SEP FRAND UPC case law

IPPT20260318, UPC CFI, LD Dusseldorf, Dolby v Beko

Patent valid and infringed. Permanent injunction granted (Article 25 UPCA , Article 65 UPCA , Article 63(1) UPCA). SEP/ FRAND Licencing - Abuse of dominant position (Article 102 TFEU, Article 20 UPCA). FRAND defence rejected because of a failure to appropriately express a willingness to conclude a licensing agreement (“step 2”). The FRAND negotiation program as per Hwawei v ZTE must be followed in order. It is not sufficient for the infringer merely to indicate a willingness to consider entering into a license agreement [….]. Rather, the infringer must, for its part, clearly and unambiguously declare its willingness to enter into a license agreement with the patent holder on FRAND terms, and must also subsequently participate purposefully in the license agreement negotiations.Plaintiff holds a dominant position in the licensing market (smart TVs), stemming from the fact that, without a license to the patent, no products compatible with the (Opus) standard can be offered. The decisive factor is that consumers expect as a de facto standard, (Opus standard) that smart TVs include all common audio and video codecs and can decode all content that is encoded accordingly by service providers used for encoding. Given the consumer’s expectations regarding the use of all common services, mandatory use is not necessary for the finding of a dominant market position.Lack of a FRAND declaration. Given the plaintiff’s dominant position in the relevant market, Article 102(1) TFEU applies regardless of whether a FRAND declaration was made. With regard to the fundamental classification of the FRAND negotiation program after Huawei v. ZTE, the Chamber concurs with the local chambers in Mannheim and Munich (Decision of November 22, 2024 – Panasonic v. OPPO) and Munich (Decision of December 18, 2024 – Huawei v. Netgear). The differences between the two local chambers in the application of the principles set forth in Huawei v. ZTE, these are irrelevant to the case at hand.

IPPT20251030, UPC CoA, Sun Patent v Vivo
Preliminary objection on jurisdiction and competence rejected. (Article. 32(1)(a) UPCA , Article 33 UPCA, Rule 19 RoP). UPC has jurisdiction to hear the main infringement claim, including a claim for an injunction.  (Article 32 (1 (a) UPCA). The main issue of infringement of an essential patent is undoubtedly linked to the incidental question of the FRAND offer, as a condition dependent on the main issue. The FRAND issue can be dealt with incidentally by the UPC according to consistent UPC CFI caselaw . Internal competence of first instance court (Article 33(1)(a) UPCA). The purchase and delivery of an allegedly infringing product via a French website establishing a link to France, is sufficient to establish competence. The claimant sufficiently showed a connection between all defendants and the alleged infringement. 

IPPT20250620, UPC CFI, LD Milan, Ericsson v Asustek
Panel review dismissed of confidentiality club order rejecting external eyes only (R. 262A RoP). On the specific issue of potential antitrust violation, Ericsson limited itself in a general way to arguing that there is a risky situation related to the disclosure of the financial aspects of the information, in particular because Ericsson’s licensees may be in direct competition with Asustek, this is in fact a mere statement of principle, generally applicable to all cases in which there is a legal dispute concerning a standard essential patent in the course of which a FRAND defense is raised. Admissible application for panel review of confidentiality club order (R. 262A RoP, R. 333.1 RoP). An order under rule 262A RoP influences the conduct of the proceedings and is thus an order directing the proceedings according to rule 333.1 RoP. 

IPPT20241218, UPC LD Munich, Huawei v Netgear
Injunction regarding SEP patent. Effective cancellation of opt out (Article 83(4) UPCA, Rule 5.7 RoP). The effective date of a cancellation of an opt-out is the date of entry in the register if no correction is requested from the registry. The only required form for the cancellation is the corresponding CMS workflow. The provided template is not a required form within the meaning of R. 4.1 RoP.. No lis pendens. A nullification procedure in a contracting member state over the patent at issue concerning a different party does not give rise to lis pendens (Article 29 Brussels Recast I). Exhaustion (Article 29 UPCA) In the context of patent law, restrictions in a licence agreement regarding the right to use products placed on the market on the basis of the licence have no influence on the exhaustion the occurrence of the exhaustion effects. The burden of proof for placing on the market in the European Union with the consent of the patent proprietor lies with the implementer. Insofar as the objection of exhaustion relates to all the challenged embodiments, it must be dealt with immediately in the proceedings. If the objection is successful, the action must be dismissed. If the objection of exhaustion does not relate to all the challenged embodiments, it depends on the circumstances of the individual case whether and to what extent the objection is to be dealt with immediately or only in the context of enforcement. FRAND Defence  (Article 25 UPCA), Article 102 TFEU). A declaration of willingness to licence should be assessed solely on the basis of the content, and not on subsequent conduct, should contain a declaration to that effect, and should not be confused with an offer/a counter-offer. A counter-offer from the implementer must be accompanied by a security at least in the amount of the counter offer, and must be accompanied by a binding undertaking that the patentee will receive the security as a licence payment if his offer ultimately is legally affirmed. Implementer cannot claim a patentee has a dominant market position if it also claimed the patent is not standard essential. The defendant (relying on FRAND defence) has the burden of proving the dominant market position of the patentee. The patent cannot give the patentee a dominant market position if the defendant also relies on the argument that the patent is not standard essential.

IPPT20240924, UPC CoA, Guangdong OPPO v Panasonic
Appeal against order rejecting a request for production of evidence admissible (R. 220.1(c) RoP, Article 59 UPCA). It does not matter whether the impugned order grants or rejects the request for production of evidence. On a proper interpretation of R.220.1(c) RoP, it should be understood as: “orders on applications referred to in …”. Order to produce evidence is not only open to a claimant, but also to a defendant, such as in the present case, an order to produce (counter)-evidence. (Article 59 UPCA, Rule 190 RoP, Article 6 Enforcement Directive). In case of a FRAND-defence an order to produce evidence (R. 190 RoP) must strike a balance between the defendant’s interest in obtaining evidence which may be useful for its FRAND-defence, and the interest of the other party and its contracting parties in protecting confidential information. Disclosure of evidence to be limited to what - at the discretion of the court – is strictly relevant, proportionate and necessary. Margin of discretion includes decision-making on the request in accordance with what the judge-rapporteur, the presiding judge or the panel has decided on the order in which issues are to be decided pursuant to R.334(e) RoP. The assessment of a request for an order to produce evidence may depend on the stage of the proceedings. Such a request may be considered not to meet the criteria of necessity, relevance and proportionality at one stage of the proceedings, but could be considered to meet those criteria at a later stage. Decision on reimbursement of legal costs in the final decision (Article 69 UPCA, R. 242 RoP, R. 118.5 RoP). R.242.1 RoP is to be interpreted to mean that if the decision of the Court of Appeal is not a final order or decision concluding an action, the Court of Appeal, in the case at hand, will not issue an order for costs in respect of the proceedings at first instance and at appeal.