UPC CFI 112/2025 – Nokia Technologies Oy & Nokia Solutions and Network Oy v Shanghai Sunmi Technology Co., Ltd et al.

Expert Commentary

Full Decision Text

Local Chamber Munich UPC CFI 112/202 5 Arrangement of the Court of First Instance of the Unified Patent Court Local Chamber Munich issued on 19 February 2025 GUIDING PRINCIPLES 1. The infringement of a right of the patent proprietor is imminent within the meaning of Art. 62 (1) UPCA if the infringement has not yet occurred, but there are serious and tangible factual indications based on specific circumstances that the defendant will act unlawfully in the near future. The act of infringement must be clearly recognisable. It only has to depend on the will of the defendant whether the final step to start the infringement will be realised. This depends on the circumstances of each individual case. 2. In the case of an anti-suit injunction, the infringement of the patentee's property right does not occur until the anti-suit injunction is issued by another court, but the act of infringement consists in the filing of the application for the injunction by the infringer. 3. Depending on the circumstances of the individual case, the issuance of an anti-suit injunction may threaten to infringe the property rights of the patent proprietor even before the application for the injunction is filed. 4. Pursuant to Rule 211.5 sentence 2 of the Rules of Procedure, the provision of security in the case of a provisional measure issued without hearing the defendant may exceptionally be omitted if it is not possible for the applicant to provide the security by the time the provisional measure order is served at a trade fair and other means of service are associated with considerable difficulties. 2 APPLICANTS 1. Nokia Technologies Oy, represented by its President Patrik Hammarén, Karakaari 7, 02610 Espoo, Finland, 2. Nokia Solutions and Network Oy, represented by its President, Karakaari 7, 02610 Espoo, Finland, represented by: Attorney Tim Smentkowski, Arnold Ruess Rechtsanwälte PartmbB, Königsallee 59a, 40215 Düsseldorf. DEFENDANTS 1. Shanghai Sunmi Technology Co., Ltd, in standard Chinese: represented by the Director LIN Zhe, Building 7, Room 505, No. 388, Songhu Road, Yangpu District, Shanghai, People's Republic of China, Exhibition address from 18 to 20 February 2025: EuroCIS trade fair in Düsseldorf, Düsseldorf Exhibition Centre, Hall 9, Stand B58 2. Sunmi Technology (Yunnan) Ltd, also trading as Sunmi Technology (Yunnan) Co., Ltd and Shang Mi Technology (Yunnan) Co., LTD, in standard Chinese: represented by the Director and Manager CHEN Guihong, Room 4510, 45th Floor, North Tower of Wanda Twin Towers, No. 688, Qianxing Road, Qianwei Sub-district Office, Xishan District, Kunming, Yunnan Province, People's Republic of China, 3. Shangtian Technology (Shanghai) Ltd, also trading as Shangtian Technology (Shanghai) Co, Ltd, in standard Chinese: represented by the Executive Director CHEN Guihong, Room 1201-48, No. 127, Guotong Road, Yangpu District, Shanghai, People's Republic of China. 3 PATENT IN SUIT European Patents No. EP 2 243 229 and EP 3 799 333 ADJUDICATING BODY Panel 2 of the Munich Local Court PARTICIPATING JUDGES This order was issued by the presiding judge Ulrike Voß, the legally qualified judge Dr Daniel Voß (rapporteur) and the legally qualified judge Dr Walter Schober. LANGUAGE OF THE PROCEEDINGS German SUBJECT OF THE PROCEEDINGS Application for interim measures (Rule 206 VerfO) ORAL HEARING 18 February 2025 (pursuant to Rule 209.1 (c) VerfO) FACTS SUBMITTED BY THE APPLICANTS 1 The applicants are part of the Nokia Group. They are responsible for the management and licensing of Nokia's patent portfolio and are owners of numerous technical property rights in the field of information and telecommunication technologies. Among others, the applicant 1) is the registered proprietor of EP 2 243 229, the respondent 2) of EP 3 799 333 (hereinafter: EP'229 and EP'333 or patents in suit). The patents in suit are in in various states within the scope of the UPCA. Applicant 1) considers EP'229, among others, to be essential for the LTE standard. 2 Respondent 1) is the parent company of the Sunmi Group, which is engaged in the development, manufacture and sale of POS ("Point-Of-Sale") devices, including LTE- enabled POS devices, among other things. Respondent 2) is a wholly-owned subsidiary of respondent 1), which was founded on 15 November 2024 and is controlled by respondent 1) and is based in Kunming. Its 4 Director CHEN Guihong is also the CTO and a member of the Management Board of respondent 1). Respondent 3) was founded on 27 November 2023 and is also a wholly- owned subsidiary of respondent 1) controlled by the latter with Mr CHEN Guihong as its director. 3 Since January 2021, the claimant (1) has been negotiating unsuccessfully with the defendant (1) in its capacity as the parent company of the Sunmi Group to conclude a licence agreement for its 2G, 3G, 4G and WiFi portfolio on FRAND terms. On 3 January 2025, the defendants filed a global licence rate-setting proceeding (hereinafter: rate- setting proceeding) with the Kunming Intermediate People's Court in China. The defendants in these rate-setting proceedings are the applicants. They were not informed by the defendants of the initiation of the rate-setting proceedings. 4 Unaware of the pending rate-setting proceedings, the applicant (1) still submitted licence offers to the respondent (1). licence offers. 5 On 26 January 2025, the applicants first learned of the initiation of the rate-setting proceedings as a result of the court's service of the application on a subsidiary based in China. 6 Subsequently, the applicants filed infringement actions based on EP 229 with the Local Division Munich and based on EP 333 with the Local Division Mannheim. The defendants in the action brought before the Local Division in Munich are the respondent 1) and two other subsidiaries based in France and Poland. 7 The infringement claims were served on the defendant 1) on 18 February 2025 at the EuroCIS trade fair, which will take place in Düsseldorf between 18 and 20 February 2025. PROCEDURE 8 In a letter of application dated 12 February 2025, the applicants applied to the Munich Local Court for an Anti-Anti-Suit Injunction (hereinafter: AASI; for details, see the application and the explanations in the reasons for the order). By order dated 17 February 2025, the court issued instructions to the applicants, to which the applicants submitted their comments in a written submission dated 17 February 2025. The court then scheduled an oral hearing pursuant to Rule 209.1 (c) of the Rules of Procedure for 18 February 2025 and held an oral hearing with the applicants. 5 APPLICATIONS 9 The applicants request, - because of the particular urgency and in particular because of the imminent danger of countermeasures by the defendants at the Kunming Intermediate People's Court in China or another court involved in the rate-setting proceedings, which could pre-empt the court seised here and would thus frustrate the present application, without an oral hearing and without prior hearing of the defendants (R. 206.3 of the Rules of Procedure) the adoption of the following interim measure I. The defendants are ordered by way of an interim measure under The company shall be prohibited from doing so on pain of a penalty payment for each infringement, to initiate and/or pursue anti-suit injunction proceedings before the Kunming Intermediate People's Court in China, other courts in China and/or other courts worldwide or to apply for other equivalent judicial or administrative measures, directly or indirectly preventing the Applicants from pursuing or continuing patent infringement proceedings arising from their standard essential European patents subject to the UPC's jurisdiction before the competent UPC divisions within the scope of the UPCA and/or enforcing any resulting judgements or measures, in particular if and insofar as the applicants are and/or are to be directly or indirectly prevented from doing so, • filed with the Munich Local Court on 10 February 2024 for patent EP 2 243 229 as well as patent infringement actions filed with the Local Division Mannheim for patent EP 3 799 333 or to expand them to include further claims or to file and pursue further patent infringement actions against the defendants here or affiliated group companies or other companies of the Sunmi Group before the Unified Patent Court ("anti-suit injunction"); • Injunctions issued by the Unified Patent Court against the defendants in the patent infringement actions before the Munich Local Court in respect of patent EP 2 243 229 and in the 6 Local Chamber Mannheim on patent EP 3 799 333 of 10 February 2024 (namely the defendant to 1) as well as Sunmi France SAS and Sunmi Poland Sp z.o.o.) or affiliated group companies or other companies of the Sunmi Group ("Anti-Enforcement Injunction"), whereby this obligation to cease and desist also includes in particular • the requirement to withdraw any application for an anti-suit injunction before the Kunming Intermediate People's Court or any other court in China and/or worldwide within a period of 24 hours after service of this order or to take other procedural means to finally revoke such an anti-suit injunction with effect for the scope of the UPCA, • the immediate prohibition to continue any anti-suit injunction proceedings with effect for the scope of the UPCA except for the purpose of withdrawing the application, • the prohibition to have the applicants directly or indirectly prohibited by a court or administrative order aimed at prohibiting the present proceedings from conducting patent infringement proceedings arising from their standard-essential European patents subject to the jurisdiction of the UPC before the competent divisions of the UPC within the scope of the UPCA and/or from enforcing any resulting judgement, whereby the aforementioned prohibitions and restrictions also include exerting a corresponding influence on affiliated companies by utilising the options available under group law. II. In the event of any infringement of the order under Section I, the defendants shall each pay the court a (possibly repeated) penalty payment of up to € 250,000.00 for each day of infringement. III. The order is immediately enforceable without the provision of security: The order is initially enforceable immediately without the provision of security. However, the enforceability of this order will end unless the applicants provide security in favour of the defendants within 20 days in the form of 7 a deposit or bank guarantee, the amount of which we leave to the discretion of the court. IV. Pursuant to Rule 13.1 (q) RP, it is ordered that English-language documents, in particular the annexes submitted with the notice of motion, need not be translated. LEGAL VIEWS OF THE APPLICANTS 10 The applicants consider the local division in Munich to have international as well as subject-matter and local jurisdiction. This is because the place of success of the threatened interference with their patent rights here in the form of an anti-suit injunction (hereinafter: ASI) lies within the jurisdiction of the UPC and, through the proceedings before the Local Divisions of Munich and Mannheim, also in the Federal Republic of Germany. An interference with the property rights of a patent proprietor by prohibiting the assertion of its patent right could also be regarded as a patent infringement. 11 The applicants are of the opinion that their application is well-founded. It is highly probable that they are entitled to initiate the proceedings and that their rights under their patents have been infringed. As the owners of the property rights, they are entitled to make a claim as applicants. This is because an ASI typically interferes with the patent proprietor's right to the grant of justice under Article 47(1) of the EU Charter and the property positions protected by the national legal systems in the form of the patent because they contain a comprehensive prohibition on conducting proceedings. The patent proprietor is no longer able to assert his property right before the competent courts - in this case the UPC. 12 In addition, there is a risk of first offence. The respondents had filed a main action for a global licence fee in the People's Republic of China, a jurisdiction that generally provides ASIs. They had shown that they did not shy away from unilaterally imposing on them - the applicants - a forum allegedly appointed to decide worldwide. There is a concrete fear that the defendants also want to prohibit the applicants from enforcing their patent rights in other jurisdictions outside China - including Germany and before the UPC. It is a "classic" litigation strategy to flank rate-setting actions with applications for ASIs and Anti-Anti-Anti-Suit Injunctions (hereinafter: AAASI). There is a tangible risk that the defendants will file an application for an ASI or even an AAASI with the Chinese court just as secretly as the rate-setting proceedings in order to prevent any "disruption" of the Chinese rate-setting proceedings. Especially after the service of the infringement claims on the defendant 1) at the EuroCIS trade fair 8 on 18 February 2025, it has reason to apply for an ASI. Conversely, they - the applicants - could not wait any longer because an ASI and AAASI could also be applied for and then issued without their knowledge. By then, the infringement had already occurred and the property right had been devalued. 13 The assumption of a risk of first occurrence at the present time was also to be assumed before an application for an ASI was filed, because otherwise the impairments of property would have occurred and the applicants would in fact have no legal protection. Although it is conceivable to react to an ASI by means of an AASI, this is hardly reasonable due to the difficulties of service in the People's Republic of China. An ASI issued by Chinese courts at short notice could be enforced for many months before an AASI from the UPC could be served on the defendants. During this time, high penalties of around EUR 135,000.00 per day could become due. However, due to the EuroCIS trade fair from 18 to 20 February 2025, it would still be possible to serve an AASI at the trade fair. 14 The applicants are of the opinion that the balancing of interests is ultimately also in their favour. The time at which they became aware of the rate-setting procedure should be taken into account for the urgency. Based on this, it had not behaved hesitantly. The issuance of interim measures was also objectively urgent because the applicants could not be referred to proceedings on the merits. The issuance of an ASI is possible at very short notice from the time the application is filed, without the applicants necessarily being made aware of the application. An ASI is also regularly immediately enforceable and the applicants could be forced to withdraw the infringement actions pending before the local chambers in Munich and Mannheim as a result of the sanctions they are threatened with if they do not comply with the ASI. In addition, an ASI is regularly associated with the permanent prohibition of further actions arising from the standard- essential patents. The applicants would also be threatened with considerable damage they did not comply with a possible ASI. In the event of a breach of an ordered ASI, considerable sanctions could be imposed on the applicants. In contrast, the defendants would not be significantly impaired by the issuance of the AASI requested here. They could continue the rate-setting procedure unhindered. The AASI sought by the respondents, on the other hand, would in any case constitute a prohibited interference with the applicants' property rights. 15 The order for interim measures without prior hearing of the defendants was necessary because otherwise the purpose of the requested order could be frustrated by an ASI applied for by the defendants before a Chinese court at short notice and then - also ex parte - issued. 16 Since the requested prohibition would not cause any particular damage to the defendants and the applicants would not be able to provide a security in the short term either, the applicants argue that the prohibition is not justified. 9 possible without running the risk of an ASI being issued after service of the infringement claims, the interim measure should be ordered without the provision of security. REASONS FOR THE ORDER 17 The admissible application for interim measures is well-founded. I. 18 The application for interim measures is admissible. 1. 19 The UPC's international jurisdiction follows from Art. 31 UPCA in conjunction with Art. 71b No. 2 Brussels Ia Regulation. The place where the prima facie case of imminent tort lies within the jurisdiction of the UPC. 2. 20 The UPC's subject-matter jurisdiction for the adoption of interim measures (AASI and AAEI) results from Art. 32 (1) UPCA. 21 According to Art. 32 (1) c) UPCA, the court has exclusive jurisdiction for actions for the adoption of provisional and protective measures and interim measures. This jurisdiction is in any case related to actions that fall within the exclusive jurisdiction of the UPC pursuant to Art. 32 (1) a) UPCA. These include actions for actual or threatened infringement of patents. 22 Not only the unlawful use of a patent is to be regarded as an infringement of a patent, but also an interference with the patentee's property right by prohibiting the assertion of his patent right (Local Chamber Munich, order v. 09.12.2024, CFI 755/2024 - Avago/Realtek; see also: Grabinski/W.Tilmann, in Tilmann/Plasmann, Unitary Patent, Unified Patent Court, 2nd edition, Art. 32 para. 61a). 23 Such a violation of the applicants' property rights is at issue in the present case. The applicants have submitted that it is to be feared that the respondents will apply for an ASI in the immediate future if they have not already applied for such an ASI or even if an ASI has been issued which is aimed at refraining from initiating or conducting proceedings before the UPC (the German local divisions) based on the patents in suit or other patents of the applicants or from enforcing corresponding judgements of these divisions. Such prohibitions on conducting and enforcing proceedings interfere with the applicants' property rights in relation to the patents in suit and their other standard- essential portfolio. 10 3. 24 The jurisdiction of the local division in Munich is based on Art. 33 (1) (a) UPCA. The infringement of the applicants' property rights is imminent within the jurisdiction of the local division here. According to the applicants' submission, it is to be expected that they will be prohibited, among other things, from asserting standard-essential patents from their portfolio before the UPC and thus before the Local Division Munich, in particular from continuing the proceedings UPC CFI 107/2025 / ACT 6873/2025 based on EP'229 or from enforcing decisions issued therein. However, the local division in Munich also has jurisdiction with regard to the proceedings before the local division in Mannheim based on EP 333, because Article 33(1)(a) UPCA only requires an actual or threatened infringement in the contracting member state in order to establish the local jurisdiction of any of the local divisions established in that state. II. 25 The application for interim measures is to be filed in accordance with Art. 62 (1), (2) UPCA in conjunction with Art. 62 (2) UPCA. Rule 211 (1), (2), (3) VerfO. It is predominantly probable that the applicants are entitled to initiate these proceedings and that there is a threat of infringement of their rights under the patents in dispute and other standard-relevant patents. The balancing of interests to be carried out as part of the discretionary decision is in favour of the applicants. 1. 26 The applicants are to be regarded as entitled to claim in accordance with Rule 8 (5) VerfO. They are entered in the register as owners of the patents in suit. 2. 27 It is predominantly probable that there is a threat of infringement of the applicants' rights with regard to the patent in suit and their other standard-relevant patents within the meaning of Art. 62 (1) UPCA. The applicants have credibly demonstrated the imminent infringement of their property rights in relation to the patents in suit and other patents. a) 28 According to Art. 47 para. 1 of the EU Charter, any person whose rights or freedoms guaranteed by Union law have been violated has the right to an effective remedy before a court or tribunal. Art. 47 para. 2 of the EU Charter gives everyone the right to have their case heard by an independent and impartial tribunal previously established by law, in a fair hearing, in public and within a reasonable time. Art. 47 of the EU Charter accordingly guarantees a general right to justice at European level, i.e. access to justice. According to Art. 17 para. 2 of the EU Charter, intellectual property is in any case a right similar to property, which must be protected under the Charter. Consequently, Art. 47 (1) and (2) of the EU Charter also protect a person's access to the UPC for the purpose of asserting an (alleged) 11 unlawful use of a patent (Munich Local Chamber, order of 9 December 2024, CFI 755/2024 - Avago/Realtek). b) 29 Under German law, which at least to the German part of the patents in suit pursuant to Art. 24 (1) e) UPCA, Art. 2 (1), 19 (4) GG grant the general right to judicial protection. §§ Sections 823 (1), 1004 (analogous) BGB provide a substantive legal basis for the protection of property, which can only be enforced by means of the constitutionally protected rule of law principle just described. Based on Art. 47 (1) and (2) of the EU Charter, there is already no reason to assume that the legal systems that apply to the other parts of the European patent see this differently and approve of ASI. The applicants have cited corresponding provisions for the protection of property in Art. 2043 Codice Civile (IT), Art. 1240 Code Civil (FR), Art. 6:162 Burgerlijk Wetboek (NL), Chapter 2 § 2 Vahingonkorvauslaki (FI) and Chapter 2 § 1 Skadeståndslag (SE) (1972:207). c) 30 The Local Division Munich (Division 2) considers it highly likely that the defendants are threatened with an application for an ASI before the Kunming Intermediate People's Court in China or before another Chinese court, which, if such an ASI is issued and in the case of an Anti-Enforcement Injunction (AEI), constitutes a comprehensive prohibition on conducting proceedings and a comprehensive prohibition on enforcing decisions of the UPC. Such prohibitions violate the previously discussed rights to the protection of justice; they constitute unauthorised interference with the applicant's right, which is in any case similar to ownership (Munich Local Chamber, order of 9 December 2024, CFI 755/2024 - Avago/Realtek). aa) 31 The infringement of a right of the patent proprietor is imminent within the meaning of Art. 62 (1) UPCA if the infringement has not yet occurred, but there are serious and tangible factual indications based on specific circumstances that the defendant will act unlawfully in the near future. The act of infringement must be clearly recognisable. It only has to depend on the defendant's will as to whether the final step to start the infringement will be implemented (see Düsseldorf Local Chamber, order of 6 September 2024, CFI 165/2024 - Novartis gg Celltrion). This depends on the circumstances of each individual case. bb) 32 According to these principles, the Munich Local Division (Panel 2), taking into account all the circumstances of the individual case and assessing the overall behaviour of the parties involved, is of the opinion that it is overwhelmingly likely that the defendants will file an ASI in the immediate future with the Kunming Intermediate People's Court in China or before another Chinese court - possibly in 12 In the event that an Anti-Enforcement Injunction (AEI) has not already been applied for or even issued, an application for an AEI must be submitted. (1) 33 The Munich Local Court (Panel 2) sees the imminent act of infringement in a predominantly probable, imminent application for an ASI by the defendants. Even if the infringement of the applicants' property rights only occurs with the issuing of an ASI by the court seised, the filing of the application by the defendants already constitutes the act of infringement. This is because the act of infringement is on the behaviour of the defendants. By filing the application, they hand over control of the proceedings and cause the court seised to issue a corresponding ASI. From the defendants' point of view, the last step to be taken by them to infringe the patents-in-suit is to file an application with a Chinese court. It is highly likely that the court seised will then issue an ASI. This follows from the same reasons which indicate that an application by the defendants for an ASI is imminent (see below for more details). From the respondents' point of view, the application for an ASI means that everything has been done to ensure that the applicants' property will foreseeably be infringed by the issuance of an ASI. From the applicants' point of view, there is also the fact that an ASI can also be issued by a Chinese court without the applicants made aware of any application by the respondents beforehand, so that further waiting until an application is actually filed is not possible in such cases. (2) 34 It is more likely than not that the defendants will now also file an application for an ASI with the Kunming Intermediate People's Court in China or before another Chinese court in the near future. 35 The defendants have already initiated global rate-setting proceedings before the Kunming Intermediate People's Court. However, the initiation of such proceedings is not in itself a reason to assume that the defendants now also file an application for an ASI with this court. In principle, a party is free to use of the legal protection options available to them in their home country in a permissible manner, without this giving rise to the accusation that the party seeking legal protection is already interfering with the property rights of the patent proprietor. (3) 36 However, it must be taken into account that the defendant 1) was served with the infringement actions based on EP 229 and EP 333 at the EuroCIS trade fair on 18 February 2025. As a result, there are competing proceedings between the parties. While the rate-setting proceedings are aimed at obtaining a global licence for the use of the 13 of the patents in suit and other patents from the applicants' portfolio, the infringement actions are directed to an injunction against the use of the patents in suit in the member states of the UPCA in which the patents in suit are in force, unless the respondent 1) concludes a corresponding FRAND licence agreement for the Sunmi Group. The defendants will therefore have a strong interest in bringing the rate-setting proceedings initiated by them, which usually take longer than an infringement action before the UPC, to an undisturbed conclusion and not being forced to withdraw their products from the European market beforehand as a result of a decision in infringement proceedings before the UPC or to conclude a licence agreement with the applicants in order to avoid these consequences. However, the respondents can only complete the rate-setting proceedings and prevent a prior decision by the UPC in the infringement proceedings based on the patents in suit if they obviously request a corresponding ASI. (4) 37 Furthermore, the defendants will be prompted to apply for an ASI against the applicants in relation to the infringement proceedings pending before the UPC because the Regional Court Munich I issued an AASI at the request of the applicants based on further patents asserted in infringement proceedings before the Regional Court Munich I and the Regional Court Mannheim, which was also served on defendant 1) on 18 February 2025 at the EuroCIS trade fair. This makes it even more important for the defendants to protect the rate-setting procedure by means of an AASI, at least against infringement proceedings before the UPC. This is because protection already fails with regard to infringement proceedings before the courts of the Federal Republic of Germany due to the AASI issued. In addition, according to the applicants' submission, the Sunmi Group does not its core market in the Federal Republic of Germany, so that protection against an injunction effective in the member states of the UPCA is all the more important for the defendants. (5) 38 An imminent application for an ASI is further supported by the fact that the defendant (1) with its newly founded subsidiaries initiated the rate-setting procedure during the ongoing licence agreement negotiations with the applicant (1) and did not even the applicant (1) of the initiation of this procedure. Rather, it left the respondent 1) in the belief that the licence agreement negotiations would continue and accepted licence offers although the rate-setting procedure had already begun. Such behaviour is not typically to be expected from a negotiating partner willing to take a licence; in any case, it is not to be constructive. It is a unilateral measure by the defendants, which them in an advantageous position because it completely takes the shaping of the licence negotiations and thus also that of a negotiated licence out of the hands of the applicants, without the applicants having to 14 have previously been able to defend themselves against this in some way or at least find an alternative solution. (6) 39 Based on this and in view of the competing proceedings before the Kunming Intermediate People's Court on the one hand and the Local Chambers of Munich and Mannheim on the other, it is not to be expected that the respondents will readily give up the advantages gained by initiating the rate-setting proceedings in favour of the infringement proceedings pending before the UPC. It must also be taken into account that, according to the applicants' submission, the People's Republic of China is a jurisdiction that provides ASIs in principle. It is a "classic" litigation strategy to secure rate-setting proceedings before a Chinese court with applications for ASIs or Anti-Anti- Suit Injunctions (hereinafter AASI). Lawyers in the People's Republic of China who handle rate-setting proceedings are familiar with this litigation strategy and know that ASIs and AASIs can be applied for to secure these proceedings. 40 In fact, it must be assumed that the defendants' legal advisors will inform the defendants of the possibility of an ASI at the latest when the infringement action is served on the defendant 1) and - assuming that the defendants' behaviour conforms to the advice given - will also apply for this. In any case, there is no apparent reason to assume that the defendants should accept the applicants' infringement claims and not apply for an ASI. (7) 41 The respondents cannot be accused of having created the situation of an imminent patent infringement themselves by bringing the infringement actions against the applicant 1) and other subsidiaries. Rather, it is the respondent 1) , surprisingly for the applicants, initiated the rate-setting proceedings during ongoing licence agreement negotiations and thereby caused the respondents to make use of the legal protection options available to them in the form of the infringement actions. 3. 42 The balancing of the interests of the parties to be carried out in accordance with Art. 62 (2) UPCA and Rule 211 (3) RP, which must take into account all circumstances of the individual case, is in favour of the applicants in the present case. The issuance of the interim injunction is both timely and objectively urgent. The applicants cannot reasonably be expected to wait until the conclusion of the main proceedings to enforce their claims (see on the requirement of objective urgency or factual necessity: Lokalkammer Düsseldorf, Anordnung v. 31.10.2024, 15 UPC CFI 347/2024 - Valeo Electrification/Magna PT and others; Local Chamber Munich, order of 25 November 2024, UPC CFI 443/2024 - Häfele/Kunststoff KG Nehl). a) 43 The ordering of the requested interim measures is urgent in terms of time, R. 209.2 (b) VerfO. 44 The urgency required for the ordering of interim measures lacking if the injured party has been so negligent and hesitant in pursuing its claims that, from an objective point of view, it must concluded that the injured party is not interested in the swift enforcement of its rights, which is why it does not appear appropriate to allow it to seek interim legal protection (cf. also Munich Local Court, UPC CFI 443/2024, decision of 25 November 2024 - Häfele/Kunststoff KG Nehl; Düsseldorf Local Court, UPC CFI 347/2024 - Valeo Electrification/Magna PT and others). There is no evidence of negligent and hesitant behaviour in the present case. 45 The period of waiting within the meaning of Rule 211.4 of the Rules of Procedure is to be measured from the date on which an applicant has or should have had such knowledge of the infringement as to enable him to apply for interim measures under Rule 211.4 of the Rules of Procedure. 206.2 VerfO (Court of Appeal, order of 25 September 2024, UPC CFI 182/2024 - Ortovox Sportartikel/Mammut Sports Group and others). It is irrelevant whether the date of first knowledge of the rate-setting proceedings initiated by the defendants in China, i.e. 26 January 2025, or a later date should be taken into account. Even if 26 January 2025 were to be considered relevant, an application for interim measures received by the court on 12 February 2025, and therefore in less than three weeks, cannot be considered dilatory or negligent. An earlier date than the 26 January 2025 should not be taken into account because the parties were still in licence agreement negotiations and there was no reason to assume that the issuance of an ASI was imminent. b) 46 The interim measure is also objectively urgent. It is objectively required and necessary. The applicants cannot be referred to proceedings on the merits. 47 Should the defendants apply for an ASI at the Kunming Intermediate People's Court or another Chinese court and an ASI be issued as a result, this would be immediately enforceable in China. As a result of the sanctions threatening them in the event of non- compliance with an ASI from Chinese courts, the applicants could in particular feel compelled to withdraw the action UPC CFI 107/2025 / ACT 6873/2025 pending before the Munich Local Court, or at least not to it any further. 16 The same applies to the infringement action based on EP 333 before the Local Court of Mannheim. The right to the protection of justice, according to which the applicants have the right to have the competent court clarify whether they entitled to injunctive relief, claims for damages or other claims arising from the patents in dispute, would be devalued. Even if the applicants were still able to continue the proceedings and were only prohibited from enforcing any injunction judgement, they would ultimately be effectively prevented from enforcing their rights. The unlawful use of the patents in dispute established by the competent court and the associated legal consequences would be in vain. In the final analysis, the right to the protection of justice would not exist. The property-like positions of the applicants would be devalued. 48 This applies all the more if it is taken into account that, according to the submission of the applicants, an ASI is typically accompanied by the permanent prohibition of actions arising from all standard-essential patents of the patentee concerned or is aimed at prohibiting the enforcement of decisions based on such actions. If the applicants (had to) adhere to such ASI and/or AEI, this interference with their property-like right would lead to a (material and financial) devaluation of the patent in suit and all other standard- essential patents, which would threaten the applicants with considerable damage. 49 The applicants are also threatened with considerable damage if they do not comply with the ASI and/or AEI if they ordered to do so. The applicants have submitted that a violation of an ASI ordered by the Chinese courts is associated with considerable sanctions. These can include penalties that can amount to around EUR 135,000.00 per day. 50 Nor can the applicants be referred to main proceedings before the UPC because Chinese courts can issue an ASI within days, even at short notice, without the patent proprietors concerned - such as the applicants here - becoming aware of a prior request for the issuance of such an ASI. There is therefore a high risk that even before the decision on the main action is made, the defendants will in any case take such an action as an opportunity to apply for an ASI before the Kunming Intermediate People's Court or another Chinese court, which could then also be issued at short notice. The rights of the applicants would therefore be inadequately protected by an injunction issued in response to an action on the merits, which would only be issued after an ASI. In the meantime, the applicants would either be prevented from enforcing their patent rights or would have to expect considerable sanctions until an AASI was issued in the main action. The applicants do not have to accept these disadvantages. 17 c) 51 Finally, the further consideration of the mutual interests of the parties, including the potential damage threatened to the parties, also speaks in favour of granting the interim measures. 52 If the applicants' application for an AASI is rejected, there is a concrete risk - as already mentioned - that the defendants will apply to the Kunming Intermediate People's Court or another Chinese court for an ASI on the basis of the infringement claims now served on defendant 1) at the EuroCIS trade fair and the served AASI of the Munich Regional Court and that this ASI will be issued. This would the consequences for the applicants already described under b). The applicants are therefore threatened with considerable damages. 53 If, on the other hand, the interim measures requested by the applicants are granted, the defendants are prohibited from applying for an ASI and an AEI; any applications already filed must be withdrawn. Even if the order for interim measures was wrongly issued because there is no threat of infringement of the patents in dispute by an application for an SPC, the respondents are not prohibited from behaviour that is generally permitted. On the contrary, cross-border ASIs are fundamentally incompatible with the legal system of the member states of the UPC and the right to justice. 54 The defendants do not suffer any significant disadvantage as a result of a temporary injunction that has been wrongly issued. It cannot be completely ruled out that the defendants may suffer damages as a result of the prohibition of an ASI, for example to the extent of the legal costs. However, the damage threatened to them is far less serious. Moreover, the defendants are not prevented from enforcing their other rights before the Kunming Intermediate People's Court; in particular, they can continue the rate-setting proceedings. Even the FRAND-related issues can be clarified before the Chinese court. The interim measures requested by the applicants relate solely to a possible application for an ASI and AEI. As a result, the associated damages are irrelevant. 55 Finally, it is also not an option to expect the applicants to wait any longer. As already stated, at this point in time, the application for an ASI is the last step that the defendants still have to take in order for the infringement to occur. The applicants will not necessarily become aware of such an application. The disadvantages associated with a subsequent AASI are so considerable that they are not reasonable for the defendants. 56 Conversely, the fact that the respondent 1) will be present at the EuroCIS trade fair from 18 to 20 February 2025 means that the applicants must be informed at this point in time of the 18 to grant the requested injunction. Due to the well-known difficulties associated with the service of judicial documents in the People's Republic of China, which can sometimes lead to delays of several months to over a year, the issuance of interim measures at a later date is hardly an option. In the meantime until an AASI is served, the defendants could easily apply for an ASI and have it served on the applicants. As already explained, there is also sufficient reason for this due to the fact that the infringement actions based on the patents in suit have now been served respondent 1). III. 57 The order for interim measures requested by the applicants without prior hearing of the defendants appears appropriate and necessary in the present case, R. 206.3, 209.2 (c) VerfO in conjunction with R. 212.1 VerfO. 58 Without the issuance of an ex parte order, the applicants are likely to suffer irreparable damage due to the delay associated with the involvement of the other party. There is a risk that the defendants will take the knowledge of the application for interim measures as an opportunity to apply for an ASI, which can take place at short notice and even before an AASI is issued and also prohibit the present proceedings. This risk is also very likely because the defendants have sufficient reason to secure their rate-setting procedure in the manner described. Hearing the respondents would lead to the protection of the rights of the applicants asserted here being curtailed or even cancelled out. IV. 59 As the requirements for the adoption of interim measures are met in accordance with the above, the applicants' application under I. must be granted. These are aimed at refraining from applying for or pursuing ASI and/or AEI. The applications in particular clarify what is in any case covered by the order under I. 60 However, the defendants cannot be prohibited from applying for ASI or AEI before all courts worldwide. There is no indication that the defendants could have envisaged such applications outside the People's Republic of China. Consequently, there is no threat of infringement of the patents in suit in this respect. On the other hand, the prohibition of applications for an ASI or AEI was also to be pronounced with regard to other Chinese courts because the defendants are not prevented from asserting a corresponding application before another Chinese court instead of the Kunming Intermediate People's Court. 61 Furthermore, no distinction was made between direct and indirect obstacles or prohibitions. It is not clear what such direct or indirect obstacles or prohibitions are. 19 The following table shows which restrictions or prohibitions should exist and how a distinction should be made between them. 62 Finally, no deadline had to be set for the withdrawal of ASI or AEI already applied for. The unsuccessful expiry of the deadline cannot be subject to special sanctions. If the defendants do not comply with the present order, the court can impose a penalty payment. The court may do so from the date of enforceability of the interim measures, which begins with the service of this order. If ASI or AEI have already been applied for, they must be withdrawn immediately from this point in time. V. 63 Pursuant to Rule 211.5 of the Rules of Procedure, the court must order the provision of security if the interim measures are ordered - as in this case - without the defendant having been heard beforehand, provided that there are no special circumstances militating against the ordering of such security. 64 In the case in dispute, there are special circumstances that exceptionally speak against such an order. Apart the fact that the damages incurred by the defendants as a result of the cancellation of this order will be minimal, the ordering of security presents the applicants with considerable hurdles in terms of time. Due to the aforementioned difficulties of service in the People's Republic of China, the order for interim measures is to be served at the EuroCIS trade fair, which ends the very next day. In principle, it is not possible for a party to provide security in this short time. This justifies exceptionally refraining from ordering a security deposit. VI. 65 A basic decision on costs is not to be made in the present case. The Rules of Procedure only provide for such a decision in proceedings on the merits (see Rule 118.5 of the Rules of Procedure), but not in proceedings for the ordering of interim measures. The costs of the summary proceedings are generally to be claimed in the main proceedings. VII. 66 Furthermore, pursuant to Rule 213.1 of the Rules of Procedure, a deadline for initiating proceedings on the merits had to be set. This is not at the discretion of the court (Munich Local Chamber, order of 9 December 2024, CFI 755/2024 - Avago/Realtek). In this respect, a period of 31 calendar days or 20 working days, whichever is longer, from the service of the order on the defendant appears reasonable. The applicant has not commented on such a deadline and has not included it in its applications. 20 ARRANGEMENT I. Due to the particular urgency of the matter, the defendants are each prohibited from taking interim measures without first hearing the defendants, to initiate and/or pursue anti-suit injunction proceedings before the Kunming Intermediate People's Court in China and/or other courts in China or to seek other equivalent judicial or administrative measures by virtue of which the applicants are and/or shall be prevented from pursuing or continuing patent infringement proceedings arising from their standard-essential European patents subject to the UPC's jurisdiction before the competent UPC divisions within the scope of the UPCA and/or to enforce any resulting judgements or measures, in particular if and insofar as the applicants are and/or are to be prevented from doing so, • to continue to pursue the patent infringement actions filed with the Munich local division for patent EP 2 243 229 and with the Mannheim local division for patent EP 3 799 333 on 10 February 2024 or to expand them to include further claims or to bring and pursue further patent infringement actions against the defendants here or affiliated group companies or other companies of the Sunmi Group before the Unified Patent Court ("anti-suit injunction"); • To enforce injunctions issued by the Unified Patent Court against the respondents or the defendants from the patent infringement actions before the Munich Local Court for patent EP 2 243 229 and before the Mannheim Local Court for patent EP 3 799 333 of 10 February 2024 (namely respondent 1) as well as Sunmi France SAS and Sunmi Poland Sp z.o.o.) or affiliated group companies or other companies of the Sunmi Group ("Anti-Enforcement Injunction"), whereby this obligation to cease and desist also includes in particular • the requirement to withdraw any application for an anti-suit injunction before the Kunming Intermediate People's Court or any other court in China or to take other procedural means to finally revoke such an anti-suit injunction with effect for the scope of the UPCA, 21 • the immediate prohibition to continue any anti-suit injunction proceedings with effect for the scope of the UPCA except for the purpose of withdrawing the application, • prohibiting the applicants from bringing patent infringement proceedings arising from their standard-essential European patents subject to the jurisdiction of the UPC before the competent divisions of the UPC within the scope of the UPCA and/or from enforcing any resulting judgement by means of a court or administrative order prohibiting the present proceedings, whereby the aforementioned prohibitions and restrictions also include exerting a corresponding influence on affiliated companies by utilising the options available under group law. II. In the event of any infringement of the order under I., the defendants shall each pay the court a (possibly repeated) penalty payment of up to € 250,000.00 for each day of infringement. III. The order is immediately enforceable without the provision of security. IV. It is ordered that documents in English need not be translated. V. In all other respects, the application is rejected. INSTRUCTION TO THE AUXILIARY REGISTRY This order, together with the notice of motion dated 12 February 2025 and the statement of position dated 17 February 2025, including all annexes, is to be served on the respondents, respondent 1) at the EuroCIS trade fair in Düsseldorf, Düsseldorf Exhibition Centre, Hall 9, Stand B58. NOTE TO THE APPLICANT If the main proceedings are not commenced within a maximum period of 31 calendar days or 20 working days, whichever is longer, from the time of the 22 service on the respective respondent, the court may, at the request of the respondent, order that the present order be cancelled or otherwise cease to have effect (Art. 62(5), 60(8) UPCA, Rule 213.1 RP). NOTICE TO THE DEFENDANT The respondent may request a review of the order within 30 days of the enforcement of the measure (Art. 62(5), 60(6) UPCA, Rule 212.3, 197.3 RP). INFORMATION ON ENFORCEMENT (ART. 82 UPCA, RULE 354 RP) The order is enforceable upon service without the provision of security. DETAILS OF THE ARRANGEMENT UPC number: UPC CFI 112/2025 No. of the associated procedure Application no.: 7300/2025 Type of application: Application for provisional measures (Rule 206 Regulation) Ulrike Voß (presiding judge) Dr Daniel Voß (legally qualified judge) Dr Walter Schober (legally qualified judge) for the Deputy Chancellor Note: This document is the redacted version of the order intended for the public. It is valid without the signatures of the judges involved and the representative of the Deputy Registrar. Digitally signed by Daniel Voß Date: 2025.02.19 08:44:20 +01'00'Daniel Voss

Key Holdings

• The infringement of a patent proprietor's right is 'imminent' within the meaning of Art. 62(1) UPCA if there are serious and tangible factual indications that the defendant will act unlawfully in the near future, and the act of infringement must be clearly recognizable, depending only on the defendant's will for the final step.
• In the context of an anti-suit injunction (ASI), the act of infringement by the defendant consists in the filing of the application for the injunction, even though the actual infringement of the patentee's property right occurs when the ASI is issued by another court.
• The Unified Patent Court (UPC) has international and subject-matter jurisdiction for actions seeking provisional and protective measures, including Anti-Anti-Suit Injunctions (AASI), as interference with a patentee's property right by prohibiting the assertion of patent rights can be considered a patent infringement.
• An order for a provisional measure (such as an AASI) issued without hearing the defendant may exceptionally omit the requirement for security if it is not possible for the applicant to provide security by the time the order is served (e.g., at a trade fair) and other means of service are difficult.
• Cross-border Anti-Suit Injunctions (ASIs) are fundamentally incompatible with the legal system of the UPC member states and the right to justice guaranteed by Art. 47 of the EU Charter.

Tags

• Anti-Suit Injunction
• China
• FRAND
• Infringement
• Interim Measures
• Jurisdiction
• Security for Costs
• Standard Essential Patents
• Urgency

Related Rules

• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 8 – Party and party’s representative
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 2 – Supplementary protection certificate
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 2 – Supplementary protection certificate
• Rule 1 – Application of the Rules and general principles of interpretation

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