VOSSIUS & BRINKHOF UPC LITIGATORS

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐏𝐚𝐭𝐞𝐧𝐭 𝐫𝐞𝐯𝐨𝐤𝐞𝐝 𝐢𝐧 𝐍𝐚𝐧𝐨𝐒𝐭𝐫𝐢𝐧𝐠 𝐯. 𝐏𝐫𝐞𝐬𝐢𝐝𝐞𝐧𝐭 𝐚𝐧𝐝 𝐅𝐞𝐥𝐥𝐨𝐰𝐬 𝐨𝐟 𝐇𝐚𝐫𝐯𝐚𝐫𝐝 𝐂𝐨𝐥𝐥𝐞𝐠𝐞 In a merits decision (https://lnkd.in/eaKcRCWG) between NanoString Technologies (claimant) v. President and Fellows of Harvard College (defendant), the CD Munich revokes the patent in its entirety. The CD concludes that the main request lacks novelty, while the auxiliary requests either lack inventive step or novelty. The decision aligns with earlier decisions on the same patent: (1) the LD Munich’s denial of a preliminary injunction (UPC_CFI_17/2023), and (2) the German Federal Patent Court’s finding of invalidity of the German part of the patent, which is currently under appeal. Besides Germany, the patent in suit was in force in the Netherlands and France. First, the CD examines its international jurisdiction on its own motion, despite parties' agreement to submit to the UPC’s jurisdiction. In the light of the parallel German invalidity proceedings, the CD applies the Brussels I recast Regulation. ▪ Art. 29 and 31 Brussels I recast on lis pendens are not applicable, as the parties in the two proceedings are not the same. The fact that both parties belong to the same group of companies and have the same parent company is not sufficient (CoA, Mala/Nokia, https://lnkd.in/eDh3F4d7). ▪ Art. 30 Brussels I recast on related actions is applicable, but the CD decides not to stay proceedings. The CD finds that the interests of the party and the procedural economy outweigh the risk of contradictory decisions. Relevant factors include: the legal certainty requested by both parties, the advanced stage of the present case, and the fact that the Dutch and French parts of the patent are not affected by the German proceedings. In its assessment of validity, the CD finds that claim 1 as granted lacks novelty over prior publication Göransson, which directly and unambiguously discloses all features of claim 1. The CD then examines the auxiliary requests: ▪ Auxiliary request 1 lacks inventive step. Göransson is a realistic starting point, and it was obvious for the skilled person to transfer the method of Göransson to an in situ context, thereby arriving at the claimed subject matter. “Problems” raised by defendant would not have caused the skilled person to not have a reasonable expectation of success. ▪ Auxiliary requests 2-8 fail to overcome the deficiencies established in the earlier claims. ▪ New auxiliary request 2 is late-filed and inadmissible. Defendant’s argument that it awaited the CoA's PI decision is insufficient. Claimant’s claim interpretation followed by the CoA was already known to defendant from the present merits, i.e. before the CoA’s decision. Defendant could and should have filed the auxiliary request earlier. ---- For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu #upc #news #unifiedpatentcourt #iplaw #upcnugget VOSSIUS Brinkhof

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐏𝐈 𝐫𝐞𝐣𝐞𝐜𝐭𝐞𝐝 𝐢𝐧 𝐄𝐫𝐢𝐜𝐬𝐬𝐨𝐧 𝐯. 𝐀𝐒𝐔𝐒𝐓𝐞𝐊 𝐚.𝐨. In a PI decision (https://shorturl.at/wdJmp) between Ericsson (applicant) v. ASUSTeK, Arvato and Digital River Ireland (defendants), the LD Lisbon rejects the requested measures due to lack of urgency. Nonetheless, the LD continues to establish, prima facie, the validity and infringement of the patent. First, the LD assumes competence and rejects the defendants’ arguments (Art. 33(1)(a) UPCA). ▪ The alleged lack of competence due to lack of infringing acts does not challenge the territorial connection. It must be considered as a defence on the merits. ▪ The alleged inapplicability of Art. 33(1)(a) UPCA to intermediaries is incorrect. It requires an objective link which refers to the place of the infringement, and not to the quality of the accused infringer. The LD then assesses the requirement of urgency, considering that the prevention of irreparable harm is a fundamental factor to be taken into account in granting provisional measures (however, irreparable harm is not a necessary condition according to the CoA, https://shorturl.at/bMEsg). The burden of proof lies with the applicant, who must demonstrate that it acted diligently and without unreasonable delay. The LD finds that the applicant failed to do so. ▪ The alleged infringement began in 2019/2021, yet applicant did not act. Defendants argued that applicant must have been aware of the alleged infringement due to (1) widespread knowledge of the launched products, and (2) previous US proceedings brought by applicant concerning the accused products. ▪ Based on the above, the LD agrees with the defendants that the launch of the product should have been noticed by the applicant. Applicant did not refute this claim. ▪ Furthermore, the burden of proof requires applicant to provide the precise date on which it became aware of the infringement, especially when no other evidence clarifies the timeline of the infringement. The applicant failed to do so. Despite the rejection of interim measures, the LD then prima facie assesses the questions of validity and infringement of the patent. ▪ The LD finds that the patent is prima facie more likely to be valid than not; arguments of added matter and lack of novelty and inventive step are rejected. ▪ Interestingly, the LD notes that an applicant cannot file an auxiliary request in PI proceedings under R.30 RoP (we are still awaiting clarity on this topic from the CoA, https://shorturl.at/N4Hhj). ▪ The LD then considers it prima facie more likely than not that defendants offer/sell the contested products. The owning of internet (sub-)domains on which the products are offered, and the storing of the contested products for the purpose of their sale constitutes an infringement (Art. 25(a) UPCA). -- For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu #upc #news #unifiedpatentcourt #iplaw #upcnugget VOSSIUS Brinkhof

VOSSIUS & BRINKHOF UPC LITIGATORS represent Oppo in the first-ever FRAND and Frand Rate Determination proceedings before the Unified Patent Court (UPC). IAM recently published an article covering the details of this important case. The full article is available here (for subscribers): https://lnkd.in/d6d3rWpU For more information about our UPC cooperation, please visit our website: www.vossiusbrinkhof.eu #FRAND #SEP #IntellectualProperty #UPC Brinkhof VOSSIUS

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐏𝐞𝐫𝐦𝐚𝐧𝐞𝐧𝐭 𝐢𝐧𝐣𝐮𝐧𝐜𝐭𝐢𝐨𝐧 𝐢𝐧 𝐒𝐞𝐨𝐮𝐥 𝐕𝐢𝐨𝐬𝐲𝐬 𝐯. 𝐄𝐱𝐩𝐞𝐫𝐭 𝐚.𝐨. In a recent decision (https://shorturl.at/M8ajK) between Seoul Viosys (claimant) v. Expert e-Commerce (defendant 1) and Expert klein (defendant 2), the LD Düsseldorf grants a permanent injunction. The LD rejects defendant 2's Counterclaim for revocation and finds that the LED light on smartphones marketed by defendants falls within the patent’s scope of protection.   The LD confirms the admissibility of both the infringement action and the Counterclaim. The fact that the Counterclaim was brought only by defendant 2, does not preclude this. ▪ Claims against several defendants must be dealt with formally and substantively independently of each other. The actions of one defendant must not result in the (dis)advantage of another defendant. ▪ Defendants must each file a revocation counterclaim (R.25.1 RoP). If a defendant does not do so (while other defendants do), this defendant cannot challenge the patent’s validity if the proceedings are separated (R. 303 RoP). This is not the case here. The LD dismisses the Counterclaim for revocation, rejecting arguments on added matter, priority, and inventive step. For the latter, the LD refers to the interpretation of the LD Munich (https://shorturl.at/pdEDe), requiring an objective, case-by-case assessment that considers realistic starting points and whether the claimed solution would be an obvious next step for a skilled person. The LD concludes that the contested embodiments directly infringe the patent in suit. ▪ The offering and marketing of the LEDs creates a rebuttable presumption that the defendants are using, importing or possessing the contested embodiments for directly infringing acts (Art. 25(a) UPCA). ▪ Besides granting a permanent injunction (Art. 63 UPCA), the LD orders the defendants to provide information (Art. 67 UPCA) and to recall, permanently remove and destroy the infringing products from their distribution channels (Art. 64(2) UPCA). ▪ The defendants' argument that enforcement is disproportionate because the LEDs are a minor component of the phones is rejected. The claim does not specify damages and it has not been sufficiently demonstrated that the injunction disproportionally restricts the defendants' activities as electronics retailers. In the cost decision, the LD values the case at EUR 500,000 and applies the EUR 56,000 ceiling on recoverable costs separately to the infringement action and the counterclaim for revocation. As the parties acknowledged EUR 100,000 as recoverable costs at the hearing, the LD divides this amount equally between the two actions. Each defendant must pay half of the infringement action costs, with defendant 2 being liable for the costs of the dismissed Counterclaim. --- For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu #upc #news #unifiedpatentcourt #iplaw VOSSIUS Brinkhof

Back home after an intensive FRAND hearing before the Unified Patent Court in Mannheim last Tuesday. The biggest take-home message is that, at least primarily judging, the Mannheim local division seemed to assume jurisdiction and competence to decide on FRAND rate setting counterclaims. What further conditions apply, remains to be seen. It was a long day in the saddle with a start at 10 am and finish at 7:30 pm. A decision is scheduled for 6 December. The VOSSIUS & BRINKHOF UPC LITIGATORS technical team consisted of Dr. Thomas Schwarze, Mark van Gardingen, Ingo Lummer, Dr. Andreas Kramer, Hannes Obex and Maarten Groeneveld. Andreas, Hannes, Boukje van der Maazen and Daan de Lange completed the OPPO FRAND team. We had great support from our brilliant expert Philip Kline, our wonderful UPC co-counsels Tobias J. Hessel, Lea Prehn, Yang Cao and Judith Dany of Clifford Chance and the amazing UK team members James Marshall, Sarah Johnson and Mark Marfe of Pinsent Masons. Many thanks to our dear client OPPO for entrusting us with this matter.

Oppo v Panasonic. First Frand and Frand Rate Determination hearing ever before the UPC about to start in 30 Minutes. Impressive court room in the castle of Mannheim. VOSSIUS & BRINKHOF UPC LITIGATORS

A great first day in the Panasonic/OPPO trial at the UPC’s Mannheim Local Division (technical part). It was a pleasure working together on this with my wonderful colleagues from VOSSIUS & BRINKHOF UPC LITIGATORS and arguing invalidity and non-infringement! The trial will continue tomorrow with the FRAND part.

We just finished Day 1 for our client Oppo against Panasonic at the UPC’s Mannheim Local Division: the technical trial. Stay tuned for tomorrow: the FRAND debate will then take place! Our great VOSSIUS & BRINKHOF UPC LITIGATORS team arguing invalidity and non-infringement consists of Dr. Andreas Kramer, Hannes Obex, Dr. Thomas Schwarze, Ingo Lummer, Maarten Groeneveld & myself. Tomorrow’s FRAND hearing will additionally be argued by the equally great Daan de Lange and Boukje van der Maazen.

On our way in the train to Mannheim for the first Panasonic/Oppo trial before the UPC. VOSSIUS & BRINKHOF UPC LITIGATORS represent Oppo in these proceedings. Tomorrow first the technical trial will take place. On Tuesday we will discuss the first ever FRAND determination proceedings in the UPC. The technical team consists of Ingo Lummer, Mark van Gardingen, Dr. Thomas Schwarze and Maarten Groeneveld. The FRAND team consists of Dr. Andreas Kramer, Boukje van der Maazen, Hannes Obex and Daan de Lange. #UPC #FRAND

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐂𝐨𝐀 𝐨𝐧 𝐭𝐡𝐞 𝐝𝐢𝐬𝐜𝐥𝐨𝐬𝐮𝐫𝐞 𝐨𝐟 𝐅𝐑𝐀𝐍𝐃 𝐚𝐠𝐫𝐞𝐞𝐦𝐞𝐧𝐭𝐬 In a recent order of the CoA (ORD_48654/2024 o.a., https://shorturl.at/4Exfj), between OPPO (appellant, claimant in main proceedings) v. Panasonic (respondent, defendant in main proceedings), the CoA rejects OPPO’s appeal. According to the CoA, the Court of first instance (CFI) correctly exercised its discretion in rejecting OPPO’s R.190 request for disclosure of FRAND agreements. ▪ First, the CoA clarifies that a R.190 RoP request for an ‘order to produce evidence’ may be made by any party that has presented all reasonably available evidence and seeks documents under the control of the opposing/third party. Such requests are available to both claimants and defendants, as this ensures the accessibility of necessary evidence in accordance with the equality of arms. Applying CJEU antitrust case law on the disclosure of evidence the CoA comes to the following guidelines: ▪ Courts must carry out a thorough examination of the R.190 RoP request, in particular with regard to the evidence requested, the connection between the evidence and the claim, the given specification of the evidence and its proportionality (C-163/21). ▪ Courts should limit the disclosure of evidence to what is strictly relevant, proportionate and necessary (C-57/21); excessive or general requests for disclosure do not meet this requirement (C/2020/4829). In the present case, OPPO sought disclosure of Panasonic’s license agreements to support its FRAND defense. The CoA assesses the following: ▪ Considering the principles of relevance, proportionality, and necessity, the court found that OPPO's request could still be addressed at a later stage, as issues like the willingness to license and the justification of the FRAND offer have not yet been decided. ▪ The CFI was therefore justified in exercising its discretion to reject the R.190 RoP request at this stage. In conclusion, the order highlights the discretion of the judge-rapporteur to structure the proceedings and leaves open the possibility for the CFI to revisit the request once key issues relating to FRAND are more fully developed. OPPO was represented by VOSSIUS & BRINKHOF UPC LITIGATORS in this appeal. ----- For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu   #upc #news #unifiedpatentcourt #litigation #iplaw #upcnugget VOSSIUS Brinkhof N.V.