UPC CFI 791/2024 – Huawei Technologies Co. Ltd v Netgear Inc., Netgear International Limited, Netgear Germany GmbH

Court
Local Division Munich
Date
Outcome
Preliminary injunction granted against defendants, prohibiting them from pursuing anti-suit/anti-enforcement injunctions in US proceedings that would restrict the applicant's ability to litigate or enforce patents before the UPC. A security deposit of €3,000,000.00 is required within 20 days for continued enforceability.
Sector
Electronics/SEP
Decision Type
Order for interim measures

Expert Commentary

Full Decision Text

1 Munich local division UPC CFI 791/2024 Procedural order of the Court of First Instance of the Unified Patent Court local division Munich issued on 11 December 2024 GUIDING PRINCIPLES: 1. Art. 32 (1) a), c) UPCA establishes the UPC Agreement's subject-matter jurisdiction to issue interim measures with which an applicant seeks legal protection against imminent (foreign) prohibitions on conducting proceedings and/or enforcement. 2. A (foreign) prohibition on conducting and/or enforcing proceedings violates the general European right to justice (Art. 47 EU Charter). The prohibitions are also in conflict with the German right to justice pursuant to Art. 2 para. 1, 19 para. 4 GG and are to be qualified as unauthorised acts within the meaning of Section 823 para. 1 BGB. KEYWORDS: ASI; AEI; AASI; AAEI2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/20242 APPLICANT Huawei Technologies Co. Ltd Bantian Huawei Base Longgang District Shenzhen, 518129 China legally represented by Mrs Zhao Minglu represented by: Dr Tobias J. Hessel (Clifford Chance); Christian Harmsen (Bird&Bird) DEFENDANTS 1) Netgear Inc. 350 E Plumeria Dr, San Jose, CA 95134, United States of America legally represented by the Board of Directors, which in turn is represented by the Chief Executive Officer Charles Prober Domestic delivery address: Branch office of respondent 3): Netgear Deutschland GmbH, Konrad-Zuse-Platz 1, 81829 Munich, Germany 2) Netgear International Limited 6th Floor, Penrose Two, Penrose Dock, T23YY09, Cork, Ireland legally represented by the managing directors Fiona Spratt, Bryan Murray, Michael Falcon 3) Netgear Germany GmbH Konrad-Zuse-Platz 1, 81829 Munich legally represented by the managing directors Bryan Douglas Murray, Kisten Joy Daru and Jörg Lösche represented by: ... PATENTS IN DISPUTE European patents no. 3 611 989 and 3 678 321. PANEL/CHAMBER Panel 1 of the Munich local division. PARTICIPATING JUDGES This Order was issued by presiding judge Dr Matthias Zigann as a single judge pursuant to Rule 208.2 RoP. LANGUAGE OF THE PROCEEDINGS German.2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/20243 OBJECT Application for the adoption of a provisional measure - R. 206 et seq. RoP SECRECY The text passages highlighted in grey in the unredacted version and marked with [redacted] in the redacted version relate to the negotiation history between the parties and are subject to decisions in the main proceedings pursuant to Rule 262A RoP or are the subject of applications pursuant to Rule 262.2 RoP. In this respect, both parties have unanimously submitted a need for protection. In the present proceedings, an application under Rule 262.2 RoP was also filed (APP 65188/2024). The court therefore assumed a need for protection here as it did there. In the event of an application under Rule 262.3 RoP, this will have to be reviewed again. PROPERTY The applicant, based in China, is the registered owner of European patents 3 611 989 and 3 678 321, among others. Both patents were declared by the applicant to be essential for the WiFi 6 standard. Defendant 1) is a company based in the USA that manufactures and distributes network products for private and business use. With the introduction of the new Wi-Fi 6 standard, Defendant 1) offers a variety of products (including routers, modems, mesh systems, switches, repeaters, etc.), especially for home users, which it prominently advertises for the use of Wi-Fi 6 (see: https://www.netgear.com/de/home/discover/wifi6/). On its website, Defendant 1) emphasises the advantages that Wi-Fi 6 brings to its products and explicitly advertises these advantages of Wi-Fi 6 as "the biggest Wi-Fi revolution of all time". Defendant 2) is a subsidiary of defendant 1) based in Munich and is responsible for the German business, including the distribution of products in Germany. Defendant 3) is also a subsidiary of defendant 1) based in Ireland, which operates the online shop for the German business. The applicant first notified the defendant 1) of the infringement of its standard-essential Wi-Fi 6 patents by email on 9 July 2020 and invited it to license negotiations. The defendants did not respond to this pre-trial infringement notice, nor did they respond to six further infringement notices, the last of which was dated 11 January 2022. The applicant therefore filed patent infringement actions for infringement of EP 3 337 077 and EP3 143 741 with the Düsseldorf Regional Court on 2 March 2022. The defendants contacted the applicant for the first time after the action was filed. The applicant finally brought an action before the Unified Patent Court on 1 June 2023. EP 3 611 989 B1 is the subject of proceedings with the same heading before the local division here under action number UPC CFI 9/2023 (EP 989), the oral hearing of which took place on 30 October 2024. An announcement date has been set for 18 December 2024 in these proceedings. After a separation, EP 3 678 321 is the subject of the proceedings the local division here under action number UPC CFI 168/2024 (EP 321) with the same2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/20244 Rubrum. The oral hearing is scheduled for 25 March 2025, preceded by an interim hearing on 16 January 2025. After further fruitless negotiations, the applicant further actions before the Regional Court of Munich I in 2024 for infringement of EP 3 334 112 and EP 3 937 445. The individual stages of the negotiations and the legal proceedings can be found in Annex AST 2. The applicant is also conducting patent infringement proceedings against the respondents in China. The Jinan Intermediate People's Court has already issued a first-instance judgement in these proceedings, according to which the defendants infringe two of the applicant's Wi-Fi 6 patents and according to which the applicant has acted in accordance with FRAND, unlike the defendants. Accordingly, the Chinese court ordered the defendants to cease and desist. The defendants lodged an appeal. SUBMISSION OF THE APPLICANT The applicant submits that the respondents further escalated the disputes between the parties by bringing an antitrust action in the USA. They filed this action on 30 January 2024 with the US District Court, Central District of California (Case No. 2:24-cv-00824-AB (AJRx)) and argued that the applicant was unlawfully monopolising the relevant Wi-Fi technology market (Annex AST 3). The applicant further submits that on 4 December 2024, it first became aware of an ASI/AEI application by the defendant (1) in connection with this antitrust action of the same date (Annex AST4). However, the application had not yet been officially served on her. [Translated: [Translated: [redacted] The application of 4 December 2024 is aimed at depriving the applicant of the opportunity to enforce its patent rights relating to the Wi-Fi 6 standard before the competent local divisions of the UPC Agreement within the scope of the UPC Agreement and has the following wording: [Translated: [redacted] It is established case law, at least in Germany, that the application for such an anti- enforcement injunction or anti-suit injunction is unlawful. This is because this constitutes an (imminent) unlawful interference with the property-like patent rights of the person concerned in Germany, Sections 1004 (1) (analogously), 823 (1) BGB (OLG Munich, judgement of 12 December 2019, ref. 12 December 2019, Ref. 6 U 5042/19 = GRUR 2020, 379 and Judgment of 12 December 2019, Ref. 12 December 2019, docket no. 6 U 5689/19 - also preceded by LG Munich I, judgement of 30 August 2019, ref. 21 O 9512/19 and judgement of 2 October 10302396210-v1 18 / 26 40- 410473772019, Ref. 21 O 9333/19= BeckRS 2019, 25536; also LG Munich I, final judgement v. 25 February 2021, case no. 7 O 14276/20= BeckRS 2021, 3995 para. 120; Regional Court Munich I, decision of 30 June 2021, case no. 21 O 8690/21). The applicant assumes that an application for2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/20245 The court also considers it unlawful to issue an anti-suit injunction in other European jurisdictions, even if, as far as can be seen, there is no case law on the subject there. European and German law is applicable. The applicability of German law follows from Article 4(3) Rome II Regulation. The totality of the circumstances of an ASI concerning a European patent did not result in an obviously closer connection with a specific state. However, there is a close connection with a specific convention, namely the European Patent Convention, as this forms the basis for the granting of European patents, the effect of which is to be cancelled out by an ASI or AEI. It is therefore obvious to apply the law of the state in which the patent organisation has its seat pursuant to Art. 6 I EPC, i.e. in Munich. As a result, the same legal principles that have been applied and discussed for patent litigation proceedings before the German courts should be applied. The choice of the same law for all applications for an ASI or AEI - either through the direct application of Art. 32, 62 I, 63 UPCA or through the application of the basis of claims from German law via Art. 4 III Rome II Regulation - facilitates a uniform decision-making practice in any case (see Vissel/Kau: Rumble in the Jungle - Ein Weg aus dem Anti(n)-Suit-Injunction Dickicht, p. 454; Kiefer/Walesch Mitt 2022, 97). The application for an anti-suit injunction / anti-enforcement injunction also constitutes a blatant interference with German judicial sovereignty, judicial independence (Article 97(1) of the Basic Law), the right to a lawful judge under Article 101(1) sentence 2 of the Basic Law and the constitutionally guaranteed right to justice (Article 2(1) in conjunction with the principle of the rule of law, Article 20(3) of the Basic Law). It is not the respondents and foreign courts, but the UPC Agreement alone that decides, by virtue of its own sovereign rights, on its competence to decide on the matters submitted to it. An affected party may effectively defend itself against this, namely with an application such as the one here (so- called anti-suit injunction, AASI), which orders the defendants to refrain from or stop this unlawful interference (OLG Munich, GRUR 2020, 379 para. 58 et seq.; LG Munich I, BeckRS 2019, 25536 para. 69 et seq.). Such an AASI is in accordance with European and German law as well as international law (OLG Munich GRUR 2020, 379 para. 58 ff. and 73, 74; LG Munich I, BeckRS 2019, 25536 para. 70 ff.; LG Munich I, BeckRS 2021, 3995 para. 118). The applicant's claim for injunctive relief arises from Article 4 III Rome II Regulation in conjunction with Section 823 (1) in conjunction with Section 1004 (1) sentence 1 BGB. § Section 1004 para. 1 sentence 1 BGB. The application by the defendants for an anti-suit injunction / anti-enforcement injunction by the US court threatens to invalidate the exclusive rights conferred by the applicant's patents within the scope of the UPCA (and worldwide). This would in any case be recognised by the German courts in settled case law. Since an application for an anti-suit injunction Since the defendant (1) has already filed an application for an injunction / anti-enforcement injunction, the applicant is entitled to an injunction and removal of the associated impairment. The anti-enforcement injunction or anti-suit injunction requested by the defendant (1) interferes with the applicant's patent rights - which are generally recognised as other rights within the meaning of Section 823 (1) BGB. The German courts rightly assumed, in accordance with established case law, that this interference patent rights by means of anti- suit injunction or anti-enforcement injunction - which is intended to prevent the enforcement of patents in Germany - is also unlawful and does not have to be tolerated by the patent proprietor (OLG Munich GRUR 2020, 379 para. 55; LG Munich, BeckRS 2019, 25536 para. 52; LG Munich I, BeckRS 2021, 3995 para. 120; LG Munich I, decision of 30 June 2021, Ref. 21 O 8690/21). The illegality in particular from the fact that an anti-suit injunction / anti- enforcement injunction deprives the applicant of its standing to sue in Germany and thus prevents due legal proceedings under the rule of law. This would contradict the assignment content of the patent under property law, see Munich Regional Court BeckRS 2019, 25536 para. 61.2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/20246 The fact that the anti-suit injunction or anti-enforcement injunction could possibly be a permissible measure in the United States of America is also not an obstacle. This is because the domestic legal system is decisive for the assessment of unlawfulness, see OLG Munich GRUR 2020, 379, para. 57. The applicant is not obliged to tolerate the unlawful interference with its constitutionally guaranteed property-like rights. In particular, the requested preliminary injunction is in line with European and international law (OLG Munich, GRUR 2020, 379, para. 73 f.). According to German case law, the existence of a risk of first occurrence is always to be assumed if the existence of one of the subsequent situations is made credible (see Munich Regional Court, judgment of 25 February 2021, case no. 7 O 14276/20; see also Munich Regional Court, decision of 30 June 2021, case no. 21 O 8690/21): "The Munich I Regional Court will in future always assume the existence of the necessary risk of first offence, in some cases beyond the already known case groups discussed above, if the existence of one of the situations listed below is made credible: - The patent user has threatened an application for an ASI against the patent holder. - The patent user has filed an application for an ASI directed against the patent proprietor. - The patent user has filed or threatened to file a main action in a jurisdiction that generally provides ASIs for the grant of a licence or for the determination of a reasonable global royalty for such a licence. - The patent user has threatened other patent proprietors with the issue of an ASI or has already applied for one and there is no indication that the patent user, recognisably for the patent proprietor, has renounced this practice for the future, at least in relation to the patent proprietor. - The patent user has not declared in text form within the short time limit set by the patent proprietor, for example in the context of the first infringement notice, that he will not file an application for an ASI. As a rule, companies belonging to the same group as the patent holder are or as the patent user." In the present case, the requirements of the first and second groups of cases were fulfilled: [redacted] It is well known in court that the US courts take a particularly "generous" view of the law with regard to anti-suit injunctions and already issued anti-suit/anti-enforcement injunctions on several occasions in the past, with which patent proprietors for example, prohibited from enforcing their patent rights in Germany. With the application for an anti-suit injunction / anti-enforcement injunction, the defendants unlawfully interfered with the applicant's patent rights. The defendants are interferers. A disturber is anyone who in any way intentionally and adequately causally contributes to the impairment of the legal interest or whose behaviour gives rise to a fear of impairment of a legal interest (Grüneberg, 84th ed. 2025, Einf. v. § 823 para. 31). This applies to the defendants. This is because respondent 1) is the direct claimant before the US court and has thus deliberately and adequately caused the tangible risk of interference with the legal interests of the claimant. At the same time, the defendants were joint tortfeasors in the event of a joint application and also in the event of any other collusive co-operation (Section 830 (1) BGB). This applies, for example2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/20247 if the defendant 1) instructs the defendant 2) or 3) to submit a corresponding application or if they otherwise support such an application of another group company with their own contribution to the offence with knowledge and intent (see OLG Munich, GRUR 2020, 379 para. 77 et seq.). In any case, there is participation in the form of instigation or aiding and abetting (Section 830 (2) BGB). [redacted] It is therefore obvious that an application for an anti-suit injunction or anti-enforcement injunction is also threatened by the defendants 2) and/or 3), as they are each subsidiaries, i.e. affiliates, of defendant 1). The threatened application by the defendant 1) for an anti-suit injunction / anti-enforcement injunction creates an immediate and tangible risk of interference with the legal interests of the applicant. The applicant is entitled to a preventive injunction against this (Grüneberg, BGB, 84th ed. 2025, Einf. v. § 823 para. 30). The requested measure is the only effective defence against an anti-suit injunction / anti-enforcement injunction, which would cut off the applicant's ability to enforce its legal position as a patent holder in Europe until the proceedings in the United States of America are concluded (OLG Munich, GRUR 2020, 397 para. 69). The issuance of the requested interim measure is therefore the mandatory defence reaction to the anti-suit injunction / anti-enforcement injunction from the United States of America (see OLG Munich, GRUR 2020, 397 para. 72). Behaviour is owed that causes the non-occurrence of the impending impairment (Grünebers, loc. cit., Section 1004 para. 33; BGH, NJW 04, 1035). Consequently, the defendants would have to refrain from conducting the proceedings initiated by them for an anti-suit injunction / anti-enforcement injunction by the US court. Furthermore, it is to be feared that the defendants could - without a prior hearing - take further measures with a comparable effect (such as applying for a Temporary Restraining Order, see Munich Higher Regional Court, GRUR 2020, 379 para. 48 f.). The measure should therefore be extended to other judicial or administrative measures aimed at directly or indirectly prohibiting the applicant from conducting patent infringement proceedings arising from its standard-essential patents before the competent local divisions of the UPC Agreement within the scope of the UPC Agreement. This also includes the prohibition to intervene in the present proceedings with an "Anti-Anti-Anti-Suit-Injunction Motion" ("AAASI") or comparable measures (see application under point I, indent 3). This would indirectly prohibit the applicant from bringing patent infringement actions in Europe. Finally, the required reason for the requested measure pursuant to Rule 206.2 c RoP. If the measure is not adopted, the applicant would suffer considerable disadvantages. The application was extremely urgent. There is no "unreasonable delay" (Rule 211.4 RoP). In the underlying case of the risk of first infringement, the urgency period begins with the patent proprietor's certain knowledge or knowledge of the existence of an application for an anti-suit injunction/anti-enforcement injunction (see OLG Munich GRUR 2020, 379, para. 55 f.). The applicant first aware of the application for an anti-enforcement injunction or anti-suit injunction immediately after it was filed on 4 December 2024. To the petitioner's knowledge, the US court had set a date for an oral hearing on the issuance of an anti-enforcement injunction or anti-suit injunction on 24 January 2025 has been determined. It is not known when the US court could decide on the issuance of an anti-suit injunction/anti-enforcement injunction or what further steps the defendants could take to interfere with the jurisdiction of the courts here. It is therefore necessary for the court seised to issue the requested measure as soon as possible in order to immediately prohibit the respondents from taking such measures that restrict the rights of the applicant.2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/20248 The interests of the applicant in obtaining the requested interim measure far outweighed any opposing interests of the defendants. In the present case, there is a threat of significant interference with the applicant's patent rights and business operations. Judicial sovereignty, judicial independence (Art. 97 Para. 1 GG), the right to the lawful judge pursuant to Art. 101 Para. 1, Sentence 2 GG and the constitutionally guaranteed right to ensure justice (Art. 2 Para. 1 in conjunction with the rule of law principle [20 Para. 3 GG]) are affected. With the present application for measures, the applicant is requesting no more than the adoption of a measure that enables the judicial enforcement of its standard-essential patents in Europe against another party. There is an acute and tangible risk that the applicant will be prevented from doing so. The court was aware from parallel proceedings that the applicant would in fact have to comply with such an anti-suit injunction or face severe fines or further coercive measures. The applicant was therefore worthy of protection. In contrast, no interest worthy of protection could be recognised on the part of the defendants. The present application is not aimed at cutting off the defendants' access to the US courts. This is because the present application is not directed against the US main action, but solely against the application for an anti-suit injunction / anti-enforcement injunction. This is a significant difference to the threatened action of the defendants, who are threatening the applicant for the duration of the anti-suit injunction. / The UPC Agreement was intended to deny the defendants fundamental access to the local divisions of the UPC within the scope of the UPC Agreement. The defence measure applied for here was therefore merely aimed at preserving the status quo and was a considerably minor interference with the legal position of the respondents. Pursuant to Rule 206.3 RoP, the adoption of the requested measure is exceptionally necessary without prior hearing of the defendants - ex parte - in order not to jeopardise the purpose of the requested measure. This applies regardless of whether the defendants have filed protective letters that are intended to avoid the adoption of the requested measure. This is because if the Chamber were to the defendants of the present application before issuing the requested measure, it is to be feared that the US court would oppose the issuance of an anti-suit injunction / anti-enforcement injunction by the court here by issuing an anti-suit injunction. / anti-enforcement injunction or even an anti-anti-suit injunction / anti-anti-enforcement injunction. It is well known in court that such an anti-suit injunction / anti-enforcement injunction or anti-anti-suit injunction / anti-anti-anti-enforcement injunction can be issued by US courts within one day and again ex parte. The requested measure is therefore necessary ex parte in order to pre-empt such measures. The Munich local division of the UPC Agreement had jurisdiction. The jurisdiction of the Munich local division is based on Article 32(1)(c) UPCA. According to this provision, the court has exclusive jurisdiction for actions for provisional and protective measures. This jurisdiction of the UPC pursuant to Art. 32 I lit. c UPCA does not concern every provisional measure against the background of Art. 1 UPCA. Rather, it only covers provisional and protective measures that are related to a patent dispute for which the UPC Agreement also has jurisdiction in the main proceedings. A sufficiently close link is to be seen here in the fact that an AASI is intended precisely to ensure the UPC's jurisdiction for infringement actions pursuant to Article 32(1)(a) UPC Agreement (see Vissel/Kau: Rumble in the Jungle - Ein Weg aus dem Anti(n)-Suit-Injunction Dickicht, p. 452; Tilmann/Plassmann/Grabinski/W. Tilmann UPCA Art. 32 para. 61a).2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/20249 Applications by the applicant According to the petition dated 9 December 2024, the petitioner requests the following: In the name and on behalf of the petitioner, we therefore request the following, – on the grounds of particular urgency and in particular in order to avoid urgent measures by the defendants in the proceedings in the USA, which could pre-empt the court seised here thus frustrate the present application, without an oral hearing and without prior hearing of the defendants – the adoption of the following provisional measure: I. The defendants are each enjoined by way of a preliminary injunction under threat of a penalty payment for each violation from 10302396210-v1 4 / 26 40- 41047377 pursuing the proceedings for an "Anti-Enforcement Injunction" or Anti-Suit Injunction in the proceedings with the action number Case No. 2:24-cv-00824-AB (AJRx) before the United States District Court for the Central District of California (petition dated 4 December 2024) or seeking other equivalent judicial or administrative measures to directly or indirectly prohibit the applicant from pursuing patent infringement proceedings arising from its standard-essential patents before the United States District Court for the Central District of California. The UPC Agreement is also seeking to enjoin the applicant from prosecuting or seeking other equivalent judicial or administrative measures directly or indirectly prohibiting the applicant from conducting or continuing patent infringement proceedings arising from its standard- essential patents before the competent UPC Agreement divisions within the scope of the UPC Agreement and/or enforcing any resulting judgements, including, in particular, this injunction, – the requirement to withdraw the application for an "Anti-Enforcement Injunction" or Anti- Suit Injunction within a period of 24 hours after service of this decision or to take other procedural means to finally revoke such an Anti-Suit Injunction and/or Anti-Enforcement Injunction with effect for the scope of application of the UPCA, – the immediate prohibition to continue the anti-suit injunction and/or anti-enforcement injunction proceedings with effect for the scope of the UPCA except for the purpose of withdrawing the application, – the prohibition to indirectly prohibit the applicants from conducting patent infringement proceedings arising from their standard-essential patents before the competent UPC Agreement chambers within the scope of the UPC Agreement and/or from enforcing the resulting judgement by means of a court or official order aimed at prohibiting the present proceedings, whereby the above prohibitions and prohibitions also include exerting a corresponding influence on affiliated companies on whose behalf the application for an anti- suit injunction and/or anti-enforcement injunction has been filed, exhausting the possibilities under group law. II. In the event of any infringement of the Order under Section I, the defendants shall pay a penalty payment (which may be repeated) to the court of up to EUR 250,000 per infringement. 10302396210-v1 5 / 26 40-41047377 III. The defendants are ordered, subject to the final decision on the burden of costs, to pay a provisional reimbursement of costs until the decision on the legal costs. IV. The defendants 1) and 3) are ordered to appoint an authorised representative for service who resides in Germany or has a place of business there within a reasonable period of time, the determination of which we leave to the discretion of the court.2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/202410 We also apply for2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/202411 V. Pursuant to Rule 206. 3 RoP, to issue the Order without hearing the respondents, alternatively, after hearing the respondents. VI. to order, pursuant to Rule 13.1 (q) RoP, that documents in English, in particular Annexes ASt 3 to ASt 5 submitted with the notice of motion, need not be translated. PROCESS EVENTS The applicant formally submitted the application for interim measures for the first time on 9 December 2024 as APP 65059/2024 UPC CFI 777/2024. It has reported that a further submission could not be finalised due to technical difficulties. An application pursuant to Rule 262.2 RoP with regard to the information marked in grey in the notice of motion of 9 December 2024 was filed for the first time on 10 December 2024 as APP 65188/2024 UPC CFI 777/2024. However, in the application of 9 November 2024, service on the defendants by email to their UPC Agreement representative in the two infringement proceedings was still - incorrectly - noted. As this could not be deleted in the CMS, the applicant resubmitted the application on 11 December 2024 under ACT 65364/2024 UPC CFI 790/2024 after consulting the Chairman by telephone. Here too, however, the UPC Agreement representative was still noted in the two infringement proceedings. Following a renewed reference, the applicant resubmitted the application on 11 December 2024 under ACT 65376/2024 UPC CFI 791/2024. Pursuant to Rule 208.2 RoP, the Chairman determined that he would rule on this application as a single judge. The decisive factor was that Panel 2 of the Munich local division had already decided on the fundamental admissibility of such applications on 9 December 2024 in ACT 63549/2024 UPC CFI 755/2024 and therefore only a decision on the basis of the available facts remained to be made. Furthermore, the matter is very urgent. REASONS FOR THE ORDER The admissible application for interim measures is largely justified. I. The application for interim measures is admissible. 1. The UPC Agreement's international jurisdiction follows from Art. 31 UPCA in conjunction with Art. 71b No. 2 Brussels Ia Regulation. The place where the prima facie case of imminent tort lies within the UPC Agreement's jurisdiction. 2. The UPC Agreement's subject-matter jurisdiction for the adoption of interim measures (AASI and AEI) results from Art. 32 (1) UPCA. According to Art. 32 (1) c) UPCA, the court has exclusive jurisdiction for actions for the adoption of provisional and protective measures and interim measures. This jurisdiction is in any case related to actions that fall within the exclusive jurisdiction of the UPC Agreement pursuant to Art. 32 (1) a) UPCA. These include actions for actual or threatened infringement of patents. Not only the unlawful use of a patent is to be regarded as an infringement of a patent, but also an interference with the patentee's property right by prohibiting the assertion of his patent right (see also: Grabinski/W.Tilmann, in Tilmann/Plasmann, Einheitspatent, Unified Patent Court, 2nd ed., Art. 32 para. 61a).2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/202412 Such an infringement of the applicant's property rights is issue in the present case. With its application of 4 December 2024, the respondent (1) seeks the issuance of an ASI and an AEI before the US courts. The applicant is also to permanently prohibited from asserting the patents in dispute before the UPC Agreement (before a German local division the UPC Agreement), and the enforcement of any decisions of the UPC Agreement (or a German local division of the UPC Agreement) is also to be prohibited. Such prohibition measures or prohibitions of litigation interfere with the applicant's property rights in relation to the patent in suit. The jurisdiction of the Munich local division is based on Art. 33 (1) (a) UPCA. The infringement of the applicant's property right is threatened within the jurisdiction of the local division here. Among other things, the applicant is to be prohibited from pursuing the actions pending before the local division in Munich and decisions issued in this regard are not to be enforced. 3. However, the UPC Agreement's subject-matter jurisdiction under Art. 3 UPCA is limited to European patents for the exception under Art. 83(3) UPCA has not been . These restrictions had to be clarified in the wording of the Order. II. The application for interim measures is largely well-founded pursuant to Art. 62(1), (2) UPCA in conjunction with Rule 211(1), (2), (3) RoP. It is largely probable that the applicant is entitled to initiate the proceedings and that its rights under the patents in dispute are being infringed. The balancing of interests to be carried out as part of the discretionary decision is in favour of the applicant. 1. In accordance with Rule 8 (5) RoP, the applicant is to be regarded as eligible. It is entered in the register as the proprietor of the patents in suit. It is highly probable that the applicant's rights in relation to the patents in dispute will be infringed. The applicant has credibly demonstrated the imminent infringement of its property rights in relation to the patents in dispute and other patents through the applications filed by the respondent 1) before the US court. According to Art. 47 para. 1 of the EU Charter, any person whose rights or freedoms guaranteed by Union law have been violated has the right to an effective remedy before a court or tribunal. Art. 47 para. 2 of the EU Charter gives everyone the right to have their case heard by an independent and impartial tribunal previously established by law, in a fair hearing, in public and within a reasonable time. Art. 47 of the EU Charter therefore guarantees a general right to justice at European level, i.e. access to justice. According to Art. 17 para. 2 of the EU Charter, intellectual property is in any case a right similar to property, which must be protected under the Charter. Consequently, Art. 47 (1) and (2) of the EU Charter also protect a person's access to the UPC Agreement for the purpose of asserting an (alleged) unlawful use of a patent. Under German law, which applies in the present case at least to the German part of the European patents pursuant to Art. 24 (1) e) UPCA, Art. 2 (1), 19 (4) GG grant the general right to judicial protection. §§ Sections 823 (1), 1004 (analogous) BGB provide a substantive legal basis for the protection of property, which can only be enforced by means of the constitutionally protected rule of law principle just described. There is no reason to assume that the legal systems that apply to the other parts of the European patents,2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/202413 see this differently and approve the measures requested before the US court. It can therefore be left open in the present case whether, as the applicant argues, German law is uniformly applicable due to the European Patent Office's seat in Munich. 2. The ASI and AEI requested by the respondent re 1) with the application of 4 December 2024 in the US proceedings constitute, when ordered, a comprehensive prohibition on conducting proceedings before the UPC Agreement and a comprehensive prohibition on enforcing UPC Agreement decisions. Such prohibitions violate the previously discussed claims to the protection of justice; they are unauthorised interventions in the applicant's right, which is in any case similar to ownership. These applications also concern the proceedings before the UPC Agreement cited above. Furthermore, they are also directed against further infringement actions arising from SEPs of the applicant which it intends to bring before the UPC Agreement. They are not limited to the patents previously asserted by the applicant before the UPC Agreement (or the German courts). 3. With regard to defendants 2) and 3), there is in any case a risk of first offence. [The defendant 1) has then applied for an ASI/AEI. This means that there is still a that respondents 2) and 3) will join the application or submit their own applications for an ASI/AEI. 4. The appointment of an authorised representative for service of process is not to be ordered. There is no legal basis for this in UPC Agreement law. It is probably a transmission error from an application before a German court. III. Weighing up The balancing of the interests of the parties to be carried out in accordance with Art. 62 (2) UPCA and Rule 211 (3) RoP, which must take into account all circumstances of the individual case, is in favour of the applicant in the present case. The issuance of the temporary Order is urgent both in terms of time and objectively. The applicant cannot reasonably expected to wait until the conclusion of the main proceedings to enforce its claims (see on the requirement of objective urgency or factual necessity: Düsseldorf local division, Order of 31 October 2024, UPC CFI 347/2024 - Valeo Electrification/Magna PT and others; Munich local division, Order of 25 November 2024, UPC CFI 443/2024 - Häfele/Kunststoff KG Nehl). 1. The Order for the requested interim measures is urgent in terms of time, R. 209.2 (b) RoP. The urgency required to order interim measures is only lacking if the injured party has been so negligent and hesitant in pursuing its claims that, from an objective point of view, it must concluded that the injured party is not interested in enforcing its rights quickly, which is why it does not appear appropriate to allow it to seek interim legal protection (cf. also Munich local division, UPC CFI 443/2024, decision of 25 November 2024 - Häfele/Kunststoff KG Nehl; Düsseldorf local division, UPC CFI 347/2024 - Valeo Electrification/Magna PT and others). There is no evidence of negligent and hesitant behaviour in the present case.2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/202414 The period of waiting within the meaning of Rule 211.4 RoP is to be measured from the date on which an applicant has or should have had such knowledge of the infringement as to enable him to make an application for interim measures under Rule 211.4 RoP. 206.2 RoP (Court of Appeal, Order of 25 September 2024, UPC CFI 182/2024 - Ortovox Sportartikel/Mammut Sports Group and others). According to the applicant's submission, it became aware of the application of respondent 1) on 4 December 2024. On 20 November 2024, it became aware that such an application could be filed. Even on the basis of 20 November 2024, an application for interim measures by the court on 9 December 2024 cannot be considered dilatory or negligent. 2. interim measure is also objectively urgent. It is objectively required and necessary. The applicant cannot be referred to proceedings on the merits. Should the US court issue the ASI and/or AEI requested by the respondent 1), these would be immediately enforceable in the USA. The Applicant could - as a result of the sanctions threatening it in the event of non-compliance with the orders of the US court - be forced in particular to withdraw the actions pending before the Munich local division. In its opinion, the unlawful use of the patents in dispute would therefore be removed from judicial review by the competent court. The question of whether exhaustion has actually occurred with regard to parts of the challenged embodiments could also not be examined. Any rights of the applicant, in particular those to cease and desist the alleged patent infringement and to establish a liability for damages or the right to damages, could then not be enforced before the Munich local division or the UPC Agreement. The applications are also aimed at a permanent prohibition of actions arising from all SEPs of the applicant before a local division of the UPC Agreement and/or against enforcement of decisions of the UPC Agreement. If the applicant (had to) adhere to such ASI and/or AEI, this interference with its property-like right would lead to a (material and financial) devaluation of the patent in suit or the SEP, which would threaten the applicant with considerable damage. The Applicant also faces the threat of significant harm it does not comply with the ASI and/or AEI if ordered. The Applicant has made a credible case that the US court is likely to impose significant sanctions if it violates an ordered ASI and/or AEI. US courts have in the past ordered penalties of up to USD 100,000.00 per day of non-compliance for contempt of court, and these penalties can double and quadruple from certain points in time of a continuing violation. Since the Order of the ASI and/or the AEI in the US proceedings is imminent, at least in the course of an acceleration request, the applicant cannot be referred to a main action before the UPC Agreement. Under no circumstances could such an action be brought in good time. A (final) injunction by the court, which could have an impact on the US proceedings, would therefore come too late. However, the rights of the applicant would at best be inadequately safeguarded by an injunction that is only issued after the ASI and/or AEI have been ordered. Finally, the consideration of the potential damage to the parties also speaks in favour of granting the interim measures.2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/202415 If the application is rejected, there is a credible risk that the ASI and/or AEI requested respondent 1) will be ordered. This would have the consequences for the applicant described above. The applicant is therefore threatened with considerable damage. If the interim measures are granted, the defendants are prohibited from continuing with the applications. This includes, among other things, the withdrawal of these applications. It cannot be ruled out that this may also lead to damage on the part of the defendants. However, the potential damage to them is less serious. The defendants are not prevented from enforcing their rights arising from the applicant's declaration to IEEE. The US proceedings can be continued in this respect. The interim measures requested by the applicant relate solely to the requested ASI and AEI. In addition, the use of the patent in suit alleged by the applicant will be examined in the two proceedings cited above. This includes the objection of exhaustion raised, insofar as this is relevant to the decision. IV. Remission order without prior hearing of the other party The Order for interim measures requested by the applicant without prior hearing of the defendants appears appropriate and necessary in the present case, R. 206.3, 209.2 (c) RoP in conjunction with R. 212.1 RoP. The applicant has made a credible case that without an ex parte Order it is likely to suffer irreparable harm due to the delay associated with the involvement of the other party. As a result of the email exchange described above, it is likely that the defendants will immediately apply for further interim measures, such as a temporary restraining order. The US proceedings could therefore be further accelerated by shortening the deadlines. The hearing of the defendants would then lead to the protection of the applicant's rights asserted here being curtailed or even cancelled out. It therefore appears appropriate in the present case to exceptionally refrain from a prior hearing of the defendants. V. Security deposit Pursuant to Rule 211.5 RoP, the court must order the provision of a security if the Order for interim measures - as here - is made without prior hearing of the defendant. Special circumstances that could exceptionally speak against such an Order in the present case are neither presented nor apparent. In particular, cannot be established on the basis of the submitted and credible facts that any damage to the defendants is excluded. The deposit of a security in accordance with Rule 352 RoP can be made directly with the UPC Agreement. The UPC Agreement has set up a bank account for this purpose. The account details are published on the UPC Agreement website The security is intended to cover the costs of the proceedings, other costs incurred as a result of enforcement and possible compensation for damages incurred or likely to be incurred, Rule 352.1 RoP. As it is difficult to estimate the amount of possible enforcement damages at the time an Order is issued for the local division, the amount of the security set is generally based on the amount in dispute (in this case € 3 million). Even if the amount in dispute does not necessarily correspond to the risk of damage2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/202416 the applicant side attaches economic importance to the matter. Due to the amount of the security, it can be assumed that it will take several days to obtain it. In the meantime, this Order is enforceable without the provision of security. If the security not provided within a period of 20 days, the enforceability of this Order shall end. VI. Basic cost decision A basic decision on costs is not to be made in the present case. The Rules of Procedure only provide for such a decision in proceedings on the merits (see Rule 118.5 RoP), but not in proceedings for an Order for interim measures. The costs of the summary proceedings are generally to be claimed in the main proceedings. An order for provisional reimbursement of costs possible in summary proceedings (Rule 211.1 (d) RoP) requires a corresponding quantified application. Such an application has not been made in the present case. The repeated submissions were due to technical reasons. Court fees were only incurred once and are attributable to the present proceedings. VII. Action on the merits Pursuant to Rule 213.1 RoP, it is mandatory to set a time limit with a view to an action on the merits. ORDER I. Defendants are each enjoined by way of a preliminary injunction, under penalty of a fine for each violation, from prosecuting the proceedings for an anti- enforcement injunction or anti-suit injunction in the proceedings with action number Case No. 2:24-cv-00824-AB (AJRx) before the United States District Court for the Central District of California (petition dated 4 December 2024) or from seeking other equivalent judicial or administrative measures to directly or indirectly enjoin petitioner from prosecuting patent infringement proceedings arising out of its standard-essential patents. The UPC Agreement is also seeking to enjoin the applicant from further prosecuting or seeking other equivalent judicial or administrative measures directly or indirectly prohibiting the applicant from bringing or continuing patent infringement proceedings arising from its standard-essential European patents subject to the UPC Agreement's jurisdiction before the competent UPC Agreement divisions within the scope of the UPC Agreement and/or enforcing any resulting judgements, including, in particular, this injunction, – the requirement to withdraw the application for an "Anti-Enforcement Injunction" or Anti-Suit Injunction within a period of 24 hours after service of this decision or to take other procedural means to finally revoke such an Anti-Suit Injunction and/or Anti-Enforcement Injunction with effect for the scope of application of the UPCA, – the immediate prohibition to continue the anti-suit injunction and/or anti- enforcement injunction proceedings with effect for the scope of the UPCA except for the purpose of withdrawing the application,2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/202417 – the prohibition to indirectly prohibit the applicants, by means of a court or administrative order aimed at prohibiting the present proceedings, from conducting patent infringement proceedings arising from their standard-essential European patents subject to the jurisdiction of the UPC Agreement before the competent UPC chambers within the scope of the UPC Agreement and/or from enforcing any resulting judgement, whereby the above prohibitions and prohibitions also include exerting a corresponding influence on affiliated companies in whose name the application for an anti-suit injunction and/or anti- enforcement injunction has been filed, exhausting the possibilities available under group law. II. In the event of any violation of the Order under Section I, the defendants shall pay the court a penalty payment (which may be repeated) of up to € 250,000.00 for each day of violation. III. English-language documents, in particular Annexes ASt 3 to ASt 5 submitted with the application, do not need to be translated (rule 13.1 (q) RoP). IV. This Order is initially enforceable immediately without security. However, the enforceability of this Order shall end unless the applicant has provided security in the form of a deposit or bank guarantee in favour of the defendants in the amount of € 3,000,000.00 within 20 days. V. The remainder of the application is rejected. INSTRUCTION TO THE LAW FIRM This Order, together with the Notice of Motion of 9 December 2024 and all annexes, is to be served on the Respondents pursuant to Rule 276. 1 in conjunction with Rules 271. in conjunction with Rules 271, 274 RoP, whereby service is to be made on the respondent 1) in parallel at the address in the USA and at the branch office in Germany (respondent 3). NOTE TO THE APPLICANT If the main proceedings are not commenced within a maximum period of 31 calendar days or 20 working days, whichever is the longer, from the date of service on the respective respondent, the court may, on application by the respondent, order that the present Order be cancelled or otherwise cease to have effect (Art. 62(5), 60(8) UPCA, Rule 213.1 RoP). NOTICE TO THE DEFENDANTS The respondents may request a review of the Order within 30 days of the enforcement of the measure (Art. 62 (5), 60 (6) UPCA, Rule 212.3, 197.3 RoP). INFORMATION ON ENFORCEMENT (ART. 82 UPCA, RULES 352, 354 ROP)2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com UPC CFI 791/202418 The continuation of the enforcement of the judgement is dependent on the timely provision of security. A certified copy of the enforceable Order shall be issued by the Deputy Registrar on application by the enforcing party, Rule 69 RegR. ORDER DETAILS Order No. ORD 65389/2024 in PROCEDURE NUMBER: Not available UPC number: UPC CFI 791/2024 Type of operation: Not available No. of the associated procedure Application no.: 65376/2024 Type of application: Application for interim measures (Rule 206 Regulation) Signed in Munich on 11 December 2024 Matthias ZIGANN Digitally signed by Matthias ZIGANN Date: 2024.12.11 14:00:36 +01'00' Dr Zigann Presiding judge as single judge Anja Digitally signed by Mittermeie Anja Mittermeier Date: 2024.12.11 r 14:12:33 +01'00' For the Deputy Chancellor2024-12-11 LD Munich ACT 65376-2024 UPC CFI 791-2024 AAS AEI redacted en-GBDeepL machine translation provided by www.veron.com

Key Holdings

  • The UPC's subject-matter jurisdiction (Art. 32(1)(a), (c) UPCA) extends to issuing interim measures (AASI/AAEI) against foreign prohibitions on conducting or enforcing patent proceedings.
  • Foreign anti-suit/anti-enforcement injunctions (ASI/AEI) violate the European right to justice (Art. 47 EU Charter) and German constitutional rights (Art. 2(1), 19(4) GG), constituting unlawful interference with property-like patent rights (Section 823(1) BGB).
  • An Anti-Anti-Suit Injunction (AASI) is a legitimate and necessary defence to preserve the UPC's jurisdiction and prevent irreparable harm to patent holders from foreign ASI/AEI orders.
  • The urgency for such interim measures is established if an ASI/AEI application has been filed or threatened, and the measures can be issued ex parte to prevent pre-emptive counter-measures.
  • A security deposit is generally required for ex parte interim measures, but the order can be immediately enforceable without it for a limited period to ensure prompt action.

Tags

  • Anti-Suit Injunction
  • FRAND
  • Standard Essential Patents
  • Telecommunications

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