UPC CFI, LD Mannheim, 22 November 2024: permanent injunction regarding SEP - no FRAND objection

Infringement of 4G standard essential patent: permanent injunction granted (Article 63 UPCA), Order to communicate information (Article 67 UPCA), Award of damages, provisional damages of € 250.000 (Article 68 UPCA). 

Given the interpretation of the patent claim (Article 69 EPC): The patent is valid, revocation dismissed. No added subject matter (Article 138(1)(c) EPC. Priorities are validly claimed (Article 87 EPC). The invention is sufficiently disclosed (Article 138(1)(b) EPC). The patent involves an inventive step (Article 56 EPC) Attack solely based on incorrect interpretation of the claim. 

Left open whether document was capable of being taken into account. In principle, the revocation claimant is required to raise its attack already with the revocation counterclaim  (R. 25.1 RoP). 

Permanent injunction granted (Article 63(1) UPCA). Risk of repetition due to the infringing acts committed by the defendant in the past in the contracting states asserted in the present case. An understanding of a SEP as a chipped title for the enforcement of injunctions, which only serves to enforce higher licence fees, is irreconcilable with European law (Article 11 Enforcement Directive). 

Injunctive relief not precluded by FRAND objection (Article 102 TFEU). While the Plaintiff has behaved in accordance with the ECJ's programme of obligations addressed to it as SEP holder, the Defendants have not behaved in a targeted manner and in accordance with the practices of a party seriously interested in taking a licence in the negotiations for a FRAND -compliant licence within the meaning of the negotiating programme developed by the European Court of Justice in Case C-170/13 – Huawei v. ZTE, ECLI:EU:C:2015:477.

IPPT20241122, UPC CFI, LD Mannheim, Panasonic v Guangdong OPPO