UPC_CFI_317/2024, ORD_52116/2024 – Ericsson vs Asustek

Court
Local Division Lisbon
Date
Outcome
Denied
Sector
Electronics/SEP
Decision Type
PROCEDURAL

Expert Commentary

1. The Court has jurisdiction because alleged infringements also take place in Portugal. The same applies to acts of the intermediary. 2. The products are on the market since 2019 resp. 2021. The Claimant has not stated at which time it became aware of these products, but only refer to a test purchase in 2024. Although urgency is not mentioned in the UPCA (Art. 62) it is inherent with respect to provisional measures (which curtail the right of defendants). The Division refers to R. 209(2)(b) RoP which requires urgency and considers urgency is lacking. 3. The Division nevertheless looks into the merits of the case and gives its opinion. Validity More likely than not that patent is valid. Auxiliary request (without any necessity to deal with this): The Division states that such auxiliary request in PI proceedings is not possible, as it is incompatible with the nature of such proceedings. Infringement 1. The Applicant did not disclose that the images in annex B5 and B7 were not taken from an Asus computer but from a computer of a competitor. The Division considered this misleading, but as Defendant in fact did not deny that these images are from the same (allegedly infringing) modules which are also incorporated in their computers, the Division accepted this as evidence. 2. The Court follows with respect to claim interpretation the Court of Appeal of 26 February 2024 in 10x Genomics vs Nanostring (UPC_CoA 335/2023) and finds that it is more likely than not that there is infringement. 3. Owning an internet domain or subdomains constitutes infringement under Art. 25(a) UPCA if the domain provides a website on which infringing products are offered and/or sold. Comment 1. Despite lack of urgency, the Lisbon Local Division remarkably decides on validity and infringement, apparently with the expectation that Applicant will also come to Lisbon with the case on the merits. If that would be the case, it would in my opinion be better to appoint other legal and technical judges, in order to have a different panel deciding the case on the merit. 2. I find it somewhat strange that without any necessity the Division decides that auxiliary requests in preliminary injunction proceedings are not possible. It would have been better to await a decision of the Court of Appeal. I also think that indeed it should be the exception, but there are certainly circumstances where an auxiliary request is justified and the rights of the defendant can be respected. This also raises the question what is considered as an auxiliary request. If a claimant relies on all granted claims, but after having seen the defence only relies on dependent claim 3 or part of claim 3. Is that an auxiliary request? 3. The Division correctly notes that Art. 62 UPCA does not require urgency. One can imagine situations in which provisional measures would be called for without there being “urgency” in strict sense. The UPCA should then prevail over the RoP.

Key Holdings

  • The Local Division Lisbon asserted jurisdiction based on alleged infringements in Portugal but denied provisional measures due to a lack of urgency, citing R. 209(2)(b) RoP, despite Art. 62 UPCA not explicitly requiring it.
  • The court, *obiter dictum*, found the patent more likely than not valid and infringed, applying claim interpretation principles from UPC CoA 10x Genomics vs Nanostring.
  • The Division stated that auxiliary requests are not possible in preliminary injunction proceedings, deeming them incompatible with the nature of such measures.
  • Owning an internet domain or subdomain offering/selling infringing products was held to constitute infringement under Art. 25(a) UPCA.
  • The comment questions the court's decision to rule on merits despite lacking urgency and its blanket prohibition on auxiliary requests in PI proceedings.

Tags

  • Claim Construction
  • Infringement
  • Jurisdiction
  • Patent Validity
  • Preliminary Injunction
  • Rules of Procedure
  • Urgency

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