UPC_CFI_713/2025; UPC_CFI_301/2025 – Orange v HMD

Expert Commentary

Result of interim conference Facts 1. Infringement action based on EP 2 345 029 and counterclaim for revocation. 2. Interim conference (IC) held on 8 June 2026. 3. The Judge-Rapporteur (JR) had previously sent a brief to the parties with the main issues of the case identified by the JR. The JR 1. No room for a settlement at present. 2. Total value of the case: € 3 million. 3. The parties agreed (subject to approval by clients) on a fixed amount for the recoverable costs, namely 75% of the ceiling. 4. The JR requested a consolidated document setting out the operative parts of the requests at the closure of the written proceedings. 5. The parties asked for a confidential oral hearing because of FRAND issues. The JR decided to hear the validity and infringement discussions in public (7 July) and the FRAND discussion behind closed doors (8 July). 6. The parties agreed with the JR’s detailed list of main legal points. 7. The JR set the timeframe for the oral hearing. 8. The JR confirmed, as a principle, that the defendant is free to make the revocation case conditional at the hearing under R. 263.3 RoP. Comment 1. This is another example of an interim conference as it was meant to be in the RoP! 2. With two parties willing to agree on costs and a defendant who is considering making the counterclaim conditional on a finding of infringement. However, I do not understand why it was not turned into a conditional claim much earlier, as this decision seems to me to be only dependent on whether there is a more general interest in having the patent revoked (beyond serving as a non-infringement argument). 3. 3 questions: a. Wouldn’t it be good to also have the Technically-Qualified Judge (TQJ) present during the IC? (if that was in fact the case then it would be good to mention it). b. Did the JR ask the parties before the IC to list the points they wanted to discuss during the IC? c. Did the JR offer any provisional views? Such a preliminary assessment can of course be indirectly inferred from the different questions that the JR suggested to address during the oral hearing. 4. I think that parties generally like it when the Court expresses some preliminary views about the case at least at the start of the hearing. In this case, the Presiding Judge is planning to give an introduction at the start of the hearing, which will provide an opportunity for this! However, if the JR (who in this case had clearly studied the case in detail) has some questions or preliminary views (most certainly if the TQJ is involved at this stage), it is preferable for the parties’ preparation of the oral hearing that these are expressed already at the IC.

Full Decision Text

1 Paris Local Division UPC CFI 301/2025 (infringement) UPC CFI 713/2025 (counterclaim) Order of the Court of First Instance of the Unified Patent Court delivered on 16 June 2026 following the interim conference (R. 105.5 RoP) CLAIMANT Orange SA Represented by 111, quai du Président Roosevelt, Volkmar Henke CS 70222 92449 ISSY LES MOULINEAUX CEDEX-FR DEFENDANT HMD Global Oy Bertel Jungin aukio 9 02600 Espoo - FI Represented by Oliver Bäcker PATENT AT ISSUE Patent no. Proprietor EP2345029 Orange SA DECIDING JUDGE Presiding judge & Camille Lignières Judge-rapporteur LANGUAGE OF PROCEEDINGS: English 2 ORDER Pursuant to Rule 105.5 of the Rules of Procedure (RoP), following the interim conference, the Judge- rapporteur shall issue an order setting out the decisions taken. In the present case, an online interim conference was held via Webex at 2 pm Paris time on 8 June 2026 and was audio-recorded (Rule 106 RoP). All parties were duly represented by their representatives. Pursuant to Rule 104 (a) RoP, the parties discussed the main issues of the case as identified by the Judge- rapporteur in the brief already sent to them via CMS on 2 June 2026 (the “Brief”) and replies to the ques- tions raised by the Judge -rapporteur regarding the following matters. 1. Possibilities to settle the dispute - R. 104 (d) Both parties remain open to exploring a settlement. However, at this stage, there appears to be no realistic scope for reaching one. 2. Value of the case - R. 104 (i) Claimant confirms that it maintains 1.5 million euros. Defendant does not dispute the amount claimed by the Claimant for the alleged infringement and agrees that the counterclaim should be assigned the same value. Therefore, the Judge-rapporteur will set the total value in dispute to 3 million euros. 3. Recoverable costs - R. 104 (j) and (k) Defendant proposed that the parties agree on a fixed amount for recoverable costs, namely 75% of the applicable ceiling for cost reimbursement, covering all costs. Claimant does not object to this proposal. The parties expect to noƟfy the Court of their agreement a few days before the oral hearing. They still need to consult their clients, but are opƟmisƟc that an agreement can be reached. 4. Parties’ requests at the time of the closure of the written procedure The Judge rapporteur requested that the parties submit a consolidated document setting out the operative parts of their respective requests at the time of the closure of the written procedure. Parties agreed to provide such a document via CMS. 5. Confidentiality issues and Oral hearing Parties: With respect to the exhaustion and FRAND defences, certain materials may contain confidential information. They both have a preference for a non-public hearing. According to the parties, the issues could be presented more effectively if the parties were able to discuss all relevant information openly, including confidential aspects of the case, which would facilitate a fuller and clearer understanding of the subject matter. 3 The Judge-rapporteur foresees the following organisation for the coming oral hearing:  Public hearing on 7th July (validity and infringement)  Non-public hearing on 8th July (non-technical part)  This approach allows the parties to allocate different members of their teams to the respective hearing days as appropriate. 6. Main legal points - R 104 (a) Parties have no comments on the Judge-rapporteur proposals mentioned in the Brief, as follows: 7. Clarification of the parties’ position regarding certain technical points – R. 104 (b) These are the points addressed in the written submissions, on which the panel may want to have further clarification at the oral hearing, in order to obtain a clear and consistent understanding of the parties’ po- sitions: 7.1) Distinction between FD modes Are all USAC frequency domain (FD) modes critically sampled, or are there distinctions between FD modes or window types that affect whether sampling is critical or, for example, oversampled? 7.2) Compatibility of critical sampling and FAC Are there technical constraints that would prevent Forward Aliasing Cancellation (FAC) from being used in conjunction with a critically sampled transform? More specifically, is the use of a critically sampled transform compatible with FAC, or does FAC presuppose a different sampling regime? 4 7.3) Mandatory vs. optional nature of FAC Is FAC mandatory, optional, or conditional when transitioning from FD transforms to CELP in USAC? If conditional, under what precise conditions is FAC applied or omitted? The parties are also invited to indicate, where possible, the relevant conformance requirements, decoder pseudocode, or reference implementations demonstrating whether FAC is applied during FD to CELP transitions in a compliant USAC decoder. 7.4) Preventing aliasing vs cancelling aliasing Stepping back from terminology, can the parties explain whether USAC resolves FD to CELP transi- tions by preventing aliasing from arising in the first place, or by allowing aliasing to arise and then cancelling it, and where this is reflected in the standard. 7.5) Consistency of positions The parties are invited to clarify how their respective positions on critical sampling align with their positions on the necessity or dispensability of FAC in USAC, and whether any internal inconsistency arises from that alignment. 8. Timeframe for the Oral Hearing The Judge-rapporteur proposed in the Brief the following timeframe: 5 Regarding the Ɵmeframe of Day 1 proposed in the Brief, Defendant suggested that the hearing would be more efficiently conducted by addressing infringement first and validity thereaŌer. Defendant is considering making its counterclaim for revocaƟon condiƟonal upon a finding of infringement. If the Court were to con- clude that the allegedly infringing products fall outside the scope of protecƟon of the patent, there would be no need to address validity or auxiliary requests. Claimant raised a procedural quesƟon as to whether an uncondiƟonal counterclaim for revocaƟon can now be converted into a condiƟonal counterclaim. It argues that under UPC pracƟce, it is generally appropriate to begin with the patent itself, namely, issues of claim interpretaƟon and validity, before turning to infringe- ment. The Judge-rapporteur notes that Defendant has the right to make their counterclaim for revocaƟon condi- Ɵonal at any Ɵme during the oral hearing, which is a limitaƟon of the claim under R.263.3 RoP. Nevertheless, at this stage of the proceedings, the Judge-rapporteur thinks that a discussion on validity remains necessary at the oral hearing. In parƟcular, in this case, claim construcƟon and assessment of the prior art are likely to influence the scope of protecƟon of claim 1 (whether in its granted form or as amended in the auxiliary requests), and may have a direct impact on the assessment of infringement. For this reason, at the oral hearing, the parƟes will be invited to address validity first, and then the infringe- ment maƩer, as menƟoned in the Brief. In this context, the Judge-rapporteur orders that: 1. The value of the infringement acƟon UPC CFI 301/2025 is set to 1,5 million € and the counterclaim also to a value of 1,5 million €, resulƟng in a total of 3 million €. 2. The parƟes shall submit via CMS, by 30 June 2026: - a consolidated document seƫng out the operaƟve parts of their respecƟve requests at the Ɵme of the closure of the wriƩen procedure, - a confirmaƟon of their agreement regarding the amount of the recoverable costs. Issued in Paris, on 16 June 2026. C. Lignières, Judge-rapporteur. ORDER DETAILS UPC number: UPC CFI 301/2025 (main proceedings) and UPC CFI 713/2025 (counterclaim) Action type: Infringement Action Order type: R 105.5 RoP Date of issue: 16 June 2026

Key Holdings

• Interim conferences are effective for case management, including identifying key issues and setting hearing timelines.
• Parties can agree on recoverable costs, potentially fixing them as a percentage of the ceiling.
• The Judge-Rapporteur can manage complex issues like FRAND by scheduling separate public and confidential oral hearings.
• A defendant is free to make a revocation counterclaim conditional on a finding of infringement at the hearing under R. 263.3 RoP.
• Preliminary views from the Judge-Rapporteur during an interim conference are beneficial for parties' preparation for the oral hearing.

Tags

• Interim Conference
• Case Management
• Costs
• FRAND
• Revocation
• Infringement
• Conditional Counterclaim
• Oral Hearing

Related Rules

• Rule 2 – Supplementary protection certificate
• Rule 1 – Application of the Rules and general principles of interpretation

Related Cases

• UPC_CFI_301/2025 – Orange v HMD