Marks & Clerk’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.

UPC & SEPs: jurisdictional limits concern free-standing #FRAND claims, antisuit injunctions while U.S. and UK courts enjoy greater powers The Unified Patent Court's first trial involving a FRAND defense is over, though it probably won't matter immediately as the technical merits of the patent-in-suit are doubtful. A second trial never really took off as the case had to be stayed right at the outset, further to a UK appellate decision. The article discusses not only jurisdictional questions but also the sequential application of Huawei v. ZTE as opposed to the German Sisvel v. Haier stance. https://lnkd.in/dYFDycRz

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.

November 2024 saw the Unified Patent Court #UPC issue its first decision involving a Standard Essential Patent #SEP and a #FRAND defence.   The Mannheim Local Division (LD) granted Panasonic an injunction enforceable in five European countries, dismissing OPPO’s FRAND objection and counterclaim. To find out more about this landmark UPC decision, please click here: https://lnkd.in/eJYszeC7

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

Our Federal Circuit Update summarizes the current status of a new petition pending before the U.S. Supreme Court, a Federal Circuit en banc decision regarding the obviousness inquiry for design patents, and recent Federal Circuit decisions concerning standing, finality, personal jurisdiction, printed matter doctrine, and interferences under the pre-AIA statute. #SCOTUS #FederalCircuit #IP #AIA

The first FRAND ruling of the Unified Patent Court (UPC) was long awaited and gave an idea of the new court’s stance on FRAND issues. Join our webinar on 22 January 2025 to gain deeper insights into the latest developments under the UPC and an in-depth Fireside Chat discussing key insights from the two landmark cases Panasonic vs. Oppo and Huawei vs. Netgear. Pippa Wheeler, Senior Litigation Counsel at HP Deutschland GmbH, and our partners Erin Gibson and Dr. Constanze Krenz will explore the following questions with you: - What implications do these cases have for SEP holders and licensees? - How did the UPC handle the disclosure of evidence and the protection of confidential information? - What might be the UPC’s future role in setting FRAND rates? - How could competition and the relationship between the UPC and other courts evolve? Register here for the free webinar: https://lnkd.in/eBfvuxme Find out more about the webinar here: https://lnkd.in/eavBnRsh Our further UPC key contacts partners Dr. Philipp Cepl, Gualtiero Dragotti and Frank Valentin look forward to your participation! #UPC #webinar #event #crossingnewhorizonstogether

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 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