Context: Last month, the Unified Patent Court’s (UPC) Lisbon Local Division (LD) held its first preliminary injunction (PI) hearing (item 14 of ip fray‘s September 14, 2024 UPC roundup). The decision was originally scheduled for tomorrow.
What’s new: The decision was already handed down today, slightly ahead of time (PDF). The net effect is that no injunction issues for lack of urgency, but the panel decided to go beyond the call of duty and address infringement as well as validity. Ericsson would have had a strong case on the merits.
Direct impact: Ericsson can appeal the decision. If it convinces the appeals court that the court below was correct on the merits, but overly strict on urgency, a PI may still issue. More likely, however, Ericsson will now have to focus on the main proceedings. The PI ruling bodes well for those, and that fact, in and of itself, could persuade ASUSTeK to settle.
Wider ramifications: It’s a high-quality decision in terms of how the court explains its reasoning in a compelling and well-structured form. Patentees looking to enforce their rights should be far more encouraged by this one to bring other cases in the Lisbon LD than the bottom-line result (no PI) may suggest at first sight. That includes the part on jurisdiction.
The Lisbon LD panel that heard the case could have dismissed the PI application by means of a far shorter decision. They could have focused on urgency, the absence of which was dispositive. The court says Ericsson had remained silent on when it obtained knowledge of the alleged infringement, and therefore had to assume that Ericsson may have known as early as when the first infringing act occurred (in this case, about a year ago). It will be interesting to see Ericsson’s urgency argument on appeal.
The defendants (ASUSTeK and a couple of intermediaries, Digital River and Arvato) raised a jurisdictional argument. They didn’t want the Lisbon LD to decide the matter. To the extent that their jurisdictional theory overlapped with the analysis of the merits of the infringement contention, the court did not consider it in its jurisdictional analysis.
With respect to jurisdiction, the court also declined the invitation to apply a different standard (with a view to 33(1)(a) UPCA) to intermediaries than to accused infringers.
The decision also addresses, without a formal need to reach that part, the technical merits, holding the patent (EP2819131 on an “inductor layout for reduced VCO coupling”) more likely than not to be infringed and more likely than not to be valid. Ericsson can therefore be optimistic about the main proceedings.
The decision mentions that the parties have been negotiating a standard-essential patent (SEP) license since 2018. This case, however, is about a non-SEP.
The Lisbon LD has put itself on the map of UPC infringement actions. Presiding Judge Rute Lopes has already joined UPC panels all over Europe. Now the Lisbon LD handed down a very significant ruling, and those thinking about where to file their next UPC infringement action should take a closer look at it. It’s a well-reasoned one, linguistically superior over at least in the top 25% of UPC decisions written in English, and the parts resolved in the patentee’s favor suggest that Lisbon is a place where patentees can get leverage over infringers. It’s a venue worthy of serious consideration.
Panel: Presiding Judge (and here, judge-rapporteur) Rute Lopes, Judge Sam Granata (Brussels), Judge Petri Rinkinen (Helsinki) and Technically Qualified Judge Johannes Mesa Pascasio.
Counsel for plaintiff Ericsson: Taylor Wessing’s Dr. Wim Maas and Eelco Bergsma as well as Manuel Durães Rocha of local firm Abreu Abogados.
Counsel for defendants: Powell Gilbert’s Alex Wilson, Ari Laakkonen and Adam Rimmer as well as Sara Nazaré and Joana Piriquito Santos of local firm NLP.