Abdelaziz Khatab’s Post

Opt out must be by all proprietors of all national parts of a European patent. That is what the UPC Court of Appeal ruled in its order of 4 June 2024 in Toyota v Neo Wireless on the interpretation of Article 83(3) UPCA: https://lnkd.in/erfR4YMp The Court stressed that for the transitional period, during wich national courts still may have jurisdiction regarding European patents, the legislator has expressly chosen that, as a default position, there is an automatic transition into the jurisdiction of the UPC and that it is possible to opt out of the jurisdiction of the UPC. The Court held that the interpretation, whereby all proprietors of all national parts must file the opt out Application, is in accordance with the default position chosen by the legislator. If not all proprietors of all national parts of an European patent file the opt out Application, the ‘default position’ stays in place.   For case law on article 83 UPCA: https://lnkd.in/eb823xtD   #upc, #upcnugget

👀 UPC’s must-sees : UPC_CFI_514/2023, 23 April 2024, VOLKSWAGEN, AUDI, TEXAS INSTRUMENTS v NETWORK SYSTEM TECHNOLOGIES 📝 Rule 158 (security for costs) : Weighing interests 🥥 In a nutshell: ◾ The Court has the discretion to order a security for legal and other costs. ◾  The security can be ordered at any time of the proceedings. ◾ Factors to be taken into account: financial position of the other party, existence of a legitimate and real concern that costs may not be recoverable, likelihood that a possible order for costs by the UPC may not, or in an unduly burdensome way, be enforceable. ◾ The court must weigh the position of the party who has not chosen to initiate the proceedings and the right of the claimant to an effective remedy and a fair hearing. ◾  Burden of proof is on the defendants. 📸 The facts: ◾ The defendants in an infringement action requested the claimant to provide a security for their costs in case the decision is in their favour. ◾ The claimant is a company based outside of the EU (in the USA). ◾ The company has only two employee, no physical assets, not productions means (facilities)The defendant had previously transferred the German part of the European patent to another company of the same group. ◾ The claimant initiated several infringement actions, in the US and before the UPC against different claimants. ⚖ Solution: ◾ The defendants did not provide concrete evidence of possible difficulties in the future enforcement of a decision against the claimant (in the USA). ◾ The registration of the claimant outside of the EU (in the USA) is irrelevant – the court cannot discriminate based on the origin of the parties. ◾  Evidence of insolvency risks has not been produced. ◾ The claimant’s light organisation is justified with its patent enforcement business. ◾ Claimant assets comprise intangible that could be seized at the defendants’ initiative . ◾  The balance of interests is in favour of the claimant and the request is dismissed. #ifyoudontknownowyouknow #UPC #JUB #unifiedpatentcourt #juridictionunifieedubrevet

👀 UPC’s must-sees : UPC_CoA_79/2024, 4 June 2024, Neo Wireless v Toyota 📝 Rule 5 (application to opt-out) : No partial opt-out 🥥 In a nutshell: ◾ According to article 83(3) UPCA and Rule 5.1(a) a valid opt out application requires that it is lodged by or on behalf of all proprietors of all national parts of a European patent. ◾ “a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period (…), shall have the possibility to opt out from the exclusive competence of the Court” does not mean that only one proprietor or applicant can validly declare an opt-out. 📸 The facts: ◾ The defendant in a revocation action contested competence of the UPC because they filed a request to opt-out from the jurisdiction of the court. ◾ The defendant had previously transferred the German part of the European patent to another company of the same group. ◾ The opt-out request had not been filed by the new owner of the German part of the patent. ◾ The claimant requested that the opt-out be held invalid. ⚖ Solution: ◾ The court of appeal interprets 83(3) UPCA by application of Article 31(1) of the Vienna Convention on the Law of Treaties (1969), by taking into account its object and purpose and concludes that there is no conflict with Rule 5.1(a). ◾ A valid opt out application requires that it is lodged by or on behalf of all proprietors of all national parts of a European patent. #ifyoudontknownowyouknow #UPC #JUB #unifiedpatentcourt #juridictionunifieedubrevet

The latest official UPC data up to the end of January 2024 shows the court’s caseload is continuing to grow. However, note that the 86 counterclaim number is inflated because it is a measure of each defendant in an infringement action that has requested a revocation. The number of actual cases in which there are counterclaims is 26. The infringement actions include the first two known NPE litigations: a December filing in Paris by ICPillar against 12 companies in the ARM Holdings Group; a January filing in Munich by Network Systems Technologies with Audi, VW and Texas Instruments the defendants. The plaintiffs in both cases are US firms asserting semiconductor-related patents (more details from JUVE Patent here: https://lnkd.in/egVeUkAP). The lack of NPE action at the court may have surprised some observers but not this one. European jurisdictions generally do not favour many of the kinds of assertion model that you see in the US. This is why those headline grabbing, apocalyptic warnings about the UPC encouraging “patent trolls” were always utterly ridiculous and mostly made in bad faith by people who knew they were talking nonsense. Funnily enough, many of the same people are now claiming the EU SEP licensing regulation is needed because SEP owners are monsters and FRAND-related litigation in Europe is running out of control. Plus ça change, plus c’est la même chose. https://lnkd.in/e6rHdr9F

#UPC #NPE. I fully agree. The foundational #NoC semiconductor technology now used by Texas Instruments, VW and Audi is decent European technology invented by Philips Electronics and prosecuted at the European Patent Office. The patents and respective exclusive rights are the well-deserved reward and much needed incentive for Philips’ immense investment into R&D. European industry should be proud of this, and must work harder to keep creating such technology in Europe in the future! The patents asserted here were then sold to Network Systems Technologies in a private equity transaction like any other. The European and German courts have always upheld the principle that patents are an asset which grants property rights to its owner - in line with the known rules of proportionality. And so will the #UPC! No need to hyperventilate about NPEs at the UPC.

#UPC -- Network System Technologies v #TI #VW #Audi -- What an exciting new case circling around #NoC technology!   Just a few additional comments on the article below:   1) While the UPC has not been flooded with cases from day 1, the case numbers are rising rapidly now! The efficiency gains with this new patent litigation system are just too convincing. It's a serious attempt to build the perfect patent court. Next to and in combination with the US District Courts and the ITC - the UPC will be the preeminent court for global patent litigation.   2) On injunctions and damage awards: Two of the patents asserted here expired last year. One of the patents is still in force. Certainly, winning an #injunction will remain the primary goal when filing European patent litigation. However, we believe that #damage awards will see a renaissance with the UPC. The market covered by the UPC is just so big. And under the UPC Agreement and Rules of Procedure the UPC will be able to quickly determine the amount of damages – much quicker than any case on the amount of damages we know from traditional German patent infringement proceedings.   3) For the successful resolution of global patent litigation cases a trustful and efficient trans-atlantic #cooperation is more important than ever. I would like to kindly thank Dan Stringfield and his team of Nixon Peabody LLP handling the parallel US litigation as well as Thomas Loureiro and Warren Hurwitz for the collaboration and the great #support my team and I are receiving. Much appreciated. Together, joined-up US and European patent litigation teams have the capabilities and the fighting spirit to take on the biggest and most complex cases.   4) It is good to see esteemed colleagues Klaus Haft of HOYNG ROKH MONEGIER and Jan Bösing of BARDEHLE PAGENBERG representing TI, VW and Audi on the defensive side. Looking forward to having a top-notch discussion of the facts and the law. Sebastien Versaevel Tobias Schönhöfer Diptanil Debbarma Simmons & Simmons

Today we publish the first in a new series of articles that provide a rundown of Unified Patent Court-related news. Our #UPC updates will include information on decided cases, details of forthcoming hearings, overall UPC statistics, and news regarding law firm hires and other UPC-related strategic decisions. Today's update includes: ▪ Information on why August 20 is set to be a busy day at the Court of Appeal ▪ Clarification from the CoA on serving a statement of claim to defendants outside the UPC's jurisdiction ▪ Details of upcoming hearings involving Audi/Volkswagen, Tesla, and Avago Technologies ▪ Use of English in proceedings becoming more common. ▪ An order concerning mushrooms ▪ New hires for BARDEHLE PAGENBERG. Read more here: https://lnkd.in/eMt8t3-d

$26.04 Million in Damages - Indian Courts not hesitant to grant high value of Damages: In IP enforcement proceedings, the Indian Courts are not hesitant to grant damages and even in relation to a high value of damages. Moreover, the Court can be innovative in assessing the quantum of damages to be awarded as is evident in the present judgement (enclosed). The Hon’ble High Court of Delhi granted a substantially high value of compensatory damages against Mobi Antenna Technologies (Shenzhen) co. Ltd. and other(s) in relation to a Suit for Patent Infringement by Communication Components Antenna Inc’s. whose predecessor Ten XC wireless, Inc. had initiated the Suit. The Plaintiff manufactured inter alia antennas, distributed antenna systems, etc. A decree of permanent Injunction was passed restraining the Defendant from manufacturing, using, distributing, selling, offering for sale and importing into India any product which Infringed the suit Patent (IN240893) of the Plaintiff. The Court held that punitive damages cannot be granted but in relation to compensatory damages, as the Plaintiff has succeeded in establishing Infringement, the Plaintiff is entitled to monetary compensation. The Defendant abandoned the proceedings midway. Thus, the Court could not ascertain the quantum of Infringement by the Defendant. The Court held that where the Patentee is a manufacturer of the patented product, reasonable profit that the Patentee would have earned if the Infringing product was actually sold by the Patentee would be a reasonable method to ascertain compensatory damages. The Court held that the estimated total lost market share figure provided by the Plaintiff cannot be accepted in the absence of any actual evidence in this regard and that it cannot be concluded with certainty that in the absence of Infringement by the Defendant, the entire market share would have gone to the Plaintiff. However, the Court in order ascertain the compensatory damages, has taken half the value of the estimated lost market share figure as provided by the Plaintiff and multiplied it by the estimated profit of each unit. In this respect, the Court has awarded damages of value at US$2,60,45,250 in addition to costs for the proceedings. #DelhiHC #IPD #Patents #PatentsEnforcement #Litigation #IntellectualProperty #IPR #Infringement #TradeMarks #CompnesatoryDamages #CivilSuit #10minRead

🚨 **UPC Decision Alert**: 🚨   📅 **Decision Date**: 18 September 2024   📍 **Court**: Court of Appeal of the Unified Patent Court   📌 **Case**: UPC_CoA_264/2024 APL_30168/2024 et al.   **Parties**:   • **Claimant**: Network System Technologies LLC (NST)   • **Defendant**: Audi AG  The UPC Court of Appeal, led by Presiding Judge Rian Kalden, upheld the Munich Local Division’s decision, rejecting Audi’s preliminary objections and its request under Rule 361 RoP. The core issue revolved around whether NST’s infringement claims were "manifestly bound to fail," as per Rule 361, which is reserved for clear-cut cases lacking any foundation in law. The court clarified that even in a front-loaded system like the UPC, a claimant does not have to pre-emptively include every argument and evidence in the initial Statement of Claim. The practical outcome: A general injunction can be requested which sets out in detail why one infringing embodiment, that is taken as an example, infringes the patent. A list setting out further embodiments with a similar structure can be further elaborated on at a later stage of the proceedings. #PatentLaw #UnifiedPatentCourt #IPLitigation #Audi #NST

Volkswagen Group's and AUDI AG's Unified Patent Court appeals of the Munich LD's denial to sustain certain early-stage objections against cases brought by Network System Technologies (NST) were rejected by the Court of Appeal (CoA): - It's OK for the court below to address damages jurisdiction for the UK & Northern Ireland (sic) at later stage of proceeding, if the questions is reached at all. - The court doesn't lack jurisdiction due to an allegedly invalid opt-out. - There is no standing issue warranting the outright dismissal of the case. - And the case won't be thrown out over allegedly unsubstantiated claims either. Panel: Presiding Judge Rian Kalden, Judge Ingeborg Simonsson and Judge Patricia Rombach. Counsel for NST: Simmons & Simmons's Dr Thomas Gniadek. Counsel for VW/Audi: BARDEHLE PAGENBERG's Dr. Jan Bösingösing, Saskia Mertsching and Monika Harten. https://lnkd.in/dhZViu8j