UPC CFI 210/2023 – Panasonic Holdings Corporation v Guangdong OPPO Mobile Telecommunications Corp. Ltd. and OROPE Germany GmbH

Expert Commentary

Full Decision Text

1/104 Local division Mannheim UPC CFI 210/2023 Decision of the Court of First Instance of the Unified Patent Court, Mannheim Local Division announced on 22 November 2024 concerning EP 2 568 724 Plaintiff: Panasonic Holdings Corporation 1006, Oaza Kadoma, Kadomashi 5718501 Osaka JP represented by attorney Christopher Weber defendant: 1) Guangdong OPPO Mobile Telecommunications Corp. Ltd. NO.18 Haibin Road, Wusha, Chang'an Town, Guangdong Province 523860 Dongguan CN represented by attorney Andreas Kramer 2) OROPE Germany GmbH GrafAdolfPlatz 15 40213 Düsseldorf DE represented by RA Andreas Kramer STREITPATENT: EUROPEAN PATENT NO. EP 2 568 7242024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 2/104 ADJUDICATING BODY/CHAMBER: Mannheim local division, Court of First Instance CONTRIBUTING JUDGES: This decision was issued by the presiding judge and judge-rapporteur Prof. Dr Tochtermann, the legally qualified judge Böttcher, the legally qualified judge Brinkman and the technically qualified judge Loibner. LANGUAGE OF THE PROCEEDINGS: German SUBJECT: Action for infringement and action for cancellation as well as FRAND counterclaim ORAL NEGOTIATION: 7 and 8 October 2024 BRIEF PRESENTATION OF THE FACTS 1. The plaintiff is suing the defendants for an alleged infringement of the European patent EP 2 568 724 Radio communication device and a radio communication method. The patent-in-suit was filed on 13 August 2008 and claims the priority of JP 2007211548 of 14 August 2007 and the priority of JP 2008025535 of 5 February 2008. The notice of grant of the patent-in-suit was published on 17 December 2014. The patent in suit is in force, inter alia, in the Federal Republic of Germany, the French Republic, the Italian Republic, the Kingdom of the Netherlands and the Kingdom of Sweden. For these contracting states of the UPCA, the plaintiff is asserting claims for injunctive relief, recall, removal from the distribution channels and destruction, information/rendering of accounts, publication of judgement as well as determination of liability for damages and provisional damages.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 3/104 2. The plaintiff considers the patent in suit (see below) to be essential for the 4G standard. Therefore, all of the defendant's 4G-enabled mobile devices infringe the patent in suit, in particular the 4G-enabled smartphones such as the OPPO Find X5 Pro and the 4G-enabled smartwatch2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 4/104 3. The plaintiff is the parent company of the Panasonic Group, which was founded in 1918. On 1 April 2022, the plaintiff changed its name from Panasonic Corporation to Panasonic Holdings Corporation. 4. Defendant 1. belongs to the OPPO Group and is headquartered in the People's Republic of China. Within the group, it is the company responsible for the mobile phone division. It distributes mobile phone products of the OPPO Group and maintains its European headquarters in Düsseldorf in Germany. 5. Defendant 2. is also part of the OPPO Group. It was founded on 6 June 2019, is entered in the commercial register of the Düsseldorf Local Court under HRB 87507 and has its registered office at the same address as the defendant 1. has its European headquarters. It operates this OPPO European headquarters together with the defendant 1. 6. The plaintiff contacted the OPPO Group in July 2019 and has since been negotiating unsuccessfully with the first defendant on the conclusion of a FRAND licence agreement for the plaintiff's 4G patents. In the present case, the defendants are bringing a FRAND counterclaim against the plaintiff with the aim of concluding a FRAND licence agreement on the terms they consider to be FRAND on the basis of the court ruling. APPLICATIONS BY THE PARTIES 7. The plaintiff is pursuing the following applications with its action for infringement: I. It is established that the defendant has infringed European Patent No. 2 568 724 B1. II. The defendants are ordered to cease and desist, 1. Radio communication devices2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 5/104 which can be configured to transmit a reference signal with a transmission bandwidth in a given system bandwidth, with control channels assigned to both ends of the same [system bandwidth] and the transmission bandwidth between the control channels, or to transmit reference signals with a low bandwidth with frequency hopping, and the radio communication devices comprise: an assignment unit configured to assign the reference signals to frequency resources; a transmission unit configured to transmit the assigned reference signals, in the Federal Republic of Germany, the French Republic, the Italian Republic, the Netherlands and the Kingdom of Sweden, or to place them on the market or use them, or to import or possess them for these purposes, where the transmission bandwidth varies in the given system bandwidth, and the allocation unit allocates the reference signals such that the reference signals are allocated frequency resources each having the small bandwidth which is invariable regardless of changes in the transmission bandwidth, wherein the frequency resources are uniformly distributed in a frequency band of the transmission bandwidth according to the change in the transmission bandwidth. (direct infringement of device claim 1) especially if a large number of different transmission bandwidths can be configured in one system bandwidth. (direct infringement of device claim 2) and/or in particular if the allocation unit allocates the reference signals to the frequency resources, wherein one of the frequency resources with the low bandwidth is a transmitting unit. (direct infringement of device claim 3) and/or in particular if the allocation unit allocates the reference signals to frequency resources into which a frequency band having the transmission bandwidth is evenly divided, wherein one of the frequency resources having the low bandwidth is a transmission unit. (direct infringement device claim 4) and/or in particular if the allocation unit allocates the reference signals to frequency resources, the number of which is different depending on the changes in the transmission bandwidth, wherein one of the frequency resources with the low bandwidth is a transmission unit. (direct infringement of device claim 5) and/or in particular if the allocation unit allocates the reference signals to frequency resources, each of which has a different frequency band, one of the frequency resources having the low bandwidth is a transmitting unit. (direct infringement of device claim 6)2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 6/104 and/or in particular if the assignment unit assigns the reference signals to frequency resources that the cover the entire frequency band of the transmission bandwidth, whereby one of the frequency resources with the low bandwidth is a transmission unit. (direct infringement of device claim 7) and/or in particular if the assignment unit assigns the reference signals frequency resources using frequency hopping, whereby one of the frequency resources with the low bandwidth is a transmission unit. (direct infringement of device claim 8) and/or in particular if the allocation unit allocates the reference signals to frequency resources that cover the entire frequency band of the transmission bandwidth by means of frequency hopping, whereby one of the frequency resources with the low bandwidth is a transmission unit. (direct infringement of device claim 9) and/or in particular if the allocation unit allocates the reference signals to a plurality of resources which are frequency resources and which are different time resources, wherein one of the frequency resources having the low bandwidth is a transmitting unit. (direct infringement device claim 10) and/or in particular if the allocation unit allocates the reference signals to a plurality of resources which are frequency resources and which are time resources differing by a certain time interval, wherein one of the frequency resources with the low bandwidth is a transmission unit. (direct infringement of device claim 11) and/or in particular if which further comprises a receiving unit configured to receive control information associated with an assignment of the reference signals The assignment unit assigns the reference signals on the basis of the control information. (direct infringement of device claim 12) 2. Devices suitable for performing a radio communication method which can be configured to transmit a reference signal with a transmission bandwidth in a given system bandwidth, both ends of the same control channels being assigned and the transmission bandwidth being between the control channels, or to transmit reference signals with a low bandwidth with frequency hopping in the Federal Republic of Germany, the Federal Republic of Germany, the French Republic, the Italian Republic, the Netherlands and the Kingdom of Sweden,2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 7/104 wherein the radio communication method comprises: the following steps: assigning the reference signals to frequency resources; and transmitting the assigned reference signals, the transmission bandwidth varies in the given system bandwidth, and the reference signals are assigned to frequency resources each having the small bandwidth which is invariable regardless of changes in the transmission bandwidth, wherein the frequency resources are uniformly distributed in a frequency band of the transmission bandwidth according to the change in the transmission bandwidth. (indirect infringement of procedural claim 13) The defendants have infringed the patent by distributing 4G-enabled products in the territory of the Federal Republic of Germany, the Federal Republic of Germany, the French Republic, the Italian Republic, the Netherlands and/or the Kingdom of Sweden. 4G-capable products include, in particular, 4G-capable smartphones such as the OPPO Find X5 Pro and 4G-enabled smartwatches, such as the 4G-enabled smartwatch2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 8/104 III. The defendants are ordered to pay, at their own expense 1. to recall the products mentioned under No. II. from the distribution channels; 2. to permanently remove the products mentioned under No. II. from the distribution channels; 3. to destroy the products mentioned under No. II; IV. The defendants are condemned, 1. the plaintiff for each month of a calendar year and according to structured list of infringing products in electronic form that can be analysed with the aid of a computer, as of 17 December 2014, information on the products mentioned under No. II. a) the origin and distribution channels of the products mentioned under No. II; b) the quantities delivered, received or ordered and the prices paid for the products mentioned under No. II; c) the identity of all third parties involved in the distribution of the products mentioned under No. II; 2. to disclose to the plaintiff its accounts to prove the information provided pursuant to No. IV.1. plus the information on the profit realised by providing the following documents for each month of a calendar year and for each infringing product in electronic form which can be analysed with the aid of a computer: a) Invoices or, if these are not available, delivery notes of the individual deliveries, whereby the respective deliveries are organised according to the quantities offered,2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 9/104 The offer must include a breakdown of the offer times, prices of the goods offered and type designations as well as the names and addresses of the commercial recipients of the sales offers for all products sold or otherwise disposed of; b) Evidence of the advertising carried out, including evidence of these advertising activities, breaking down the advertising carried out by advertising medium, its distribution, the distribution period and the distribution area; c) Proof of costs, with a breakdown of costs by individual cost factors and the profits realised; d) Invoices or, if these are not available, delivery notes and corresponding statements of all costs incurred, on which the defendants rely in calculating their profits; the accuracy of which is audited and confirmed by a sworn auditor appointed by the plaintiff at the defendant's expense, whereby the auditor is obliged to maintain confidentiality vis-à-vis the plaintiff beyond the above-mentioned information; V. The applicant is authorised, at the defendant's expense, to announce and publish the decision in whole or in part in the following public media: Frankfurter Allgemeine Zeitung, Handelsblatt newspaper, Le Monde newspaper, Les Échos newspaper, Corriere della Sera newspaper, De Telegraaf newspaper and Dagens Nyheter newspaper. VI. It is established that the defendants are jointly and severally liable to compensate the plaintiff for all damages incurred by Panasonic Intellectual Property Corporation of America as a result of actions pursuant to No. II. since 17 December 2014 and which the plaintiff has incurred since 29 July 2016 and will incur in the future. VII. The defendants are ordered jointly and severally to pay the plaintiff an amount of EUR 250,000.00 as provisional damages; VIII. The defendants are ordered to pay the costs and expenses of the proceedings. IX. The decision can be enforced as follows: 1. The orders mentioned under No. II.1 and II.2 are directly enforceable. In the event of any violation of this order, the defendants shall pay a penalty payment of EUR 5,000 each. 2. The orders referred to in No. III, No. IV, No. VII, No. VIII are enforceable after the plaintiff has a) has notified the court which part of the orders it intends to enforce and after the notification has been served on the defendant and/or2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 10/104 b) the applicant has submitted a certified translation of the orders into the official language of the Contracting Member State in which enforcement is sought, and after the notice and, if applicable, the certified translation have been served on the defendant; 3. After the expiry of a period of 45 days after service pursuant to No. IX.2, the defendants shall pay to the court a penalty payment of EUR 2,000 per day of delay in the event of any breach of any of the orders referred to in No. III, No. IV, No. VII and/or No. VIII; 8. The defendants request that the applications in the infringement action be dismissed, that the defendants be provisionally awarded reimbursement of the costs of the infringement action and that the plaintiff be ordered to pay the costs, In the alternative make the enforcement of the decision subject to the prior provision of security by the applicant in an appropriate amount (R. 352.1, 354.2 RoP), which may be provided by a written, irrevocable, unconditional and unlimited guarantee from a credit institution authorised to do business in the territory of a Member State of the UPC Agreement, the amount of which is left to the discretion of the court, allow the defendants to avert enforcement of the decision by providing security, which may be provided by a written, irrevocable, unconditional and unlimited guarantee from a credit institution authorised to do business in the territory of a UPC Agreement Member State, without regard to any security provided by the applicant (R. 9.1 RoP). 9. In the context of the action for annulment, the defendants request: declare the European patent EP 2 568 724 B1 invalid in its entirety with effect for the contracting states of the UPCA in which the patent is validated [Federal Republic of Germany, France, Italy, the Netherlands and Sweden] (R. 25 RoP);2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 11/104 provisionally award the defendants the reimbursement of costs for the action for annulment (R. 150.2 RoP) and order the applicant to pay the costs in this respect as well. 10. The plaintiff requests that the counterclaim for a declaration of invalidity be dismissed, alternatively that the patent be maintained in amended form with regard to claim 1 and claim 13 and that the counterclaim for invalidity of the patent be dismissed as unfounded in all other respects and that the defendants be ordered to pay the costs of the counterclaim. With regard to the wording of the request for amendment, reference is made to the document dated 21 March 2024 together with the annexes. 11. In the context of their FRAND counterclaim, the defendants finally request the following: Main application version according to Reply counterclaim FRAND of 19 August 2024 (filed pursuant to Rule 9 RoP in workflow App 47681/2024): It is requested, I.1 Order Panasonic to accept the licence agreement offer from Oppo [ ] as set out in Exhibit VBFC14 (confidential), I.2 in the alternative, order Panasonic to submit a licence agreement offer to Oppo with the content as set out in Annex VBFC14 (confidential), I.3 in the further alternative, to order Panasonic to submit a licence agreement offer to Oppo with the content as shown in Annex VBFC16 (confidential), whereby, in the alternative, an amount to be determined by the court between [ ] is to be entered in the yellow place in point (1) there, an amount to be determined by the court between [ ] in the green place in point (2) there, and the lump sum to be entered in the blue place there results as follows: [ ], in the alternative, in which case a different amount, determined by the court to be fair, reasonable and non-discriminatory, is to be set in the yellow and green positions in points (1) and (2) respectively of Annex VBFC16 and the lump sum provided for there in blue is calculated in accordance with the calculation method set out in the preceding paragraph; II.1 in the alternative to the applications in point I. and in the event that none of the applications therein is granted, declare that Oppo is entitled to2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 12/104 has a licence to Panasonic's patents essential for 3G and 4G standards on fair, reasonable and non-discriminatory terms (FRAND), and to determine the royalty rate to be paid by Oppo for the use of such patents in the territory of the EPC Contracting States (the EP Territory), such FRAND royalty rate for the EP Territory being [ ], or, in the further alternative, such other rate as the court deems fair, reasonable and non-discriminatory; II.2 subject to the existence of a FRAND licence agreement, order Oppo to pay [.] as a lump sum from the date of the Judgment, which lump sum shall be [ ], or in the alternative between [ ] and [ ], or in the further alternative a lump sum determined by the Court to be fair, reasonable and non-discriminatory; II.3 To require Panasonic to cooperate fully to bring about a FRAND licence on the terms set by your court; III.1 further in the alternative in the event that neither the applications under I. nor II. should be granted, (a) declare that Oppo is entitled to a licence to Panasonic's patents essential to the 3G and 4G standard on fair, reasonable and non-discriminatory terms (FRAND); (b) declare that the licence conditions, alternatively the licence fees, as contained in Panasonic's offer of [ ] for a licence from Oppo to Panasonic's patents essential to the 3G and 4G standard (Annex VB FC15) are not FRAND; (c) that Panasonic has abused a dominant market position; (d) declare that the terms of a licence, or alternatively the royalties, as contained in Oppo's counter-offer dated [ ] for a licence from Oppo to Panasonic's patents essential to the 3G and 4G standard (Exhibit VBFC14) are FRAND; (e) order Panasonic to submit a FRAND counter-offer to Oppo that does not exceed the the following FRAND licence rate for the EP Territory: [ ], or in the alternative [ ], or in the further alternative the amount which the court considers to be FRAND in the circumstances of the case; IV. Order Panasonic to pay Oppo the reasonable and proportionate legal costs and other expenses incurred by Oppo by way of an interim order pursuant to Rule 150(2) RoP, the amount to be determined at a later date.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 13/104 The fee for the EPC as indicated by d submitted on 22 December 2023, which is still being pursued in the alternative: It is requested, (i) declare that Oppo is entitled to a licence to Panasonic's standard-essential patents for the 3G and 4G standards on fair, reasonable and non-discriminatory (FRAND) terms; and (ii) explain what the essential terms of such FRAND licence are, including at least the rate Oppo has to pay for the use of such patents in the territory of the EPC Contracting States (the EP Territory); and (iii) declare that the FRAND licence rate for the EP Territory is [ ], or in the alternative [ ], or in the further alternative the amounts which the Court considers to be FRAND in the circumstances of the present case; (iv) subject to the existence of a FRAND licence agreement, Oppo, a. from the date of the judgement as a lump sum [ ], the lump sum being [ ], or in the alternative [ ], or in the further alternative a lump sum to be determined by the court; b. to pay this licence rate to Panasonic for each device sold since the date of the decision; (v) To require Panasonic to cooperate fully to obtain a FRAND licence on the terms set by your court; in the alternative, (vi) declare that Oppo is entitled to a licence for Panasonic's standard-essential patents for the 3G and 4G standards on fair, reasonable and non-discriminatory terms (FRAND); (vii) find that the licence terms for Panasonic's patents essential to the 3G and 4G standards, as contained in Panasonic's offer described in the body of this document, are not FRAND; (viii) that Panasonic has abused a dominant market position; (ix) Declare that the terms of a licence for Panasonic's patents essential to the 3G and 4G standards, as contained in Oppo's counter-offer described in the body of this document, are FRAND;2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 14/104 (x) Order Panasonic to make a FRAND counter-offer to Oppo at the following FRAND licence rate for the EP Territory: [ ], or in the alternative [ ], or in the further alternative such amount as the Court considers to be FRAND in the circumstances of this case; and in any case (xi) Order Panasonic to pay Oppo's reasonable and proportionate legal costs and other expenses incurred by way of an interim order under Rule 150(2), the amount to be determined at a later date. The plaintiff considers the amendment in the Reply to the FRAND counterclaim to be late, the amendment is not admissible, the defendant's changes to the plaintiff's draft contract of 22 December 2023 are not FRAND-compliant. The plaintiff for the standard-essential patents for the 3G and 4G standards, dated 22 March 2024) and applied for, I. otherwise dismiss the counterclaim, as the defendants are unwilling to licence; II. order the defendants to pay the costs, 1. to pay the costs and expenses of the proceedings; 2. provisionally reimburse the costs. In the alternative, In the event that the counterclaim is admissible and the court is of the opinion, contrary to the opinion of the plaintiff , that the defendants acted as willing contracting parties in the negotiations at issue with the plaintiff, the plaintiff requests the court to rule on the counterclaim, III. declare that a licence justifying the defendant's infringing acts of use of EP 2 568 724 is a worldwide licence to the plaintiff's 3G and 4G (multimode) portfolio and that a royalty rate for such a licence of [ ] is fair, reasonable and non-discriminatory; IV. further, in the alternative to the application under III., declare which licence justifies the defendant's infringing acts of use of EP 2 568 724 and which licence rate per 3G/4G (multimode) device is fair, reasonable and non-discriminatory (FRAND); V. order the defendants to pay the costs,2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 15/104 1. to pay the plaintiff for 3G/4G (Multimode) devices sold and not licensed by the defendants, alternatively for sold and not licensed 3G/4G(Multi mode) Multimode G [ ] for the past and the future. 2. in the alternative under V.1. to pay to the plaintiff for 3G/4G(Multimode) devices sold and not licensed by the defendants, in the alternative for sold and unlicensed 3G/4G(Multi licences in the amount corresponding to application IV. for past and future acts of use. VI. also dismiss the further counterclaim; in the alternative to VI. VII. to oblige the counterclaimant 1), 1. to accept the licence agreement offer of the counter-defendant dated [ ] in the version of Annex KAP FRAND WK 19 Strictly confidential; In the alternative to item VII.1, 2. to submit a licence agreement offer to the counter-defendant in the version of the annex KAP FRAND WK 19 Strictly confidential; Further in the alternative to item VII.2, to submit to the counter-defendant a licence agreement offer in the version of Annex KAP FRAND WK 19 Strictly Confidential, with the proviso that clauses 4.1 and 4.2 are replaced as such as set out below: [ ] whereby further in the alternative to item VII.3: 4. [ ]; VIII. in the alternative to the applications in points VII.1 to VII.4 and in the event that none of the applications therein should be granted, 1. declare that a willing licence seeker is entitled to a licence to the counter-defendants' patents essential to the 3G and 4G standards on fair, reasonable and non-discriminatory (FRAND) terms and determine the royalty rate to be paid by a willing licence seeker comparable to the counter-claimants in all other respects except willingness to licence for the use of those patents worldwide, such FRAND royalty rate being [ ], or, in the alternative, such other rate as the court deems fair, reasonable and non-discriminatory2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 16/104 2. subject to the existence of a FRAND licence agreement, to oblige the counterclaimants to pay the licence rate from VIII.1 as a lump sum from the date of the judgment, [ ]; 3. in the alternative, pay a lump sum determined by the court to be fair, reasonable and non-discriminatory; IX. further in the alternative in the event that neither the applications under VII. nor VIII. should be granted, 1. declare that the counterclaimants have not behaved in a FRAND- compliant manner; 2. declare that the licence conditions, alternatively the licence fees, as contained in the offer of the defendant dated [ ] in the version of the annex KAP FRAND WK 19 Strictly confidential for a licence to the defendant's patents essential for the 3G and 4G standard are FRAND; 3. declare that the terms of a licence, alternatively the licence fees, as contained in the counter-offer of counterclaimant 1) dated [ ] in the version of Annex VBFC 14 Strictly Confidential for a licence of counterclaimants to the patents of the counter-defendants essential for the 3G and 4G standard are not FRAND; X. condemn the counterclaimants, 1. also to bear the further costs and expenses of the proceedings incurred as a result of the extension of the action; 2. also provisionally reimburse the further costs. 12. The defendants consider these applications to be inadmissible and request that they be dismissed. FACTUAL AND LEGAL POINTS OF CONTENTION Injury discussion 13. According to the plaintiff, the defendants directly infringe claim 1 of the patent in suit and indirectly infringe claim 13 by offering 4G-capable products, in particular 4G- capable mobile phones and smartwatches (attacked embodiments) in the Federal Republic of Germany, in the2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 17/104 French Republic, the Italian Republic, the Kingdom of the Netherlands and the Kingdom of Sweden. According to the applicant, the contested embodiments fulfil all the features of claim 1 when used in the 4G network and use a method according to claim 13. 14. The defendants, on the other hand, are of the opinion that the contested embodiments do not realise features 1.1, 1.3.1, 1.3.2 and 1.3.2 in particular. The plaintiff misunderstands the term "transmission bandwidth". Contrary to the applicant's view, the transmission bandwidth is to be understood as the bandwidth within a given system. control channels and which is therefore available for transmitting reference signals and user data. The broadband SRS signal referred to in the claim extends over this transmission bandwidth, which is therefore defined by the system bandwidth minus the bandwidth required for the PUCCH. The same applies to the narrowband SRS, which are distributed by means of frequency hopping. Contrary to the applicant's opinion, however, the transmission bandwidth is not defined by the beginning of the first SRS signal transmitted in the bandwidth to the end of the last SRS signal transmitted in the bandwidth, i.e. the area actually covered by the SRS signals. This variance of the transmission bandwidth is then also addressed in feature 1.3.1. The plaintiff has not been able to show on the basis of the standard that the reference signals are allocated in accordance with feature 1.3.2 in such a way that the reference signals are allocated to frequency resources, each of which has the low bandwidth that is invariable irrespective of changes in the transmission bandwidth. This is denied by the defendants by arguing that in the standard a change in CSRS can cause a change in mSRS and thus a change in the bandwidth of the reference signal and thus the bandwidth of the reference signal is not fixed regardless of CSRS. In particular, according to the standard, the SRS signals could not be distributed evenly in the transmission bandwidth within the meaning of feature 1.3.3. After the implementation of the standard, the state of the art2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 18/104 known and disadvantageous gaps between the control channels and the frequency ranges actually covered by the SRS signals. Finally, the defendants also pointed out that the parameters mSRS and CSRS addressed by the plaintiff are only assigned semistatically and that the adjustment is only possible in 80ms intervals at most (duplicate technology para. 83 et seq.). On the other hand, the PUCCH changes every millisecond and the data assigned to the PUCCH in each subframe is calculated by the terminal device from data that it received from the base station in the downlink only 4 milliseconds before the respective subframe, which is why the LTE standard relied on excludes an adaptation of the (semi) static SRS configuration to the rapidly and dynamically varying PUCCHs. 15. The defendants also criticise the plaintiff's submission regarding the acts of infringement of which the defendants are accused as being too unsubstantiated. In particular, the defendants had already withdrawn from the German market some time ago. 16. The legal consequences sought by the plaintiff are too far-reaching. In particular, a cease and desist order was disproportionate and, moreover, there were antitrust reasons for the award (see below). The threat of a penalty payment raises concerns. It was already too high and therefore disproportionate and too vague with regard to actions other than sales. The applications for recall, removal from the distribution channels and destruction were already too vague and also disproportionate. The information requested was too broad, in particular because it was only to be directed at the information necessary for a calculation of damages by way of licence analogy, because the claim for damages was limited to this for reasons of antitrust law. A claim for disclosure of the books does not exist anyway and is the subject of separate proceedings under the Rules of Procedure. There was no sufficiently substantiated interest in publishing the judgement. There is a lack of explanations for the award of provisional damages.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 19/104 FRANDEinwand 17. The defendants argue that the assertion of the claim for injunctive relief and the other forward-looking claims under the patent are excluded because they are precluded by antitrust law. 18. Contrary to the plaintiff's view, the FRAND defence is not only to be applied to the individual patent in suit, but is directed to a comprehensive licence. Article 6 (1) sentence 1 of the European Convention for the Protection of Human Rights and Fundamental Freedoms (ECHR) already requires that the defendant be able to defend itself comprehensively, and it also follows from European law that the comprehensive FRAND defence must be admitted. 19. The infringement notice required by ECJ case law is already lacking, as shown by the European Commission's amicus curiae submission in the proceedings before the Higher Regional Court of Munich 6 U 3824/22 Kart (Annex VBF 45). It is necessary for the infringement notice to formally state the nature and type of infringement in the cover letter itself a reference to external documents is not sufficient. 20. The declaration of willingness to take a licence was to be understood solely as a formal step at the start of the negotiations, as the European Commission also correctly pointed out that this step should not be confused with the counter-offer, which was only to be examined later. The willingness should also not be assessed in relation to the later offers and counter-offers. The Commission makes it clear in its submission that the plaintiff's offer must first be examined to determine whether it is FRAND. This is also in line with the view of the Düsseldorf Regional Court in its order of reference to the ECJ, which was previously finalised by the end of the proceedings . 21. The plaintiff's behaviour was an abuse of rights, as there was no written FRAND offer from the plaintiff until the statement of defence. An offer by the plaintiff was first made in the email of [ ] (Annex VBF 202024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 20/104 and 21) were included. There was therefore a lack of a specific written licence offer before the action was brought, which, in the correct view of the European Commission, could not be made up for in the ongoing infringement proceedings. Until the orders for reference were issued in the present proceedings, no settlement licences had been made available to the defendants that would have made it possible to verify possible discrimination against the defendants. The plaintiff had a burden of proof in this respect, which it did not fulfil. It had initially approached the defendants with exaggerated licence claims without disclosing the basis of calculation or making a comparison with other licensees. [ ] 22. The plaintiff had also [ ]. 23. With regard to the economic assessment of the plaintiff's licence amount expectations, the defendants refer to the report of their economic expert and explain it (Annex VBF 18). [ ]. 24. This imbalance is also revealed by a comparison with [ ] and indicators from published decisions of the UK High Court (InterDigital v Lenovo ([2023] EWHC 539 (Pat)) and Optis v Apple ([2023] EWHC 1095 (Ch)). [ ] 25. The initial expert opinion was then confirmed in a supplementary expert opinion following the submission of settlement licence agreements by the plaintiff in the meantime. In this respect, reference is made to the presentation of the FRAND counterclaim and the FRAND duplicate. 26. In addition to these economically derived arguments, the defendants argue from a legal perspective that the plaintiff is abusing its dominant position on the licensing market contrary to Art. 102 TFEU. The use of the 4G standard is essential in order to survive on the market. The telecommunications providers had switched off 2G and 3G networks in Europe and 4G backward compatibility was also indispensable for 5G devices due to the still insufficient network coverage of the 5G network.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 21/104 27. The entitlement to a licence also follows from the plaintiff's ETSIFRAND declaration for the patent families of the patent in suit. 28. The plaintiff was obliged to equalise the existing information gap with the defendants and therefore to explain the content of its offer so that the implementer could examine it. The plaintiff did not fulfil this obligation. 29. The tangibility of the impairment, which the plaintiff describes as significant with reference to the MEO decision of the ECJ, is irrelevant. 30. The defendant's counter-offer [ ] was FRAND. [ ] It was wrongly rejected by the plaintiff [ ] (Annex VBF 40). 31. The plaintiff, on the other hand, argues that the defendants cannot invoke the compulsory licence defence under antitrust law because they are not willing to take a licence. They had never clearly declared their willingness to take a licence, nor had they provided information or security. The defendants' group of companies had also never sufficiently dealt with the content of the plaintiff's contractual offers and technical information and had deliberately delayed the technical exchange and always requested new claim charts without then dealing with them appropriately. 32. With reference to the case law of the Court of Justice of The Hague (judgment of 24 December 2019, 200.233.178/01 Philips/Wiko), the plaintiff believes that it is not required under European law for the SEP holder to justify why it considers its offer to meet FRAND criteria . In particular, no confidential settlement licence agreements should be made accessible at this stage. Furthermore, it does not have to be a fully formulated offer that is ready to be signed; rather, it is sufficient if the key commercial points are included and it can form the starting point for negotiations on further details. If the user does not agree, he is in any case entitled to react and to object.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 22/104 and must submit a counter-offer. Information must be provided and security must be provided as soon as the SEP holder has rejected the counter-offer of the infringer who is already using the invention. According to the case law of the ECJ, a third-party determination can only be considered by mutual agreement; in particular, the determination of content by a state court is not a third-party determination within the meaning of the ECJ case law. 33. A sufficient infringement notice covering the patent-in-suit had been sent to [ ] before the action was filed (Annex KAP FRAND 1 and 2). In addition, claim charts had been sent for family members of the patents in suit, specifically also for the patent in suit [ ]. The defendants then only declared that they wanted to enter into negotiations, which was insufficient. 34. The applicant's first offer [ ] had already been explained and FRAND. 35. The plaintiff had rejected a lump-sum counter-offer from the defendants [ ] by submitting a new offer (VBF4), without any information having been provided thereafter or security having been provided at least once in the amount of the lump sum which the defendants themselves considered to be FRAND. Moreover, the counter-offer was delayed, [ ]. The fact that the defendant did not even provide its own expert with its own figures, but had him provide an expert opinion solely on the basis of the IDC data, showed that the figures could not be regarded as information. The IDC data is also not readily verifiable for the plaintiff because this requires the registration of a user account and the payment of considerable fees. 36. In their calculations, the defendants assumed that the plaintiff's share of the LTE standard was inaccurate and made up out of thin air. Conversely, the plaintiff had shown, on the basis of information from three different independent sources, that the defendants' alleged sales figures were inaccurate.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 23/104 37. [ ]. 38. The defendants were wrong to take the view that the plaintiff's offers did not fall within the FRAND corridor. [ ]. 39. All of the applicant's offers are FRAND, [ ]. 40. [ ]. 41. The fact that the applicant's offers were FRAND compliant was also demonstrated by the comparison with the applicant's third-party licences submitted in response to the order for production [ ]. 42. [ ]. 43. Moreover, the defendants had not argued that the acceptance of the plaintiff's allegedly FRAND-infringing licence offers was appreciable. 44. The defendant's counter-offers were clearly not FRAND. [ ]. 45. [ ]. 46. [ ]. 47. The defendant's previous counter-offers were also not FRAND. FRAND counterclaim 48. By separate document dated 21 December 2023, in addition to their statement of defence and counterclaim for a declaration of invalidity of the patent in suit, the defendants filed a Licence fee for the EP 49. The defendants argue that the UPC Agreement has jurisdiction under Article 32(1)(a) UPCA for this counterclaim concerning a licence. The aim of the counterclaim is a FRAND2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 24/104 licence between the parties in relation to the plaintiff's portfolio of standard-essential European patents for 3G and 4G-capable mobile devices and the determination of the licence rate to be paid for this. The licence rate thus determined for the EP territory should then also apply to the USA and Japan. For the rest of the world, the defendants decided to have the FRAND rate determined by a Chinese court, where the majority of manufacturing and sales take place. This regional division is also reflected in the parties' previous negotiation history. The request to set a FRAND rate is also justified by the timing of the proceedings, in particular in view of the parallel proceedings pending in the UK with Xiaomi to set a FRAND rate. 50. The defendants have an enforceable claim as beneficiaries to the conclusion of a FRAND licence on the basis of the plaintiff's ETSI declaration pursuant to Art. 6.1 ETSI IPR Policy, which also covers the patent in suit, and the French law applicable under it. 51. The licence rate offered by the plaintiff does not comply with FRAND conditions, as the expert opinion of the defendants' private expert shows in detail. After the establishment of the confidentiality regime in the present proceedings, the defendants submitted settlement licence agreements (Annexes VBF 19 and 20) used in the private expert opinion (App 15307/2024) in a document dated 21 March 2024, without the need for an initially requested submission order to substantiate their submission. 52. The judge-rapporteur provided guidance on the FRAND counterclaim in the orders of 31 January 2024 (ORD 5505/2024) and 27 June 2024 (ORD 38680/2024). 53. The defendants have further submitted in addition to their submission in the counterclaim and in response to the questions raised by the judge-rapporteur in his orders of 31 January 2024 and 27 June 2024 . In particular, the defendants clarify that they are bound by a FRAND provision of the2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 25/104 want to be bound by the judgement of the court. For this reason, the defendants expressly formulated applications directed at performance and pursued applications directed at a declaratory judgement in the alternative. This is expressed in particular in the main claim under I., by which the plaintiff is to be obliged to accept the defendant's counter-offer of [ ] (VBFC 14), which the plaintiff [ ] had rejected (VBFC 18). A bank guarantee was provided to cover the amounts owed (VBFC 19), which is now being served. Information on acts of use was provided on the basis of the IDC data already available to the plaintiff, which was analysed in the expert reports (VBFC 11 and 13). This counter-offer was essentially based on the contractual terms and conditions from the plaintiff's draft contract; only three points had been modified, which is why, in the defendant's view, the remaining contractual terms and conditions were not in dispute between the parties. [ ]. The defendants had a claim to acceptance of this offer, which was pursued with the main claim I.1 directed at performance. This is intended to oblige the plaintiff to accept the defendants' offer. The plaintiff cannot counter this by arguing that FRAND is a corridor and that there can therefore be no claim to the conclusion of precisely one specific contractual offer. 54. Conversely, the defendants also made a binding commitment to accept an offer from the plaintiff (VBFC 20) if an award is made in accordance with applications I.2 or .3. In particular, application I.3 takes into account the fact that the defendants have filed another proceeding for determination of the FRAND rate for the rest of the world (in addition to the determinations asserted here for the EP states, the USA and Japan) before the Beijing Intellectual Property Court in China. The defendants also undertook to accept the further (partial) licence rate determined there. 55. Such a division of the licence fee provisions is also appropriate. It is a worldwide licence in which only the determination of the amount is entrusted to the respective courts closest to the subject matter , once to the UPC Agreement for the UPC territory, Japan and the USA, once to the court in Beijing for the rest of the world [ ].2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 26/104 56. According to the defendant, the FRAND counterclaim was brought independently of the infringement action. It is not dependent on the fact that the patent in suit is infringed and legally valid. Moreover, the subject matter of the counterclaim goes far beyond the subject matter of the patent infringement action because the counterclaim is directed to a global portfolio licence. There is no dispute between the parties that the UPC Agreement has jurisdiction for the FRAND counterclaim; moreover, the plaintiff has not raised an objection under Rule 19 RoP. The plaintiff wrongly accuses the defendants of unwillingness to licence, inadequately analyses the defendants' expert report and makes the manner of transparent. Conversely, the defendant's further expert opinion, which now analyses the submitted settlement licence agreements, confirms that the plaintiff's offer is outside the FRAND corridor. 57. The conclusions drawn by the defendant's private expert would also be substantiated after the plaintiff submitted the three settlement licence agreements. [ ]. 58. [ ] 59. [ ] 60. [ ] 61. [ ]. 62. The plaintiff's legal views on the ETSIFRAND declaration are erroneous, as this gives rise to an enforceable claim to a FRAND licence and to direct performance. The defendants are also favoured as parties willing to obtain a licence.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 27/104 63. The applicant's applications in its defence to the FRAND counterclaim are inadmissible. 64. The judge-rapporteur has received a letter from the UK High Court, Just. Richard Meade, which has reached the local division and informs about the planned procedures before the High Court (ORD 44583/2024). 65. Finally, the defendants pursued the counterclaim for determination of a FRAND fee, which was filed together with the statement of defence and the action for annulment, with the amended applications referred to above. The amended version of the application was admitted by the judge-rapporteur. You have stated that you will also continue to pursue the originally filed version of the application if the amended applications cannot be granted. These are therefore reproduced as a further group of auxiliary motions. 66. The applicant acknowledges that a licence seeker willing to obtain a licence is in principle entitled to a FRAND licence relating to the 3G and 4G standard. This can be derived from Art. 102 TFEU or from the ETSI Declaration. However, the defendants are not willing to grant a licence. Therefore, there was already no need for legal protection for the FRAND counterclaim. It was primarily incumbent on the defendants to take all necessary steps out of court to acquire a licence before recourse to the courts was permissible. It follows from the ETSIIPP Policy that there is an obligation to enter into bona fide negotiations on the conclusion of a FRAND licence. This was not the case for the defendants. Nothing else follows from Art. 102 TFEU either. The lack of willingness to take a licence was already evident from the fact that they had neither provided information nor security. 67. The licence justifying the unlawful acts of use is solely a worldwide portfolio licence and the defendant's argumentation in this regard is inherently contradictory. The UPC Agreement is not only competent with regard to counterclaims for licences that already exist, but also for counterclaims directed at licences yet to be granted. The counterclaim can only be directed at a licence to the respective patent in suit, insofar as the counterclaim, on the other hand, concerns licences to the2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 28/104 portfolio for the entire area of the EPC, the counterclaim is in any case partially inadmissible. 68. The defendants were neither entitled to the determination of a complete licence agreement by the court, nor to a specific FRAND fee, because FRAND is a corridor therefore no such concretely determinable claim to a specific form of performance follows from the ETSI declaration. The ETSI declaration is not a binding offer anyway, but only a contractual promise but the contract is a separate legal transaction. The UPC Agreement is also not a third party appointed to determine the licence fees within the meaning of the case law of the ECJ in Huawei v. ZTE (para. 68). 69. The applications initially made in the counterclaim were also too vague, unlike the applications made by the plaintiff in the present counterclaim under III V. 70. In its reply to the FRAND counterclaim, the plaintiff also complains that the defendants did not introduce their submission on their private expert opinions in the documents in the proceedings, but referred to the party expert opinion in an insufficient manner, which was inadequate. 71. The present proceedings for the determination of a FRAND licence are now in conflict with a FRAND determination procedure initiated in Milan, Italy, before the national court by a distribution partner of the defendant exclusively responsible for Italy. 72. The defendant's licence offer of [ ] is not FRAND for the simple reason that it proposes the allocation of the FRAND provision between different courts, which is not FRAND-compliant. The determination of a worldwide FRAND rate is appropriate. 73. [ ]2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 29/104 74. The security provided by the defendant was not appropriate and was provided approximately three years too late, [ ]. The amount of security offered was also too low and linked to conditions that would be unreasonable in the event of insolvency, because it is neither possible for an administrator to conclude a licence agreement with certainty nor is a legally binding court-ordered determination of a FRAND rate guaranteed in the event of insolvency. 75. Information is still not provided, the IDC data is insufficient. 76. The defendant's expert report is methodologically flawed, [ .] 77. [ ]. 78. [ ]. 79. The defendant's settlement licence agreements were already irrelevant and, moreover, they were used incorrectly by the defendant's expert. With regard to the further details of the subject matter and the matter in dispute, reference is made to the submitted documents and attachments. REASONS FOR THE DECISION Responsibility 80. The jurisdiction of the Mannheim local division of the Unified Patent Court for the infringement action and nullity counterclaim arises from Art. 31 UPCA in conjunction with Art. 71b no. 1 Regulation (EU) No. 1215/2015. Art. 71b No. 1 Regulation (EU) 1215/2015, Art. 32(1)(a), (e) UPCA and Art. 33(1)(a) UPCA. The According to the substantiated plaintiffs' submissions, the defendants also committed the acts of infringement on the territory of the Federal Republic of Germany. The defendants have withdrawn their objection to jurisdiction , albeit under protest at the oral hearing after the panel pointed out that the infringement was probably committed in the territory of the Federal Republic of Germany.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 30/104 The court has withdrawn the contradiction that exists between, on the one hand, considering the court to have no jurisdiction and, on the other hand, nevertheless requesting the determination of a FRAND rate by this court, which is considered to have no jurisdiction, in connection with the antitrust dispute between the parties. The Mannheim local division also has jurisdiction for the FRAND counterclaim (see below). Formalities of the patent in suit 81. The plaintiff bases the claims it is pursuing in the infringement action on the European patent EP 2 568 724 Radio communication device and a radio communication method, which was filed on 13 August 2008 and claims the priority of JP 2007211548 of 14 August 2007 and the priority of JP 2008025535 of 5 February 2008. The reference to the grant of the patent in suit was published on 17 December 2014. The patent in suit is in force, inter alia, in the Federal Republic of Germany, the French Republic, the Italian Republic, the Kingdom of the Netherlands and the Kingdom of Sweden. Technical context of the patent in suit and problem definition 82. The patent in suit deals with a solution to a technical problem in the context of the LTE standard. The parties agree in describing the specific problem in that the patent in suit deals with the uplink signalling traffic from a radio communication device to the network in a radio cell. In particular, the application case is examined in which such a device is not located in the core of the radio cell, but in its peripheral area. The patent in suit describes it as known that the energy available for the transmission of signalling decreases and transmission losses occur if the communication device is located at the edge of the cell. The problems described also arise in particular with regard to reference signals, which serve to estimate the channel quality in the uplink on the network side (also known as SRS (Sounding Reference Signals) signals). In addition, the reference signals are used to estimate the time offset between the base station and mobile station. The2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 31/104 It is known to those skilled in the art that the reference signals must have a certain minimum size in order to be useful for assessing the time offset and therefore must not be only 1 RB (resource block) in size. This is addressed by the patent in suit in section [0005], where it refers to a certain minimum size of the reference signal. In the following, the patent-in-suit concentrates on the estimation of the channel quality in the uplink, which is to be determined on the basis of the SRS signals. From this dependence of the channel quality and transmission and energy losses on the location of the user equipment (UE), it is already clear to the skilled person that the signalling referred to is not to be considered in abstract general terms, but with regard to the specific UE. Accordingly, the patent in suit describes that a UE which is located in the core of the radio cell has sufficient energy to transmit an SRS signal which is designed as a wideband signal (section [0004]). If this energy is not sufficiently available, narrowband SRS signals are used for channel estimation. From this context, the person skilled in the art understands that the corresponding coordination and orders are carried out on the network side and not by the UE itself, because only the network is able to make the necessary decisions regarding the optimal configuration and the resulting signalling in the respective concrete application situation on the basis of the signals transmitted by the UE in the uplink. 83. The patent in suit further describes that in the LTE standard, a physical uplink control channel (PUCCH) is located at both ends of the system band by way of frequency division multiplexing. The SRS signals would therefore be sent in the system bandwidth minus the PUCCH (section [0006]). The width of the control channels is variable depending on the amount of control data that needs to be handled. Therefore, the SRS transmission bandwidth also varies with the variance of the control channels. Here, the patent in suit defines in section [0007] that it refers to the frequency resources used by a single SRS signal as SRS bandwidth and the majority of transmitted SRS signals as SRS transmit bandwidth.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 32/104 84. The patent in suit sets itself the technical task of offering a solution to the problem that the SRS transmission bandwidth varies with the change in the bandwidth of the PUCCH channels. However, the changing bandwidth, in which the user data is transmitted together with the SRS signals in the PUSCH (Physical Uplink Shared Channel) channel, should also enable the channel quality to be estimated as well as possible using narrowband SRS signals. In the state of the art, the problem here is that the SRS signals can overlap with the PUCCH channels when the bandwidth of the PUCCH channels changes, which leads to signal losses. The skilled person is aware that signal losses in the control of the connection in particular must be prevented. For this reason, the PUCCH channels in LTE are also arranged at the two ends of the system bandwidth and not in the centre, where collisions are more likely. In order to avoid interference between the SRS signals and the PUCCH channels, the patent in suit describes as known solutions either to restrict the transmission of SRS signals from the outset only to the bandwidth range that remains when the PUCCH occupy the maximum bandwidth defined on the network side (cf. section [0009] and Figure 2). However, this solution has the disadvantage that larger areas of the band in which the SRS signals and user data can be transmitted are not covered by the SRS signals if the PUCCHs do not have the maximum size, but only have a lower utilisation. This would reduce the quality of the estimation of the transmission quality. Conversely, if the minimum size of the PUCCH is assumed, interference with the SRS signals occurs (Figure 3A and B). 85. Another known solution was to stop the transmission of the SRS signal in the event of an overlap between the SRS and the PUCCH. However, this would again result in an area that was not covered by an SRS signal. This again reduces the quality of the estimation of the channel quality (see section [0011] and Figures 4A and 4B). Both solution approaches therefore mean that a larger range of the bandwidth that is best suited for the best possible channel quality estimation under the given boundary conditions, under which only narrowband SRS can be used by way of the2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 33/104 frequency hopping, should be covered, are not covered and thus the quality of the estimation deteriorates. 86. To solve this problem, the patent in suit proposes a radio communication device according to claim 1 and a radio communication method according to claim 13. The features of claim 1 can be summarised as follows: 1. Radio communication device (200) 1.1 The radio communication device which can be configured to transmit a reference signal with a transmission bandwidth in a given system bandwidth, wherein control channels are assigned to both ends of the same [system bandwidth] and the transmission bandwidth is between the control channels, or to transmit reference signals with a transmission bandwidth in a given system bandwidth. low bandwidth with frequency hopping transmits 1.2 The radio communication device comprises an assignment unit (202) configured to assign the reference signals to frequency resources 1.3 The radio communication device comprises a transmitter unit (204) configured to transmit the associated reference signals 1.3. 1The transmission bandwidth varies in the given system bandwidth 1.3.2 The allocation unit allocates the reference signals in such a way that the reference signals are allocated to frequency resources, each of which has the low bandwidth that is independent of changes in the frequency resources. of the transmission bandwidth is invariable 1.3. 3The frequency resources are distributed evenly in a frequency band of the transmitting network according to the change in the transmitting bandwidth. Bandwidth distributed2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 34/104 Interpretation of the patent claim Some features require further explanation: Feature 1.1 87. Feature 1.1 expresses that the radio communication device can be configured according to the specifications of the claim (in the relevant language of the proceedings of the patent in suit: In view of the relationships described above, the skilled person recognises that it is sufficient if the device can be set up accordingly using network-side specifications. However, it is not necessary for the device to always be configured accordingly. Due to the fact that the solution is based in the context of devices moving in the radio cell and thus subject to different framework conditions, the person skilled in the art recognises that certain determinations of communication are specified on the network side. For example, the skilled person is aware that the bandwidth required for the control channels is determined on the network side based on the need to send control information, which is determined on the network side. Accordingly, the variance of the bandwidth of the PUCCHs is determined on the network side. According to feature 1.1, the device must be able to operate in accordance with the framework conditions determined on the network side and to implement the other elements of the invention. 88. In the context of the patent-in-suit, the skilled person understands the term d that bandwidth, within a given system bandwid and the data required for sending of reference signals and user data is available. The broadband SRS signal referred to in the claim extends over this transmission bandwidth, which is therefore defined by the system bandwidth minus the bandwidth required for the PUCCH. Over this range, in the event that no2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 35/104 sufficient energy is available and therefore no wideband SRS can be transmitted, the narrowband SRS are distributed by means of frequency hopping. Contrary to what the applicant believes, the transmission bandwidth is not defined by the beginning of the first SRS signal transmitted in the bandwidth to the end of the last SRS signal transmitted in the bandwidth, i.e. the area actually covered by the SRS signals. The skilled person will find no support for such an interpretation in the literature. Rather, section [0006] already describes: is transmitted in the band subtracting the PUCCHs from the system bandwid The skilled person finds this understanding confirmed when reading the description, which is to be used to interpret the claim (UPC CoA 1/2024, para. 35). On the other hand, there is no support for the interpretation put forward by the applicant. At no point is it described that, for whatever reason, the transmission bandwidth only extends from the beginning of the frequency of the first narrowband SRS signal to the end of the frequency of the last narrowband SRS signal and that there is therefore a frequency range between the PUCCHs at both ends and the beginning and end of the transmission bandwidth that is not to be understood as a transmission bandwidth. It may be conceivable to a person skilled in the art that other signalling such as a RACH (Random Access Channel) could also be located in the frequency . However, such options are not considered for the solution developed by the patent in suit. Rather, all embodiment examples are based on the fact that the SRS transmission bandwidth is obtained by subtracting the PUCCH transmission bandwidth from the system bandwidth (cf. section [0027] with regard to embodiment example 1, to which all further embodiment examples refer back to). dth obtained by substracting the PUCCH transmission bandwidth from the system bandwid , for example [0034]: different from Embodiment corresponding to [0045], [0054], [0058], [0061], [0066]). There is thus a direct correlation between the variance of the control channels and the size of the transmission bandwidth. Nothing else follows from section [0072], which also emphasises that the transmission bandwidth depends on the variance of the PUCCHs2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 36/104 is defined, even if this may be a specific assigned frequency band. The distribution of the SRS signals by the assignment unit in accordance with features 1.3.2 and 1.3.3 also takes place in the initially determined available transmission bandwidth between the control channels. This variance of the transmission bandwidth is then also addressed in feature 1.3.1. Feature 1.3.2 89. According to the wording of feature 1.3.2, the low bandwidth reference signals are d Bandwidth invariable. The person skilled in the art understands the invariability of the SRS signals in this respect as a central aspect of the proposed solution. This is because he recognises it precisely in the fact that a variance in the width of the control channels and the transmission bandwidth determined exclusively by this is countered precisely with a distribution of SRS signals that are each invariable in themselves. For their part, they are not variable in the bandwidth that they require (for each individual SRS signal) in the frequency range. The SRS signals are addressed in section [0068]: and decrease of the number of PUCCH channels, SRS allocation is changed such that a CQI estimation bandwidth is covered with fixing SRS bandwid Insofar as the applicant refers to section [0073], which declares a variance of ±1 to 2 resource blocks, which does not interfere with the quality estimation, to be tolerable, after the embodiments have previously been described only with invariable SRS signals. were described were described, can in view the clear wording of the claim, whichthe narrow range withoutrestriction as invariable, no relativisation of the invariability criterion can be derived from this. The size of the narrowband SRS signals is only limited downwards in the document by the fact that they must be able to estimate at least time offset (see section [0005]). In the document referenced in section [0008] (Annex VBT D3), after the 3rd indent in the last2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 37/104 As described in the third paragraph of section 3, the minimum bandwidth is 1.25 MHz in order to be able to estimate the time offset in the uplink. As the person skilled in the art is aware, this corresponds to 6 RBs. The skilled person therefore does not read a variance of up to 2 RBs into the narrow bandwidth of the SRS signal, as this could otherwise result in the narrowband SRS no longer being able to fulfil the function of being able to estimate the time offset at the same time. The example shown in Figure 13B, in which the SRS signals partly overlap but are not adjusted in size despite the overlap not being necessary for quality estimation, but remain unchanged for this special case, also speaks against a variance within a certain tolerance. Therefore, the wording and functional context within the claim argue against recognising a certain variability of the narrowband SRS signals as being in accordance with the claim. Feature 1.3.3 90. According to feature 1.3.2, the invariable narrowband SRS signals should be evenly distributed in a frequency band of the transmission bandwidth according to feature 1.3.3 (cf. e.g. [0032]: Then, as shown in Fig. 8, the positions where SRSs are frequencymultiplexed in the SRS transmission bandwidth are positions to cover the dth is covered with fixing SRS bandwidths In the description and the figures, it is clear to the person skilled in the art that technically and functionally no complete coverage of the transmission bandwidth by SRS signals is required. Rather, the person skilled in the art understands that smaller gaps in the coverage between the SRS signals or between the first or last SRS and the PUCCH are acceptable for estimating the channel quality. On the other hand, there should be no major gaps in coverage, which are currently criticised in the state of the art. The distribution should therefore lead to the following instead2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 38/104 several small frequency ranges not covered by SRS signals may remain within the transmission bandwidth (see also Figures 8, 10, 11, 13, 14). 91. The above allocations apply in the same way to the interpretation of method claim 13. Legal validity of the patent in suit 92. Against the background of this understanding of the claim, the patent in suit proves to be legally valid, which is why the action for revocation had to be dismissed. 93. As a result, it can be left open whether the document VBT15 cited by the defendants for the first time in their Reply to the nullity counterclaim could be taken into account. The document is cited from the parallel proceedings UPC CFI 219/2023 conducted against Xiaomi concerning the same patent in suit against the body of law. However, the case nevertheless gives reason to express the view of the panel that, in principle, the revocation counterclaimant is required to raise its attacks already with the revocation counterclaim (Rule 25.1(b), (c), (d), (g) RoP). At most, he can raise new attacks in individual cases, if he makes a substantiated submission that and why it was not possible for him to raise the corresponding attack in the revocation counterclaim. This is because the patent proprietor must be given the opportunity to react to new prior art, possibly by making the necessary amendments to the patent claims. However, according to Rule 30.2 RoP, such applications may only be admitted with the express permission of the court. Accordingly, Rule 32.2 RoP only provides that the invalidity opponent may respond to a request for amendment by the patent proprietor with the arguments contained in Rule 44(d) to (h) RoP and may argue as an alternative to non-infringement. On the other hand, there is no provision in principle for the opponent to introduce newly searched prior art into the proceedings which it has not yet searched without being prompted to do so by the patentee's request for amendment. Rather, this prior art is regularly no longer to be taken into account under Rule 9.2 RoP.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 39/104 94. In the present case, it may also have to be taken into account that the prior art searched by the defendants here was known to the plaintiff from the invalidity attack of the defendants in the parallel proceedings and that they had sufficient opportunity to deal with the prior art there within the time limit regime, especially since fundamental deviations in the assessments of the same prior art by the invalidity plaintiffs here were not demonstrated or otherwise apparent. In any case, the question can remain unanswered in the present case, since the document is not novelty-destroying within the meaning of Art. 54 EPC and cannot give rise to invalidity under Art. 138(1)(a) EPC. No unauthorised extension 95. Against the background of this interpretation, the patent in suit is not inadmissible within the meaning of Art. 138(1)(c), 76(1), 65(2) EPC. 96. The defendants argue their invalidity attack on the premise that the plaintiff's interpretation of the patent claim is followed with regard to the transmission bandwidth according to the patent in suit. However, as described above, the court does not follow this interpretation. 97. Insofar as the defendants base their attack on the fact that the teaching according to the patent in suit The court did not share this view. As the applicant has correctly pointed out, the parent application makes it clear in sections [0101 et seq.] and [0102 et seq. in a certain physical manner. The fact that a reference signal is to be provided for the purposes of the teaching is sufficiently expressed in the claim. The same applies2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 40/104 The parent application and the patent in suit show in sections [0097] and [0098] respectively that this functionality need not be realised in a particular unit. No cancellation of the priorities used 98. The defendants justify the elimination of the claimed priorities of the patent in suit in the same way as the attack of inadmissible extension. For the same reasons, the argumentation does not hold water. The priorities are validly claimed. Novelty compared to VBT D15 (EP 2 129 022 A1) 99. The citation was published on 2 December 2009 and claims priorities of 15 February 2007 and 23 March 2007, thus constituting an earlier right which can be used for the examination of novelty under Art. 54(3) EPC. Doubts as to the legitimate claim to priority of JP 2007077900 have not been raised and are also not apparent the document contains the same disclosure content. 100. The technical background of the document concerns the resolution of the conflict between the channels PUCCH, PRACH and the SRS signal in an SCFDMA scheme in the uplink, i.e. by means of a strict frequency division multiplexing procedure of PUCCH and PUSCH, whereby in addition the conflict between PRACH and SRS signal is resolved in the PUSCH data channel in an extension of the task according to the patent in suit (section [0012]). 101. In contrast to the patent in suit, which solves the conflict between SRS and PUCCH exclusively through frequency multiplexing, i.e. through strictly separate frequency ranges, and does not relate to the time domain, the control channel PUCCH is characterised in two types in the citation. On the one hand, as a channel that is separate from the data channel PUSCH in the time-division multiplex, and2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 41/104 on the other hand as a control channel PUCCH, which from the data channel PUSCH in the frequency multiplex (section [0007]). 102. Thus, in this respect, there is an extension compared to the problem according to the patent in suit, since according to the teaching of the citation, the conflicts are to be solved completely both in the frequency domain (Figures 4 to 6) and in the time domain (Figures 7 and 8). However, a solution focussing solely on the frequency domain is also presented to the skilled person in the art (see section [0025]). 103. A mobile radio system comprising a base station and mobile stations in a radio cell supplied by the base station is shown in Figure 1. 104. Figure 2 shows a subframe that locates the SRS signal in the first long block of the subframe (section [0038]). 105. Figure 3 shows in principle the transmission of SRS reference signals in frequency hopping over the system bandwidth.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 42/104 106. However, this figure does not show where the control channels are located and whether they are variable or not. Against the background of the underlying problem and the further explanation of the conflict resolution between the SRS signal and the channels in the frequency domain addressed by the text (Figures 4, 5, 6 and 11), it is clear to the skilled person that PUCCH and PUSCH are strictly separated in the frequency domain and that Figure 3 is a simplified representation to illustrate the transmission of the SRS reference signals in the frequency domain. 107. The alternative transmission of a single broadband reference signal in the transmission bandwidth is also shown directly and unambiguously by the caveat (section he Sounding RS may be divided into one 108. The fact that the control channels can be located at both ends of the transmission bandwidth can be seen from Figure 4, which shows a mapping of the resources in the uplink in the time and frequency domain for PUCCH and PRACH (section [0042]). The parties dispute whether Figures 3 to 5 are read in context by the skilled person.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 43/104 109. What is missing in Fig. 4 is the representation of an SRS reference signal located between the control channels and its possible distribution. 110. However, this does not mean that no SRS reference signals are assigned there. This is because the person skilled in the art also recognises that PRACH and SRS reference signals can conflict with each other in the same frequency range at certain times, whereby this conflict, which only occurs temporarily, is resolved by the measures shown in Figure 6: 111. Furthermore, the missing information in Figure 4 is also conveyed in the text by the fact that the allocation of time and frequency resources for the SRS reference signals results from the mapping of PUCCH and PRACH, which is transmitted from the base station to each mobile station in the radio cell by means of a broadcast (section [0045]), and this information is also taken into account when mapping the individual SRS resources of the individual mobile station, which is communicated by means of an RRC message (last sentence [0040] and Figure 11). 112. The step S11 shown in Figure 11 refers to a transmission bandwidth if there is no time conflict in the frequency range between SRS and PRACH. In this case, the SRS is transmitted in this transmission bandwidth (Figure 11 step S14).2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 44/104 113. If a conflict occurs at certain times (Figure 11 step S12), this must be resolved in a further step (Figure 11 step S13) with regard to the options shown in Figure 6. 114. If, therefore, following the argumentation of the plaintiff for revocation, it is taken from the document that in Figure 3 only a simplified representation of the basic principle of the transmission of the SRS reference signals in the frequency hopping is shown and the control channels are assigned to both sides of the system band and SRS reference signals (Figure 11 step S11) are neither assigned there nor transmitted (Figure 11 step S14), this nevertheless does not lead to a complete disclosure of the teaching of the patent in suit. 115. If, following the defendant's argumentation, Figure 5 is read in this context with Figures 3 and 4 (cf. section [0026] description of the figures: mapped to both ends , it does show the distribution of the low- bandwidth reference signals in a sophisticated variable2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 45/104 transmission bandwidth, but at least not that the reference signals are invariable in size: 116. Figures 5A and 5B initially reveal only a distribution with reference signals of low bandwidth, which is not invariable but varies and is therefore not in accordance with the claim. Within Figure 5A, the bandwidth of the individual SRS signal varies between 10 and 13 RB and thus even outside the tolerance of ±1 to 2 RB mentioned in the statement of claim, which, however, as explained above, does not in any case lead to the claim still recognising an invariable SRS signal. In any case, Figures 5A and B are in turn related to Figures 5C, 5D and 5E. The skilled person is thus shown various possible configurations without recognising at this point that a reference signal of invariable width is specified. Rather, the signals in the various embodiments of Figures 5 vary arbitrarily in their width and are merely arranged in such a way that they cover the transmission bandwidth between the PUCCH. However, the skilled person is not immediately and clearly shown as belonging to the invention that the reference signals are invariable. In addition, the PUCCHs in Figure 52024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 46/104 are each 2 RB wide and do not vary. The connection according to the patent in suit for solving the problem of distributing invariable SRS signals in the variable transmission bandwidth defined by varying PUCCH is thus not shown as an element of the invention of the citation. 117. The other figures 5C, 5D and 5E do not change this either. It is true that Figure 5C and Figure 5D show a distribution with a reference signal of invariable low bandwidth of 10 RB, whereby Figure 5D with overlapping reference signals of invariable 10 RB shows a uniform distribution within the meaning of feature 1.3.3, as is also presented in Figure 13B of the patent in suit as being in accordance with the claim. However, the frequency bandwidths occupied by the control channels do not vary here either, but are each 2 RB wide, although the skilled person may read their variability into the figure from section [0042] and section [0045], last sentence, and section [0040] and Figure 11. However, in accordance with the approach of the invalidity applicants, these figures are also to be considered in their context and are therefore on an equal footing with Figures 5A, 5B and 5E, which do not show invariable but varying reference signals. The five different distributions presented in the transmission bandwidth are therefore arbitrary for the person skilled in the art. The fact that the reference signals within the meaning of feature 1.3.3 of the patent in suit are invariable in any case despite the variance of the PUCCHs is not disclosed to him directly and unambiguously as belonging to the invention for solving the conflict between PUCCH and SRS signals mentioned in the citation. This solution of the patent in suit is also not directly and clearly conveyed to him in the description passages explaining Figures 5 (sections [0047 et seq.]). Rather, the alternatives are juxtaposed as arbitrarily interchangeable without favouring a particular embodiment variant. It is therefore crucial that the invariability of the SRS signal is not shown here, not even in an embodiment variant of Figure 5. Rather, the skilled person reads Figures 5 and Figures 3 to 5 in context. In this case, however, the result is not that the bandwidth of the SRS signal is invariable, but only that the SRS signal varies depending on the transmission bandwidth to be covered, and not that the SRS signal is variable despite the bandwidth.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 47/104 varying transmission bandwidth. Feature 1.3.3 is therefore not disclosed as prejudicial to novelty. New feature compared to the VBT D1 118. The teaching of the patent-in-suit is also new compared to citation D1. 119. In the LTE standard, it was known at the priority date of the patent in suit to arrange the control channels PUCCH (Physical Uplink Control Channel) in the uplink at both ends of the system bandwidth (uplink bandwidth), with the data channel PUSCH (Physical Uplink Control Channel) shared for the transmission of uplink data being located in the frequency range in between. This understanding is demonstrated by Figure 18 in section 6.4.3 of VBT D9, whereby in section 6.5.2.2 of VBT FDMA symbol is assigned. Furthermore, VBT D5 in section 1.1, 2nd indent, proves that the PUCCH bandwidth is variable. 120. According to citation D1, in order to estimate the channel quality of the PUSCH, it was also known that the reference signals required to estimate the channel quality are located in the frequency band of the PUSCH (Chapter 7 Frequency multiplexing of data and sounding signals). 121. Furthermore, a distinction is made in citation D1 between broadband reference signals (non-hopped fixed sounding RS with broadband sounding BW1) and narrowband reference signals in frequency hopping (frequency hopped narrowband sounding RS with narrowband sounding BW2), whereby the variability of the bandwidth of the control channels is taken into account in the allocation of the bandwidth for the reference signals (sounding BW) (section 8 into account the variable control channel overheads within a slot (i.e., top/bottom sounding may be smaller than nominal)).2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 48/104 122. However, this consideration inevitably means that the narrowband reference signals are not invariable, but are dependent on the change in the control channels and thus the transmission bandwidth. (Section 8 but will have to take into account the variable control channel overheads within a ). 123. Thus, at least feature 1.3.2 is not directly and unambiguously disclosed in D1 with respect to the requirement for an invariable bandwidth of the narrowband reference signals. 124. Even if one were to follow the defendant's submission in relation to citation D1, in its example the narrowband reference signals are shown in the frequency hopping with an invariable bandwidth of 1 RB: 125. However, the selection of a bandwidth of 1 RB for a narrowband reference signal is arbitrary and, above all, contradicts the values that result for the Narrowband Sounding BW2 according to the results of the evaluation in Appendix B and the recommendation according to the table in Section 8, which recommends a bandwidth of 1.25 MHz (6 RBs) for the narrowband reference signal with a system bandwidth of 5 MHz. 126. Moreover, it remained uncontested at the oral hearing that it is clear to the skilled person from paragraph [0005] of the patent in suit that in order to fulfil the requirement for estimating the timing offset between the base station and the mobile station, the reference signals must have a certain minimum bandwidth, which is invariable in the case of narrowband SRS transmission. A2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 49/104 narrowband reference signal comprising only 1 RB does not, as the skilled person is aware, cover the minimum bandwidth in order to be regarded as a narrowband SRS within the meaning of the patent in suit. This is also confirmed by VBT D3, which is cited as prior art in paragraph [0008] of the patent in suit and which in the 3rd indent states of a Width of 6 RB. Novelty also with a view to the VBT D1a citation 127. A different result does not emerge if the VB T D1a listed in VBT D1 is taken into consideration. 128. Citation D1a is cited as document [2] in citation D1 and is referred to by the defendants to show where the 1 RB reference signals are to be located in a system band with a bandwidth of 5 MHz, i.e. 25 RB (page 4, lines 3 to 6 and 12 to 16), in order to show, in conjunction with D1, the previously described order of narrowband reference signals of a bandwidth of 1 RB in frequency hopping. 129. According to the However, this shows that the narrowband 1 RB reference signal (narrowband SRS) transmitted there in the BPICH (broadband pilot channel) in frequency hopping is transmitted over the entire system band of 5 MHz and also covers the frequency range of the PUCCH control channels. 130. Figure 1 shows the assignment of the BPICH, which occupies the entire system band of 5 MHz and does not exclude the frequency range of the PUCCH control channels. 131. To summarise, when the reference signals are transmitted in the BPICH in accordance with D1a, the entire system band is always covered and the control channels are not excluded.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 50/104 132. It can be seen directly and clearly from D1a that when a reference signal is sent on the BPICH, the conflict with the control channel is resolved in terms of time, whereby this time block is then not available to the control channel. 133. be desireable to exclude the edgeRBs used for UL control signalling from the sounding blocks, thus resulting in FDMA between sounding signals and control data , which specifically refers to an FDMA, nothing additional can be gained by referring to D1a that is not already directly and unambiguously apparent from D1. 134. In particular, feature 1.3.2 is still not fulfilled with regard to the requirement of an invariable bandwidth of the narrowband reference signals transmitted in the frequency hopping and is not directly and unambiguously disclosed. Novelty compared to the VBT D3 counterpart 135. D3 is cited as prior art in paragraph [0008] of the patent in suit and was therefore taken into account in the grant procedure. 136. Section 2 of D3 first discusses two previously known approaches for transmitting reference signals (abbreviated as CS RS = uplink channel sounding reference signal) together with uplink control channels (PUCCH) in a system bandwidth. 137. In a first approach, which describes a time division multiplexing method (TDM time division multiplexing), the reference signals occupy the entire uplink bandwidth (system bandwidth). In this approach, the control channel cannot be transmitted during the transmission of a reference signal. This means that no information can be transferred to the control channel during the transmission of the reference signals.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 51/104 control channels are transmitted. This first approach is shown in Figure 1 of D3. It can be seen that the reference signal utilises the entire system bandwidth. 138. In a second approach (FDM), known as frequency division multiplexing (FDM), the reference signals are only transmitted within frequency bands that are not occupied by a control channel (PUCCH). In this approach, the reference signals only jump within a frequency band that is not occupied by the control channels. This second approach is referred to in D3 by citing citation D3a (see D3a below). 139. According to Table 1 disclosed in D3 in Section 3, for system bandwidths up to 5 MHz the specified bandwidth values of the transmit bandwidth (Wide sounding BW) are always the entire system bandwidth. Thus, for system bandwidths up to 5 MHz, no resources remain in the specified system bandwidth for assigning the control channels (feature 1.1) and, in the absence of varying control channels, there is also no change in the transmit bandwidth for a fixed system bandwidth (feature 1.3.1) and, as a direct consequence, no disclosure of features 1.3.2 and 1.3.3. 140. The fact that at system bandwidths above 5 MHz the remaining portion of the system bandwidth not used by the transmission bandwidth remains and could in principle be available does not imply otherwise, since D3 does not comment on this and there is no specific disclosure in this regard. Citation VBT D3a 141. Citation D3a is cited as document [3] in Citation D3 and is r e f e r e n c e d by the defendants to show that the reference signals are PUCCH) and the conflict between control channels and reference signals by means of2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 52/104 frequency division multiplexing (FDM) method. 142. In fact, section 6 of Figure 1 shows a system bandwidth at each end of which a single control channel is allocated. In the intermediate area of the transmission bandwidth, reference signals of low bandwidth (narrowband SRS) are transmitted in the frequency hopping: 143. By using FDM, there are no conflicts between the control channels and the reference signals addressed by the patent in suit, since there is a strict separation of control channels and reference signals available frequency resources. 144. However, varying control channels are also not to be taken from D3a and consequently the disclosure of features 1.3.1 and 1.3.3 is still missing.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 53/104 No lack of novelty of VBT D2 and inventive step 145. According to the defendant's own argumentation (KE para. 224), the citation VBT D2 is only prejudicial to novelty if and not the plaintiff's interpretation of the term "transmission bandwidth" were to be followed. Consequently, the argument of a lack of inventive step based on the specification cannot be accepted either. VBT D4a and 4b citations 146. Both citations VBT D4a and 4b were published after 14 August 2007 as the relevant priority date and are therefore not prior art. Other citations cited as evidence of the prior art VB T D5 to D12 147. The other documents D5 to D12 cited by the defendants as prior art serve only as evidence of a technical understanding already confirmed in the above statements or serve to oppose patentability in the form of the sub-claims and therefore require no further assessment. Feasibility of the invention and lack of inventive step 148. Contrary to the defendant's view, the invention is also disclosed in sufficient detail for the person skilled in the art (Art. 138(1)(b) EPC, 65(2) EPC). However, the defendant's argumentation, according to its own explanations, only holds if one were to follow the plaintiff's incorrect understanding of the transmission bandwidth. In that case, unsampled gaps would remain, so that it would remain unclear how a good estimation of the channel quality could be achieved. In this respect, reference is made to the previous statements with regard to the correct understanding of the claim.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 54/104 149. The patent in suit is also based on inventive step. In their Reply to the revocation counterclaim, the defendants again argue this attack against the patent-in-suit only on the basis of the plaintiff's incorrect interpretation of the claim (see above). Infringement of the patent in suit 150. The attacked embodiments, in particular the 4G-enabled smartphones such as the OPPO Find X5 Pro and the 4G-enabled smartwatches of the defendants, operate according to the 4G standard and thereby infringe the patent in suit in its main claims 1 directly according to the wording within the meaning of Art 25(a) UPCA and the method claim 13 indirectly within the meaning of Art. 26 UPCA by offering, placing on the market, using or importing for these purposes and possessing the attacked embodiments in the territory of the Federal Republic of Germany, the French Republic, the Italian Republic, the Kingdom of the Netherlands and the Kingdom of Sweden without the plaintiff's consent. The accused embodiments are means relating to an essential element of the invention and the defendants should at least have known that they are intended and suitable to be used for the use of the invention in the presently invoked Contracting States in which the respective bundle patent part of the patent-in-suit is in force. 151. The relevant components of the 4G standard are mandatory. The following components are relevant in this context: 10), LTE; Evolved Universal Terrestrial Radio Access (EUTRA); Physical Layer Procedures (hereinafter: TS 136 213), Annex KAP A 16;2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 55/104 01), LTE; Evolved Universal Terrestrial Radio Access (EUTRA); Physical channels and modulation (hereinafter: TS 136 211), Annex KAP A 17; 01), LTE; Evolved Universal Terrestrial Radio Access (EUTRA); Radio Resource Control (RRC) (hereinafter: TS 136 331), Annex KAP A 18. 152. The defendants wrongly deny infringement by the LTE standard as far as features 1.1, 1.3.1, 1.3.2 and 1.3.3 are concerned. The realisation of the other features of the claim is not in dispute between the parties and is also not based on misconceptions under patent law. The argument that the patent in suit is not infringed because the LTE standard allows the signal bandwidth of the SRS signals to be set independently of the PUCCH and a change in the signal bandwidth is not dependent on a varying PUCCH is not correct. In this respect, the defendants overlook in their argumentation that it is sufficient according to the claim that the radio communication device can be set by network-side instructions according to the specifications of the claim . Violation Feature 1.3.3 153. According to the standard, the SRS signals can be distributed evenly in the transmission bandwidth as defined in feature 1.3.3. This can also take place depending on the change in the transmission bandwidth. There are also no disadvantageous gaps between the control channels and the frequency ranges actually covered by the SRS signals, which the defendants have illustrated with the graphic shown below:2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 56/104 154. With reference to Table 5.5.3.21 of TS 136 211 (Annex KAP A 17), the applicant has pointed out that this representation is artificial because in this case the base station does not actually leave any gaps to the right and left of the areas covered by SRS, but only chooses the configuration in this way if there is correspondingly high traffic on the PUCCHs and these then occupy correspondingly more RBs. They have tried to illustrate this schematically using the figure shown below: 155. In the example shown by the defendants, on the other hand, the network would choose configuration 3 with a bandwidth of 20 RBs in order to cover the area between the PUCCHs as well as possible:2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 57/104 156. The fact that this determination is made by the network and not by the UE does not preclude infringement of the claim. Rather, it is sufficient that on the network side, for example with a system bandwidth of 8 MHz, the configuration BSRS = 3 with CSRS = 0 can also be selected, resulting in the following distribution, which is uniform and corresponding to the change in the transmission bandwidth within the meaning of feature 1.3.3: 157. This has also been substantiated by the plaintiff for the configuration CSRS = 1 and BSRS = 3:2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 58/104 158. The defendants have not countered this with any substance (Rule 172.2 RoP). The defendants' reference to the fact that the 8 MHz example in the LTE standard chosen by the plaintiff as an illustration is not a usual bandwidth is irrelevant. This is because the defendants have only pointed out that the parameters mSRS and CSRS mentioned by the plaintiff are only semistatically allocated and that the adjustment is only possible in 80 ms intervals at the shortest (duplicate technology para. 83 et seq.). On the other hand, the PUCCH changes every millisecond and the terminal device calculates the data assigned to the PUCCH in each subframe from data that it has received from the base station in the downlink only 4 milliseconds before the respective subframe, which is why the LTE standard relied on excludes an adaptation of the (semi) static SRS configuration to the rapidly and dynamically varying PUCCHs (Duplik Technik para. 90110). 159. However, this argument is irrelevant under patent law because the present teaching does not presuppose that the conflict between PUCCH and SRS signals addressed by the patent in suit is absolutely excluded in any of the diverse and, as is known to the skilled person, dynamic conditions. The patent in suit does not provide sufficient evidence for such an understanding of the teaching formulating an absolute claim. Therefore, if the realisation of the teaching does not occur in individual time intervals due to adaptation offsets in the signalling by the network, this is irrelevant. 160. The defendant's argument that, according to its submission, there is no correlation between the previously mentioned parameters CSRS and BSRS and the parameter , which allocates a certain number of control channels t o a mobile device via the base station, is also irrelevant under patent law (statement of defence para. 121). This argumentation does not deny that the radio communication device according to claim 1 can be set up accordingly, which is sufficient under patent law.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 59/104 Violation Feature 1.3.2 161. Accordingly, the realisation of feature 1.3.2 by the defendants cannot be successfully denied by arguing that in the standard a change in CSRS can cause a change in mSRS and thus a change in the bandwidth of the reference signal and thus the bandwidth of the reference signal is not fixed irrespective of CSRS (cf. Statement of Defence Technology para. 126). The plaintiff correctly points out that the standard has configurations for which only one and the same narrowband bandwidth of the SRS signal is defined, as shown below, configurations 2 to 6 each have a constant narrowband bandwidth of 4 RBs, which is sufficient for the realisation of the feature (Reply Technik para. 68 et seq.): Violation Feature 1.3.1 162. By default, the transmission bandwidth also varies in the given system bandwidth. The applicant has shown with substance that for a system bandwidth of 25 RB (5 MHz) several configurations are provided by the standard and that the transmission bandwidth mSRS,O changes by changing the configuration CSRS:2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 60/104 163. Again, it is sufficient that the steps performed by the radio communication device can be controlled on the network side because, according to the configurable ss the device is set up to interpret and process the corresponding control commands. Violation of characteristic 1.1 164. Finally, feature 1.1 is also realised by the LTE standard. This is because even if the claim to the transmission bandwidth is correctly understood, a configuration for the value mSRS,0 can be provided on the network side as standard, in which the transmission bandwidth lies between the control channels, since it indicates the bandwidth in which the reference signals are distributed. This has been confirmed by the configuration set out in the statement of defence in recital 134. n 1 only is intended for changing system bandwidths, but does not require an adjustment of the transmission bandwidth within a constant system bandwidth. It is sufficient that the standard enables a patent-compliant configuration.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 61/104 Passive legitimacy of the defendant 165. The defendants also have standing. Defendant 1. maintains its European headquarters in Düsseldorf and controls the distribution of the attacked embodiments in the respective contracting states of the UPCA asserted in the present case from here. The defendant 2. operates in Düsseldorf together with the defendant 2. 1 is the European headquarters of the group. Defendant 1 controls the business activities of defendant 2. 166. It is aware of the channels through which mobile devices from the OPPO Group are sold, in particular via third-party providers in Europe and especially in the Federal Republic of Germany, and promotes this and does not oppose it despite being aware of it. Its website contains links to providers through which the Oppo Group's 4G-capable products can be purchased. In addition, it supports these sales activities by also providing the user manuals of the 4G-enabled products written in the respective language on the markets asserted in the present case, offering warranty packages, while the UEFAChampionsleague places targeted advertising for the attacked embodiments and thus actively promotes the sales activities on the markets asserted in the present case. Defendant 2. cooperates with defendant 1. in a structured manner to promote sales. 167. In particular, the plaintiff has submitted in a sufficiently substantiated manner that in addition to the acts challenged in the other contracting states with the present action, the challenged embodiments are still offered and marketed on online marketplaces such as Otto, AmazonMarketplace and GoogleShopping in the Federal Republic of Germany, from which the defendant group allegedly claims to have withdrawn. This means that specific submissions on acts of infringement have also been made with regard to the German part of the bundle patent asserted in the present case. The defendant's blanket denial with regard to acts of infringement by both defendants in the Federal Republic of Germany is unsubstantiated (R.171.2 RoP). It2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 62/104 It is not sufficient to take the general view that the plaintiff's submission does not suffice as evidence for the promotion of the actions described by the plaintiff. The plaintiff's submission was not specifically contradicted. Legal consequences of patent infringement 168. The established patent infringement by the defendants of the national part of the bundle patent validated in the respective asserted contracting states justifies the legal consequences sought by the plaintiff. 169. The application for a declaration of patent infringement is based on Art. 64(2) (a) UPCA. In the present context of infringement of a standard essential patent, the determination of patent infringement serves the legitimate interest of the plaintiff, also vis-à-vis (non-)authorised distributors of the defendant. 170. The injunction sought by the plaintiff with regard to the infringing act is based on Art. 25(a), Art. 63(1) UPCA and must be granted because there is a risk of repetition due to the infringing acts committed by the defendants in the past in the contracting states asserted in the present case. The defendants may not continue the acts of offering, placing on the market, using, importing or possessing for these purposes in the Contracting States covered by the action. In particular, sufficient submissions have been made with regard to the national parts of the bundle patent asserted in the present case and their infringement in the respective territories. A separate statement There was no need for applications by the plaintiff with regard to the sub-claims because they are merely exemplary concretisations of the acts already covered by the main award. 171. evident. Rather, proportionality considerations (Art. 42 UPCA and2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 63/104 Art. 3(2) Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights) already comprehensively in the context of the consideration of the examined antitrust compulsory licence objection under application of the the European Court of Justice's balanced negotiation programme (see below). Further circumstances that would appear to make it necessary from a proportionality perspective not to issue an injunction in the present case have not been sufficiently demonstrated. It also had to be taken into account that the defendants, according to their own submission, do not see their main business in the markets of the contracting states of the UPCA anyway, as is also reflected in the fact that [ ]. Thus, according to their own submission, the injunction does not prevent them from operating in the defendants' core markets. Nor can the generalised argument that the plaintiff does not manufacture itself and is therefore not in direct product competition with the defendants prevail. Rather, specific facts must be presented in this respect that justify a different decision because they are not already reflected in the negotiation programme of the European Court of Justice's decision. This has not been done in the present case. The defendant's submission does not indicate any such further aspects. 172. Contrary to the view of the UK Court of Appeal [2024] EWCA Civ 1143 para. 79, standard-essential patents are also not to be regarded as patents which have solely a monetary assignment content, at least in the legal area of the European Union. On the contrary, according to the case law of the European Court of Justice, which is admittedly no longer relevant for the courts of the United Kingdom, the holder of an SEP can also exercise the prohibition rights to which he is entitled on the basis of the patent, ECJ, Huawei v. ZTE, ECLI:EU:C:2015:477, para. 46: According to settled case law, the exercise of an exclusive right associated with an intellectual property right, in this case the right to bring an infringement action, is one of the prior rights of the owner of an intellectual property right, so that it does not in itself constitute an abuse of a dominant position.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 64/104 position, even if it emanates from an undertaking in a dominant position 173. This is incompatible with an understanding of the SEP as a legal title that does not include the right to enforce an injunction and that serves solely to enforce higher licence claims. Such a view is incompatible with European law, as Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights as a standard in the European judicial area shows. This also follows from the decision of the ECJ (ibid. para. 5759 and para. 71), in which it is stated that it does not constitute an abuse of a dominant market position to bring an action for an injunction against an infringement as long as certain steps have been taken prior to such an action. Such an understanding would also be incompatible with the minimum constitutional guarantees of the Federal Republic of Germany as one of the contracting states invoked in the present case (Article 14 (1) of the Basic Law of the Federal Republic of Germany) as well as with Article 17 (2) of the Charter of Fundamental Rights of the European Union. 174. Nor is any other restriction of the injunction appropriate in view of the FRAND rate determination taking place in the UK in a different dispute. The decision of the UK Court of Appeal itself states that the opposing group of companies is not affected by the declaratory judgement (ibid. para. 2). It can therefore be left open in the present dispute whether the finding made in the words of the UK Court of Appeal is de facto a FRAND rate determination in the international treaty law context of TRIPs. (cf. Art. 1.1, 28.1 and .2, 41.1, 44.1 TRIPS to be observed in this context under international law). 175. The threat of a penalty payment for failure to act (Art. 63(2) UPCA) raises no objections. The unit-related nature of the penalty payment provides a parameter for the calculation of the penalty payments to be paid to the court in the cases to be2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 65/104 of sales activities to be omitted. The stipulation has deterrent potential. However, the amount was to be reduced to EUR 1,000.00 per form of infringement, which is considered sufficient but also appropriate in relation to the sales prices. Insofar as other actions are objected to, the appropriate amount will have to be determined in separate enforcement proceedings. The defendants may counter the risk of any cumulative assessment of penalty payments in parallel proceedings in the enforcement proceedings, insofar as the plaintiff actually pursues parallel enforcement. 176. The threat of the measures of disclosure, information, recall and removal are based on Art. 82 (1) and (4) UPCA, R. 354.3 RoP. The determination of the appropriate penalty payment is to be reserved for the enforcement proceedings because there is currently insufficient evidence to assess the appropriateness of a penalty payment to be determined in terms of amount. 177. The application for destruction of the products directly infringing claim 1 is based on Art. 64 (2) (e) UPCA, the applications for recall of these products from the channels of commerce and final removal of these products from the channels of commerce are based on Art. 64 (2) (b) and (d), (4) UPCA. According to the wording of the UPCA, permanent removal from the channels of commerce is a separate measure from recall. It accompanies the recall, whereby removal can only be considered if the infringer has the factual and legal means to do so. No sufficient reasons have been presented or are otherwise apparent to oppose the order of these measures, for example from the point of view of proportionality, and which go beyond the consequences resulting from a patent infringement that the infringer has to bear. However, there was no time limit of a specific number of days for the enforcement of this obligation. In this respect, it was to be seen that the obligation on the basis of the court order is, on the one hand, immediate, but, on the other hand, in particular in the case of an allegation of infringement extending to several contracting states of the UPCA, the cessation of which is not possible within a certain period of time.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 66/104 may take a certain amount of time no rigid deadline could be ordered without a submission on the circumstances of the present case, because it is not possible for the court to assess the question of which deadline appears appropriate in the present case in view of the considerable scope of the acts of use (unlike the Düsseldorf local division case (UPC CFI 7/2023 of 3 July 2024), which is manageable in this respect). Clarification of the question may be reserved for any enforcement proceedings. The version of the application is also sufficiently specific due to the reference back to the injunction in conjunction with the grounds for the decision. In accordance with the wording of the application, the defendants are free to choose the appropriate and effective measures. The territorial limitation lacked by the defendants results from the withdrawal to the injunction, the limitation to the period after the grant of the patent in suit results from a reasonable assessment of the application and then the grounds for the decision. The distribution channels include all commercial end users. 178. The decision to provide the requested information is based on Art. 25 (a), Art. 67 (1) UPCA. The information is necessary for the calculation of damages and for the assessment of the method of calculating damages within the meaning of Art. 68 UPCA. The defendants cannot be agreed that the owner of an SEP would be limited from the outset to calculating damages against an infringer only by way of licence analogy. On the contrary, the European Court of Justice has ruled that the past- related claims are not affected by the antitrust context (ECJ Huawei v. ZTE ECLI:EU:C:2015:477, operative part no. 2). In this respect, it has already been decided in national case law that the scope of the claim for damages is only limited to the amount resulting from a licence analogy if the infringer can counter with its own claim for damages that is directed at the non-fulfilment of its claim to the conclusion of a FRAND licence agreement and consequently it can demand to be placed in the same position as it would be under such an agreement (see German Federal Court of Justice GRUR 2020, 961 para. 109 et seq. FRAND defence,2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 67/104 GRUR 2021, 565 para. 137 FRANDEinwand II). The information on origin and distribution channels serves to clarify the facts of the infringement and the possibility of claiming further co-responsible parties and being able to effectively stop further acts of infringement. Again, no rigid deadline for the provision of information was to be set (see above). Upon application, it was also to be ordered that the defendants provide the plaintiff with the information in a list structured for each month of a calendar year and according to infringing products in electronic form, which can be analysed with the aid of a computer. This serves the efficient enforcement of the right to information and takes account of the fact that an electronic statement that can be analysed with the aid of a computer is in any case the standard in a business-like accounting system. However, there was again no deadline set for the enforcement of this obligation. 179. Object of the information is also the with the application IV.2.requested accounting the argumentation submitted in this regard (application para. 247 et seq.), the application is not aimed at verifying the correctness of the information and accounting provided within the meaning of the German Civil Code. R. 141 et seq. RoP, but rather requests the submission of accounts with supporting documents. This is also based on Art. 68(3) UPCA, R. 191 RoP. In this respect, the local division agrees with the Düsseldorf local division (UPC CFI 7/2023 of 3 July 2024 at F.I.2.b) that the rules contain a substantive right to demand information that the infringed party needs in order to be able to check the validity of the information and to obtain indications for its calculation of damages. Efficiency aspects in particular speak in favour of this, as further stages of the proceedings can be avoided. In addition, the patent proprietor can also request the submission of supporting documents for the information under Art. 67(1) UPCA, namely invoices or if these are not available alternatively delivery notes. Apart from the interest in the pure information that the2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 68/104 patent proprietor under Art. 67(1) UPCA, his interest in being able to check the accuracy of this information, at least on a random basis, is also worth recognising. The possibility of redaction in the pronouncement takes account of any confidential information (R. 191 p. 2, 190.1 p. 2 RoP). However, there was again no time limit set by day for the enforcement of this obligation. 180. The requested auditor reservation allows an appropriate balance to be struck between the interest of the infringed party in receiving accurate information and the legitimate confidentiality interests of the infringer. Since the auditor may only work to the extent specified in the decision and is also obliged to maintain confidentiality towards the infringed party, the selection can also be made by the infringed party. Again, the order of a fixed deadline was not appropriate. 181. The determination of the obligation to pay damages is based on Art. 68(1) UPCA and is justified by the established infringement. The defendants also acted negligently in any case. The requirement of a notice of infringement by the SEP proprietor in accordance with the case law of the ECJ does not imply a lack of fault, as already shown by the fact that the ECJ has not subjected the past-related claims to any further restrictions. Moreover, according to the relevant regulations, it serves to prevent any claims from becoming time-barred. The plaintiff is also entitled to demand the determination of the damages incurred by Panasonic Intellectual Property Corporation of America as the previous patent holder. Panasonic Intellectual Property Corporation of America has assigned its claims to the plaintiff in this respect. 182. Insofar as the plaintiff claims provisional damages in the amount of €250,000, this must be granted pursuant to Art. 68(1) UPCA, Rule 119 RoP because the court fees alone, amounting to 336,000 €, exceed this amount.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 69/104 183. However, the application for publication of the judgement had to be dismissed. In this respect, the decision under Art. 64(2)(a) UPCA is sufficient from the point of view of proportionality (see above). Circumstances that would justify a more extensive interest in the requested publication of the judgement have not been submitted and are not otherwise apparent. 184. With regard to the indirect infringement of the patent in suit in its method claim 13 by the challenged embodiments, the plaintiff's right to prohibit the continuation of the infringement follows from Art. 26(1) UPCA in conjunction with. Art. 63(1) UPCA. The applicant also has a right to information and transmission of information pursuant to Art. 26(1) UPCA in conjunction with Art. 67 UPCA, Art. 68(3)(a), (b) UPCA in conjunction with Art. 67 UPCA. Art. 67 UPCA, Art. 68(3)(a), (b) UPCA in conjunction with R. 191 p. Alt. R. 191 S. 1 Alt. 2 RoP and the payment of provisional damages and the determination of the award of damages on the merits (Art. 26(1) UPCA in conjunction with Art. 68(1) UPCA). Art. 68(1) UPCA, R. 119 RoP). The threat of coercive measures is governed by Art. 63(2), 82(1) and (4) UPCA, R. 354.3 RoP and applies mutatis mutandis to decisions on contributory infringement. Reference is also made to the above statements. 185. The award of costs is based on Art. 69(2) UPCA, Rule 118.5 RoP. In view of the fact that the plaintiff was only marginally unsuccessful with regard to the scope of individual legal consequences, no share of the costs to be borne by the plaintiff is to be awarded. 186. Pursuant to Art. 82(2) UPCA, R. 118.8 S.2 RoP, the court may make any order or measure subject to the provision of a security, which it must set. The local division is entitled to exercise its discretion when ordering the provision of security, whereby the plaintiff's interest in the effective enforcement of its property right must be weighed against the interest in the effective enforcement of possible claims for damages in the event that the judgement is subsequently set aside. In the present case, the defendants rightly argue that the enforcement of such an order will prevent their core business, namely the sale of smartphones, in the countries concerned. This would not only result in the loss of all2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 70/104 This would not only result in a loss of current sales, but also future business losses. Potential end customers and existing commercial customers would switch to other manufacturers and possibly remain there permanently. This is accompanied by specific risks of increased and permanent market losses. These fears are exacerbated by the special features of smartphone sales. Smartphones are offered and distributed to a considerable extent via commercial resellers and via national telephone network providers, whereby the latter often work with long-term supply contracts. If the defendants were forced to discontinue deliveries to network providers despite existing contracts, this would possibly lead to permanent exclusion from the network providers' programme. This would result in the loss of an important distribution channel and it would be difficult to predict whether and when it could be reopened. The defendants leave the amount of the security deposit to the discretion of the court. In the present case [ ] was sufficient. It should be noted that the present judgement does not cover all EPC states, but only the contracting states of the UPCA listed in the judgement. Therefore, the security amount is sufficient without further submission by the defendants, who expressly left the decision to the discretion of the court without providing any information. The court further exercises its discretion to extend the group of credit institutions eligible to issue the bank guarantee to credit institutions authorised to do business in the European Union in view of the fundamental freedoms of the European Union, contrary to the defendants' application. With regard to the equally enforceable claims for information/invoicing and preliminary damages, no security was to be ordered as a prerequisite for enforcement in view of the lack of indications that the plaintiff would not be able to financially compensate for the resulting damage if the first instance decision were not to stand. 187. The orders are only enforceable after the applicant has notified the court which part of the orders it intends to enforce and2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 71/104 has submitted a certified translation of the orders into the official language of the Contracting Member State in which enforcement is to take place and after the notification and the (respective) certified translation have been served on the defendant and the security has been provided, R. 118.8 RoP. Since the defendants are sufficiently protected by the security ordered, it was no longer necessary to order that the defendants be authorised to avert enforcement. FRANDEinwand 188. The above legal consequences are also not precluded by any FRAND objection based on Art. 102 TFEU. While the plaintiff acted in accordance with the ECJ's programme of obligations addressed to it as SEP holder, the defendants did not participate in the negotiations for a FRAND licence in accordance with the negotiation programme developed by the European Court of Justice in case C170/13 Huawei v. ZTE, ECLI:EU:C:2015:477 in a targeted manner and in accordance with the practices of a party seriously interested in taking a licence. 189. The Unified Patent Court applies Union law in its entirety and respects its primacy, Art. 20 UPCA. Union law is the primary source of law to be applied by the Unified Patent Court, Art. 24(1)(a) UPCA. In questions concerning the correct interpretation of European law, the Court of First Instance may refer questions relevant to the decision to the CJEU, Art. 267 TFEU. The decisions of the CJEU are binding on the Unified Patent Court, Art. 21 UPCA. 190. However, the present case provides especially for the Court of First Instance also against the background of the European Commission's amicus curiae brief, which the European Commission submitted to the Munich Higher Regional Court on 15 April 2024 under 02007824 MLO / DLF and which the European Commission used to request the local for referral to the ECJ. Rather, the court is of the opinion that the only questions that arise in the present case are2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 72/104 These questions can be resolved by applying the balanced principles developed by the Court of Justice, which allow the courts called upon to apply the law in individual cases to make a proper assessment of each case. In doing so, the view of the European Commission, which is of course not binding on constitutionally independent courts, can be taken into account at the same time. The document has also been introduced in the proceedings here and was discussed intensively with the parties during the oral hearing. 191. In the Huawei v. ZTE decision, the ECJ established a negotiation programme that has since been binding on the courts of the Member States in a different way to the courts of the United Kingdom . Since then, the courts of the Member States have applied this negotiating programme and have continued to fill in the details on the basis of the cases submitted for decision (see Dutch Court of Justice The Hague, case number: 200.219.487/01, of 2 July 2019 Philips v. Wiko; same case number: 200.233.166/01, judgment of 24 December 2019 Philips v. ASUS; German Federal Court of Justice GRUR 2020, 961 FRANDEinwand, GRUR 2021, 565 FRANDEinwand II). In this regard, the court is of the opinion that the ECJ's negotiation programme is not solely focused on determining the respective licensing conditions, which would be stripped of an assessment of the respective conduct of the parties in the context of the negotiations. Rather, the central concern of the decision is to establish a negotiation programme with reciprocal obligations that also serves to assess the primary EU law question of whether the enforcement of the prohibition and recall rights from the patent is subject to antitrust restrictions. The determination of a FRAND licence rate, if applicable, is only one component of this programme. Accordingly, the present case is the first time that a local division of the Unified Patent Court has been called upon to rule as a common court of the Member States. This gives rise to the following comments.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 73/104 192. In its leading decision Huawei v. ZTE, the European Court of Justice set out a negotiation programme that shows the parties their respective obligations in the context of negotiations for a licence to a standard essential patent and enables the courts to assess the conduct of the parties on the way to a licence. According to settled case law of the ECJ (loc. cit. para. 46), the exercise of an exclusive right associated with an intellectual property right, in this case the right to bring an action for infringement or recall, is one of the prerogatives of the holder of an intellectual property right, so that it cannot in itself constitute an abuse of a dominant position, even if it emanates from an undertaking in a dominant position. However, the exercise by the holder of an exclusive right associated with an intellectual property right may, in exceptional circumstances, constitute abusive behaviour within the meaning of Art. 102 TFEU (ibid. para. 47). It should be recalled , in particular against the background of the decision of the UK Court of Appeal , that the ECJ has stated that account must be taken of the need to safeguard intellectual property rights, which is one of the purposes of Directive 2004/48. In accordance with Article 17(2) of the Charter, the Directive provides for a number of remedies intended to ensure a high level of protection of intellectual property in the internal market and the right to effective judicial protection guaranteed by Article 47 of the Charter, which comprises several elements, including the right of access to justice (ECJ loc. cit. para. 57). This requirement of a high level of protection of intellectual property rights implies that their owner cannot, in principle, be deprived of the possibility of taking legal action to ensure that his exclusive rights are effectively respected and that the user of those rights, if he is not their owner, must in principle obtain a licence before any use (ECJ loc. cit. para. 58). 193. The negotiation programme developed by the ECJ serves these principles. An assessment of the conditions of a FRAND licence that ignores the steps established by the ECJ in the sense of a purely economic determination of the licence amount without taking into account the relevant conduct of the parties involved in the negotiations would not be a good idea.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 74/104 parties cannot therefore be upheld under European law and would violate mandatory law in the Member States. 194. According to the ECJ decision, the SEP holder must first inform the patent user of the patent infringement of which he is accused before bringing an action for an injunction. In doing so, he must identify the SEP in question and indicate how it is alleged to have been infringed (ECJ loc. cit. para. 61). It had already been established in the cited case law of national courts that the sending of claim charts is sufficient for these purposes in any case (cf. for example from national case law Court of The Hague, case number 200.233.166/01 of 24 December 2019, para 4.157 et seqq. Philips vs ASUS; Higher Regional Court Karlsruhe, judgement of 09/12/2020, 6 U 103/19 Mobilstation; Regional Court Mannheim, judgement of 19.08.2016, 7 O 19/16 Secondary station; judgement v. 29.01.2016, 7 O 66/15 Control channel; LG Düsseldorf, judgement of 11 July 2018, 4c O 81/17 para. 108). Insofar as the European Commission takes the view in its opinion in this context that this reference must be made in the letter itself (amicus curiae letter para. 65), such a formalistic understanding cannot be accepted. It is true that a reference to a generalised website of the SEP holder, which does not contain any easily accessible information on the specific patent in suit, may be too little to be regarded as sufficient notice. For good reason, however, the ECJ judgement does not impose any strict formal requirements at this point, but leaves it up to the courts of the Member States to decide on a case-by-case basis. Particularly in the case of an allegation of infringement of a large number of standard-relevant patents, a notice in the formalised form deemed necessary by the Commission may lead to confusion rather than the desired transparency. 195. In the present case, it was sufficient to make the defendants aware that they were also accused of infringing patents valid in the EU legal area and thus to encourage them to deal with the further steps of the ECJ's balanced negotiation programme that the plaintiff also submitted a claim chart in addition to a large number of other claim charts requested by the defendants.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 75/104 chart concerning the Chinese family member of the patent family, which includes the patent in suit. The claim chart contained an explicit reference to the patent in suit. If the defendants argued at the oral hearing that the Chinese patent had a broader scope of protection and therefore the relevance of the patent-in-suit for the standard could not be assessed without further effort and explanation, this behaviour provides an example of how an implementer seriously interested in a FRAND licence should not behave. Such an implementer would have raised a corresponding complaint at least once if it had actually had problems of understanding and asked for a more in-depth discussion. The defendants, on the other hand, did not raise any such objection, but only repeatedly requested further claim charts for other patent families, only to then withdraw without further discussion of all the requested material to the effect that the sources they consulted would in any case provide generally valid findings as to what proportion of declared patents is actually generally essential for the standard (see in detail below). It does not correspond to the practices of business transactions, to which the ECJ refers (loc. cit. para. 65, 67), to withdraw to formalistic objections, as the defendants do in such a situation, and to deduce from this that no further obligations arise for one's own side with regard to targeted negotiations towards a FRAND licence. The infringement notice was sufficient. 196. In a further step, the patent user must then also express its intention to conclude a licence agreement on FRAND terms before filing an action (ECJ loc. cit. para. 63). The significance of this step in the ECJ's negotiation programme is assessed differently, at least with regard to the weighting of this step in the negotiation programme. The Federal Court of Justice explained this in para. 83 of its FRAND decision (BGH GRUR 2020, 961 para. 83): Obligations of the dominant patent proprietor do not apply if the infringer subsequently thereuponmerely willing to the conclusion of a2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 76/104 to consider entering into a licence agreement or to enter into negotiations as to whether and under what conditions the conclusion of a contract could be considered (see Opinion of Advocate General Wathelet of 20 November 2014 C170/13 para. 50). Rather, the infringer must clearly and unambiguously declare its willingness to conclude a licence agreement with the patent proprietor on reasonable and non-discriminatory terms and must also subsequently participate in the licence agreement negotiations in a targeted manner. The High Court of England and Wales (J. Birss) has aptly expressed this by stating that "a willing licensee must be one willing to take a FRAND licence on whatever terms are in fact FRAND" (EWHC, judgment of 5 April 2017, [2017] EWHC 711 (Pat) para. 708 197. In the opinion of the explanation, but not on the basis of the subsequent behaviour during the Steps of the framework programme preceded the start of the negotiations, in particular the SEP holder's offer. Therefore, the assessment of their existence could not be linked to specific licence conditions or licence fees (ibid. para. 82). The patent user's willingness to licence could not be determined on the basis of its subsequent conduct during the negotiations; the second step was merely a formal step as a prelude to negotiations. In particular, this step may not be confused with the subsequent steps, the offer of the SEP holder and the counter-offer of the patent user (ibid. para. 84 et seq.). 198. The European Commission agrees that the initial declaration of willingness to licence is the prelude to further negotiations. It must not be limited to mere lip service, but must be serious in the sense of the statements of the BGH. However, consideration of the respective declaration alone does not generally lead to any further examination of whether a patent user is seriously interested in taking a licence. A corresponding declaration, even if it is based on the wording of the cited UK or BGH decision or adopts it in a clichéd, identical wording, is not in itself a suitable indication for assessing whether the respective user i s actually serious about his declaration.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 77/104 For this purpose, the respective behaviour must always be considered in an overall view. However, the Commission correctly addresses the fact that the examination of FRAND-compliant behaviour must not focus solely on the willingness to license in the sense of an analysis of the user's behaviour alone. It is therefore incorrect to assess the willingness to licence on the basis of the patent user's counter-offer by again using this as an indication for or against the seriousness of the user's behaviour without first considering the SEP holder's offer. With such an understanding, there is a considerable risk that the necessary examination of the offer of the SEP holder bound by antitrust law will not be carried out at all or will be cursory at best. This would not do justice to the ECJ's decision. It is precisely this point that is criticised by the European Commission in the context of the decision of the Regional Court of Munich I that it analysed. Rather, the SEP holder's offer must always be checked for its FRAND compliance if there is sufficient initial willingness to licence . This step must not be omitted or only carried out very cursorily. In its referral in the case of Huawei v ZTE, the Düsseldorf Regional Court had already formulated the question of whether Art. 102 TFEU places special temporal and/or qualitative requirements on the willingness to negotiate and stated in the referral that it could not be satisfactory to use such an abuse, as this term leaves room for many interpretations (ECJ loc. cit. para. 38). In this sense, an examination that intends to comply with the case law of the ECJ must not be content with merely analysing the conduct of the patent user for indications that are then singled out in order to criticise an insufficient willingness to license without seriously examining the SEP holder's offer. Such an approach is already contradicted by the fact that the ECJ deliberately did not want to leave it at the so-called OrangeBook case law of the Federal Court of Justice. On the contrary, Advocate General Wathelet stated in his Opinion (ECLI:EU:C:2014:2391 para. 51 f.): s simple transposition of the OrangeBookStandard judgement of the Federal Court of Justice or the press release to the present case would result in a situation in which the SEP holder, the user of the teaching of the patent or the consumer would receive either too much or too little protection.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 78/104 199. In this sense, the ECJ initially declared the SEP holder to be obliged to submit a FRAND offer: As the Commission has pointed out, if the SEP holder has made a commitment to the standardisation organisation to grant licences on FRAND terms, he can be expected to make such an offer. Moreover, if neither a standard licence agreement nor licence agreements already concluded with other competitors have been published, the SEP holder is in a better position to verify whether its offer complies with the condition of equal treatment than the alleged competitor. 200. The application of the OrangeBook case law of the German Federal Court of Justice (BGH GRUR 2009, 694) should not continue. According to this case law, the patent user must first make an unconditional offer to conclude a licence agreement, which the patent proprietor may not refuse without infringing its obligations under antitrust law not to unreasonably hinder or discriminate against the licence seeker. It is therefore also incorrect to interpret the FRAND case law in such a way that would de facto lead to the application of the OrangeBook case law again. In this respect, the Commission can be agreed that the sequence of steps in the ECJ's negotiation programme must not be mixed up in such a way that the examination of the SEP holder's offer is pushed too far into the background. 201. To the extent that the European Commission's view that the willingness to licence to be expressed prior to filing an action forms the starting point for further negotiations can be accepted, it has not yet been clarified to what extent the further conduct during the negotiations is to be included in the assessment. From the point of view of the adjudicating body, the seriousness of the initial declaration of willingness to take a licence, understood in this narrower sense, must be assessed on the basis of the immediate circumstances accompanying it. However, this does not mean that the further behaviour of both parties during the subsequent negotiations should be excluded from the assessment. Rather2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 79/104 both the SEP holder and the implementer must register with the work in good faith towards the conclusion of a licence agreement. Their conduct must be assessed according to whether it takes sufficient account of the fundamental objective of the ECJ's negotiation programme to achieve the timely conclusion of a FRAND licence agreement in targeted negotiations on a primarily private-autonomous basis. This requirement results in obligations to be concretised for the individual case at each stage of the negotiations. Nor is it in line with the ECJ's negotiation programme to examine the willingness of the implementer to take a licence alone, without sufficiently examining the SEP holder's offer, just as it would be insufficient to consider only the opposing offers and counter-offers after affirming the first two steps of the examination and to ignore the further conduct of the parties. This is because whether a (counter)offer meets FRAND criteria can only be assessed on the basis of the specific negotiations and the behaviour of the parties. Just as the implementer cannot make a favourable offer without sufficient knowledge of any licensing conditions granted to third parties, the SEP holder cannot make a favourable offer if the implementer deliberately leaves him in the dark about the extent of his acts of use and his economic framework conditions, such as the sales prices demanded by him on the market, and he does not provide any information on the economic framework conditions of his actions, which conversely must be sufficiently plausible for the SEP holder depending on the progress of the negotiations . The depth of the court's examination of the plaintiff's conduct is largely based on which points the licence seeker has objected to vis-à-vis the plaintiff in the negotiation process and, conversely, which information he has made available to the holder in order to be able to make him, the user, an offer tailored to his circumstances. Objections raised only in the course of the proceedings before the court against the background of the threatened injunction alone are not sufficient. Except in extreme circumstances, the patent user always has the duty to respond to an offer from the SEP holder and at least to provide its2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 80/104 to raise objections against this and request improvements (cf. from German case law BGH GRUR 2021, 585 para. 71 FRAND Einwand II; OLG Karlsruhe GRUR 2022, 1145 para. 152 et seq. Control channel signalling II). 202. This interplay of mutual obligations in the negotiations is again exemplified by the present case. The defendants refused to provide the plaintiff with sufficient information about their acts of use. Even after rejecting their counter-offer, they refused to provide the plaintiff with information on their actual acts of use. Rather, the defendants referred the plaintiff solely to data from economic data services of the provider IDC, without making these plausible at least for exemplary meaningful periods of time by providing information on their own real acts of use. In this respect, the defendants cannot expect the plaintiff to make an offer that fully reflects the circumstances affecting them if they are not willing to make these circumstances accessible. Insofar as the defendants object in this context that the plaintiff, for its part, also used IDC data to demonstrate the comparability of the conditions offered to the defendants on the basis of third-party licence agreements, the defendants misjudge two things: Firstly, the third-party licence agreement partners have a legitimate interest in confidentiality insofar as their specific transactions are concerned. In any case, the SEP holder is therefore not obliged to make such figures directly accessible to a negotiating partner if it is still open whether the latter is seriously negotiating to conclude a FRAND licence. The implementer cannot demand more disclosure from the SEP holder than it is prepared to disclose itself. In addition, the SEP holder does not have this information in the case of blanket licence agreements because there are no reporting obligations regarding acts of use to be remunerated in certain periods of time. Secondly, the defendants fail to recognise that, as a patent infringer using the technology (see above), which, unlike the plaintiff's settlement licensees, drags out the negotiations over years, they cannot demand to be in agreement with the SEP's cooperative licence agreement partners in every respect.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 81/104 holders who resolve any differences within a short period of time and purposefully participate in negotiations and bring them to a conclusion. Therefore, it may well be unobjectionable under antitrust law if an SEP holder makes do with data from commercial services for the negotiations if the prospective licence holder in question works constructively and swiftly towards the conclusion of such a licence. On the other hand, the ECJ has also clearly stated that the patent user using the technology unlawfully must provide information and security at the latest after its counter-offer has been rejected. The plaintiff's argument can be accepted in that the information serves the purpose of assessing whether the security offered sufficiently covers the risk of insolvency of the patent infringer. In this context, the SEP holder, who has submitted an offer that is to be assessed as FRAND-compliant under the respective circumstances of the negotiations, does not have to be satisfied with data from commercial services compared to a patent infringer who drags out the negotiations. 203. The examination of the SEP holder's offer must be based on the above statements. The adjudicating body is of the opinion that the SEP holder must not only state the mere mathematical factors with which he calculates the licence fee when submitting his offer. Rather, the SEP holder is required to plausibilise, in the manner possible in the current state of negotiations, why it believes that the offer it submits can be considered FRAND-compliant. This follows from the ECJ's statements in para. 64 of its decision. The SEP holder has the better knowledge of its licensing practice and should communicate this to the patent user so that the latter can react to it in good faith. This also corresponds to the understanding of the judgement developed by the Commission, which states this in para. 50 f. of the amicus curiae brief: of a published standard licence agreement and if the licence agreements concluded with other users are not published, only the patent proprietor regularly knows the conditions under which he has already concluded licence agreements and which conditions are therefore non-discriminatory. The2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 82/104 The patent proprietor must examine the licence offer in a fourth step and 204. The extent of the explanations depends on the stage reached in the negotiations between the parties. It is therefore not necessary in every case , including in the present case , to disclose the names and conditions of the third-party licence agreements directly in order to check plausibility (see below for details). 205. Based on these principles, the following applies to the present case: Sufficient notice of infringement before filing suit 206. As explained above, the reference to the infringement of the patent in suit by the plaintiff was sufficient. The plaintiff sent Guangdong Oppo [ ] a list of which of its essential patents it considers to be infringed for the 3G and 4G standard (Annex KAP FRAND 1). Explicit designations of the defendants' 4G-capable products can be found in the presentation of [ ] (Annex VB F 3), whereby the defendants were already aware that the allegation of infringement was directed against all 4G- capable products. The plaintiff submitted an updated list of patents deemed to have been infringed [ ] (Annex KAP FRAND 2). This also contains a reference to the patent in suit. In addition, the plaintiff [ ] also sent claim charts relating to the Chinese family member of the patent in suit (ZL201310315589.X). According to the plaintiff's uncontradicted submission at the hearing, these also contained an explicit reference to the patent in suit. Objections that this was not sufficient for the comprehensibility of the infringement allegation were raised by the defendants for the first time at the oral hearing. This is late. In addition, the objection was not justified on the merits, since the defendants objected that the Chinese patent had a broader scope of protection than the patent in suit. If there had been a need for clarification here, the defendants, as a cooperative licence seeker, could and should have asked the plaintiff. In the duplicate, the2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 83/104 The defendant, on the other hand, withdrew to the formalistic position that a reference to the patent in suit was required in the letter of reference itself. As already explained, this argument is not convincing. Declaration of willingness to licence by the defendants before filing suit 207. According to the standards set out above, the defendants have expressed their initial willingness to take a licence in a sufficient manner to serve as a starting point for further negotiations. The statements they made before filing the action have made it sufficiently clear that the defendants are interested in taking a licence and that the plaintiff, as the holder of the SEP bound by antitrust law, is therefore obliged to enter into constructive negotiations with the defendants, which includes in particular the submission of a FRAND offer. The ruling body is of the opinion that insisting on a certain wording at this point does not promise any further insight into the actual intention of the user. Even a declaration that completely adopts the wording of the decision of the High Court of England and Wales quoted by the Federal Court of Justice ("a willing licensee must be one willing to take a FRAND licence on whatever terms are in fact FRAND") can prove to be mere lip service. The Federal Court of Justice also states in this [elude] a general definition" (BGH, judgment of 24 November 2020 KZR 35/17 (FRANDEinwand II), GRUR 2021, 585 para. 59). Against this background, the defendant's statements at the receipt of the negotiations appear sufficient to be regarded as a sufficiently serious prelude to further negotiations. In their email [ ] (Annex VB F1), the defendants made a sufficient declaration and named a specific contact person for further discussions [ ]. The plaintiff did not object to this declaration as insufficient, but took it as an opportunity to start negotiations [ ], clarify the modalities of a first meeting and then submit initial ideas to the defendants in the form of term sheets. Circumstances that would show that the defendant's statement at this point was already not2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 84/104 was sufficiently serious and unsuitable to enter into concrete discussions with them. Submission of an offer to conclude a FRAND licence by the applicant 208. The plaintiff then presented [ ] the economic cornerstones of an offer in a Zoom meeting (Annex VBF 3, p. 4). In the presentation, the plaintiff did not limit itself to requesting unspecified prices, but attempted to clarify its position as to why it considered the prices to be appropriate. This is considered in more detail below: 209. [ ]. 210. The applicant further explained that she [ ]. 211. The plaintiff also used a top-down analysis (Annex VBF 3, slides 17 ff.) to show how it derives its licence fees. To this end, it has [ ]. 212. With these statements, the plaintiff has already clearly set out its demands at an early stage and sufficiently plausibilised for the further negotiations why it believes it is entitled to submit a FRAND-compliant offer. If the defendants, as cooperating licence seekers, had still had questions, e.g. on the non-discriminatory nature of the offer, they should have asked them immediately or shortly afterwards. 213. The defendants, on the other hand, insist in their argumentation that these statements are not yet to be regarded as an initial offer because a written contractual offer is required. The court cannot agree with this view. What can be demanded of the SEP proprietor cannot be determined in a generalised, formalistic manner. The requirements for the behaviour of the patent proprietor and the behaviour of the user of the invention are mutually dependent. The yardstick for the examination is what a reasonable2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 85/104 party that is interested in the successful conclusion of the negotiations in a way that is in the interests of both parties would do to promote this goal at a certain stage of the negotiations (in this sense also BGH FRAND II, loc. cit., para. 59). At the beginning of the negotiations, it is not in line with customary business practice to directly confront each other with draft contracts ready to be signed as long as not even the central economic points have been clarified. Therefore, it is also not in line with the behaviour of a patent user negotiating in good faith in the direction of a FRAND licence to nevertheless insist on this in a formalistic manner in its argumentation before the court. Rather, the SEP holder's offer should represent the constructive starting point for further negotiations towards the conclusion of a FRAND licence agreement, because the individually appropriate contractual terms in complex patent licence agreements must be adapted to the respective economic framework conditions (Court of Appeal The Hague GRUR Int 2020, 174, 179 para. 4.34; in this sense also BGH loc. cit. FRAND II para. 70). Rather, it is sufficient if the SEP holder's offer allows the patent user to recognise the essential economic framework conditions of a proposed licence agreement and, if necessary, to react to this with a deviating counter-offer. As a rule, this does not require a written contractual offer that is differentiated in all secondary points and ready to be signed. Rather, it is up to the patent user to request the submission of such a formal contractual offer if, contrary to customary practice, he wishes to receive it at this stage of the negotiations. The decisive factor is not the concept of an offer under contract law, but a concept of an offer that is to be understood economically in the context of European antitrust law. [ ]). Rather, they would have been required to take a concrete position on the plaintiff's ideas at this stage and to raise objections, submit counter-proposals or raise economic issues to be clarified. Raising such questions by means of a private expert opinion only before the court cannot replace this obligation to co-operate.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 86/104 214. It should also be noted that the plaintiff related [ ] and also attempted to show why, in its opinion, it was demanding appropriate licence rates (see Annex VB FC 5 pages 14 ff., see summary of the results of the analyses on slide 44). In addition, the plaintiff defined further key points for a licence agreement (cf. slide 46). By this time at the latest, the plaintiff had submitted the key points of an offer. 215. The plaintiff then submitted to the defendant [ ]. 216. Nevertheless, the plaintiff referred in this presentation to [ ] In the opinion of the adjudicating body, the plaintiff did not have to provide the defendants with more information at this time. In particular, under these circumstances, it did not have to submit the licence agreements with third parties used for comparison purposes. 217. [ ]. 218. [ ]. 219. [ ]. 220. [ ]. 221. This offer thus represents the end point of the plaintiff's proposals on the way to a FRAND licence and will be examined in more detail below. In this context, the argument that the extent of the concession in relation to the initially expressed ideas can already prove the FRAND-incompatibility of the offer of the respective negotiating party must be rejected on its merits. This is not necessarily the case if the concession can be explained by the course of the negotiations and is based, for example, on new information exchanged in this context, if it is a response to concerns expressed by the other party or if one negotiating party2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 87/104 offers lump-sum discounts out of its own motivation in order to conclude a contract quickly. [ ] As shown above, the plaintiff used objective criteria to justify why it supported and changed the economic position it had taken at the respective stage of the negotiations. From the point of view of the adjudicating body, it has always focussed on comprehensible aspects and has also presented its considerations in such a way that a patent user seriously interested in the progress of the negotiations is able to comment on the content. 222. The offer last submitted to the defendants therefore appears to be FRAND- compliant from the point of view of the adjudicating body at the relevant time during the negotiations. Likewise, the settlement licence agreements submitted in the course of the present proceedings in response to an order show that the plaintiff was not tempted to make inaccurate claims to the defendants regarding its settlement licence partners. [ ] Although it may not be necessary for to disclose its own sales data in full immediately, depending on the stage reached in the specific negotiations , a licence seeker negotiating in good faith can nevertheless be expected to do so, to make available such data for certain periods of time, at least in order to check the plausibility of his own objections to the figures used by the other party, which make it appear comprehensible to the SEP holder as a whole why the licence seeker feels entitled to calculate on his deviating basis. [ ] As the plaintiff rightly argues, the patent user must provide information after rejection of its counter-offer in a form that enables the SEP holder to assess whether the security to be provided is sufficient and, in particular, covers an insolvency risk (ECJ Huawei/ZTE para. 67). The defendants did not provide such information at any time. [ ]. 223. Moreover, the defendants cannot now justify their lack of constructive negotiation before the action was brought ex post by subjecting the factual material now available to a private expert assessment2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 88/104 and derive a wealth of objections from this. It is insufficient to substantiate the objections only in the court proceedings by means of commissioned expert opinions, which are also only partially explained in the main pleadings with regard to their systematics. Rather, it is advisable to present the objections in close temporal connection to the presentation of the opponent's calculation approach and then, without the need for judicial assistance, to give the opponent the opportunity to overcome the existing discrepancies by means of suitable negotiation proposals on the way to a FRAND licence. 224. Even if the now disclosed settlement licences are included in the assessment of whether the plaintiff must be prevented from enforcing the asserted injunctive relief and the other forward-looking claims under the patent for antitrust reasons, the plaintiff's offer described above does not prove to be contrary to FRAND, but rather in accordance with FRAND. Firstly, the plaintiff must agree that FRAND is a corridor. This view now appears to be generally recognised. However, there is not just one FRAND offer, but several forms of a licence agreement within the bandwidth, all of which can satisfy FRAND criteria. Therefore, the plaintiff also has room for manoeuvre within this range. For antitrust reasons, it is not obliged to submit the cheapest offer that is still within the corridor. Nor is it obliged to use a calculation method favoured by the other party. From the point of view of reasonableness, it may only not deviate in a way that is no longer justifiable from the circumstances used as a benchmark, whether these circumstances lie in its own comparative licences, which regularly have the strongest indicative effect, or in licence agreement arrangements used for comparison purposes, which have been discussed in court decisions, for example, and which can be applied to the specific circumstances. 225. [ ]. 226. [ ].2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 89/104 227. [ ] 228. [ ]. 229. [ ]. 230. [ ] The defendant's counteroffer is therefore not FRAND-compliant. 231. The decisive circumstance for this discrepancy is already the defendant's approach, which is to be assessed as non-FRAND-compliant. [ ]. 232. Moreover, the defendants cannot do the opposite [ ] If one were to recognise this system, this would privilege a user who operates holdout. The defendants apply a double standard without sufficient grounds. 233. But also in other respects, the defendants did not behave in good faith as required by the practices of a user seriously interested in taking a licence. The case law of the ECJ is to be understood correctly with the plaintiff as meaning that the information to be provided after rejection of the counter-offer should allow the patent proprietor to gain an overview of the scope of the actual acts of use. This is the only way to enable him to check whether the security offered is sufficient. The user must disclose the extent of his acts of use. If the patent user wishes to obtain a licence in return for a lump sum, he is also regularly required to disclose sales figures to the patent proprietor from this point of view so that the latter can assess the extent of the acts of use that are to be licensed in return for a lump sum payment. 234. Furthermore, the security offered by the defendants is also insufficient for the reasons put forward by the plaintiff. Due to the wording in the deed of guarantee, a total default is to be feared in the event of insolvency. Neither can an insolvency administrator withhold his consent in the event of insufficient assets2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 90/104 that the guarantee will be drawn, nor can it be expected with sufficient certainty that a final judicial clarification can still be brought about in this case, because insolvency regularly brings the proceedings to a standstill in this respect (cf. only Rule 311.1 RoP). 235. Finally, the procedural conduct of the defendants must also be characterised as contrary to good faith, as it is characterised by self-contradictory conduct. In this respect, the defendants wanted to contest the jurisdiction of the Unified Patent Court with their objection until the oral hearing. This is contradicted by the fact that they then nevertheless requested the determination of a FRAND rate by way of a FRAND counterclaim. The defendants only saw themselves in a position not to pursue the opposition any further, albeit under sharp protest following a firm indication from the panel. Furthermore, the defendants' applications in the FRAND counterclaim were initially aimed solely at having the panel determine a territorially limited licence rate, which was to be limited to the EPC contracting states, the USA and Japan. This is in contradiction to its own argumentation that FRAND is solely the determination of a global FRAND rate. However, this contradiction was also only responded to following a court order and at least the new main claim of the FRAND counterclaim was directed towards a global lump sum licence payment. However, the defendants continued to adhere to the territorially limited determination approach in the context of the alternative claims. Thus, according to the first alternative claim, the main part of the licence is to be determined by the Beijing Intellectual Property Court and [ ]. In this respect, in the opinion of the adjudicating body, it is also not in line with the approach of a user working in good faith towards the conclusion of a licence agreement to further complicate the already complex situation by bringing FRAND rate determination proceedings for sub-regions of the world before different courts in the world between whose states there are no treaties establishing a priority order between the courts seised. This is because the provision cannot be determined with a clear territorial distinction. On the contrary, there is a considerable risk that the respective2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 91/104 courts pursue different approaches when determining the FRAND rate. This in turn harbours the risk of contradictory rulings, meaning that appeals are likely to be pursued in different jurisdictions. This is not conducive to the speedy conclusion of global disputes. In addition to the court in Beijing and the UPC Agreement, the defendants' exclusive licence holder in Italy has also recently initiated determination proceedings limited to Italy before the national court in Milan. The defendants also emphasise the determination proceedings between the plaintiff and the Xiaomi group of companies before the High Court of England Wales. The conflict is particularly evident here because Italy is also a contracting state of the UPCA and the present action explicitly also covers acts of use in Italy. FRAND counterclaim 236. Although the defendant's FRAND counterclaim is admissible, it had to be dismissed as unfounded. Responsibility of the UPC Agreement: 237. The UPC Agreement has jurisdiction for the counterclaim filed by the defendants together with the statement of defence, which is aimed at determining a FRAND licence. Jurisdiction follows from Art. 32(1)(a) UPCA. Accordingly, the court has exclusive jurisdiction over actions for actual or threatened infringement of patents and related defences, including counterclaims relating to licences. This includes not only disputes relating to existing licences to a patent, but also actions aimed at the conclusion of a licence. 238. The fact that the claim pursued by the defendants in the present case is derived from European antitrust law in addition to contract law based on the plaintiff's ETSIFRAND declaration does not change this. This is because the Unified Patent Court is a court common to the contracting member states and2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 92/104 is therefore subject to the same obligations under Union law as any national court of the Contracting Member States, Art. 1 UPCA. The court applies Union law in full and respects its primacy (Art. 20 UPCA) and bases its decisions on this (Art. 24(1)(a) UPCA). This also includes the mandatory application of EU antitrust law, in particular Art. 102 TFEU. 239. In the present case, the defendants derive their claim to a FRAND licence on the basis of contract law, which they see in the ETSIFRAND Declaration, and on the basis of Art. 102 TFEU. Even if one were to assume that this was a claim based on Art. 102 TFEU and with which the infringer demands that the SEP holder refrain from abusing its dominant market position by refusing to grant it a FRAND licence, this does not change the UPC Agreement's jurisdiction. This is because, in essence, the claim is aimed at defending against the monopoly right conferred by the state, the granted patent, and the powers derived from it, the injunctive relief and the further claims for removal and destruction directed to the future, by arguing, on the basis of the generally recognised legal principle of good faith, that there is a corresponding claim for performance under antitrust law which can be invoked against the exercise of the powers under patent law. The UPC Agreement's contracting member states were aware of this connection when the UPC Agreement was created and the associated transfer of national judicial sovereignty. The connection between patent law and antitrust law is in any case inherent to the patent and indissoluble. Due to the obligations of the Member States under European law and thus also of the UPC Agreement, the task assigned to the UPC Agreement is the same as that of the national courts when dealing with patent disputes, if the Agreement is interpreted correctly. Here, the national courts decide on both the patent law dimension and the inherent antitrust law dimension associated with it by virtue of the nature of patent law as an exclusive right . This is also evident from the fact that before national courts, for example in Germany or the Netherlands, it is regularly2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 93/104 the national patent litigation chambers also decide on the antitrust aspects of the case and even the German Federal Court of Justice has formally decided SEP cases through the antitrust senate, but a member of the patent senate was always appointed to judge-rapporteur SEP cases in order to bring in the necessary patent law expertise. Therefore, a reference to the fact that in national proceedings a panel responsible for antitrust law has formally decided SEP cases on the basis of the corresponding provisions of a business distribution plan drawn up by the Presidium of the Court would have no substantive content. 240. Accordingly, Advocate General Wathelet already stated in his Opinion on Case C170/13 Huawei v ZTE that, against the background of the obligations under European law, it cannot be held against the alleged patent infringer if it demands that FRAND conditions be set by a court or arbitration tribunal (cf. Opinion of Advocate General Melchior Wathelet of 20 November 2014 Case C170/13 para. 93 Furthermore, if negotiations have not been entered into or have been unsuccessful, the conduct of the alleged infringer cannot be regarded as hesitant or not serious if it demands that the said conditions be set by a court or arbitration tribunal. ). The Convention offers no indication that the Member States, in transferring judicial sovereignty to the UPC Agreement, contrary to the requirements of European law, wanted to cut off the cognizance power of the common court, which also replaces the national courts, and to cut off the uniform decision on patent law issues on the one hand and antitrust law issues on the other. If the antitrust claim for the grant of a licence on FRAND terms can be raised as an objection to the patent claims concerned, there is no reason not to regard counterclaims based on this as counterclaims within the meaning of Art. 32(1)(a) UPCA.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 94/104 241. In this respect, it should also be noted that the UPC Agreement already has exclusive jurisdiction for SEP disputes that have their origin in a European patent with unitary effect. The same applies to European bundle patents that are not the subject of an opt-out after the expiry of the transitional provision pursuant to Art. 83 UPCA. A national court would therefore have no jurisdiction for these cases. If, for example, an antitrust claim for a FRAND licence were to be asserted before a national court and the preliminary question of the antitrust examination is a question of patent law such as whether the teaching of the patent in suit is actually essential for a standard and thus whether a monopoly position exists due to its standard essentiality , this question would have to be clarified by the UPC Agreement. However, since the UPC Agreement would, in turn, be required to decide on whether an application for injunctive relief can be granted and whether it is restricted by antitrust law, the patent and antitrust law issues are indissoluble. The same would apply if the patent proprietor filed only a limited application for an injunction before the UPC Agreement, making the enforceability of the injunction as a minus to the unrestricted injunction subject to the condition that the patent user refuses to comply with a FRAND provision assigned to the court by refusing to cooperate as required for the implementation of the FRAND licence agreement determined by the court. Unfoundedness of the defendant's counterclaims 242. However, the defendant's applications are not well-founded as filed. 243. The main claim must be dismissed because the plaintiff cannot be obliged by the court to accept the defendants' offer of [ ] pursuant to Annex VBFC 14, which is contrary to FRAND. As explained above, the lump sum licence fee submitted by the defendants in the offer to conclude the contract is not FRAND-compliant within the meaning of the case law of the ECJ because the lump sum licence fee offered was not calculated on the basis of the defendants' own acts of use. The extent of the actual use2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 95/104 The defendants persistently fail to disclose this, but instead calculate what they consider to be the appropriate global flat-rate licence solely on the basis of the IDC data disputed by the plaintiff. As explained in detail above, this is insufficient. 244. For the same reasons, auxiliary request I.2, which conversely sought to order the plaintiff to submit the same offer to the defendants, was also to be dismissed. 245. The further auxiliary request I.3 was also to be rejected. The application is aimed at ordering the plaintiff to submit a licence agreement offer with the content according to Annex VBFC16. The plaintiff is not obliged to do so because, on the one hand, the lump-sum licence amount offered for the acts of use in the EPC contracting states, Japan and the USA was again only calculated on the basis of the IDC data, but not on the basis of its own disclosed acts of use. Moreover, it is not in accordance with the customary practice of business transactions to have [ ] first determined by a further court, in this case the Beijing Intellectual Property Court. This means that, on the one hand, the core points of the contract are still open and, on the other hand, both parties ultimately agree in their arguments that only a comprehensive dispute resolution through a global FRAND rate determination is in line with customary practice. The defendants have also not put forward any arguments that could justify a partial determination of the licence rate only for certain global regions. The mere reference to the greater local proximity of a court to the respective submarket is not sufficient for this. The calculation on the basis of the IDC data is also flawed by the other alternative applications made within the alternative application. 246. Insofar as the defendants request, in the alternative to the applications of application group I with application group II.1, that findings be made on a claim to a licence and its amount in the territory of the EPC contracting states, the application was to be dismissed for the simple reason that a provision limited to the EPC territory does not meet FRAND criteria (see above).2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 96/104 247. Insofar as the defendants further request with the auxiliary request II.2 that the defendants are subject to a FRAND order to pay a flat-rate licence fee limited to the EPC contracting states alone, the application had to be rejected for the same reasons as application II.1. 248. The alternative application under claim II.3, to require the applicant to cooperate fully to bring about a FRAND licence on the terms set by your court, is already too indefinite and therefore cannot be granted as an unenforceable application. 249. The further auxiliary application group III. was not grantable for the simple reason that the defendants have no need for legal protection in the requested abstract findings. The defendants themselves argue that they are entitled to a FRAND licence. They were required to assert this with suitable groups of applications, which they did not succeed in doing. The defendants have no noteworthy legal interest in further abstract findings, such as those pursued with the present group of applications, since they have not yet behaved in accordance with the requirements of the ECJ's case law, as explained above. It can therefore be left open in the present case whether a determination of a specific FRAND licence rate by the court can be considered even without a FRAND counterclaim by the implementer , for example, if both parties have each submitted a (counter)offer within the FRAND corridor and then cannot agree on overcoming the remaining differences through a third party as considered by the ECJ (cf. ECJ loc. cit. para. 68). Moreover, application III.1(e) again suffers from the fact that the plaintiff is to be ordered to submit an offer limited to the EP territory only, although both parties agree that only a global licence will finally end their disputes. 250. The further groups of claims asserted in the alternative, which were the subject of the counterclaim of 22 December 2023, must be dismissed for the same reasons as auxiliary claim group III.1. Mere declarations are requested2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 97/104 (application (i), (iii), (vi), (vii), (viii), (ix)) or the applications are too vague (application (ii), (v)) or, again in accordance with the grounds of the counterclaim, relate only to the EP territory (application (ii), (iv), (v), (x)). This is because the defendants only switched to a global licence regime upon explicit reference by court order. Applications by the applicant in the context of the FRAND counterclaim 251. that the defendants' counterclaims are not dismissed and that the defendants have behaved as willing parties to the contract in the negotiations with the plaintiff that are the subject of the dispute. This intra-procedural condition did not materialise. Value of the claim 252. The panel sets the amount in dispute at [ ] in settlement of the application for review lodged against the judge-rapporteur's order pursuant to Rule 333 RoP . At the hearing, the parties considered an amount of [ ] to be appropriate. However, in the present case it must be seen that the plaintiff's applications pursued in the context of the FRAND counterclaim are aimed at enforcing a lump-sum licence of [ ] deemed appropriate, while the defendants are concerned with having to pay only [ ] and averting the obligation to pay the additional amount claimed by the plaintiff [ ]. Since the parties have comprehensively submitted the global licence dispute for decision by their mutual applications in the FRAND counterclaim, the value in dispute could not be determined with regard to the patent in suit only. Accordingly, only the [ ] amount in dispute could be determined.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 98/104 DECISION A. I. It is established that the defendant has infringed European Patent No. 2 568 724 B1. II. The defendants are condemned, t h e r e a r e t h e m e a s u r e , 1. Radio communication devices which can be configured to transmit a reference signal with a transmit bandwidth in a given system bandwidth, wherein both ends of the same [system bandwidth] are assigned control channels and the transmit bandwidth is between the control channels, or to transmit reference signals with a low bandwidth with frequency hopping, and the radio communication devices comprise: an assignment unit configured to assign the reference signals to frequency resources; a transmit unit configured to transmit the assigned reference signals, in the Federal Republic of Germany, the French Republic, the Italian Republic, the Kingdom of the Netherlands and the Kingdom of Sweden, or to place them on the market or use them, or to import or possess them for these purposes, where the transmission bandwidth varies in the given system bandwidth, and the allocation unit allocates the reference signals such that the reference signals are allocated to frequency resources each having the small bandwidth which is invariable regardless of changes in the transmission bandwidth, the frequency resources being uniformly distributed in a frequency band of the transmission bandwidth in accordance with the change in the transmission bandwidth. (direct infringement of device claim 1) 2. Devices suitable for performing a radio communication method which can be configured to transmit a reference signal with a transmission bandwidth in a given system bandwidth, both ends of the same control channels being assigned and the transmission bandwidth being between the control channels, or to transmit reference signals with a low bandwidth with frequency hopping,2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 99/104 in the Federal Republic of Germany, the French Republic, the Italian Republic, the Kingdom of the Netherlands and the Kingdom of Sweden, wherein the radio communication method comprises the following steps: assigning the reference signals to frequency resources; and Sending the assigned reference signals, characterised in that the transmission bandwidth in the given system is bandwidth varies, and the reference signals are assigned to frequency resources, each of which has the small bandwidth that is invariable regardless of changes in the transmission bandwidth, the frequency resources being distributed evenly in a frequency band of the transmission bandwidth in accordance with the change in the transmission bandwidth. (indirect infringement of procedural claim 13) Devices in the aforementioned sense include, in particular, 4G-capable smartphones such as the OPPO Find X5 Pro and 4G-enabled smartwatches, such as the 4G-enabled smartwatch2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 100/104 In the event of any violation of the orders under clause 1 and/or clause 2, the defendants shall pay a penalty payment of EUR 1,000 each. III. The defendants are ordered to pay, at their own expense 1. to recall the products mentioned under No. II. from the distribution channels; 2. to permanently remove the products mentioned under No. II. from the distribution channels; 3. to destroy the products mentioned under No. II; IV. The defendants are sentenced, 1. to provide the plaintiff, in a list structured for each month of a calendar year and according to infringing products in electronic form, which can be analysed with the aid of a computer, from 17 December 2014, with information on the products mentioned under No. II. on a) the origin and distribution channels of the products mentioned under No. II; b) the quantities delivered, received or ordered and the prices paid for the products mentioned under No. II; c) the identity of all third parties involved in the distribution of the products mentioned under No. II;2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 101/104 2. to disclose to the plaintiff its accounts to prove the information provided pursuant to No. IV.1. plus the information on the profit realised by providing the following documents for each month of a calendar year and for each infringing product in electronic form which can be analysed with the aid of a computer: a) Invoices or, if these are not available, delivery notes of the individual deliveries, itemising the respective deliveries according to quantities offered, offer periods, prices of the goods offered and type designations as well as names and addresses of the commercial recipients of the sales offers for all products sold or otherwise disposed of; b) Evidence of the advertising carried out, including evidence of these advertising activities, breaking down the advertising carried out by advertising medium, its distribution, the distribution period and the distribution area; c) Proof of costs, with a breakdown of costs by individual cost factors and the profits realised; d) Invoices or, if these are not available, delivery notes and corresponding statements of all costs incurred, on which the defendants rely in calculating their profits; the accuracy of which is audited and confirmed by a sworn auditor appointed by the plaintiff at the defendant's expense, whereby the auditor is obliged to maintain confidentiality vis-à-vis the plaintiff beyond the above-mentioned information; V. It is established that the defendants are jointly and severally liable to compensate the plaintiff for all damages incurred by Panasonic Intellectual Property Corporation of America as a result of actions pursuant to No. II. since 17 December 2014 and which the plaintiff has incurred since 29 July 2016 and will incur in the future. VI. The defendants are ordered jointly and severally to pay the plaintiff an amount of EUR 250,000.00 as provisional damages; VII. In all other respects, the action for infringement is dismissed.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 102/104 B. The action for annulment is dismissed. C. The FRAND counterclaim is dismissed. D. Orders the defendants to pay the costs. E. The amount in dispute is [ ] F. The orders are only enforceable with regard to A.II.1, A.II.2, A.III. (omission/recall/removal/destruction) after the plaintiff has provided security in favour of the defendant in the form of a deposit of [ ] or a written, irrevocable, unconditional and unlimited guarantee from a credit institution authorised to do business in the territory of a Member State of the European Union for [ ]; after the plaintiff has notified the court which part of the orders it intends to enforce and has submitted a certified translation of the orders into the official language of the Contracting Member State in which enforcement is to take place, and after the defendants have been served with the notification and the (respective) certified translation.2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 103/104 Mannheim on 22 November 2024 NAMES AND SIGNATURES Presiding judge Prof Dr Tochtermann Peter Michael Digital signed by Peter Michael Dr Dr. Tochtermann Date: 2024.11.19 Tochtermann 17:35:35 +01'00' Legally qualified judge Böttcher Dirk Digital signed by Andreas Dirk Andreas Böttcher Date: 2024.11.19 Cooper 19:11:01 +01'00' Legally qualified judge Brinkman Edger Frank Digitally signed by Edger Frank BRINKMAN BRINKMAN Date: 2024.11.21 10:01:00 -03'00' Technically qualified judge Loibner Klaus Digitally signed by Klaus Loibner Date: 2024.11.19 Loibner 21:19:14 +01'00' For the Deputy Registrar: Kranz, Clerk LK Mannheim ANDREAS Digitally signed by ANDREAS MICHAEL MICHAEL wreath Date: 2024.11.21 Wreath 14:53:11 +01'00' INFORMATION ON THE APPOINTMENT: This decision may be appealed by any party who wishes to contest it in whole or in part with its applications were unsuccessful, an appeal may be lodged with the Court of Appeal within two months of notification of the decision (Art. 73(1) UPCA, R. 220.1(a), 224.1(a) RoP).2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com 104/104 INFORMATION ON ENFORCEMENT (ART. 82 EPGÜ, ART. 37 PARA. 2 EPGS, R. 118.8, 158.2, 354, 355.4 ROP): A certified copy of the enforceable decision is issued by the Deputy Registrar on application by the enforcing party, R. 69 RegR. This decision was announced at a public meeting on 22 November 2024. Presiding judge Prof Dr Tochtermann Peter Michael Dr Tochterman n Digitally signed by Peter Michael Dr Tochtermann Date: 2024.11.22 10:08:37 +01'00'2024-11-22 LD Mannheim UPC CFI 210-2023 ACT 545551-2023 ORD 598506-2023 en-GBDeepL machine translation provided by www.veron.com

Key Holdings

• The European patent EP 2 568 724 is legally valid.
• The defendants' action for revocation of EP 2 568 724 is dismissed.
• Defendants' 4G-enabled smartphones (e.g., OPPO Find X5 Pro) and smartwatches infringe claims 1 and 13 of EP 2 568 724.
• The court provides a specific interpretation of 'transmission bandwidth' and 'invariable low bandwidth' for reference signals, differing from the plaintiff's initial interpretation, which is crucial for the validity and infringement analysis.
• The FRAND defense and counterclaim are subject to extensive discussion regarding willingness to license, information disclosure, security provision, and the scope of a FRAND license (worldwide vs. regional).

Tags

• Counterclaim
• FRAND
• Infringement
• Patent Validity
• Standard Essential Patents
• Telecommunications
• Unified Patent Court

Related Rules

• Art. 3 – Scope of application
• Art. 7 – The Court of First Instance
• Art. 3 – Scope of application
• Art. 3 – Scope of application
• Art. 3 – Scope of application
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 9 – Powers of the Court
• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 1 – Application of the Rules and general principles of interpretation
• Art. 5 – Liability
• Art. 1 – Unified Patent Court
• Art. 1 – Unified Patent Court
• Art. 7 – The Court of First Instance
• Art. 6 – The Court
• Art. 2 – Definitions
• Art. 2 – Definitions
• Art. 1 – Unified Patent Court
• Art. 6 – The Court
• Art. 6 – The Court

Related Cases

• UPC_CFI_850/2024 – ZTE v Samsung
• UPC_CFI_2045/2025 – Amazon v InterDigital
• UPC_CFI_132/2024_July09_OralPrep – Total v Texas Instruments
• UPC_CFI_340/2023 – Rematec v Europe Forestry
• UPC_CFI_134/2025;UPC_CFI_660/2024 – Centripetal v Palo Alto