Philipe Walter’s Post

This Unified Patent Court decision, if the standard was adopted UPC-wide in a non-nuanced fashion, could raise transparency concerns as even the mere denial of infringement allegations would be deemed a technical secret. The Dusseldorf LD granted a protective order sought by Apple as it is defending itself against Spain's Ona Patents. Two parts of the protective order are unsurprising: information on Apple's profit margins as well as the names of people who have certain technical knowledge (as third parties could otherwise attempt targeted attacks to obtain that information) are reasonably categorized as confidential business information. But another part is this: Apple wanted part or all of its technical defense pleadings sealed, and Ona Patents argued that those passages don't explain what Apple's products do but merely what they do *not* do (a denial of practicing the patented invention). Presiding Judge Ronny Thomas also stated in a headnote that a "negative fact" (in terms of a denial of a fact, unrelated to whether it's good or bad) may constitute confidential information, such as a statement according to which a given product does not come with a given functionality. That, per se, also makes sense, but what ip fray struggles with is the fact that according to the order it would be up to the non-moving party (here, the plaintiff) to explain why such denials are not confidential. The question is whether this burden should actually be on the party seeking to protect information that is a pure denial. For instance, the party should have to explain why its competitors or other third parties would learn something important if they merely learned that the accused products do NOT come with a certain functionality. Apple is represented by BARDEHLE PAGENBERG: Prof. Dr. Tilman Müller-Stoy, Dr. Tobias Wuttke, Dr. Jan Bösing, Dr. Ronja Marie Schregle, Nobuchika Mamine, LL.M., Saskia Mertsching, Antje Weise and (also from Bardehle) patent attorneys Johannes Lang, Christof Karl (who is dual-qualified as patent attorney and attorney-at-law, the latter even in two jurisdictions), Dr. Johannes Möller, Preston RICHARD and Michael Horndasch. One Patents is represented by KATHER AUGENSTEIN: Dr. Christof Augenstein, Dr. Benedikt Walesch, LL.M. and Dr. Melissa Lutz. https://lnkd.in/d6jFgzDW

#FRAND news from the Unified Patent Court's Court of Appeal: In Panasonic v. OPPO, the CoA has thrown out an appeal by the defendant over two document production requests that the Mannheim LD had decided against OPPO: - While Panasonic put forward three comparable license agreements, OPPO wants to see whether there are other Panasonic license agreements with third parties that are more instructive with a view to OPPO's FRAND counterclaim. - OPPO also wanted a motion to compel directed at itself so it could put some of its own agreements with other parties on the table. On both counts, the issue was that the CoA did not find an abuse of case management discretion in the Mannheim LD's denial: - It is unclear whether the UPC's Mannheim LD has jurisdiction over OPPO's FRAND counterclaim. Therefore, the court felt (and the appeals court agreed) it was too early to decide whether Panasonic had to produce those other contracts. Depending on how things evolve, they may be allowed to renew their request. - Before OPPO can get an order to compel itself to produce certain documents, it has to ask those contractual partners for permission. ip fray doubts that third parties would waive confidentiality, but the court wants them to try and then they can come back and ask for a document production order. It will be interesting to see the week of October 7 (and when a subsequent decision is made) what happens to that FRAND counterclaim. It's not a straightforward "please set a global rate" request but a bit gerrymandered: they want a UPC determination for some (rather affluent) markets and a Chinese FRAND determination for more price-sensitive markets. Given the European Commission's amicus curiae brief in VoiceAge EVS v. HMD, the UPC should not adopt the German Sisvel v. Haier doctrine, but it's too early to predict what the Mannheim LD will do. It could be that OPPO will be deemed an unwilling licensee on a basis on which the European Commission believes the Huawei v. ZTE analysis must continue. In that case, Panasonic's other license agreement would become very relevant as the next step after a request by OPPO for a FRAND offer would be for the SEP holder's offer to be FRAND. Panel: Presiding Judge Rian Kalden, Judge Ingeborg Simonsson and Judge Patricia Rombach (the latter was on the Sisvel v. Haier panel, but given that there is no dissent in German judicial proceedings, it's not certain that she voted in favor of that one). Counsel for Panasonic: KATHER AUGENSTEIN's : Dr. Christof Augenstein,Dr. Benedikt Walesch, LL.M. und Marco Berlage. Counsel for OPPO: VOSSIUS & BRINKHOF UPC LITIGATORS' Rien Broekstra, Dr. Andreas Kramer, Hannes Obex, Boukje van der Maazen and Maarten Groeneveld. https://lnkd.in/ddRZFQqm

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

This morning, the Unified Patent Court's Dusseldorf Local Division entered a discovery order (https://lnkd.in/d8BrG9aW) in the Dolby Laboratories v. HP case in which patent pool administrator Access Advance LLC was allowed to intervene (as ip fray reported four weeks ago: https://lnkd.in/dUBYtcZj) because the FRAND compliance of its terms was disputed by the defendant entities. HP unsuccessfully sought to limit access to information concerning its bilateral licensing negotiations to Access Advance's counsel, withholding that information from any of its employees. At least that was HP's preference, the minimum objective being to limit the number of persons who would be granted access. The court held that an intervenor must have equivalent rights as a party (as opposed to just being enabled to share information with the party it supports) and decided that one Access Advance employee will therefore get access, obviously just for the purposes of this particular litigation. The decision does not hinge on, but does mention, the fact that the defendants' own election to raise arguments concerning the alleged FRAND non-compliance of Access Advance's pool rates gave rise to the latter's intervention. The order was handed down by Presiding Judge (and judge-rapporteur) Ronny Thomas. Dolby and Access Advance are represented by BARDEHLE PAGENBERG's Dr. Volkmar Henke and Dr. Tilman Müller as well as Georg Anetsberger, Dr. and Dr. Johannes Möller. 15 HP entities are represented by Freshfields Bruckhaus Deringer's Dr. Frank-Erich Hufnagel, Dr. Nina Bayerl, Dr. Stephan Dorn, Dr. Sabrina Biedermann, Eva Acker and Vanessa Romy Werlin.

A four-judge panel of the Unified Patent Court's Dusseldorf Local Division has affirmed a decision by Presiding Judge and judge-rapporteur's Ronny Thomas to relegate a decision on the admissibility of a subsequent auxiliary request to amend the patent to a later stage of proceeding *and* not to trigger a whole multi-round pleading process concerning the amended claims. The first part is about judicial flexibility in case management. The later-filed amended claims filed by Seoulviosys (with support from Seoul Semiconductor) against a German retail group named expert e-Commerce GmbH are now in a Schroedinger's Cat state. The box won't be opened until the actual decision is made, if ever (as the patent could be upheld without the court reaching that question). That part should not be controversial. The second part is also a matter of judicial discretion, but considerably trickier. Complete briefing on the amended claims would cause delay, and the UPC very much wants to keep its timelines. In the specific circumstances of this case, the court believes that it does not compromise the defendant's right to be heard (also since the court can take the defendant's interests into account when deciding on admissibility) and it also interprets the Rules of Procedure as if full briefing after the filing of subsequent claim amendments wasn't mandatory. Here, the court apparently considers the differences between the first set of auxiliary requests and the second so minor that full briefing appeared disproportionate. The court may very well be right in the case at hand, and chances are that the defendant requested a full briefing opportunity just to cause delay. An appeal of the underlying logic would, however, be interesting. Regardless of how much the governing statutes emphasize the speedy resolution of disputes, a patentee who proposes amended claims more than once *may* just have to live with the delay such tactical decision causes. A patentee should *arguably* have to decide: try to prevail without new amendments, or accept delay. And it may just be a lack of flexibility in the UPC's rules that the court can't shorten the time for briefing on minor changes (e.g. 3 weeks instead of 2 months). Panel: Presiding Judge and judge-rapporteur Ronny Thomas, Judge Dr. Bérénice Thom, Judge Mojca Mlakar, Technically Qualified Judge Alessandra Sani. The plaintiff and its supporting intervenor are represented by Linklaters's Dr. Christopher Bolko Ehlgen and Dr. Julia Schönbohm as well as Schneiders & Behrendt's Dr. Olaf Isfort, and the defendant by Krieger Mes & Graf v. der Groeben's Dr. Dirk Jestaedt and HGF Limited's Bernhard Ganahl https://lnkd.in/d5ZRGYvx

This is the first judgment on the merits in a UPC infringement action. There have been judgments in preliminary injunction actions, but there the validity of the patent is only prima facie assessed as part of the decision on the injunction, it is not decided. However, depending on the wording of the judgment, such an assessment can be an important indication of the likely outcome of proceedings on the merits.

In a somewhat surprising move, the U.S. International Trade Commission has ruled that constitutional standing is no longer required at the ITC. The ruling was part of the public version of the Commission Opinion that issued yesterday afternoon in the -1351 Investigation involving Samsung Display, BOE, and several others. "Insofar as the Commission has previously applied a constitutional standing requirement in the past or suggested that it applies to section 337 investigations, that precedent is hereby overruled," the decision states. Statutory (sometimes called "prudential") standing still appears to be in place--at least framed as a prerequisite to bringing a section 337 action. That body of law requires that the complainant be the "owner" or exclusive licensee of the asserted patents, a determination made by asking whether the complainant holds "all substantial rights" in the patents. Yesterday's decision does not seem to disturb that requirement. On some level, this makes sense. The ITC isn't an Article III court, and so nixing the requirement for Article III standing seems logical. In my view, however, the statutory standing piece always seemed to have more teeth, and I'm curious to see what sort of impact this change has in practice. #patents #usitc #patentlitigation

EU SEP Regulation’s market power flaw exposed by #Qi lawsuits in Unified Patent Court, Germany: European Commission and European Parliament got it wrong You can have a patent that is essential to a standard, but if the standard is not commercially essential, you don't have market power. The ECJ recognized that fact in Huawei v. ZTE Corporation, as did the Dusseldorf Regional Court and (in an oral obiter dictum) the UPC's Munich Local Division in Philips v. Belkin. The Commission should withdraw its proposal because there are various issues such as this one that can't be easily fixed. You can't make an #antitrust finding before someone has to add a patent to a SEP Register or prior to a bilateral #FRAND determination. This here is not just unworkable and incompetent, it's also bad for innovation, competition and growth because it's actually a good thing if devices implementing Qi compete with devices implementing Apple Quick Charge, Samsung Electronics's Samsung Fast Charge, Google Power Profile (and ultimately all of them compete with traditional charging over a cable). Qi could even compete with another FRAND standard available to all comers. https://lnkd.in/dB4sF3Ht

🔔 What's been happening at the UPC? First infringement judgment in proceedings on the merits! The UPC Düsseldorf Local Division has issued its first infringement judgment in the case of Kaldewei v. Bette. Kaldewei filed the action for infringement of its patent EP 3 375 337, related to a bath tub device, while Bette counterclaimed for patent revocation. The court declared the granted version of EP 337 invalid due to lack of inventive step but upheld its validity in the modified version submitted by Kaldewei as an auxiliary request. The court also ruled that Bette both directly and indirectly infringed the contested patent and could not claim a right of prior use. As a result, the court prohibited Bette from marketing the infringing devices in Austria, Belgium, Denmark, France, Italy, Luxembourg, and the Netherlands. Additionally, Bette was ordered to recall the infringing products, remove them from distribution channels, and provide Kaldewei with necessary information to quantify the damages, including details on the origin, distribution channels, quantities sold, costs, and profits made. Read the full judgment here: https://lnkd.in/ejXPBMRi (in German) Evelina Marchesoni #UPCJudgment #PatentInfringement #KaldeweiVsBette #PatentLaw #EP337 #InnovativeStep #IntellectualProperty #PatentLitigation #UPCourt #LegalUpdate #PatentInvalidity #InfringementCase #PatentProtection #PatentRights #LegalNews #DüsseldorfCourt #PatentRuling #ProductRecall #PatentDamages

First UPC infringement judgment on the merits! #unifiedpatentcourt #upc #UPCJudgment #PatentLaw #IntellectualProperty #PatentLitigation