We previously wrote on obtaining injunctive relief in the United States1 and European jurisdictions2 for standard essential patents (SEPs). This follow-up article focuses on the evolving international implications for SEP portfolios based on developments at the Unified Patent Court (UPC), which launched on June 1, 2023.
Before filing a patent infringement suit, it is important for patent holders to understand the varying legal approaches to issuing injunctions and calculating FRAND rates in SEP cases. This is particularly true given the evolving case law related to SEP issues in international forums. In Europe, generally, an SEP holder must file patent infringement suits on a country-by country basis. However, the UPC allows plaintiffs to assert patents in one central proceeding covering multiple European jurisdictions.3
SEP Litigation at the UPC
Since opening its doors almost a year ago, the UPC has received over 300 cases across various industries.4 A majority of the infringement cases currently docketed in the court's case management system relate to the electronics sector (IPC class H - Electricity).5 SEPs are also already being litigated at this new venue.
Shortly after its launch, the UPC saw its first major SEP litigations in this new jurisdiction. On July 3, 2023, Huawei Technologies brought an SEP infringement action in the Munich Local Division against NETGEAR based on a patent related to the Wi-Fi standard.6 Since then, the number of SEP-related case filings has increased steadily, often as part of global patent disputes.
For example, Panasonic sued various OPPO and Xiaomi entities in July 2023 for alleged patent infringement.7 Based on six patents relevant to the WCDMA and LTE standards, Panasonic filed a total of twelve infringement actions with German Local Divisions either in Munich or Mannheim.8 In turn, the defendants filed counterclaims for revocation. As every defendant may bring its own counterclaims, a total of 60 counterclaims are currently publicly registered in the Court's case management system.9 Panasonic also brought national-level patent infringement suits in Germany, the UK, and China.10
Interestingingly, in one of Panasonic's UPC proceedings, the docket reveals a document (possibly a brief) submitted by OPPO entitled “[C]ounterclaim to a RAND determination rate for the UPC territory”.11 Although the document is not accessible to the public, the title suggests that the court might have been asked to determine a FRAND rate for the UPC territory, i.e., in the 17 European member states where the Agreement on a Unified Patent Court is signed, ratified and currently in force.12 The hearing is expected at the end of 2024.
These SEP disputes in the UPC are often part of wider
international strategies and ongoing litigation. Nokia has, for
example, separately sued Amazon and HP over SEPs and non-SEPs
covering video codec technologies in streaming services and
devices.13 According to public
information, this global patent dispute spans over the US, Germany,
the United Kingdom, and India against Amazon, whereas a US
International Trade Commission complaint and a further US District
Court lawsuit are pending in the dispute with HP.14 In
March 2024 Nokia launched further SEP infringement actions
asserting two European patents relating to cellular and Wi-Fi
technology against Verifone at the Local Divisions in Munich and
Mannheim.15
These cases show that the UPC is already attracting renowned global industry players, and there are likely to be more cases expected in the future.
Non-practicing entities have started to make use of the UPC
Non-practicing entities (NPEs) have started to assert patents in the UPC, although the cases do not yet appear to relate to SEPs. For example, at the end of 2023, ICPillar, a licensing company, launched an NPE lawsuit against ARM Limited and other defendants at the Paris Local Division alleging patent infringement of a patent protecting a “system and method for universal control of electronic devices.”16
Shortly thereafter, in January 2024, Network System Technologies
asserted three European semiconductor patents against Audi,
Volkswagen, and Texas Instruments Incorporated with the Munich
Local Division.17 The same NPE filed additional
infringement actions based on
the same patents against Samsung and Qualcomm at the Munich Local
Division.19 Furthermore, US-based technology company Cisco has been
accused by the Atlantic IP Services entity Lionra Technologies of
infringing a European patent before the Hamburg Local Division in
February 2024.19
It is likely only a matter of time before SEP cases are brought by NPEs in front of the UPC.
Development of relevant case law
So far, the UPC has issued more than 200 decisions and orders. While most of these early decisions and orders relate to procedural questions, consideration of some preliminary injunctions has already attracted attention. Even though those proceedings did not relate to SEPs yet, the preliminary injunctions that have been issued show that the UPC may resolve certain issues quickly.20
Furthermore, the Court of Appeal in the UPC system has already issued its first decisions. One such decision relates to the Ocado v. AutoStore matter.21 In this case, a member of the public had requested access to written pleadings on file. The Court of Appeal considered the conditions under which such access may be granted. With their decision, the judges stated that access depends on a balancing of interests between the applicant, the parties, and public interests, as well as the stage of the proceedings. This should enable more transparency and aid understanding of the UPC's decisions. Also, given the potentially sensitive nature of licensing and litigation documents in the SEP context, this decision may have further applicability to those cases before the UPC.
Another relevant order for UPC litigation was handed down by the
Mannheim Local Division on February 14, 2024, in the dispute
between Panasonic and Xiaomi.22 The court addressed how
a license agreement can be filed under a protective order to ensure
confidentiality. The
Mannheim Local Division addressed thirteen steps to be taken in
such a case. Noteworthy, such license agreements may be made
subject to a preliminary protective order before sharing them with
the representative of the opposing party and the adverse party at a
later stage. It remains
to be seen whether this confidentiality regime will be adopted by
the other UPC Divisions and accepted by the Court of Appeal.
Several orders on procedural issues, including service of actions, extension or shortening of filing deadlines, and change of language of the proceedings, have also issued. The first decisions on the merits are expected to issue in Q2 and Q3 of this year.
Conclusion
The UPC has the potential to become a popular venue to resolve
patent disputes in Europe, with likely impacts on a global scale.
The rising case numbers show that the court is gaining traction,
counting litigants among the largest international companies doing
business today. All
eyes will be focused on the first substantive decisions, in
particular relating to SEPs and the question whether the UPC will
determine FRAND rates.
Footnotes
1. Daniel Cooley, et al. Injunctive Relief for Standard Essential Patents, IP Litigator, May/June 2023.
2. Daniel Cooley, Injunctive Relief for Standard Essential Patents in International Jurisdictions, IP Litigator, January/February 2024.
3. About the Unified Patent Court, Unified Patent Court, https://www.unified-patent-court.org/en (last visited April 1, 2024).
4. Case load of the Court – update 29
March 2024, Unified Patent Court, Apr. 1, 2024,
https://www.unified-patent-court.org/en/news/case-load-court-update-29-march-2024.
Noteworthy the case number includes counterclaims
for revocation filed in infringement proceedings. Since every
defendant may file an own counterclaim, numbers of proceedings seem
higher than they are if you consider both infringement action and
counterclaim(s) for revocation
as a single matter. However, even then case numbers are already
above 150.
5. Id.
6. Case ID: ACT_459771/2023; Laura King, Amazon and Huawei end all patent litigation with cross-licensing deal, March 5, 2024, JUVE Patent, https://www.juve-patent.com/people-and-business/amazon-and-huawei-end-all-patent-litigation-with-cross-licensing-deal/.
7. Mathieu Klos, Panasonic's Global SEP Battle with Xiaomi and Oppo Kicks into High Gear, JUVE Patent, Nov. 20, 2023, https://www.juve-patent.com/cases/panasonics-global-sep-battle-with-xiaomi-and-oppo-kicks-into-high-gear/#:~:text=In%20July%202023%2C%20after%20years,the%20WCDMA%20and%20LTE%20standards
8. Case IDs: ACT_545619/2023, ACT_545620/2023, ACT_546122/2023, ACT_546092/2023, ACT_545562/2023, ACT_545535/2023, ACT_545604/2023, ACT_545606/2023, ACT_545551/2023, ACT_545615/2023, ACT_545770/2023, ACT_545817/2023.
9. Status as per April 16, 2024.
10. Case ID: UK High Court, HP-2023-000025; Regional Court Mannheim, 14 O 67/23; Regional Court Munich, 21 O 9429/23, 21 O 9854/23, 21 O 9855/23, 21 O 9856/23, 21 O 9428/23.
11. The name of the document is registered in German language, we translated it for this article; Case ID: ACT_545551/2023.
12. See https://www.unified-patent-court.org/en/organisation/upc-member-states (last visited April 19, 2024) (indicating that Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden have signed and ratified the Agreement, while Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia have signed only).
13. Case IDs: ACT_584119/2023 and ACT_588466/2023
14. Angela Morris, Nokia sues Amazon with video codec SEPs in US, UPC, Germany, and more, IAM-Media, Nov. 1, 2023, https://www.iam-media.com/article/nokia-sues-amazon-video-codec-seps-in-us-upc-germany-and-more.
15. Case IDs: ACT_13475/2024 and ACT_13491/2024; Adam Houldsworth, Nokia sues Verifone at UPC and in Germany in bid to expand IoT revenues, March 14, 2024, IAM-Media, https://www.iam-media.com/article/nokia-sues-verifone-upc-and-in-germany-seeking-expand-iot-revenues.
16. Case ID: ACT_596432/2023.
17. Case IDs: ACT_597691/2023, ACT_597692/2023, ACT_597693/2023.
18. Case IDs: ACT_8062/2024, ACT_8063/2024, ACT_8064/2024.
19. Case ID: ACT_7940/2024.
20. See the comment from Antje Brambrink on the case between myStromer AG v. Revolt Zycling AG here: https://www.finnegan.com/en/insights/articles/5-takeaways-for-litigants-from-early-eu-patent-court-ruling.html.
21. Case ID: UPC_CoA_404/2023, decision of April 10, 2024, see the comment from Antje Brambrink here: https://www.finnegan.com/en/insights/blogs/euro pean-ip-blog/upcs-court-of-appeal-paves-the-way-for-more-transparency.html
22. UPC_CFI_210/2023, Order of the Court of First Instance of the Unified Patent Court issued on 14 February 2024, https://www.unified-patent-court.org/sites/default/files/upc_documents/2024-02-14%20LD%20Mannheim%20UPC_CFI_210_2023%20App_596824-2023%20English%20anonymized.pdf.
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