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

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

For years, the CJEU-decision in Huawei vs ZTE Corporation and the ruling of the Federal Court of Justice in Sisvel vs Haier formed the basis for FRAND jurisprudence in Germany. Often this resulted in injunctions against implementers for being unwilling licensees, especially in Munich. In a dispute between VoiceAge Corporation and HMD, the Higher Regional Court Munich now sets out a new approach to the question of when an implementer can be considered unwilling. At the same time, VoiceAge scored another win in a parallel nullity suit.  #patentlitigation #FRAND

There's a NETGEAR v. Huawei case in the Central District of California, with the router maker trying to gain leverage in the U.S. (for geopolitical considerations) against WiFi 6 SEP infringement actions on other continents. The following is a footnote of Netgear's latest filing, made on Friday (4/12): "Huawei filed patent infringement lawsuits against NETGEAR seeking injunctive relief to prevent NETGEAR from selling its products in various jurisdictions throughout the world. [...] To date, Huawei has launched six cases in total: (i) two cases in the German Regional Court [of Dusseldorf] filed on March 2, 2022; (ii) two cases in the Jinan Intermediate People’s Court of China filed on May 10, 2022; (iii) and two cases in the Unified Patent Court ('UPC'), Local Division, in Munich, on July 3, 2023, and November 23, 2023, respectively." Currently they're fighting over service of process. Huawei told Netgear they'd be fine with a waiver of service, provided they get (as others did following the same kind of waiver) the usual 90-day period to answer to the complaint. Netgear instead wants the court to order alternative service and says that in any event, Huawei would at most be entitled to 60 days, not 90. Why is Netgear in such a rush? The footnote quoted above is the reason. They apparently fear injunctions coming down. What can the U.S. court do for them? Are they hoping for an antisuit injunction, which would them an unwilling licensee? The fight over service of process in this case is roughly as extensive as venue transfer disputes in other patent cases. It appears disproportionate. Netgear must fear that the window of opportunity for that U.S. lawsuit is closing fast.

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

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 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

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

IPWatchdog author Eileen McDermott writes: "The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a short precedential order yesterday denying a request by Cisco Systems, Inc. and Hewlett Packard Enterprise Co. to voluntarily dismiss their appeal of a Patent Trial and Appeal Board (PTAB) ruling for K. Mizra LLC."