UPC_CFI_100_2024_Aug01 – Ona v Google and Ona v Apple
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Entitlement to sue Facts After the written statements the Judge-Rapporteur (JR) stated that claimant’s statements about the ownership of the patent “appears to be slightly confusing”. The issues had (according to the JR) been dealt with in the Statement of Claim and Counterclaim “inadequately and inconsistently”. The Judge-Rapporteur (JR) 1. formulates 4 questions for the claimant and asks the claimant to comment on the ambiguities; 2. orders the claimant to submit 6 documents. Comment 1. Lesson for representatives: before you launch proceedings, get your act together! Very often entitlement questions can be tricky because some companies make a mess of the documentation. 2. The JR is to be praised. The Parties have apparently made a mess of it and the JR tries to help them to finally come up with a clear picture about entitlement.
Full Decision Text
1 Düsseldorf Local Division UPC_CFI_100/2024 UPC_CFI_411/2024 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 1 August 2025 concerning EP 2 263 098 B1 CLAIMANT: Ona Patents SL, represented by its Managing Director Raúl Diaz Morales, Carrer de Calàbria 149 En. 1, 08015 Barcelona, Spain, represented by: Attorney-at-law Dr Christof Augenstein, Attorney-at-law Dr Ben- edikt Walesch, Attorney-at-law Dr Melissa Lutz, Kather Augen- stein, Bahnstraße 16, 40212 Düsseldorf, Germany Patent Attorney Dipl.-Ing. Benjamin Bubendorfer, Patent Attorney M. Sc. Andreas Rauscher, WBH Wachenhausen Patentanwälte PartGmbB, Müllerstraße 40, 80469 Munich, Germany electronic address for service: augenstein@katheraugenstein.com COUNTER-DEFENDANT 2: Ekahau Oy, represented by the Board of Directors Jeremy Rossen, Brian Conrad Stewart und Ari Olavi Tourunen, Jaakonkatu 5, 00100, Helsinki, Finland represented by: Attorney-at-law Dr Christof Augenstein, Attorney-at-law Dr Ben- edikt Walesch, Attorney-at-law Dr Melissa Lutz, Kather Augen- stein Rechtsanwälte PartGmbB, Bahnstraße 16, 40212 Düsseldorf, Germany Patent Attorney Dipl.-Ing. Benjamin Bubendorfer, Patent Attorney M. Sc. Andreas Rauscher, WBH Wachenhausen Patentanwälte PartGmbB, Müllerstraße 40, 80469 Munich, Germany electronic address for service: augenstein@katheraugenstein.com DEFENDANTS: 1. Google Ireland Limited, represented by its directors Elizabeth M. Cunningham, David M. Sned- don, Vanessa Hartley, Colin Goulding, Amanda Storey, Gordon House, Barrow Street 4, Dublin 4, D04 V4X7, Republic of Ireland 2 2. Google Commerce Limited, Gordon House, Barrow Street, Dublin 4, D04 E5W5, Republic of Ireland represented by: Attorney-at-law Dr Marcus Grosch, Attorney-at-law Dr Jesko Preuß, Attorney-at-law Dr Andreas Hahne, Quinn Emanuel, Her- mann-Sack-Straße 3, 80331 Munich, Germany electronic address for service: marcusgrosch@quinnemanuel.com PATENT AT ISSUE: European patent n° EP 2 263 098 B1 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This order was issued by Judge Dr Thom acting as judge-rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: R. 9.1, R. 35 RoP GROUNDS FOR ORDER: In light of the previous written submissions by the parties, supplementary presentations and the submission of documents are necessary in the written procedure. 1. Claimant´s statements concerning the ownership of the patent in suit appears to be slightly confusing. Similar issues are raised in the claim and counterclaim and are currently dealt with inadequately or inconsistently. It should be noted that the exhibits must be placed in the correct context and must be cited correctly. Simply referencing statements in the exhibits is no sufficient presentation. Apart from the German part of the patent in question, which has now been registered, and its legal assessment in the context of R. 8.5(c) RoP, the French part has not yet been registered. The question of the validity of the three alleged assignments therefore appears to be of interest. a) In view of the parties submissions, the Court understood that Claimant did not state that […] was authorized to solely represent “Ekahau Oy“ on February 29, 2016 signing the first patent assignment agreement. Only the legal opinion on Finnish law (Exhibit KAP 12) states that ”[o]n 28 February 2016, the Board of Directors of Ekahau Oy passed a resolution authorizing […], a board member, to act on behalf of Ekahau Oy and sign the APA and related documents” (Exhibit KAP 12, p. 2). However, the Claimant did not submit such a resolution nor the APA. Instead, Claimant relies on an the retroactive approval of the first assignment of the patent made by their representatives in this litigation proceedings referring to a (first) power of attorney for Ekahau Oy as counterdefendant 2 (Exhibit KAP WK 1). This power of attorney was signed by […] in Los Angeles 3 in October 2024. After Defendants argued that the power of attorney is null and void, as there is no indication that the signatory of the power of attorney was authorized to represent “Ekahau Oy“, the Claimant presented a second power of attorney signed by Mr. […], registered Chairman of the Board of Directors of Ekahau Oy, in Los Angeles in December 2024 (Exhibit KAP WK 4). In this context the following questions remain: Which law is applicable to the assignments of the different parts of the patent? Which power of attorney is relevant for the retroactive approval of the first patent assignment according to the Claimant? Which part of the (relevant) power of the attorney covers the retroactive approval of the patent assignment of 29 February 2016? Why should a “retrospective approval” have also led to the validity of the second and third patent assignments (9 March 2023/19 December 2023) which have been made at a time at which “Ekahau Oy” was still the proprietor of the patent in suit? Again, which law is applicable? Which requirements do have to be met here and why are they met? If other legal systems than German Law are relevant, the presentation must include corresponding documents (such as excerpts from relevant laws and case law). b) Regarding the question of […]'s authorisation, the Claimant replaced Exhibit KAP 14 with Exhibit KAP WK 6. The Claimant stated that the document authorising […] for AiRISTA Flow, Inc. had been signed by an incorrect person. A comparison of both documents reveals that not only the signatory is different, but also the dates differ. The Claimant shall provide further clarification on which document is correct and explain why. c) The Finnish legal opinion (Exhibit KAP 12) refers to documents that are not yet part of the file and shall be added. 2. In the light of this order, the requests pursuant Rules 190.1, 191.1 and 36 have been rendered obsolete. Therefore, this order will be also uploaded in the respective workflows to finish them. ORDER: 1. The Claimant shall have the opportunity to comment on the ambiguities and questions raised by the Court by 20 August 2025. 2. Within the same deadline Claimant shall provide the following documents: the Asset Purchase Agreement ("APA”) which the first patent assignment agreement is referring to the Share Purchase Agreement of 26 February 2016 the amended Articles of Association of AiRISTA International Oy on 26 February 2016 the relevant document showing that, the Board of Directors of AiRISTA lnternational Oy resolved to authorize […], […], and […] each individually to sign the APA and related documents on behalf of AiRISTA lnternational Oy on 26 February 2016 4 Resolutions passed by the shareholders of AIRISTA lnternational Oy on 9 March 2023, authorizing […] to sign all necessary agreements and documents related to the Patent Assignments on behalf of AiRISTA lnternational Oy Purchase Agreement dated 19 December 2023 which the third patent assignment agreement is referring to. 3. After Claimant´s submission the Defendants have the opportunity to comment on them by 3 September 2025. 4. Judge-Rapporteur intends to close the written procedure on 4 September 2025. DETAILS OF THE ORDER: ORD_34156/2025, App_18711/2025, App_ 41416/2024, App_41417/2024 referring to the main proceed- ings ACT_11921/2024, CC_41214/2024 UPC-Number: UPC_CFI_100/2024 and UPC_CFI_411/2024 Subject of the Proceedings: Patent infringement action and counterclaim for revocation Issued in Düsseldorf on 1 August 2025 Judge Dr Thom
Key Holdings
- Claimant ordered to clarify entitlement to sue.
- Specific questions and documents requested by JR.
Tags
- Case Management
- Legal Standing
- Ownership