v. Aarke, a panel review by the Dusseldorf LD resulted in affirmance of the rapporteur’s (Presiding Judge Ronny Thomas) decision on security, but leave to appeal was granted (PDF). The key argument in that case is that enforcement in a particular country (in that case, Israel) may be exceedingly burdensome.
10. Philips prioritizes one Belkin case over another
On Friday, ip fray broke the news that Philips won a SEP injunction (though there was no FRAND defense in the first place) against wireless charger maker Belkin (September 13, 2024 ip fray article). On September 9 (Monday), that decision had been pushed back by a week, but the outcome wasn’t known yet, and the Munich LD’s Presiding Judge Dr. Matthias Zigann decided (PDF (in German)) to grant a request by Philips to push back a September 11 (Wednesday) trial date over patent that Philips considered less important than another patent-in-suit, citing as a resaon that one patent is valid in more UPC contracting states than the other. Philips wasn’t interested in holding the trial over the patent with narrower geographic coverage prior to Friday’s ruling.
The new trial date is October 23, and the court will decide whether to hear two Philips v. Belkin cases that day or only the one that is prioritized by Philips.
11. Omnibus procedural order in Edwards v. Meril (Munich LD)
In Edwards Lifesciences v. Meril, the Munich LD had to rule on a multiplicity of procedural motions (PDF).
The plaintiff’s requests include the submission of a product sample as evidence; the permission to use Powerpoint slides during trial; the dismissal of a motion to stay; leave to change the claim; that the parties’ experts be heard; the appointment of an expert by the court; the court-appointed expert’s participation in the trial while allowing the parties to question him.
The defendants wanted a stay or at least a postponement of the trial; they, too, wanted an expert to be appointed by the court and to participate in the hearing while letting the parties ask him questions; and video access to the trial for some participants.
In an omnibus order (not a term used by the court, but known from U.S. litigation for orders resolving all pending items), the Munich LD’s Presiding Judge (and here, judge-rapporteur) Dr. Matthias Zigann allowed physical objects, a 3D model, Powerpoint slides, a modification of the claim, and access by video conference. He referred the stay motion and scheduling questions to his panel.
12. CoA affirms denial of switch from German to English as parties are based in German-speaking countries; parallel revocation proceeding of limited relevance
The CoA upheld the denial of a language switch in Med-El v. Advanced Bionics, giving significant weight to the fact that, at least at the level of the group parent, the parties are based in German-speaking countries, and not much weight to the fact that a related revocation proceeding is being conducted in another language, as this would have involved translating a pile of existing documents at any rate.
13. Huawei and Netgear put aside dispute over translation of Chinese patent document
In Huawei v. Netgear, the Munich LD appeared to have a need for a court-appointed translation of a Chinese patent document (LinkedIn post by ip fray), but the parties have now concluded that their translations don’t contradict each other where it matters, thereby obviating the need for the court to obtain a neutral translation (PDF (in German)).
14. PI decision scheduled in Ericsson v. ASUSTeK
The Lisbon LD has its first case, and its a preliminary injunction (PI) motion by Ericsson against ASUSTeK that was heard on Thursday (September 12, 2024). The decision will be handed down on October 16, 2024.
15. Recently-discovered new UPC filings
Several new patent infringement cases filed with the UPC have recently shown up (LinkedIn post by ip fray):
- Truma Gerätetechnik v. CAN Srl & Airxcel Europe over a heat exchanger patent
- Per Aarsleff v. IMS Robotics (over a means of curing a pipeline)
- Abbott v. SiBio (main proceeding over a patent based on which there already is a preliminary injunction in force)
Also, Motorola Mobility (a wholly-owned Lenovo subsidiary) had to bring a follow-on suit in order to pursue injunctive relief against Ericsson over a SEP (LinkedIn post by ip fray).