UPC_CFI_87/2025; UPC_CFI_488/2025 – Inter Digital v Walt Disney
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Granted
- Sector
- Electronics/SEP
- Decision Type
- PROCEDURAL
Expert Commentary
Further written pleadings Facts 1. The claimant asks for a further written pleading to react on the rejoinder in the infringement case as the defendant raised a non-infringement argument for the first time, and as the defendant’s statements are incorrect with respect to the FRAND defense. 2. The claimant states that it will submit the further pleading within the time limit it has for its rejoinder in the counterclaim. 3. The defendant did not provide any comments. The JR The JR grants the request. Comment 1. Although in the considerations, the JR states that both parties will be given two opportunities to comment on the FRAND issue, I do not see that reflected in the order. In general I think that if a party gets the opportunity under R. 36 RoP to file a further submission after the other party’s last written submission, the other party should get the opportunity to respond. 2. The JR also states in the considerations that this order does not imply a decision regarding the late submission of arguments. In this case, the defendant apparently raised a new argument for the first time in the rejoinder. That is in principle not possible. However, the claimant apparently did not protest but asked for a further written submission. That signals in my opinion that the claimant waived its right to object against the late submission. (?)
Full Decision Text
Düsseldorf Local Division UPC_CFI_87/2025 UPC_CFI_488/2025 Order of the Court of First Instance of the Unified Patent Court issued on 19 November 2025 concerning EP 2 449 782 CLAIMANT: Inter Digital VC Holdings, Inc., represented by its board of directors, 200 Bellevue Parkway, Suite 300, Wilmington, Delaware 19809, USA represented: Attorney-at-law Dr Arno Riße, Attorney-at-law Dr Lisa Rieth, Attorney-at-law Cordula Schumacher, Attorney-at- law Marius Klötzer, Attorney-at-law Victoria Thüsing, Arnold Ruess Rechtsanwälte PartmbB, Königsallee 59a, 40215 Düsseldorf, Germany Patent Attorney Dr Dominik Ho, Patent Attorney David Molnia, Molnia Ho PartG mbB, Theatinerstraße 16, 80333 München, Germany electronic address for service: upc-IDG-DIS-782@arnold-ruess.com DEFENDANTS: 1. The Walt Disney Company, 500 S Buena Vista St, Burbank, CA 91521, USA, represented by its agent CSC – Lawyers Incorporating Service, 2710 Gateway Oaks Drive, Sacramento, CA 95833, USA 2. The Walt Disney Company (Benelux) B.V., represented by the board members Matthijs Sebastiaan de Graaf, Marco de Ruiter, Evert Jan Willem van der Veer, Asterweg 15S, 1031 HL Amsterdam, The Netherlands 3. Disney Interactive, 500 S Buena Vista St, Burbank, CA 91521, USA, represented by its agent CSC – Lawyers Incorporating Service, 2710 Gateway Oaks Drive, Sacramento, CA 95833, USA 4. Disney Electronic Content, Inc., 500 S Buena Vista St, Burbank, CA 91521, USA, represented by its agent Corporation Service Company, 251 Little Falls Drive, Wilmington, DE 19808, USA 5. Disney Platform Distribution, Inc, also operating under the name Disney DTC LLC, 500 S Buena Vista St, Burbank, CA 91521, USA, represented by its agent CSC – Lawyers Incorporating Service, 2710 Gateway Oaks Drive, Sacramento, CA 95833, USA 1 6. The Walt Disney Company Limited, represented by Deborah Margaret Armstrong, Simon Unsworth Bailey, Tracy Anne Bermingham, Dominique Ruth Cardle, Nicola Rose Keat, 3 Queen Caroline Street, Hammersmith, London, W6 9PE, UK 7. Disney Enterprises, Inc., 500 S Buena Vista St, Burbank, CA 91521, USA, represented by its agent CSC – Lawyers Incorporating Service, 2710 Gateway Oaks Drive, Sacramento, CA 95833, USA 8. Disney Streaming Services LLC, 500 S Buena Vista St, Burbank, CA, 91521, USA, represented by its agent CSC – Lawyers Incorporating Service, 2710 Gateway Oaks Drive, Sacramento, CA 95833, USA 9. Disney Media & Entertainment Distribution LLC, also operating under the name Disney Entertainment Operations LLC, 500 S Buena Vista St, Burbank, CA, 91521, USA, represented by its agent CSC – Lawyers Incorporating Service, 2710 Gateway Oaks Drive, Sacramento, CA 95833, USA 10. Disney Entertainment & Sports LLC, also operating under the name Disney Streaming Technology LLC or Disney Technology LLC, 500 S Buena Vista St, Burbank, CA, 91521, USA, represented by its agent CSC – Lawyers Incorporating Service, 2710 Gateway Oaks Drive, Sacramento, CA 95833, USA 11. BAMTech LLC, also operating under the name BAMTech Media or Disney Streaming Ser- vices (LLC) or Disney Streaming, 1211 Avenue of the Americas, New York, New York 10036, USA, represented by its agent CSC – Lawyers Incorporating Service, 2710 Gateway Oaks Drive, Sacramento, CA 95833, USA all Defendants represented by: Attorney-at-law Dr Dietrich Kamlah, Attorney-at-law Dr Christian Lederer, Attorney-at-law Dr Michael Schächinger, Attorney-at-law Teresa Gaboardi, Attorney- at-law Leoni König, Taylor Wessing Partnerschaftsgesell- schaft von Rechtsanwälten und Steuerberatern mbB, Isartorplatz 8, 80331 Munich, Germany Patent Attorney Dr Joel Nägerl, Patent Attorney Dr Lo- renz Walder-Hartmann, Zimmermann & Partner Patent- anwälte mbB, Josephspitalstraße 15, 80331 Munich, Ger- many electronic address for service: d.kamlah@taylorwessing.com PATENT IN SUIT: European Patent n° 2 449 782 2 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This order was issued by legally qualified judge Dr Schumacher acting as judge-rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: R. 36 RoP – Further exchange of written pleadings REQUEST AND PARTIES’ SUBMISSIONS: 1. The Claimant requests permission to submit a further written pleading in response to the Defendants' non-infringement and FRAND-related arguments provided in the rejoinder dated 20 October 2025 in the infringement action within the deadline for Claimant's rejoinder to the Counterclaim for revocation of 20 November 2025. 2. The Claimant states that: - The infringement of the patent in suit was previously undisputed, but is now disputed with regard to a single feature for the first time in the Defendants’ rejoinder. - With regard to the FRAND defence, Defendants' statements in the rejoinder are incorrect and therefore also require a short clarification. 3. The Defendants were invited to comment on the Claimant’s request. They did not provide any comments. GROUNDS FOR THE ORDER: 4. According to R. 36 RoP, on a reasoned request by a party lodged before the date on which the judge-rapporteur intends to close the written procedure, the judge-rapporteur may allow the exchange of further written pleadings, within a time period to be specified. 5. In this context, it must be considered whether the exchange of further written submissions is required in accordance with the principles of due process, such as in particular the principles of fairness, equity and efficiency and the right to be heard (UPC_CoA_520/2024, Order of 1 November 2024, para 19 – Scandit v. Hand Held Products). 6. In their rejoinder, the Defendants argue that the Claimant interprets the feature ‘encoding a binary split signaling syntax element’ incorrectly. According to the Defendants, there would be no infringement if the Claimant’s interpretation were adopted. In line with the principles outlined above, the Court holds that the Claimant should be given the opportunity to address this issue. The Defendants did not object to this. 7. With regard to the FRAND-related arguments, it seems appropriate for each party to be given two opportunities to comment (see UPC_CFI_135/2024 (LD Düsseldorf), Order of 14 August 2025, para 3 – Dolby v. Beko). The Defendants did not object to this either. 8. This order does not imply a decision regarding the late submission of arguments. 3 ORDER: 1. The Claimant is permitted to respond to the Defendants' arguments regarding non- infringement and FRAND, as set out in the rejoinder dated 20 October 2025, until 20 November 2025. 2. The written procedure shall not be deemed closed by the expiry of this date. Issued in Düsseldorf on 19 November 2025 NAME AND SIGNATURE Judge Dr Schumacher Jule Kathrin Digital unterschrieben von Jule Kathrin Schumacher Schumacher Datum: 2025.11.19 17:19:36 +01'00' 4
Key Holdings
- A request for further written pleadings under Rule 36 RoP was granted to allow the claimant to respond to new non-infringement arguments and FRAND defense statements raised for the first time in the defendant's rejoinder.
- The Judge-Rapporteur's order did not explicitly grant the defendant a right to respond to the claimant's further submission, which the commentator suggests should generally be allowed.
- The order clarified that granting the further pleading does not imply a decision on the admissibility of late-submitted arguments.
Tags
- FRAND
- Infringement
- Pleadings
- Written Procedure