Bird & Bird Intellectual Property’s Post

Breaking News – The #UPC has today issued another #SEP-related decision in the Huawei v. Netgear matter. The Munich LD held the patent valid and infringed and granted Huawei an #injunction in the six UPCA states in which the patent is in force. The court also considered exhaustion and there is an exemption to the injunction in relation to products equipped with certain Qualcomm modems. Read on for more on the approach taken by the UPC.

A first for the UPC with the Mannheim LD handing down a FRAND judgment. This is a significant judgment for European patent litigation with confirmation that the UPC is willing to hear and decide on FRAND issues. This is likely to make the UPC local divisions even busier! #UPC #StandardEssentialPatents #patentlitigation #FRAND

A really nice summary of a very interesting decision! While the approach looks to be similar to what you would expect to see out of the German national courts, only time will tell whether this is because of the particular facts of this case, or if the UPC is generally going to take a much more 'willingness led' approach to FRAND.

Today, the Local Division Mannheim rendered the first UPC decision on alleged infringement of a standard-essential patent (SEP). The panel (Dirk Boettcher (DE), Edger Brinkman (NL), Klaus Loibner (AT), Peter Tochtermann (DE) - presiding judge and judge-rapporteur) found EP 2 568 724 of Panasonic to be valid and infringed by OPPO. The FRAND defense was unsuccessful as the offer of the claimant was considered to be FRAND, the counteroffer to be unFRAND. The panel clarified that the UPC is competent to hear a counterclaim for FRAND-rate setting initiated by the defendants but dismissed the concrete applications of the defendants on the facts of the instant case. The decision can be read here: https://lnkd.in/dM7Hqhzm #upc

Today, the Unified Patent Court issued its first injunction in a #FRAND case (Panasonic v Oppo). A counterclaim for the determination of a FRAND rate was rejected as the rate sought for was considered un-FRAND. Other takeaways (although the CoA may eventually decide some issues differently): 🔸 The #UPC is competent to deal with a counterclaim for the determination of a FRAND rate; 🔹 The UPC rejected the European Commission's recommendation to refer further FRAND issues to the CJEU, maybe because of fears that the #CJEU would establish a more formalistic FRAND process (as proposed by the Commission); 🔸 The willingness of the implementer is not only determined by a statement, but also by the implementer's behavior during the FRAND process, including how it deals with the SEP owner's FRAND offer (e.g. extensive information requests could indicate that the implementer is not interested in targeted negotiations for a FRAND license); 🔹 The SEP owner cannot make an offer that reflects the actual use of the SEPs if the implementer merely refers to IDC data without making at least some of this data plausible through its own records; 🔸 When making an offer, the SEP holder must explain not only the math behind its offer, but also why it believes its offer is FRAND (which could include disclosure of third party licenses). Ulrich Worm, Tripp Fussell, William Barrow, Amelie Ksinsik, Dr. Svenja Schenk, Maximilian Kücking, Alexander Balan, Yang-Won Jung

The #UPC has issued its first #SEP decision involving a #FRAND defence and has issued an #injunction enforceable in five European countries. The Local Division Mannheim ultimately dismissed OPPO’s application on the facts of the case, with the LD considering the offer from #Panasonic to be FRAND but the counteroffer from #OPPO not. The LD’s decision was heavily influenced by the fact that OPPO had not provided any of its own data relating to its own sales. The LD considered a willing licensee would provide this data so that the potential licensor would be fully informed. The LD therefore held that OPPO was not a Willing Licensee. The FRAND defence was therefore unsuccessful and the LD did not go on to consider any specific terms for a FRAND license. An injunction was granted in relation to Germany, France, Italy, the Netherlands and Sweden (the UPCA countries in which the patent is in force). OPPO was also ordered to recall/destroy products. The outcome may have been very different if OPPO had provided data relating to its own sales. The LD Mannheim discussed at length SEP FRAND obligations and made it clear that they were very open to being a forum for FRAND-rate setting and so it looks like they were prepared to consider rate-setting if the conditions were met.  Will Mannheim become the division for SEP cases? We’ll see. There are other LD’s considering SEP cases: Huawei v Netgear before LD Munich (decision due next month) and KPN v OPPO before LD The Hague, filed in September. Time will tell whether the Mannheim approach will become the UPC approach. #UPC #SEP #FRAND

The recent decision by the Delhi High Court to award ₹217 crore in lost profits damages to Communication Component Antenna Inc (CCAI) in a patent infringement suit against Mobi Antenna Technologies underscores the critical importance of protecting intellectual property rights. #IPR #PatentLaw #LegalNews #IntellectualPropertyRights #PatentInfringement #LegalJudgment #IntellectualPropertyProtection #LegalPrecedent #DelhiHighCourt #IPRights #PatentLitigation #LegalVictory #CorporateLaw #LegalJustice https://lnkd.in/ddsTNFpv

On 30 April, the Paris Central Division of the UPC issued a pivotal ruling on amending patents in revocation actions. This decision arose from the revocation case of Bitzer Electronics vs. Carrier Corporation, highlighting differences between UPC and EPO practices. Carrier sought to amend non-targeted claims, citing EPO rules that allow such amendments. However, the UPC Panel ruled amendments must directly address the invalidity claims to keep proceedings focused. This narrower approach contrasts with the EPO and UK practices, where broader amendments are allowed. This first-instance decision could signal a more restrictive UPC stance, raising concerns for potential litigants. An appeal - if sought - may offer further clarity. A detailed analysis from Thomas Prock, Mike Gilbert and Jen Cardwell can be found below. https://lnkd.in/g_tf56YT #intellectualproperty #intellectualpropertylaw #patents #patentlaw #europeanlaw #unifiedpatentcourt #upc #epo

Delhi High Court awards ₹217 crore in patent infringement case for lost profits   • The Delhi High Court awarded ₹217 crore as damages for lost profits to Communication Component Antenna Inc (CCAI) in a patent infringement suit against Mobi Antenna Technologies.   • CCAI's patent was for an invention called 'Asymmetrical Beams for Spectrum Efficiency' in bisector array antennas.   • The court found that Mobi's products infringed on CCAI's patent and that CCAI would have sold about 47,355 units at a profit of $550 on each unit had Mobi not been in the market.   • The court granted CCAI a decree of permanent injunction and directed Mobi to pay ₹2,17,47,78,375 at 5% interest per year from the date of the judgment along with the entire cost of proceedings. #PatentInfringement #DelhiHighCourt #LostProfits #CCAIvsMobiAntenna #PatentLaw #LegalNews #DamagesAwarded #PatentInfringementCase #unimarks #unimarksIPR

Taft IP attorneys Mike Etienne and Ryan O. White discuss en banc rulings at the Federal Circuit as they relate to determining the obviousness of design patents. Learn more in Taft’s latest #IntellectualProperty bulletin: https://bit.ly/3ROLfB0