ip fray’s Post

Just to avoid or clear up several misunderstandings, let's clarify what ip fray ***actually*** wrote about the Unified Patent Court and #FRAND determinations as well as #antisuit injunctions: 1. FRAND jurisdiction ip fray made it clear that the UPC doesn't lack jurisdiction over FRAND terms when a FRAND defense is raised to patent infringement. Instead, the article was talking about two different aspects of this that are very important: 1.1 Can someone bring a free-standing FRAND claim? (And once a patent is deemd invalid or not essential, even a counterclaim arguably becomes free-standing.) That's where the Mannheim LD has serious and well-founded doubts. U.S. (Microsoft v. Motorola) and UK (Kigen v. Thales) have allowed free-standing FRAND claims, however. China, too, even in multiple cases by now. 1.2 Can the UPC *force* (i.e., order under the threat of sanctions) parties to enter into a license agreement on court-determined terms, the way the EWCA told Panasonic to grant an interim license to Xiaomi? No. The UPC can order someone to stop infringement, and that will often be enough to force an implementer into a license. But there is no such leverage over the patentee. The U.S., the UK and China can do that, however. And even German national courts if one agrees with a write-up by meanwhile-retired Judge Professor Kuehnen. 2. Is the UPC defenseless against antisuit injunctions? ip fray did NOT say that. The article has been 100% clear from the beginning. An entire (though short) paragraph talks about the fact that they may be able to impose sanctions on someone seeking an antisuit injunction. But can a patent holder go there and seek an anti-antisuit injunction? Even more so, can the patentee request one preemptively? That's where the UPC's jurisdictional limits come into play.

In pivotal #FRAND case, Munich appeals court struggles with two aspects of Huawei v. ZTE Corporation — and unnecessarily so Contrary to the preliminary view the Munich Higher Regional Court expressed at the VoiceAge EVS v. HMD hearing, it is indeed possible that an implementer makes no counteroffer, yet isn't enjoined. It's just that no one will take that unnecessary risk. Then there's a reference to security in Huawei v. ZTE, but the backdrop of that one is the German Orange-Book-Standard (2009) case law. The key part of Huawei v. ZTE (where the ECJ answers the questions) does not even mention security. There are scenarios where security is reasonably required: if both offers are FRAND, and if the parties agree to enter into a license agreement but leave the determination of the rate to a third party. https://lnkd.in/dQeRB4uK

First antisuit injunction attack on Unified Patent Court: NETGEAR asks U.S. district court for ASI against or interim license from Huawei; fears AASI On December 18, the UPC's Munich LD will hand down its judgment in a Huawei v. Netgear case over a WiFi 6 SEP. Apparently, Netgear fears the worst and is trying to subvert the UPC proceedings through a foreign antisuit motion. By requesting an interim license as a fallback to an antisuit injunction, Netgear's motion does nothing to alleviate concerns in the SEP ecosystem that interim licenses may be antisuit injunctions by any other name. The UPC now faces the question of how to respond to such conduct, and the issue has come up in its first FRAND decision that matters. In Philips v. Belkin, there was no FRAND defense, and Panasonic and OPPO have presumably settled. Netgear won't be the latest litigant to try to enjoin a SEP holder from enforcing a (potential) UPC injunction, so this question needs to be resolved one way or the other. All three legally qualified judges on the Munich LD panel (Presiding Judge Dr. Matthias Zigann, Judge Tobias Pichlmaier and Judge Edger Brinkman) have significant experience with antisuit injunctions. Two of them even made history in that regard. https://lnkd.in/d87BidJh

UK appeals court throws out Lenovo’s appeal of preliminary injunction bid designed to serve as #antisuit injunction against Ericsson in LatAm No quick fix in the UK. Lenovo had to refile a UPC lawsuit because it (intentionally) belatedly sought injunctive relief). They're now hoping for a U.S. antisuit injunction, but it remains to be seen whether the Federal Circuit desires to protect UK (not U.S.) jurisdiction over the FRAND licensing questions in the dispute. UK SEP case law, especially at the level of the England & Wales Court of Appeal, appears fairly balanced now (unlike German SEP case law). That level of balance should be the (minimum) goal for the Unified Patent Court to achieve. Another major EWCA decision has been scheduled for Thursday and may help Xiaomi Technology in its dispute with Panasonic. https://lnkd.in/dZgW7yfW

Two #FRAND firsts for the Unified Patent Court: first SEP settlement (Nokia-Verifone), first FRAND appellate hearing (OPPO-Panasonic) 1. Nokia asserted more patents (3) in German national court than the UPC (2) and would likely have obtained rather quickly some Munich and Mannheim injunctions over patents the courts were already familiar with (such cases are put on a faster track). Also, Verifone may not have been truly prepared to engage in protracted litigation in any court. Technically, this is still the first known SEP settlement involving UPC assertions. Nokia was represented by ARNOLD RUESS (counsel of record for CMS purposes: Jan Wergin) and Verifone by HOYNG ROKH MONEGIER's Klaus Haft. 2. Yesterday's UPC appellate hearing related to disclosures of relevant third-party agreements. OPPO is represented by Dr. Andreas Kramer (VOSSIUS; VOSSIUS & BRINKHOF UPC LITIGATORS) and Panasonic by KATHER AUGENSTEIN's Christopher Weber. https://lnkd.in/ggNCXxgn

NETGEAR running out of time against Huawei as next injunction could come down on January 9, patent exhaustion won’t move needle The Munich I Regional Court's Seventh Civil Chamber held a Huawei v. Netgear trial today. The technical merits were discussed in open court, and Huawei appears to be on the winning track. Non-technical defenses (FRAND and exhaustion) were discussed in a sealed courtroom, but it appears rather unlikely that Netgear will be the first implementer of a standard to prevail on a FRAND defense in Munich. The judgment will come down on January. Meanwhile, Huawei can begin to enforce its Unified Patent Court injunction. There is a carve-out for patent exhaustion, but Art. 29 UPCA has an important territorial limitation: the licensed component must have been placed on the market in the EU first. https://lnkd.in/dxfav5Ne

The UPC's Munich LD ruling challenges the EU Commission by emphasizing that SEP holders can fulfill FRAND obligations with pool offers alone. This sets a precedent for future SEP litigations, as the court expects implementers to respond constructively, reshaping the standards landscape. #SEP #WiFi6 #UPC #FRAND

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

The first "Vintage Year 2025" Unified Patent Court infringement action to have shown up in the publicly accessible part of the case register is a ZTE Corporation v. Samsung Electronics case in the Mannheim Local Division. Patent-in-suit: EP3905730 ("System information transmission method and device"). Panel: Presiding Judge Professor Peter Tochtermann, Judge Dirk Boettcher ("Böttcher" in German), third and possibly fourth judge to be appointed. Counsel for ZTE: TALIENS's Dr. Thomas Lynker. ZTE uses two different firms for its UPC and German cases against Samsung, the other being VOSSIUS (VOSSIUS & BRINKHOF UPC LITIGATORS) with Georg Andreas Rauh as lead counsel and Dr. Andreas Kramer. In the UK, ZTE is represented by Powell Gilbert this time.

EXCLUSIVE: Grand Chamber of European Court of Justice takes #patent case — question of cross-border jurisdiction Not even Huawei v. ZTE was put before the Grand Chamber. Now a case between two household appliance makers (BSH Hausgeräte v. Electrolux) involves a ten-country damages claim brought in the defendant's domestic jurisdiction and the question is what to make of the invalidity defense, given that national courts have exclusive jurisdiction over validity but in this case validity is merely a defense to infringement. https://lnkd.in/dBHGjqku