ip fray

The most interesting statement ip fray heard this week came from a major implementer of standards (in private conversation): "If we assume that Ericsson and Nokia are #FRAND, then the others are not FRAND." Now, there is obviously also Huawei, whose terms are (even more) moderate relative to portfolio size. But the implementer had a point that what everyone other than those three major SEP licensors wants is, relative to portfolio size, a whole lot more and often even insanely greater. The statement quoted above is food for thought, also in policy terms. While the source can't be disclosed, ip fray guarantees (and its founder would be prepared to testify under oath) that the quote is absolutely accurate and that no one in their right mind would dispute that the person who said so works in the IP department of one of the largest implementers in the world.

Having been the cheerleader for UK patent attorneys at the Unified Patent Court in my role as President of The Chartered Institute of Patent Attorneys I’ve just filed my own first defence to a #UPC revocation action. I now feel like I can look those who complain about the #CMS in the eye and say “I know 🙄”. Roll on the new European Patent Office UPC CMS! Thanks to my Beck Greener LLP colleagues Anna Hatt and Catherine Jewell for your help and support with this case.

Unified Patent Court judges not necessarily aligned on claim amendments in preliminary injunction proceedings: Court of Appeal to discuss soon Two orders came down today. One by the Court of Appeal (Presiding Judge (second panel) and judge-rapporteur Rian Kalden) says that the question of whether patent claim amendments are admissible in a PI proceeding will be discussed at an upcoming hearing in Abbott (represented by Taylor Wessing's Eelco Bergsma) v. SiBionics (represented by Simmons & Simmons's Dr Thomas Gniadek). The other, handed down by the Dusseldorf Local Division (Presiding Judge and judge-rapporteur Ronny Thomas), holds that if the claim amendment narrows the claim (which is generally the case, as it's the only way that a patentee can overcome an invalidity defense), it's always allowed under Rule 263(3) RoP. The plaintiff there is Valeo and the defendants are Magna International entities. Valeo is represented by Bird & Bird's Felix Roediger, Jonas Smeets, LL.M. and Fabian Saupe, supported by Valeo in-house patent attorneys Nicolas Cardon, Amandine Ricard and Florian SAADI. Magna is represented by HOYNG ROKH MONEGIER's Klaus Haft, Sabine Agé and Sebastian Kratzer as well as COHAUSZ & FLORACK patent attorney Jan Ackermann. https://lnkd.in/diaJhUm2

Today's precedential Federal Circuit decision in a nutshell: The key holding in SoftView v. Apple and Motorola Mobility (a Lenovo Company) is that the estoppel provision in 37 C.F.R. § 42.73(d)(3)(i), which prevents an applicant from obtaining "[a] claim that is not patentably distinct from a finally refused or canceled claim," relates only to new claims that one obtains at the relevant time, not to claims already issued at that point. That part is a victory for Alan Burnett, the patentee's representative in this appeal, and won him and his client a remand for further proceedings. A second point worth noting in the aftermath of Loper Bright is that the Federal Circuit (Judges Lourie, Bryson (author of per curiam) and Reyna) thinks the USPTO had rulemaking authority under the Patents Act with respect to that estoppel provision, but did not want to define the limits of that authority beyond the narrowest question relevant here. https://lnkd.in/dAkGcMQz

Another Unified Patent Court settlement and another language switch to language of patent-in-suit: 1) Canè S.p.A. (an Italian company) and FDE - France Développement Electronique have settled case UPC_CFI_419/2023 that was pending in the Paris Local Division. In the French-language proceedings, the plaintiff was represented by Preu Bohlig & Partner's Konstantin Schallmoser (who is admitted to practice before national courts in both Germany and France, thus apparently 100% comfortable to litigate in French), and the defendant by August Debouzy's Grégoire Desrousseaux. Judge Carine Gillet has ordered the dismissal of the case as a single judge. 2) The language-of-proceedings question in Roche Diabetes Care v. Tandem Diabetes Care and VitalAire (UPC_CFI_88/2024) was disputed and resolved in defendants' favor. Roche sued in German, and there is also an allegedly related litigation in German national court. The patent was granted in English, and there are two Tandem defendants from non-German-speaking countries (USA and the Netherlands), leaving only one defendant (VitalAire) that is registered in Germany, and being an Air Liquide company, English is used within its corporate group. So the defendants requested switching to English. Defendants' interests are given great weight in the language-of-proceedings context. Here, Roche has to live with the fact that it now has to litigate in the language of the patent as it is more convenient to the defendants. Counsel's language is given no weight at all in accordance with controlling UPC case law. The decision was made by the President of the Court of First Instance, Florence Butin. Roche is represented by KATHER AUGENSTEIN's Dr. Christof Augenstein, Tandem by Taylor Wessing's Charlotte Garnitsch and VitalAire by HOYNG ROKH MONEGIER's Dr. Christine Kanz.

In Abbott v. SiBionics, the Unified Patent Court's Court of Appeal will soon discuss, at the oral hearing, the question of whether auxiliary requests to amend the patent-in-suit are allowed in a preliminary injunction (PI) proceeding. Presiding Judge and judge-rapporteur Rian Kalden told Abbott that raising this issue foreseeably had the potential to delay the appellate proceedings. Abbott is represented by Taylor Wessing's Eelco Bergsma, and SiBio by Simmons & Simmons's Dr Thomas Gniadek. https://lnkd.in/d3zmpCBd

In Daedalus Prime v. Xiaomi Technology, the Unified Patent Court's Hamburg Local Division (Judge-rapporteur Dr. Stefan Schilling) denied a motion by the defendant for an extension of time for their answer to the complaint (and possibly revocation counterclaim). Xiaomi argued that coordination with supplier MediaTek, who really knows how the relevant components operate, slows them down, even more so as confidential information is involved. The judge disagreed and suggested Xiaomi should have invoked Rule 262A for the protection of confidential information to streamline the process, and says the UPC's standard timelines are meant to allow for coordination between defendants and suppliers. Moreover, the judge was concerned about how a further delay would impact the patentee, given that there is not only a potential revocation counterclaim to the infringement complaint but also a standalone revocation action in the Paris Central Division. The plaintiff is represented by peterreins schley's Dr. Marc Grunwald, and the defendants by BARDEHLE PAGENBERG's Prof. Dr. Tilman Müller-Stoy. https://lnkd.in/dXhsNCDt

The days of the reign of CMS workflow terror are numbered, but for now the Unified Patent Court's Mannheim Local Division (Judge-rapporteur Dirk Boettcher) still has to explain to two defendants how to start a new workflow to follow proper procedures for registering a USB stick as an exhibit. The defendants, NUC Electronics Europe GmbH and Warmcook, are represented by Preu Bohlig & Partner's Dr. Christian Kau; the plaintiff, Hurom (of Korea), is represented by HOYNG ROKH MONEGIER's Klaus Haft. https://lnkd.in/dksxADUE

Here's a key holding from today's Federal Circuit opinion in Sherwin-Williams v. PPG (22-2059): "[a] unilateral covenant not to sue on the parent patents did not create an implied license for continuation patents."

ASUSTeK affiliate suing Lenovo in Unified Patent Court as well as Munich I Regional Court: September trial One patent is being asserted in the UPC, where the complaint was filed about a month ago, and another in the Munich I Regional Court, where Innovative Sonic already sued last year and a trial will be held in mid-September. Both patents name inventors who are or were ASUSTeK employees, suggesting a connection with a dispute that started last November with Lenovo's U.S. International Trade Commission complaint against ASUSTeK. In the UPC and presumably also in the Munich I Regional Court, Innovative Sonic is represented by Wildanger Kehrwald Graf v. Schwerin & Partner mbB Rechtsanwälte's Dr. Alexander Reetz, and Lenovo by Freshfields Bruckhaus Deringer's Dr. Nina Bayerl. https://lnkd.in/dTStQuAJ