ip fray’s Post

Graham Burnett-Hall provides a detailed analysis of the landmark UK Court of Appeal Panasonic v. Xiaomi SEP/FRAND judgment, which promises to be very significant for the future conduct of #FRAND litigation in the United Kingdom and, indeed, in other jurisdictions worldwide. "[I]n the circumstances of this case, Panasonic (and Xiaomi) had expressly submitted to the jurisdiction of the UK courts for the determination of global FRAND terms and it was inevitable that in a few months both Panasonic and Xiaomi would enter into a global licence on those terms. It followed that the purpose of Panasonic in pursuing the parallel German/UPC proceedings could only be to seek, with the threat of injunctions, Xiaomi’s agreement to licence terms that would be more favourable to Panasonic that the terms likely to be decided upon by the UK courts. In Arnold LJ’s judgment, this course of action was not consistent with Panasonic’s FRAND obligations and amounted to a breach of Panasonic’s obligation of good faith. "Lord Justice Phillips dissented: in his view, although Panasonic’s conduct was indefensible, he did not think the UK court should sanction that conduct by granting the declarations sought by Xiaomi. It was not clear why the terms of the interim licence would be FRAND and the purpose of granted the declarations was not clear. In Phillips LJ’s view, a more appropriate remedy would have been to grant an anti-suit injunction against Panasonic, to prevent Panasonic pursuing proceedings in Germany and in the UPC that appeared to be unconscionable, vexatious and oppressive." #Patent #Litigation #FRAND #SEP #UKCourtOfAppeal The entire analysis can be read on the #EPLAWPatentBlog https://lnkd.in/eeUy7Yj7

The Unified Patent Court's Mannheim LD's Presiding Judge Dr. Peter Tochtermann has declared that a Panasonic complaint against a Hong Kong-based Xiaomi Technology entity will be treated as if it had been served. In the headnotes, Judge Dr. Tochtermann says that the UPC is unwilling to comply with Chinese requirements according to which Hong Kong must not be equated to sovereign states like China, but has to be properly described as "Hong Kong SAR, China" (SAR = Special Administrative Region). The judge considers it "censorship" that the UPC won't engage in, and believes there is no such requirement under the Hague Convention on service of process. ip fray believes that the law of the land should always be respected when serving complaints abroad. If the rules are clear and it is reasonably possible to find out beforehand, then there is no reason not to comply. Germany also has its sensitivities. Presumably, if a foreign company wanted a complaint to be served on a German company and described the country as "Deutsches Reich" (German Empire) in the address, German authorities would also reject it because it's inappropriate. https://lnkd.in/dqvMmzdJ

🚨 UPC Decision Alert: 🚨 📅 Decision Date: August 30, 2024 📍 Court: Local Division Düsseldorf of the Unified Patent Court 📌 Case: UPC_CFI_99/2024 Parties: • Claimant: Ona Patents SL • Defendants: Apple Inc., et. al. The UPC Local Division Düsseldorf, by Presiding Judge Thomas in his function as Judge Rapporteur, has ordered on the protection of trade secrets under Rule 262A of the Unified Patent Court’s Rules of Procedure. The order states that even the absence of certain features in products can be considered confidential. The ruling draws on Article 9 of the EU Trade Secrets Directive (EU 2016/943), which allows limiting access to documents containing trade secrets to a small group of people. The decision makes clear that also information about negative facts, such as the lack of specific product functionalities, can be classified as confidential. For clients, this case highlights the UPC's commitment to robust trade secret protection, even for less obvious types of information. #UPCLaw #TradeSecrets #PatentLitigation #Confidentiality #DüsseldorfDivision https://lnkd.in/e7Bq4jwh

Xiaomi Technology defeats Panasonic in UK, wins interim-license declaration that renders Unified Patent Court, German proceedings waste of time and money A landmark #FRAND ruling that effectively disposes of multiple UPC and German infringement actions though the decision, diplomatically, leaves it to those courts to decide. Panasonic v. Xiaomi SEP trials were scheduled to be held in the UPC's Mannheim LD (technical merits on Monday, FRAND on Wednesday, hypothetical continuation on Thursday), the Munich I Regional Court (Friday, October 11) and the Mannheim Regional Court (Friday, October 18). They can be called off. Panasonic will only make matters worse by insisting on those trials taking place, as they'll have to reimburse Xiaomi for the costs of vexatious and oppressive litigation the way Motorola Mobility was ordered to reimburse Microsoft in a U.S. case. This decision shows that the UK judiciary is fairly balanced with respect to SEPs. Two days ago, Ericsson defeated Lenovo. The fact pattern here is special because both Panasonic and Xiaomi made a commitment, at a November 2023 hearing in the UK, to resolve the dispute through a license agreement on UK-determined terms. Panel: LJ Arnold wrote the per curiam, supported by LJ Moyhan. LJ Phillips also condemned Panasonic's conduct, but would have preferred an #antisuit injunction. It's a huge success for Kirkland & Ellis's Nicola Dagg, Steven Baldwin, Jin Ooi and Andrew Marks. Daniel Alexander KC was the barrister retained by Kirkland who deliver oral argument for Xiaomi. https://lnkd.in/gtGwucwx

Resolving FRANDness, not with “jurisdictional imperialism”, but rather by interpreting SEP licensing with a twist of Standard Essential Philosophy: read Arnold J’s Court of Appeals judgment in re Panasonic / Xiaomi, [2024] EWCA Civ 1143 👇   In beautifully accessible prose, get reminded why we care so much about SEP licensing, through a 3 page reduction to the essence of any hefty ‘Kommentar’ we like so much in Germany (paras 4-17) and the clincher that got an English court to effectively order a global interim license, in so doing putting on ice the looming injunctions before the UPC and the German national courts: “the relief sought by Xiaomi [i.e., that interim license] is not merely much less intrusive than an anti-suit injunction, but also designed to promote the overall resolution of the dispute” (para 68), as it is “certain” that the parties will enter into a global license in the relatively near future (para 81) and thus resolve FRANDness, while the point of Panasonic pursuing the exclusionary power of the injunction available in the German proceedings is “to try and force Xiaomi to pay more than the English courts would order [through their third party FRAND determination]”, i.e. an un-FRAND outcome.     Sure, there is some self-inflicted harm that Panasonic invited upon itself in this particular case, by having invoked the jurisdiction of the English courts in the first place (as noted in para 83), and by dramatically lowering its ‘FRAND’ offer on the eve of trial (down to 68%, that does make the court find the previous offer would have forced Xiaomi to “significantly over-pay” (para 60). And no, that is not a power grab by the English judiciary, see para 64, but rather a corrector of Panasonic’s conduct (para 84).   #patente #antitrust #kartellrecht #competitionlaw #seps #intellectualproperty

First UPC FRAND judgment out! The Mannheim Devision finds a fine balance between European, German and Dutch case law and also broadly discusses the Commission’s amicus curiae brief and the UK case law. It concludes that the defendant did not sufficiently engage in coming to an agreement. Very good read and convincing arguments!

Interesting development in the SEP and FRAND landscape. The UPC's first FRAND ruling in a case between Panasonic and OPPO highlights the growing complexity in licensing negotiations and enforcement. This case underscores the importance of balancing patent rights with fair market access. I'm looking forward to seeing how this shapes future SEP disputes in Europe.

On August 21, 2024, Judge Rian Kalden of the UPC's Second Panel dismissed an appellate pleading by Apple, which sought to change the language of proceedings from German to English in a case brought by Ona Patents. The dismissal was due to Apple's late filing on August 15, after the court had already declared the written procedure closed on August 13, with the appellate hearing set for August 23, 2024, under Rule 36 and Rule 239.2 UPC. Practical Impact: Timely compliance with procedural deadlines is critical in UPC cases. #UPC #IPLaw #PatentLitigation #Apple #OnaPatents https://lnkd.in/eFYQ7yuy

The Judgement delivered by the Division Bench of the Hon'ble Delhi High Court in Intex Technology (India) Ltd Vs. Telefonaktiebolaget L.M. Ericsson (Publ), 2023 SCC Online 1845 is one of the significant judgements on Standard Essential Patents (#SEPs) in India. The important issues discussed in this Judgement are:- 1. Can SEP Patentee seek injunctive relief against an infringer? SEP though is a patent when determining relief against infringement Fair, Reasonable and Non-Discriminatory (#FRAND) licensing principles must be considered. Hon'ble Court while recognising Foreign legal precedants in SEP jurisprudence precluding the Patentee from getting injunctive reliefs emphasized Indian judicial realities. Blanket restrictions on granting injunctions would lead to the devaluation of patents and disincentivise the entities investing in Research and Development. The Court held that, the Patentee can claim interim or final Injunctive relief against "Unwilling Licensee". Court further held that an injunction can be granted even if the implementer's product has infringed a single patent. 2. Is Licensee required to offer only territorial patents under FRAND terms or can offer a Global portfolio? Hon'ble Court has held that licensee can offer global portfolios as their FRAND obligations and are not required to offer only territorial patents. 3. Is Four Fold Test set in Nokia Technologies OY v. Guangdong Oppo Mobile Telecommunications Corp. Ltd., 2022 SCC OnLine Del 4014 valid? Hon'ble court has overruled four fold test i.e. There Has to be unequivocal admission of infringer about a. essentiality and validity of patents b. fact of utilization c. fact that such utilization amounts to infringement d. patentees' proposed royalty rates are FRAND compliant. This test was held by the Court to be no longer good in determining the grant of interim or final injunctive relief. 4. Does failure to produce counter Claim Charts amounts to admittance of essentiality? The Court based on the fact of the case held that the failure of Intex to produce the claim charts countering Ericsson's Claim Chart claiming the essentiality of patents amounts to an admission of the Essentiality of Patents. Intex has approached against the Judgement of Hon'ble Delhi HC in the Hon'ble Supreme Court through a Special Leave Petition. #Patent #IPR #SEP #Competition

ip fray commented on the first #UPC #SEP decision of the Local Division Mannheim. As I have been wrongly accused of behaving inconsistently, I feel compelled to comment on this. But as LinkedIn limits the number of characters for comments, I also want to share my perspective in a separate post. First of all, it has to be highlighted that it is the most important obligation of any representative to put forward the best case of his or her client. That might even include to deviate from personal convictions. Clients always come first. So, it is wrong from the outset to compare my personal opinion with legal arguments put forward for one of my clients. For Panasonic, we argued in the first place that any rate setting must be global, as customary in the industry (see para. 67 at the beginning, para. 72, para. 245, both parties agree that (literally translated) “only a comprehensive dispute settlement through a global FRAND rate determination is in line with customary practice” and para 249 at the end). We argued that Oppo cherry pick the UPC for certain jurisdictions, so that even for European Patents the UPC cannot be competent, other than on a global basis, because the UPC does not even cover all member states of the EPC, see end of para 67. Thus, taking the UPCA literally, the counterclaim would even be limited to the very patent in suit for the member states to the UPC. That is what is referred to in para 67. So, there is no contradiction between my statement to IP fray's post and our argument for Panasonic as we always favoured a global rate setting by the UPC over splitting the competence between several courts. There would be a lot more to talk about ip fray's criticism and I do not want to go all the way. But there is one general thought that I think is missing in the analysis. The CJEU in Huawei ./. ZTE clearly favours that parties resolve their dispute by way of negotiations out of court. To this end, the CLEU prohibits “delaying tactics” (Huawei ./. ZTE, para. 65 and 71), which is also recognized by the EC (amicus brief, citing the passage from Huawei./. ZTE in para 51, also para. 43 at the end, and para 86). So, negotiation history is at least relevant, if it amounts to “delaying tactics”. Then, what else then “taking subsequent conduct into account“ could be meant by looking at “delaying tactics”? To me, this is precisely the difference to the UK, where it seems irrelevant what the implementer did before the court case started. So, there must be a way to look at what the parties did during negotiations when applying Huawei ./. ZTE at German courts and the UPC.