ip fray

Huawei v. NETGEAR was only the second Unified Patent Court anti-antisuit motion this month: a near-simultaneous one may have targeted Xiaomi Technology The UPC's Munich Local Division today published its Huawei v. Netgear AASI decision. The statutory basis is now clear. What is less clear is whether the AASI would also bar Netgear from pursuing an interim license, given that measures equivalent to an ASI are prohibited as well. That may become clearer next month, though it is also possible that the UPC and other courts would ignore an interim license, order injunctions if all other criteria are met, and impose sanctions if Netgear enforces a U.S. court-ordered contract (such as by means of a damages claim). In the part where Presiding Judge (and here, judge-rapporteur) Dr. Matthias Zigann explains why he made the decision as a single judge, he mentions a prior decision on the admissibility of AASI motions in the UPC by his division's second panel. Various SEP cases pending in the UPC have recently been settled, making it most likely that the other dispute in which an AASI motion was brought (outcome unknown for now) is Advanced Standards Communications v. Xiaomi. ASC is a Texas-based licensing firm asserting a former ZTE Corporation patent against Xiaomi. That case is pending before the Munich LD's second division (Presiding Judge Ulrike Voß, Judge Dr. Daniel Voß (both "Voss" in German) and Judge Rute Lopes (Lisbon, Portugal)). ASC is represented by Eisenführ Speiser's Dr. Michael Schneider and Xiaomi by Hogan Lovells (counsel of record for CMS purposes: Oliver Baecker ("Bäcker" in German)). The Huawei v. Netgear decision lists Clifford Chance's Dr. Tobias J. Hessel and Bird & Bird's Christian Harmsen as counsel of record. https://lnkd.in/dYMTmKqp

Abbott fends off Dexcom’s push for patent royalties as multi-jurisdictional litigation settles with 10-year zero-zero patent peace over glucose monitoring devices Their 2014 zero-zero cross-license expired in part in 2021 and the other part would have expired in about a year from now. The parties' litigation behavior suggests that Dexcom was hoping to impose royalty obligations on its rival in the continuous glucose monitoring (CGM) device market, but failed despite some aggressive moves in the Western District of Texas and the Unified Patent Court. In the District of Delaware, a jury held Dexcom in infringement of one Abbott patent, and the trial judge granted JMOL on a second patent (over that one, the jury had deadlocked). This outcome is a win for Abbott's counsel, particularly Kirkland & Ellis in the U.S. and Taylor Wessing in the UK and UPC, and Gael Tisack (chief IP officer) and Rachel Bach (in-house litigation counsel). Apparently Dexcom did not get what it hoped to achieve when it decided to use Quinn Emanuel (U.S., UPC, Germany). Bird & Bird also did some work for Dexcom, but actually performed well in the UK and only one of its UPC cases, where its role was mostly defensive, had come to judgment. All in all, Dexcom lost three UPC cases because each patent-in-suit was held invalid. https://lnkd.in/dxcuMvnu

After almost 5 years of being sued by Broadcom (Avago Technologies), Netflix files U.S. countersuit over former HP virtualization patents: Unified Patent Court filings to follow? It's been a dreadful year for Broadcom's patent enforcement efforts against Netflix (losses in Federal Patent Court of Germany and Federal Circuit) and Tesla (two UPC losses). And now Netflix, represented by Baker Botts (lead counsel: Rachael Lamkin), has brought a retaliatory action in the Northern District of California that may take some time to yield results but could make Broadcom's leadership think about whether protracted litigation is fruitful. The time may be ripe for a settlement now. https://lnkd.in/d5RphTKt

NETGEAR obeys Unified Patent Court and German anti-antisuit injunctions, yet attempts to thwart Huawei’s patent enforcement through interim license It is a good sign for the UPC that the router maker respects its authority. Huawei and Netgear have filed a stipulation to request a one-week postponement of all deadlines and the motion hearing in their U.S. dispute, suggesting that Netgear believes it will not urgently need help from the U.S. court after the turn of the year. But enforcement is going to begin shortly, and an injunction from the Munich I Regional Court also looms large. https://lnkd.in/d8N36XW4

Unified Patent Court's Court of Appeal throws out Alexion Pharmaceuticals, Inc.’s appeals against Amgen and Samsung Bioepis over validity doubts, reveals €100M value of each dispute Hamburg LD's orders denying applications for provisional measures (PI motions) were affirmed and the CoA would go even further when it comes to a deficiency of the claim language of the patent-in-suit. Alexion contradicted itself in different proceedings, telling the European Patent Office's Technical Board of Appeal one thing and the UPC the opposite. The CoA, however, says that a position taken by the patentee on how the average person skilled in the art would interpret the claim -- and adopted by the TBA -- remains relevant. Also, in the EPO Alexion sought preferably to amend the patent, but as a fallback tries to have it upheld in the original form, which is however not functional according to Alexion's own representations in the UPC proceedings. That patent may be dead in the water now. In either case, the Hamburg LD set the value of the dispute at €100 million, and the patent does not have more than about two years left. Panel: Presiding Judge Dr. Klaus Grabinski, Judge-rapporteur Peter Blok, Judge Emmanuel Gougé and Technically Qualified Judges Eric Enderlin and Anna Hedberg. Counsel for Alexion: Freshfields’s Wolrad Prinz zu Waldeck und Pyrmont, Dr. Christopher Stothers and Elena Hennecke, as well as König . Szynka . Tilmann . von Renesse patent attorneys Gregor König and Dr. Claudia Hertzsch. Counsel for Amgen: BARDEHLE PAGENBERG attorneys-at-law Prof. Dr. Tilman Müller-Stoy, Dr. Tobias Wuttke and Dr. Dominik Woll, Bardehle Pagenberg patent attorneys Dr. Axel B. Berger and Dr. Markus Ackermann; and Osborne Clarke attorney-at-law Tim Harris. Counsel for Samsung Bioepis: Simmons & Simmons attorneys-at-law Andrea Ritter, Dr. Peter Meyer, Scott Parker and Elsa Glauert as well as patent attorney Dr. Fritz Lahrtz. https://lnkd.in/d-Py6VJW

Japan’s Nippon Shinyaku vows to fight on in U.S. drug dispute against Sarepta Therapeutics, despite heavy $115 million blow Nippon Shinyaku, a Kyoto-based drugmaker, has said it “does not agree” with two District of Delaware jury verdicts finding it infringed three The University of Western Australia patents enforced by U.S. rival Sarepta. The verdicts also found that seven of Nippon Shinyaku's patents related to a drug used to treat Duchenne Muscular Dystrophy – a genetic disorder that causes people to progressively lose muscle function – are invalid. The decisions were a huge blow to Nippon Shinyaku. The company was not only required to pay Sarepta and the University of Western Australia $115 million in damages, but it lost a case that it had initially started itself. In 2021, it accused Sarepta of breaching an ongoing contract when Sarepta had filed petitions before the USPTO's PTAB seeking to invalidate seven of Nippon Shinyaku's patents. But the jury ultimately sided with Sarepta. Nippon Shinyaku said it will consider all options, including post-jury motions and appeals. https://lnkd.in/eqw8k8bp

Unified Patent Court responds to first #antisuit attack on its jurisdiction with first anti-antisuit injunction against NETGEAR; Huawei also gets one from Munich I Regional Court This is historic: the first-ever UPC anti-antisuit injunction, granted by the Munich LD's Presiding Judge Dr. Matthias Zigann in his capacity as judge-rapporteur. The Munich I Regional Court also ordered (as it already has on various occasions) an AASI on an ex parte basis. That decision was made by Presiding Judge Dr. Oliver Schoen ("Schön" in German). Netgear has a motion for an antisuit injunction pending in the United States District Court for the Central District of California. It is seeking not only an ASI but also (alternatively) an interim license. #FRAND #standards #patents https://lnkd.in/dk5XvvNv

It's been one year (to the day) since the launch of ip fray (see https://lnkd.in/dWu74gZB). *Thank you to all readers and followers!* It feels like a lot longer already (after 346 articles). ip fray here is here to stay. And to grow. In various respects, this project has taken off faster than expected -- above all, the IP dealmaking part (see https://lnkd.in/d-grn39F). We're (only) slightly behind schedule with the switch to a premium subscription model for 80% of the content. It's the only way to ensure that you -- the readers -- get to determine editorial priorities. For example, some obscure cases in niche industries where we'd never find sponsors could give rise to important Unified Patent Court appellate caselaw. In January we'll (finally) start with the transition, but no worries: everyone will have enough time to sign up before the paywall kicks in. And there'll be plenty of free content on this LinkedIn page. Happy Holidays (though we'll keep reporting on major news, and we have one article in the works about an interesting U.S. case).

Dutch government prepares major #patent reform, switching from registration to examination system and strengthening #climatetech A consultation was launched on Friday (thanks to Paul van Beukering for sharing the link via a LinkedIn post) and is open until the end of March. All in all, the proposal is innovation-friendly and, while there is nothing specific to SEPs in it, goes in the very opposite direction from the proposed EU SEP Regulation. For example, enforcement will be strengthened at sea by expanding it to the Exclusive Economic Zone with a view to wind turbines and solar parks. The Dutch government clearly believes that stronger IP enforcement will spur more innovation, which in turn will contribute to the fight against climate change. https://lnkd.in/deJ9VgKC

The venue diversity leaders among Unified Patent Court litigation firms: several firms already have (or have had) cases in nine different venues BARDEHLE PAGENBERG Bird & Bird HOYNG ROKH MONEGIER Hogan Lovells Powell Gilbert Simmons & Simmons Taylor Wessing VOSSIUS & BRINKHOF UPC LITIGATORS https://lnkd.in/gAH9CpeU