UPC CFI 9/2023 – Huawei Technologies Co. Ltd v Netgear Germany GmbH et al.

Expert Commentary

Full Decision Text

1 Munich local division UPC CFI 9/2023 Decision of the Court of First Instance of the Unified Patent Court local division Munich issued on 18 December 2024 LEADERSHIPS 1. The only official form available online for submitting a withdrawal from the exception pursuant to Rule 5.7 RoP is the corresponding workflow in the case management system (CMS). The template provided is not a form within the meaning of Rule 4.1 RoP, but a template to support the users of the system. Users are free to use a different template. 2. Insofar as the defence of exhaustion applies to all challenged embodiments, it must be dealt with immediately in the discovery proceedings. If successful, the action must be dismissed. If the defence of exhaustion does not apply to all challenged embodiments, it depends on the circumstances of the individual case whether and to what extent the defence is to be pursued immediately or only in the context of compulsory enforcement. 3. Insofar as the patent proprietor has submitted several different offers which are still acceptable, for example an offer concerning a bilateral licence to the patent proprietor's portfolio and an offer concerning a licence to the portfolio of a patent pool which includes the patent or portfolio of the patent proprietor to be licensed, the infringement action for injunctive relief, recall and destruction cannot be dismissed if it can be assumed that at least one of the two offers satisfies the requirements of antitrust law. This is because the patent proprietor is only obliged under antitrust law to grant the patent user a licence.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/20232 The patent proprietor can fulfil its antitrust obligations in particular by offering a pool licence. The patent proprietor can fulfil its obligations under antitrust law in particular by offering a pool licence. The same also applies in relation to an assessment under contract law, for example in relation to a Letter of Assurance (LOA) issued under the IEEE Bylaws 2007. 4. The statements of the Court of Justice of the European Union in paragraphs 66-67 of the judgement in Huawei v. ZTE mean that bringing an action may be contrary to antitrust law because the patent proprietor's offer contradicts FRAND conditions, but the infringer may only object to this in the context of a defence against that part of the action which is directed at injunctive relief, recall or destruction if he himself has submitted a concrete counter-offer which complies with FRAND conditions without delaying tactics and, moreover, has provided adequate security in the event of its rejection and has provided information on the scope of the acts of use. KEYWORDS Formal requirements for withdrawal from the exemption authorisation; prohibition of action based on the IEEE Bylaws; exhaustion of device and procedural claims; FRAND objection; IEEE LOA objection2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/20233 PLAINTIFF Huawei Technologies Co. Ltd represented by: Dr Tobias J. Hessel, Thomas Misgaiski, Dr Marie Gessat, Lea Prehn(Clifford Chance). Supported by: Christian Harmsen, Dr Matthias Meyer, Dr Jörg Witting (Bird & Bird);Dr Friedrich Emmerling, Dr Karl-Ulrich Braun-Dullaeus, Lan Bi (BDPE). DEFENDANT 1) Netgear Germany GmbH 2) Netgear Inc. 3) Netgear International Limited represented by: DrStephan Dorn, Henning Gutheil, Frank-Erich Hufnagel, Caroline Horstmann, Diana Baum (Freshfields). supported by: Dr.-Ing. Cletus von Pichler (Samson & Partner) PATENT IN SUIT European patent no. 3 611 989. PANEL/CHAMBER Panel 1 of the Munich local division. PARTICIPATING JUDGES This decision was issued by the presiding judge Dr Matthias Zigann as reporting judge and the legally qualified judges Tobias Pichlmaier and Edger Brinkman as well as the technically qualified judge Patrice Vidon. LANGUAGE OF THE PROCEEDINGS German ORAL HEARING The hearing took place on 30 October 2024 in English (see ORD 2866/2024). OBJECT Infringement action (ACT 459771/2023) with revocation counterclaims (CC 588071/2023, CC 588080/2023, CC 586627/2023) and applications to amend the patent (APP 9258/2024, APP 9258/2024, APP 9258/2024). Opposition pursuant to R 19 RoP (App 570172/2023).2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/20234 SECRECY The text passages highlighted in grey in the unredacted version and marked with [redacted] in the redacted version are subject to decisions pursuant to Rule 262A RoP and are the subject of applications pursuant to Rule 262.2 RoP. In this respect, both parties have unanimously submitted a need for protection. The court has therefore assumed a need for protection. In the case of an application pursuant to Rule 262.3 RoP, this will have to be reviewed again. APPLICATIONS BY THE PARTIES By means of the action, the applicant sought order the defendants to cease and desist, subject to a penalty payment to be imposed by the court for each case of non-compliance, B.I. to offer or supply equipment for transmitting a high-efficiency signalling field B or HE-SIG-B in a wireless local area network to customers in the area of application of the UPCA existing at the time of the oral hearing with the exception of the Contracting Member States Austria, Bulgaria, Denmark, Estonia, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal and Slovenia [i.e. Belgium, Germany, Italy, Finland, France, Sweden] for use in the said area, which are suitable for use in a method for transmitting a high-efficiency signalling field B or HE- SIG-B in a wireless local area network, wherein the method comprises the following: Transmitting the HE-SIG-B in a transmission bandwidth of multiples of 20 MHz, the HE-SIG-B comprising two HE-SIG-B contents including a first HE-SIG-B content routed in each odd- numbered 20 MHz subchannel and a second HE-SIG-B content routed in each even-numbered 20 MHz subchannel, the first HE-SIG-B content comprising a first common field and a first user- specific field, the first common field comprising one or more first resource allocations, RA, wherein the second HE-SIG-B content comprises a second common field and a second user- specific field, the second common field comprising one or more second resource allocations, RA, wherein each of the one or m o r e first RA corresponds to an odd-numbered 20 MHz subchannel and each of the one or more second RA corresponds to an even-numbered 20 MHz subchannel, wherein the first user-specific field comprises one or more first user scheduling information subfields, wherein each of the one or more first user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units indicated by the one or more first RA, and wherein the second user-specific field comprises one or more second user scheduling information subfields, wherein each of the one or more second user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units specified by the one or more second RAs when a first RA of the one or more first RAs specifies a first allocated resource unit, RU, that is within or overlaps the corresponding one odd 20 MHz subchannel,2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/20235 wherein the one first RA further indicates that in the first HE-SIG-B content, a number of a user scheduling information subfield corresponding to the first RU is 0; or a second RA indicates to the one or more second RA a second assigned RU that is within or overlaps with the corresponding one even-numbered 20 MHz subchannel, wherein the one second RA further indicates that in the second HE-SIG-B content, a number of a user scheduling information subfield corresponding to the second RU is 0; - Indirect infringement of claim 1 - II. to offer or supply equipment for receiving a high-efficiency signalling field B or HE-SIG-B in a wireless local area network to customers in the territory covered by the UPCA in force at the time of the oral hearing, with the exception of the Contracting Member States Austria, Bulgaria, Denmark, Estonia, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal and Slovenia, for use in the said territory, which are suitable for use in a method for receiving a high-efficiency signalling field B or HE-SIG- B in a wireless local area network, wherein the method comprises the following: Receiving the HE-SIG-B in a transmission bandwidth of multiples of 20 MHz, the HE-SIG-B comprising two HE-SIG-B contents including a first HE-SIG-B content carried in each odd- numbered 20 MHz subchannel and a second HE-SIG-B content carried in each even-numbered 20 MHz subchannel, the first HE-SIG-B content comprising a first common field and a first user- specific field, the first common field comprising one or more first resource allocations, RA wherein the second HE-SIG-B content comprises a second common field and a second user- specific field, wherein the second common field comprises one or more second resource allocations, RA, each of the one or more first RA corresponding to an odd-numbered 20 MHz subchannel and each of the one or more second RA corresponding to an even-numbered 20 MHz subchannel, wherein the first user-specific field comprises one or more first user scheduling information subfields, wherein each of the one or more first user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units specified by the one or more first RA, and wherein the second user-specific field comprises one or more second user scheduling information subfields, wherein each of the one or more second user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units specified b y the one or more second RA, and wherein the second user-specific field comprises one or more second user scheduling information subfields, wherein each of the one or more second user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units indicated by the one or more second RAs, when a first RA of the one or more first RAs indicates a first allocated resource unit, RU, located within or overlapping with the corresponding one odd 20 MHz subchannel, the one first RA further indicating that a number of a user scheduling information subfield corresponding to the first RU is 0 in the first HE-SIG-B content; or a second RA indicates to the one or more second RA a second assigned RU that is within or overlaps with the corresponding one even-numbered 20 MHz subchannel, the one second RA further indicating that in the second HE-SIG-B content, a number of a user scheduling information subfield corresponding to the second RU is 0;2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/20236 - Indirect infringement of claim 2 - III. in particular 1. when the first RA or the second RA is an index of a plurality of indices, the index being created based on per 20 MHz bandwidth, the index indicating a combination of allocated RUs having 26, 52 or 106 subcarriers or an allocated RU having 242, 484 or 996 subcarriers, the index indicating whether multi-user MIMO or MU-MIMO is performed, respectively; and the index further indicating information for calculating a number of users on an allocated RU allowed for MU-MIMO; characterised in that the first RA or the second RA is an index of a plurality of indices, the index indicating a combination of allocated RUs having 26, 52 or 106 subcarriers or an allocated RU having 242, 484 or 996 subcarriers, the index indicating whether multi-user MIMO or MU-MIMO is performed, and the index further indicates information for calculating a number of users on an allocated RU allowed for MU-MIMO; – Indirect infringement of claim 3 - 2. and/or if the first assigned RU has 484 subcarriers or the second assigned RU has 484 subcarriers – Indirect infringement of claim 4 - 3. and/or when the transmission bandwidth is 40 MHz, comprising first 20 MHz and second 20 MHz, wherein the first HE-SIG-B content is carried in the first 20 MHz and the second HE-SIG-B content is carried in the second 20 MHz, wherein the first HE-SIG-B content comprises a first RA indicating one or more RUs in or overlapping the first 20 MHz, and wherein the second HE-SIG-B content comprises a second RA indicating one or more RUs in or overlapping the second 20 MHz – Indirect infringement of claim 5 - 4. and/or when the transmission bandwidth is 80 MHz, comprising first 20 MHz, second 20 MHz, third 20 MHz and fourth 20 MHz in a frequency order, wherein the first HE-SIG-B content is routed in t h e first and third 20 MHz and the second HE-SIG-B content is routed in the second and fourth 20 MHz, wherein the first HE-SIG-B content comprises a first RA and a third RA, wherein the first RA specifies one or more RUs in or overlapping t h e first 20 MHz and the third RA specifies one or more RUs in or overlapping the third 20 MHz, and wherein the second HE-SIG-B content comprises a second RA and a fourth RA, wherein the second RA specifies one or more RUs in or overlapping the second 20 MHz and the fourth RA specifies one or more RUs in or overlapping the fourth 20 MHz; – Indirect infringement of claim 6 - IV. device for transmitting a high-efficiency signalling field B or HE-SIG-B in a wireless local area network to customers in the area of application of the UPCA existing at the time of the oral hearing with the exception of the Contracting Member States Austria, Bulgaria, Denmark, Estonia, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal and Slovenia, comprising the following: a module adapted to transmit the HE-SIG-B in a transmission bandwidth of multiples of 20 MHz, the HE-SIG-B comprising two HE-SIG-B contents including a first HE-SIG-B content carried in each odd-numbered 20 MHz subchannel and a second HE-SIG-B content carried in each even-numbered 20 MHz subchannel, the first HE-SIG-B content comprising a first common field and a first user-specific field,2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/20237 wherein the first common field comprises one or more first resource allocations, RA, wherein the second HE-SIG-B content comprises a second common field and a second user-specific field, wherein the second common field comprises one or more second resource allocations, RA, wherein each of the one or more first RA corresponds to an odd-numbered 20 MHz subchannel and each of the one or more second RA corresponds to an even-numbered 20 MHz subchannel, wherein the first user-specific field comprises one or more first user scheduling information sub-fields, each of the one or more first user scheduling information sub-fields comprising information about a station, STA, wherein the STA is scheduled on one of the one or more resource units, indicated by the one or more first RA, and wherein the second user-specific field comprises one or more second user scheduling information subfields, each of the one or more second user scheduling information subfields comprising information about a station, STA, wherein the STA is scheduled on one of the one or more resource units, indicated by the one or more second RAs when a first RA of the one or more first RAs indicates a first allocated resource unit, RU, located within or overlapping with the corresponding one odd 20 MHz subchannel, the one first RA further indicating that a number of a user scheduling information subfield corresponding to the first RU is 0 in the first HE- SIG-B content; or a second RA indicates to the one or more second RA a second assigned RU located within or overlapping with the corresponding one even-numbered 20 MHz subchannel, the one second RA further indicating that in the second HE-SIG-B content a number of a user scheduling information subfield corresponding to the second RU is 0; – direct infringement of claim 7 - V. device for receiving a high-efficiency signalling field B or HE-SIG-B in a wireless local area network to customers in the area of application of the UPCA existing at the time of the oral hearing with the exception of the Contracting Member States Austria, Bulgaria, Denmark, Estonia, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal and Slovenia, comprising the following: a module adapted to receive the HE-SIG-B in a transmission bandwidth of multiples of 20 MHz, the HE-SIG-B comprising two HE-SIG-B contents including a first HE-SIG-B content carried in each odd-numbered 20 MHz subchannel and a second HE-SIG-B content carried in each even- numbered 20 MHz subchannel, wherein the first HE-SIG-B content comprises a first common field and a first user-specific field, the first common field comprising one or more first resource allocations, RA, the second HE-SIG-B content comprising a second common field and a second user-specific field wherein the second common field comprises one or more second resource allocations, RA, wherein each of the one or more first RA corresponds to an odd-numbered 20 MHz subchannel and each of the one or more second RA corresponds to an even-numbered 20 MHz subchannel, wherein the first user-specific field comprises one or more first user scheduling information sub-fields, each of the one or more first user scheduling information sub-fields comprising information about a station, STA, wherein the STA is scheduled on one of the one or more resource units represented by the one or more first RA2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/20238 and wherein the second user-specific field comprises one or more second user scheduling information subfields, each of the one or more second user scheduling information subfields comprising information about a station, STA, wherein the STA is scheduled on one of the one or more resource units indicated by the one or more second RA, when a first RA of the one or more first RA indicates a first allocated resource unit, RU, located within or overlapping with the corresponding one odd 20 MHz subchannel, the one first RA further indicating that in the first HE- SIG-B content, a number of a user scheduling information subfield corresponding to the first RU is 0; or a second RA indicates to the one or more second RA a second assigned RU located within or overlapping with the corresponding one even-numbered 20 MHz subchannel, the one second RA further indicating that in the second HE-SIG-B content a number of a user scheduling information subfield corresponding to the second RU is 0; – direct infringement of claim 8 - VI. in particular 1. when the first RA or the second RA is an index of a plurality of indices, the index being created based on per 20 MHz bandwidth, the index indicating a combination of allocated RUs having 26, 52 or 106 subcarriers or an allocated RU having 242, 484 or 996 subcarriers, the index indicating whether multi-user MIMO or MU-MIMO is performed, respectively; and the index further indicating information for calculating a number of users on an allocated RU allowed for MU-MIMO; characterised in that the first RA or the second RA is an index of a plurality of indices, the index indicating a combination of allocated RUs having 26, 52 or 106 subcarriers or an allocated RU having 242, 484 or 996 subcarriers, the index indicating whether multi-user MIMO or MU-MIMO is performed, and the index further indicates information for calculating a number of users on an allocated RU allowed for MU-MIMO; – direct infringement of claim 9 - 2. and/or if the first assigned RU has 484 subcarriers or the second assigned RU has 484 subcarriers; – Direct infringement of claim10 - 3. and/or when the transmission bandwidth is 40 MHz, comprising first 20 MHz and second 20 MHz, wherein the first HE-SIG-B content is carried in the first 20 MHz and the second HE-SIG-B content is carried in the second 20 MHz, wherein the first HE-SIG-B content comprises a first RA indicating one or more RUs in or overlapping the first 20 MHz, and wherein the second HE-SIG-B content comprises a second RA indicating one or more RUs in or overlapping the second 20 MHz; – direct infringement of claim 11 - 4. and/or when the transmission bandwidth is 80 MHz, comprising first 20 MHz, second 20 MHz, third 20 MHz and fourth 20 MHz in a frequency order, wherein the first HE-SIG-B content is routed in the first and third 20 MHz and the second HE-SIG-B content is routed in the second and fourth 20 MHz, wherein the first HE-SIG-B content comprises a first RA and a third RA, wherein the first RA specifies one or more RUs in or overlapping the first 20 MHz and the third RA specifies one or more RUs in or overlapping the third 20 MHz , and wherein the second HE-SIG-B content comprises a second RA and a fourth RA, wherein the second RA specifies one or more RUs in or overlapping the second 20 MHz and the fourth RA specifies one or more RUs in or overlapping the fourth 20 MHz;2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/20239 – Direct infringement of claim 12 - C. order the defendants to inform the plaintiff in writing and in electronic form of the extent to which they (the respective defendant) have committed the acts described above under B.I. to B.VI. since 26 May 2021, stating a) the names and addresses of manufacturers, suppliers and other previous owners; b) the names and addresses of the commercial customers and the points of sale for which the products were intended; c) the quantities of products manufactured, delivered, received or ordered, as well as the prices paid for the products concerned; copies of the relevant purchase documents (namely invoices, alternatively delivery notes) must be submitted as proof of the information provided, whereby details requiring confidentiality outside the data subject to disclosure may be blacked out; D. order the defendants to provide the plaintiff with an orderly statement in writing and additionally in electronic form of the extent to which they (the respective defendant) have committed the acts described above under B.I. to B. VI above since 26 May 2021, stating the following a) of the individual deliveries, broken down by delivery quantities, times and prices as well as type designations and the names and addresses of the customers; b) of the individual offers, broken down by offer quantities, times, prices, type designation and the names and addresses of the commercial offerees; c) of the advertising operated, broken down by advertising media, their circulation, distribution period and distribution area; d) the prime costs broken down by the individual cost factors and the profit realised; whereby the defendants reserve the right to disclose the names and addresses of the non- commercial purchasers and the offerees instead of the plaintiff to a sworn auditor resident in one of the Contracting Member States, to be designated by the plaintiff and bound to secrecy vis-à-vis the plaintiff, provided that the respective defendant bears his costs and authorises and obliges him to inform the plaintiff on specific request whether a particular purchaser or offeree is included in the list; E. order the defendants to permanently remove the products described above under B.IV. to B.VI. from the distribution channels by the respective defendant taking back these objects, if necessary enforcing their surrender with claims for surrender to which it is entitled or, at the plaintiff's discretion, arranging for the destruction of these objects at the respective owner's premises at the defendant's expense; F. order the defendants to recall the marketed products referred to above under B.IV. to B.VI. from the commercial customers with reference to the patent infringing condition of the products established by the court (judgement of ... of ...) and with the binding undertaking to refund any fees and to bear any necessary packaging and transport costs as well as customs and storage costs associated with the return and to take back the products, whereby the plaintiff is to be provided with a sample of the products.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202310 of the recall letters as well as a list of the addressees with their names and postal addresses or - at the defendant's discretion - a copy of all recall letters; G. further order the defendants to surrender to a bailiff to be appointed by the plaintiff for the purpose of destruction at their - the respective defendants' - expense the products referred to in B.IV. to B.VI. which are in their direct or indirect possession or ownership in the area of application of the UPCA existing at the time of the oral hearing with the exception of the Contracting Member States Austria, Bulgaria, Denmark, Estonia, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal and Slovenia; H. declare that the defendants are jointly and severally liable to compensate the plaintiff for all damage that she has suffered and will suffer as a result of the acts described under B.I. to B.VI. since 26 May 2021; I. order the defendants to pay the costs; J. to set partial securities for the enforcement of the judgements requested above, whereby the following individual amounts are proposed: 1. Application B., E., F., G EUR 950,000.00 2. Application C., D. EUR 50,000.00 In their objection of 7 September 2023 (App 570172/2023), the defendants requested that the objection regarding the lack of jurisdiction of the court due to the opt-out of the plaintiff's patent (Rule 19.1 lit. a UPC Agreement) be upheld. In its defence to the objection of 18 September 2023, the applicant requested that the court: reject the objection concerning the lack of jurisdiction of the court due to the opt-out of the plaintiff. In their statement of defence and counterclaim of 17 November, the defendants requested: 1. allocate to the panel a technically qualified judge with knowledge of wireless communication networks (in particular Int. Cl. H04W 72/12, H04L 5/20 and related areas) and communication protocols (in particular IEEE 802.11 and related standards) (Rule 33.1 UPC Agreement), 2. dismiss the action (Rules 23, 24 lit. (g) RoP UPC Agreement), 3. provisionally award the defendants the reimbursement of costs for the infringement action (Rule 150.2 RoP UPC Agreement), and in the alternative, 4. make enforcement of the decision conditional on the prior provision of security by the applicant in the amount of at least EUR [redacted] (Rules 352.1, 354.2 of the RoP UPC Agreement), to be provided by means of a written, irrevocable, unconditional and unlimited guarantee from a person established in the UPC Agreement.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202311 territory of a member state of the UPC Agreement authorised to do business, 5. allow the defendants to avert enforcement of the decision by providing security, which can 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, without regard to any security provided by the plaintiff (Rule 9.1 UPC Agreement). With the counterclaim for a declaration of nullity, we request, 6. declare the European patent EP 3 611 989 invalid in its entirety with effect in the territory of all UPC Agreement member states (Rule 25 RoP UPC Agreement); and 7. provisionally award the defendants reimbursement of the costs of the counterclaim (Rule 150.2 RoP UPC Agreement). By Reply dated 29 January 2024, the applicant made the following applications: I. Applications for annulment We apply, 1. Dismiss the defendant's counterclaim for a declaration of invalidity of European patent EP 3 611 989; in the alternative to maintain the European patent EP 3 611 989 in the version of one of the auxiliary requests AR 1 to AR 6 [Annex K25]; and 2. order the defendants to pay the costs of the counterclaim. II. Applications for the infringement action The applications announced in the statement of claim remain unchanged. In addition, we supplement the applications from the statement of claim in the alternative as follows: The applicant claims that the Court should: A. order the defendants to refrain from doing so, subject to a penalty payment to be imposed by the court for each case of non-compliance, (...) III. in particular 1. if the multiple is 40 MHz or 80 MHz or 160 MHz (indirect infringement of claim 1/2-AR1 and/or claim 1/2-AR2) 2. and/or when a first RA of the one or more first RA indicates a first assigned resource unit, RU, which is an RU having 242 subcarriers in the corresponding one odd-numbered 20 MHz subchannel, or is an RU having 484 subcarriers corresponding to the corresponding one odd- numbered 20 MHz subchannel.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202312 The first RA indicates a second assigned resource unit, RU, to the one or more second RA, which is an RU with 242 subcarriers in the corresponding one even 20 MHz subchannel, or an RU with 484 subcarriers overlapping the corresponding one even 20 MHz subchannel; (indirect infringement of claim 7-AR3) 3. and/or if the first RA or the second RA is an index of several indices, the index being created on the basis of per 20 MHz bandwidth, the index being a combination of allocated RUs with 26, 52 or 106 subcarriers – Indirect infringement of claim 3 - 4. and/or if the first assigned RU has 484 subcarriers or the second assigned RU has 484 subcarriers – Indirect infringement of claim 4 - 5. and/or when the transmission bandwidth is 40 MHz, comprising first 20 MHz and second 20 MHz, wherein the first HE-SIG-B content is carried in the first 20 MHz and the second HE-SIG-B content is carried in the second 20 MHz, wherein the first HE-SIG-B content comprises a first RA indicating one or more RUs in or overlapping the first 20 MHz, and wherein the second HE-SIG-B content comprises a second RA indicating one or more RUs in or overlapping the second 20 MHz – Indirect infringement of claim 5 - 6. and/or when the transmission bandwidth is 80 MHz, comprising first 20 MHz, second 20 MHz, third 20 MHz and fourth 20 MHz in a frequency order, wherein the first HE-SIG-B content is routed in the first and third 20 MHz and the second HE-SIG-B content is routed in the second and fourth 20 MHz, wherein the first HE-SIG-B content comprises a first RA and a third RA, wherein the first RA specifies one or more RUs in or overlapping the first 20 MHz and the third RA specifies one or more RUs in or overlapping the third 20 MHz, and wherein the second HE- SIG-B content comprises a second RA and a fourth RA, wherein the second RA specifies one or more RUs in or overlapping the second 20 MHz and the fourth RA specifies one or more RUs in or overlapping the fourth 20 MHz; – Indirect infringement of claim 6 - VI. in particular 1. if the multiple is 40 MHz or 80 MHz or 160 MHz (indirect infringement of claim 7/8-AR1 and/or claim 7/8- AR2) 2. and/or when a first RA indicates to the one or more first RA a first allocated resource unit, RU, which is an RU with 242 subcarriers in the corresponding one odd-numbered 20 MHz subchannel, or is an RU with 484 subcarriers overlapping the corresponding one odd-numbered 20 MHz subchannel, or when a second RA indicates to the one or more second RA a second allocated resource unit, RU, which is an RU with 242 subcarriers in the corresponding one odd- numbered 20 MHz subchannel, or is an RU with 484 subcarriers overlapping the corresponding one odd-numbered 20 MHz subchannel, or when a second RA indicates to the one or more second RA a second allocated resource unit, RU, which is an RU with 242 subcarriers in the corresponding one odd-numbered 20 MHz subchannel.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202313 an RU is with 242 subcarriers in the corresponding one even-numbered 20 MHz subchannel, or an RU is with 484 subcarriers overlapping the corresponding one even-numbered 20 MHz subchannel; (indirect infringement of claim 7/8-AR3) 3. and/or when the first RA or the second RA is an index of a plurality of indices, the index being based on per 20 MHz bandwidth, the index indicating a combination of allocated RUs having 26, 52 or 106 subcarriers or an allocated RU having 242, 484 or 996 subcarriers, the index indicating whether multi-user MIMO or MU- MIMO, respectively, is performed, and the index further indicating information for calculating a number of users on an allocated RU allowed for MU- MIMO; and MIMO is performed, and the index further indicates information for calculating a number of users on an allocated RU that is allowed for MU-MIMO; – direct infringement of claim 9 - 4. and/or if the first assigned RU has 484 subcarriers or the second assigned RU has 484 subcarriers; – Direct infringement of claim 10 - 5. and/or when the transmission bandwidth is 40 MHz, comprising first 20 MHz and second 20 MHz, wherein the first HE-SIG-B content is carried in the first 20 MHz and the second HE-SIG-B content is carried in the second 20 MHz, wherein the first HE-SIG-B content comprises a first RA indicating one or more RUs in or overlapping the first 20 MHz, and wherein the second HE-SIG-B content comprises a second RA indicating one or more RUs in or overlapping the second 20 MHz; – direct infringement of claim 11 - 6. and/or when the transmission bandwidth is 80 MHz, comprising first 20 MHz, second 20 MHz, third 20 MHz and fourth 20 MHz in a frequency order, wherein the first HE-SIG-B content is routed in the first and third 20 MHz and the second HE-SIG-B content is routed in the second and fourth 20 MHz, wherein the first HE-SIG-B content comprises a first RA and a third RA, wherein the first RA specifies one or more RUs in or overlapping the first 20 MHz and the third RA specifies one or more RUs in or overlapping the third 20 MHz, and wherein the second HE- SIG-B content comprises a second RA and a fourth RA, wherein the second RA specifies one or more RUs in or overlapping the second 20 MHz and the fourth RA specifies one or more RUs in or overlapping the fourth 20 MHz; – Direct infringement of claim 12 - In the duplicate of 2 April 2024, the defendants filed the following applications: At the suggestion of the Reporter from the hearing on 19 February 2024, we reformulate the main application for the counterclaim for a declaration of nullity as follows and request the following: 1. declare the European patent EP 3 611 989 invalid in its entirety (i.e. claims 1-4) with effect in the territory of the UPC Agreement member states Belgium, Denmark, Germany, France, Finland, Italy and Sweden (Rule 25 RoP UPC Agreement) For the rest, we maintain the applications from our statement of defence and counterclaim for Declaration of nullity dated 17 November 2023 (hereinafter: "KE").2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202314 By triplicate dated 1 May 2024, the applicant made the following applications: order the defendants to cease and desist, subject to a penalty payment to be imposed by the court for each case of non-compliance, I. to offer or supply equipment for transmitting a high-efficiency signalling field B or HE-SIG-B in a wireless local area network to customers in the UPC Agreement member states Belgium, Denmark, Germany, France, Finland, Italy and Sweden for use in the said countries, (...); II. to offer or supply equipment for receiving a high-efficiency signalling field B or HE-SIG-B in a wireless local area network to customers in the UPC Agreement member states Belgium, Denmark, Germany, France, Finland, Italy and Sweden for use in the said countries, (...); III. (...); IV. To offer, place on the market, use and/or import and/or possess for the said purposes a device for transmitting a high-efficiency signalling field B or HE-SIG-B in a wireless local area network in the UPC Agreement Member States of Belgium, Denmark, Germany, France, Finland, Italy and Sweden, comprising the following: (...); V. To offer, place on the market, use and/or import and/or possess for the said purposes a device for receiving a high-efficiency signalling field B or HE-SIG-B in a wireless local area network in the UPC Agreement Member States Belgium, Denmark, France, Germany, Finland, Italy and Sweden, comprising the following (...); G. further order the defendants to surrender the products referred to in paragraphs B.IV. to B.VI. in their direct or indirect possession or ownership in the UPC Agreement Member States of Belgium, Denmark, Germany, France, Finland, Italy and Sweden to a bailiff to be appointed by the plaintiff for the purpose of destruction at their - the respective defendants' - expense (...). With regard to the applications that remained unresolved during the interim hearing, reference is made to the Order pursuant to Rule 105.5 RoP of 30 August 2023 (App 31099/2024) and the reasons for the decision.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202315 Facts of the case The plaintiff c l a i m s against the defendants for direct and contributory infringement of European patent 3 611 989. The applicant, based in Shenzhen, China, is a leading global provider of information and communication technology, infrastructure and smart devices. The plaintiff is the sole registered proprietor of European patent 3 611 989 relating to a method and device for transmitting information of a wireless local area network. The patent in suit claims the priority of CN 201510555654 of 1 September 2015 and is based on a European patent application of 31 August 2016. The mention of the grant of the patent in suit was published by the European Patent Office on 26 May 2021. Claim 1 has the following wording in the language of grant: A method for transmitting a High-Efficiency Signal Field B, HE-SIG-B, in a wireless local area network, the method comprising: transmitting the HE-SIG-B in a transmission bandwidth of multiple 20MHz, wherein the HE-SIG-B comprises two HE-SIG-B contents, including a first HE-SIG-B content carried at each odd-numbered 20MHz sub-channel and a second HE-SIG-B content carried at each even-numbered 20MHz sub-channel, wherein the first HE-SIG-B content comprises a first common field and a first user-specific field, wherein the first common field comprises one or more first resource allocations, RA, wherein the second HE-SIG-B content comprises a second common field and a second user-specific field, wherein the second common field comprises one or more second resource allocations, RA, wherein each of the one or more first RA corresponds to one odd-numbered 20MHz sub-channel, and each of the one or more second RA corresponds to one even-numbered 20MHz sub-channel, wherein the first user-specific field comprises one or more first user scheduling information subfields, each of the one or more first user scheduling information subfields comprising information of one station, STA, the STA being scheduled on one of the one or more resource units indicated by the one or more first RA, and wherein the second user-specific field comprises one or more second user scheduling information subfields, each of the one or more second user scheduling information subfields comprising information of one STA, the STA being scheduled on one of the one or more resource units indicated by the one or more second RA, characterised in that one first RA of the one or more first RA indicates a first allocated resource unit, RU, which is in or overlaps the corresponding one odd-numbered 20MHz sub-channel, wherein the one first RA further indicates that, in the first2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202316 HE-SIG-B content, a number of a user scheduling information subfield corresponding to the first allocated RU is 0; or one second RA of the one or more second RA indicates a second allocated RU, which is in or overlaps the corresponding one even-numbered 20MHz sub-channel, wherein the one second RA further indicates that, in the second HE-SIG-B content, a number of a user scheduling information subfield corresponding to the second allocated RU is 0. Reference is made to the patent specification for the wording of the other claims. The plaintiff has declared the patent in suit to the standard-setting organisation IEEE as standard-essential for the WiFi 6 standard (cf. Annex FBD10 "WiFi6 & 6E for dummies") and has submitted an IEEE LOA in this respect. Defendant 1) is a US-based company that manufactures and distributes networking products for home and business use. Defendant 2) is a subsidiary of defendant 1) based in Munich, through which the German business, including distribution, is handled. Defendant 3) is also a subsidiary of defendant 1) based in Ireland, which operates the online shop for the German business. The plaintiff is of the opinion that the access points offered by the defendants, such as "NETGEAR Orbi Pro WiFi 6 - AX6000 Tri-Band Mesh Sys- tem", "NETGEAR Tri- Band Orbi Pro WiFi 6 Router" and "NETGEAR Nighthawk 12- Stream Dual-Band WiFi 6 Router", make direct use of the device claims and indirect use of the process claims in accordance with the wording. In addition to the documents relating to the WiFi 6 standard, it also refers to an analysis of test data relating to the accused embodiments, which the defendants themselves submitted in infringement proceedings before the Düsseldorf Regional Court. The defendants filed an objection in due time pursuant to Rule 19 RoP (App 570172/2023). In this respect, they argue that the plaintiff has declared the cancellation of the exception in a formally ineffective manner. A formally effective repetition2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202317 was denied on the basis of the nullity action brought by Netgear Switzerland GmbH against the German part of the patent-in-suit before the Federal Patent Court on 26 September 2023 (Ref. 4 Ni 33/23). The judge-rapporteur informed the parties in accordance with Rule 20.2 RoP that the opposition was to be dealt with in the main proceedings. This notification was confirmed by the panel on 8 April 2024 (App 595611/2023). Irrespective of this, the defendants invoke a contractual obligation to grant a licence entered into by the plaintiff vis-à-vis IEEE by means of a Letter of Assurance (LOA). This has a third-party effect in their favour. The now applicable bylaws contain a prohibition of legal action. The plaintiff is therefore barred from bringing the present action for, inter alia, injunctive relief, recall and destruction. The defendants also deny patent infringement and bring counterclaims for a declaration of invalidity of the patent in suit. They argue that the patent in suit is not legally valid and that the challenged embodiments do not make use of the patented teaching. Proof of infringement cannot be provided solely on the basis of the standard because this leaves room for manoeuvre in terms of implementation. Furthermore, the plaintiff's patent claims in relation to products with Qualcomm modems are exhausted. The plaintiff had concluded a corresponding contractual agreement with Qualcomm. Qualcomm modems are partially installed in the contested designs. Irrespective of this, the defendants defend themselves with the antitrust compulsory licence objection under ECJ - Huawei v. ZTE. Furthermore, they argue that the plaintiff has in any case not complied with the contractual obligations under the applicable IEEE Bylaws on the LOA. The plaintiff rejects the compulsory licence objection under antitrust law and the IEEE LOA objection. With regard to IEEE, it has only committed itself with the LOA to the extent that only the 2007 Bylaws, and no later versions, are applicable.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202318 are. These did not contain a prohibition of action. The bilateral licence offer and the alternative offer of licensing via the SISVEL patent pool were both FRAND. Moreover, the defendants had delayed the negotiations and shown themselves to be unwilling to take a licence and, in particular, had not provided any security or information after their unFRANDly counter-offer, which was submitted far too late, was rejected. The possibility of taking a pool licence via SISVEL was not even considered by the defendants. The defence of exhaustion does not apply due to the interpretation of the contractual provisions made with Qualcomm as advocated by the plaintiff. Irrespective of this, at most modems are affected and not complex products such as the WiFi routers at issue here. The defendants had also not submitted any device-related arguments regarding the first placing on the market in the relevant period within the European Union. In any event, the objection was limited to the period [redacted]. The extension of the action to include claims from patent EP 3 678 321 of 23 November 2023 was admitted by the Board on 11 December 2023 (App 587438/2023; App 595631/2023). The subject matter of the admitted appeal was severed on 24 January 2024 (ORD 593105/2023). The new case number is ACT 18917/2024 UPC CFI 168/2024. The defendants' appeals against this were unsuccessful (APL 4881/2024 UPC CoA 36/2024; APL 5395/2024 UPC CoA 44/2024). The date for the interim hearing was set for 16 January 2025 and for the main hearing for 25 March 2025. The negative declaratory action brought by the defendants against the plaintiff on 2 April 2024 in relation to the two patents-in-suit EP 3 611 989 and EP 3 678 321 (ACT 16294 UPC CFI 152/2024) is also scheduled for 16 January 2025 and 25 March 2025 respectively. The defendants base this action solely on the defence of exhaustion in relation to products with Qualcomm modems. For further details of the facts of the case, please refer to the documents submitted by the parties, including the annexes, as well as the reasons for the decision.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202319 Reference is made to the overview of the submitted documents, annexes and the hearing history (ORD 49424/2024 as well as Annex K87 and Annex to the defendant's submission of 27 September 2024 in APP 31099/2024). Reference is also made to the skeleton arguments submitted by the plaintiff (Annexes K87-92) and the defendant (document dated 27 September 2024 in APP 31099/2024 including annexes). Reasons for the decision A. Objection unfounded On 07/09/2023 (App 570172/2023), the defendants filed an objection pursuant to Rule 19 RoP. By notice dated 30/10/2023 (ORD 575956/2023), the judge-rapporteur informed the parties in accordance with Rule 20.2 RoP that the defendants' objection was to be dealt with in the main proceedings. I. The objection is based on the following facts: By letter dated 14 May 2023, the applicant declared to the Registry of the Unified Patent Court (Ref. UPC APP 144997/2023) that it would make use of the exception in respect of the patent in suit on the basis of Article 83(3) UPC Agreement and Rule 5.1(b), 5.3(a) and (c) RoP (opt-out). Both parties consider this declaration to be effective. By further declaration dated 24 May 2023 (Ref. UPC APP 302036/2023), the applicant again contacted the Registry of the Unified Patent Court in order to withdraw from its original claim to the exception. In this respect, the template provided was uploaded to the CMS, which was filled in at the relevant point as follows:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202320 On 1 June 2023, the patent proprietor brought an infringement action against the defendant before the Munich local division of the Unified Patent Court (ACT 459771/2023 UPC CFI 9/2023). The defendant is of the opinion that the Unified Patent Court lacks jurisdiction for this infringement action because the withdrawal from the exception was not effectively declared by the declaration reproduced above. The Unified Patent Court had provided a form for the utilisation of the exception as well as for the withdrawal, which must be used in accordance with Rule 4.1 sentence 2 RoP. It was clear from this that for a valid withdrawal it was necessary for the proprietor of the patent concerned to be indicated individually for each EPC state, as the patent proprietors had still done in the declaration of 14 May 2023: Since Netgear Switzerland GmbH filed a nullity action against the patent in suit before the German Federal Patent Court on 6 September 2023, the patent proprietor can no longer make up for an effective withdrawal.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202321 The plaintiff is of the opinion that the requirements of Rule 5.7 RoP have been met. Neither a representation in which the identical patent proprietor is repeated next to each country code, nor a representation in which the patent proprietor is mentioned once after the listing of all country codes, allows any other understanding than that the named company is the sole proprietor of the national parts of the patents in the named countries, as is the case for the plaintiff. The withdrawal was therefore effective and the Unified Patent Court had jurisdiction. The parties therefore assess the requirements for a declaration under Rule 5.7 RoP in conjunction with Rule 4.1 sentence 2 RoP differently. It must be decided whether it is mandatory to choose a representation in which the identical patent proprietor is repeated next to each country code. II. The admissible objection is unfounded. The withdrawal from the utilisation of the exemption has been formally effective. 1. Under Rule 5.7 RoP, the proprietor of a patent or application which is the subject of an application for an exception under this Rule may file an application for revocation in respect of the patent or application, but not in respect of different states for which the European patent has been granted or which are designated in the application. The application for withdrawal shall contain the information referred to in paragraph 3. The Registrar shall enter the application for withdrawal in the Register as soon as possible. The withdrawal shall be deemed to take effect from the date of entry in the Register. Paragraphs 1(a) and 5 shall apply mutatis mutandis. According to the referenced paragraph 3, the application for the exemption must include: (a) the name of each proprietor or applicant of the European patent or application and of the proprietor of each supplementary protection certificate based on the European patent concerned, as well as all relevant postal and, where applicable, electronic addresses,2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202322 (b) the name and the postal and electronic address (i) the representative appointed by the applicant or holder in accordance with Article 48 of the Convention or (ii) any other person submitting the application for exemption on behalf of the holder or declarant, as well as the authorisation to submit the application for exemption, (c) Details of the patent and/or application concerned, including the publication number of the patent application, (d) details of any supplementary protection certificate granted on the basis of the patent in question, including the number, and (e) for the purposes of paragraph 1(a), a declaration made by or on behalf of each proprietor or applicant in accordance with Rule 8.5 that he is entitled to be entered in the national patent register. Subject to paragraph 5 below, the Registrar shall record the application for the derogation in the Register as soon as possible. Subject to paragraph 6, a claim for exemption in accordance with the requirements of this Rule shall be deemed to take effect from the date of entry in the Register. Where requirements are missing or incorrectly recorded in the Register, a correction may be submitted to the Registry. The date of entry of the correction must be recorded in the register. Utilisation of the exemption is effective from the date of the correction. 2. The judge-rapporteur has already pointed out to the parties in the provisional Order of 22/09/2023(App 570172/2023) that the Registry, at the request of the2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202323 judge-rapporteur has informed the parties that the procedure concerning the use of the opt-outs and the withdrawal thereof is handled fully automatically via the CMS. Furthermore, the parties were informed that the following entry on opt-outs and revocation of opt-outs can be found in the FAQ on the homepage of the Unified Patent Court: In this respect, the judge-rapporteur noted that paragraph 4.24 speaks of "template", whereas the English version of Rule 4.1 sentence 2 RoP speaks of "official forms". 3. Withdrawal from the utilisation of the exemption is effective from the date of entry in the register. This results from the regulatory context pursuant to Rule 5.7 RoP in conjunction with Rule 5.5 RoP. Rule 5.5 RoP. The entry in the register was made on 24 May 2023 (UPC APP 302036/2023). A correction of the information was not requested by the registry, so that this date is the end of the matter. 4. Irrespective of this, all formal requirements were complied with. The defendants rightly do not deny compliance with the formal requirements of Rule 5 RoP. However, the formal requirements under Rule 4.1 RoP were also complied with. a. According to Rule 4.1 RoP, documents and other documents must be signed and submitted to the registry or the relevant branch office in electronic form. The parties are required to use the official forms available online.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202324 use. Receipt of the documents is confirmed by the automatic issue of an electronic receipt stating the date and time of receipt. b. In the present case, the only official form available online for submitting a withdrawal from the exception rule is the corresponding workflow in the case management system (CMS). The CMS entries were properly made by the plaintiff in the workflow provided for this purpose, which the defendants also do not dispute. Insofar as the defendants refer to the template reproduced above, this is not a form within the meaning of Rule 4.1 RoP, but a template to support the users of the system. Users are free to use a different template. 5. Irrespective of this, a correctly completed withdrawal form in the defendant's sense would not contain any different or more extensive information than the form submitted by the plaintiff. This is because there are no different patentees in different territories. The information would therefore merely be repeated identically several times. Under these circumstances, it would be contrary to the requirements of a proportionate, fair and equitable procedure (Rule 1.1 RoP in conjunction with point 2 of the preamble) to insist on the same data being cited several times and to assume that the withdrawal is formally invalid solely because of the absence of these mindless repetitions.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202325 B. No prohibition of legal action due to IEEE-LOA bylaws The defendants argue that the plaintiff is prevented from bringing the present action seeking, inter alia, injunctive relief on the basis of a letter of assurance issued to the standardisation organisation IEEE. I. This is based on the following facts: On 25 July 2019, the plaintiff submitted the following excerpt from the "Letter of licensing assurance for essential patent claims" (LOA) to the Institute of Electrical and Electronics Engineers (IEEE) (Annex FBD 13):2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202326 It is undisputed that the Bylaws in the version valid until 14 March 2015 (IEEE Bylaws 2007) did not contain a prohibition of legal action. The later Bylaws contain a prohibition on suit, for example the IEEE Bylaws 2022 referenced by the defendants (Exhibit FBD 15, p. 18): At the time, the plaintiff and other patent holders refused to submit an LOA with reference to the IEEE Bylaws 2015. This is stated on the Sisvel website, available at https://www.sisvel.com/licensing-programmes/Wi-Fi/wifi-6/, last accessed on 29 January 2024:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202327 "All participating patent owners have submitted a negative LoA with respect to the IEEE 2015 updated IPR Policy and/or are committed to licence on FRAND terms, in adherence with the IEEE IPR Policy in effect prior to March 15, 2015." The defendants are of the opinion that the IEEE Bylaws 2015 and the later Bylaws replace the IEEE Bylaws 2007 and that the plaintiff is therefore subject to the above- mentioned prohibition of action. In this regard, it refers to the following excerpted adaptation clause in clause 8 of the IEEE-SA STAN- DARDS BOARD BYLAWS (Annex FBD 14 Sheet 21): II. The objection is not valid. The plaintiff is not subject to a prohibition of action due to the LOA it has submitted. 1. According to the applicable contract law of the State of New York, the LOA is to be understood as a contract in favour of third parties. Third parties therefore have a contractual claim to fulfilment of or compliance with the obligations contained therein. 2. However, the plaintiff only submitted an LOA to IEEE with reference to the IEEE Bylaws 2007, which indisputably did not contain a prohibition of action. The adjustment clause reproduced above does not contain a provision to the effect that any adjustment of the Bylaws also affects LOAs already issued under the validity of older Bylaws and in this respect the contractual provisions contained therein are subject to dynamic adjustment. The defendants could, as2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202328 In response to this objection by the plaintiff, the court also failed to identify any other provision in the IEEE's rules and regulations that contains such a contractual mechanism. Nor have the defendants argued that such an adjustment mechanism exists under New York State contract law. Therefore, it is not necessary to obtain a legal opinion in this regard. C. Interpretation of the patent in suit I. Formalities The patent in suit EP 3 611 989 B1 (Annex K2) is a patent based on the plaintiff's earlier European application 16 840 831.8 (EP 3 337 077) of 31 August 2016, in short "The original description and drawings of the patent in suit, written in Chinese, are available as Annex UrAnm. A translation into English was subsequently filed on 9 October 2019 (UrAnmÜ). The original claims of the patent in suit in the original English language according to Annex UrAnspr were subsequently filed on 14 August 2019. The description was published on 19 February 2020. The mention of the grant was published on 26 May 2021. The priority of the Chinese patent application CN 2015/10555654 (Annex PrioAnm) dated 1 September 2015 is claimed. The patent in suit is in force with identical claims in the following Contracting Member States: Belgium, Denmark, Germany, Italy, Finland, France, Sweden. The patent in suit was declared to the standardisation organisation IEEE as standard-essential.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202329 The patent in suit deals with the improvement of data transmission (sending and receiving) within a WLAN in accordance with the Wi-Fi 6 standard (IEEE 802.11ax). In this respect, it concerns a method as well as transmission devices on the transmitter and receiver side for transmitting information of a wireless local area network for reducing the ratio of peak power to average power in order to reduce the signalling effort (see patent specification ("KPS") paragraphs [0004], [0008]). II. State of the art according to the patent in suit The prior art recognised in the patent application also includes the precursors to the WiFI6 standard (802.11ax). The WiFi6 standard is the successor to WiFi 5 (802.11ac) and is intended to provide, among other things, a higher and more stable transmission speed, higher data rates, increased capacities, a possibility of use in environments with many connected devices and improved energy efficiency. It can be seen from the patent in suit (see, for example, Figs. 2a, 3 and 4 and the associated description in para. [0011] et seq.) that data transmission in the Wi-Fi 6 standard basically takes place in transmission bandwidths consisting of multiples of 20 MHz. Specifically, the patent in suit designates the bandwidths 20 MHz, 40 MHz, 80 MHz and 160 MHz, which are correspondingly subdivided into sub-channels of 20 MHz each. Figures 2a, 3 and 4 are superimposed below, showing the respective sizes of resource units within the respective bandwidths. According to the patent in suit, the largest possible resource unit in a 20 MHz sub-channel is 242 subcarriers or "tones" in the terminology of the Wi-Fi 6 standard, 484 tones at 40 MHz, 996 tones at 80 MHz:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023302024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202331 Allocation to a specific frame is signalled via the so-called RU (Res- source Unit) allocation index. Overview table 27-26 from the IEEE 802.11ax specification is shown below:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202332 Among other things, IEEE 802.11ax provides for multiple user multiple input multiple output (MU-MIMO) technology for both the uplink and the downlink (see Appendix K 14, section 26.5.1 and section 26.5.2). Accordingly, the access point (AP) can both simultaneously transmit data to several non-AP (users) and request data from them. MIMO transmissions utilise spatial multiplexing, which is made possible by different signal propagation times between multiple antenna transmitters and multiple antenna receivers. The same frequency resource can therefore be used several times, i.e. by several parallel data streams (so-called space time streams) at the same time. MIMO was already partially supported by the predecessor standards (in the downlink). MU- MIMO extends the principle to multiple access by multiple users, with the different users accessing different space time streams of the same channel. In theory, MU- MIMO offers greater transmission flexibility. However, real added value can only be generated if the AP (access point) and STA (station = user) are synchronised. In general, MU-MIMO is only2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202333 possible if the AP has more antennas than the STAs (see Annex FBD 9, p. 60). However, it also depends on whether the respective STA has sufficient antennas (see Appendix FBD 8, p. 65). IEEE 802.11ax also provides Orthogonal Frequency Division Multiplexing Access (OFDMA) functionality for subscribers connected to an AP. Within the Wi-Fi6 standard, OFDMA enables users to make better use of the frequency by sharing channel resources by dividing the channel resources into several RUs (Resource Units). Such RUs are allocated to different users and contain their respective data. In this way, the data of several users can be sent simultaneously via one channel. IEEE 802.11ax is the first Wi-Fi standard to use OFDMA. More precisely, OFDMA is derived from OFDM (Orthogonal Frequency-Division Multi- plexing), a technology known at the time of prioritisation that enables dynamic distribution of the available carrier frequencies to several subscribers. OFMD was already used as part of the WiMax and LTE wireless standards. An innovation of the IEEE 802.11ax standard compared to its predecessor IEEE 802.11ac concerns the allocation of time-frequency resources to the subscribers of an access point (AP). In the predecessor standard IEEE 802.11ac, OFDM is used in such a way that all carrier frequencies within a time interval are only allocated to a single subscriber. This is illustrated in the following figure:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202334 In contrast, thanks to Orthogonal Frequency Division Multiple Access (OFDMA), the IEEE 802.11ax standard allows the available carrier frequencies to be divided among several subscribers within a time interval. This is illustrated in Figure 2 below: As shown in the figure above, during the first time interval one half of the available carrier frequencies is allocated to the first subscriber, the other half to the second subscriber.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202335 The other half is assigned to the second subscriber. In the second time interval, the available carrier frequencies are divided evenly between the third, fourth, fifth and sixth subscribers. Finally, in the third time interval, all carrier frequencies are allocated exclusively to the fifth subscriber. In practice, the performance of DL OFDMA depends heavily on the ability of the AP to schedule DL OFDMA transmissions correctly. The number of clients, the packet size and the buffer size play a significant role in planning. Accordingly, the benefit of DL OFDMA is limited. In terms of time, the radio resource is divided at the physical level by so-called (Physical Protocol Data Units) PPDUs, which occupy the medium for a certain transmission period. PPDUs are coded and decoded according to a scheme specified in the standard. In IEEE 802.11ax, there are four additional HE (High Efficiency) PPDU formats compared to the previous version of the IEEE 802.11 standard: HE SU PPDU, HE MU PPDU, HE ER SU PPDU and HE TB PPDU, which are used in Section 27.3.4 of the standard (Annex K 14). As the prior art cited in the description of the patent in suit shows, certain fields were specifically designed as part of the preamble of the HE-PPDU, namely the HE-SIG-A field (HE Signal A field) and the HE-SIG-B field (HE Signal B field), which were defined quite early in the development of the Wi-Fi 6 standardisation process. While the HE-SIG A field occurs in all HE-PPDU formats, the HE-SIG B field only occurs in the HE-MU-PPDU format (Appendix K 14, p. 511, Section 27.3.4): At the centre of the invention is the HE-SIG-B field just mentioned, which signals information about the allocation of available resources to the respective receivers ("STA").2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202336 Therefore, the patent in suit focuses on embodiments of Wi-Fi 6 that implement the HE-MU-PPDA format (see Appendix K 14, Figs 27-8, 27-10, 27-11): The HE-SIG-B field in an HE MU PPDU basically consists of a so-called Com- mon field and a User Specific field: The common field contains the allocation of resources, such as the allocation of Rs (see Appendix K14, p. 560).2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202337 In the prior art, it is transmitted divided into a first and a second HE-SIG-B content (referred to as "HE-SIG-B content channel" in the Wi-Fi 6 standard, whereby the first HE-SIG-B content refers to the respective odd-numbered 20 MHz sub-channels and the second HE-SIG-B content refers to the respective even-numbered 20 MHz sub- channels. This is visualised using the following edited version of Figure 15, which shows an exemplary transmission situation in a bandwidth of 80 MHz, whereby four HE-SIG-B contents are shown one above the other and two first HE-SIG-B contents are each enclosed by a black interrupted line ("first HE-SIG-B content") and two second HE-SIG-B contents are each enclosed by a red interrupted line: The figure above illustrates that the first HE-SIG-B content (black) is transmitted in the odd-numbered 20 MHz subchannels #1 and #3, while the second HE-SIG-B content (red) is transmitted in the even-numbered 20 MHz subchannels #2 and #4. Since this is an 80 MHz transmission (i.e. there are a total of four 20 MHz subchannels), the second HE-SIG-B content (red) is transmitted in the even- numbered 20 MHz subchannels #2 and #4.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202338 channels), the first HE-SIG-B content is repeated (or duplicated) in sub-channel#3, the second HE-SIG-B content in sub-channel #4. It is already important at this point that, due to the specifications of the standard on which the patent in suit is based, the length of the longer HE-SIGB content determines the length of both HE-SIG-B contents, because the signalling of the HE-SIG-B contents must end uniformly at the same OFDM symbol. The first and second HE-SIG-B content must therefore always be "the same length". In general, as explained above, an HE-SIG-B content has a "Common Field" and a "User Specific Field" (see for example Fig. 7). The respective common field has one or more first or one or more second resource allocations, RA, depending on whether the RAs are in the first or second HE-SIG-B content. The respective RAs refer to so- called user scheduling information subfields, which in turn are each assigned to a STA. The STAs are allocated to the resource unit (RU) assigned to the respective RA: In the prior art, however, this type of signalling could lead to inefficiencies in certain situations, so that an RA had to reference at least one user time planning subfield. This is illustrated by the example2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202339 of an 80 MHz transmission according to Fig. 15 of the patent in suit, which is shown below in an edited and supplemented version: According to the corresponding description in para. [0040] ff. of the patent in suit, Fig. 15 is based on an 80 MHz transmission. Transmission here is initially via a 484- tone RU, which accordingly (cf. the explanations above) occupies 40 MHz of the total available bandwidth of 80 MHz. In relation to the 20 MHz subchannel just explained, this RU therefore "overlaps" the first two subchannels (subchannel #1 and subchannel #2). A total of four receivers (STAs) are assigned to this single 484-tone RU (e.g. by using MU-MIMO transmission technology) (in the figure, the corresponding "STA" designations are highlighted in red boxes to clarify the information contained in the right-hand column of Fig. 15). The assignment is made accordingly via four user scheduling information sub-fields (1*light blue + 3*orange). The remaining 40 MHz of the available bandwidth of 80 MHz are allocated as follows in the example: The 20 MHz (242 tones) of subchannel #3 are (not completely) occupied by one 52-tone RU and five 26-tone RUs, each of which is assigned an STA. The RUs (1 x 52-tone RU and 5 x 26-tone RU) in subchannel2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202340 Six STAs (green) are therefore assigned to subchannel #3. Subchannel #4 is finally fully occupied by a 242-tone RU, to which 2 STAs (purple) are assigned in a MU- MIMO transmission ("two user"). The above processing of Fig. 15 shows the two RAs in the common field of each HE- SIG-B content, as well as - indicated by corresponding colours - the user scheduling information subfields referenced by the respective RA (including the STA scheduling information marked in colour in each case). According to the method known in the prior art, on which the example according to Figure 15 is based, it was necessary for each RA to reference at least one user scheduling information subfield. Since the 484 tone RU fills the two upper 20 MHz subchannels, in subchannel #1 the RA-1 (blue) therefore inevitably references a user scheduling information subfield (blue) for one of the four STAs, the remaining three user scheduling information subfields for the remaining three (orange) (of the total of four) STAs are signalled in subchannel#2. The RA-2 (orange) in the second HE-SIG-B content refers to these three user scheduling information subfields. The first HE-SIG-B content also contains a further RA (RA-3, green) as explained, which relates to subchannel#3. The six RUs transmitted in this subchannel are assigned to six receivers as shown (the corresponding STAs are highlighted in green in the figure above). Accordingly, the first HE-SIG-B content contains six user scheduling information subfields (green) for these six receivers. The first HE-SIG-B content thus comprises a total of seven user scheduling information sub-fields. In contrast, the second HE-SIG-B content only contains five user scheduling information sub-fields, namely the three sub-fields already mentioned for the total of four receivers allocated on the 484 tone RU (orange), plus the two user scheduling information sub-fields (purple), which relate to the two receivers of the 242 tone RU transmitted in sub-channel #4. However, since a complete HE-SIG-B must contain all user-specific fields of the respective HE-SIG-B content - which means that the HE-SIG-B content with the largest number of user scheduling sub-fields must exceed the length of the HE-2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202341 SIG-B as a whole, this type of signalling results in an unnecessary "overhead" (circled in red in the figure above) of 2*2 fields, which must be filled with placeholder bits during transmission and decoded on the receiver side. The overhead of the four fields results from the fact that the user-specific field in the first HE-SIG-B content comprises seven user scheduling information sub-fields, but only five in the second HE-SIG-B content. Since HE-SIG-B occurs before each transmission, the overhead adds up to a significant contribution. III. Specialist addressed The average person skilled in the art (hereinafter referred to as "skilled person") has the skills of an engineer in communications engineering and several years of professional experience in the development and standardisation of wireless digital communication systems. This skilled person is familiar with the current version of the IEEE 802.11 standard under development on the priority date of the patent in suit and the associated proposals for improvement. IV. Task Against the technical background described above, the purpose of the patent in suit is to provide, within the framework of the IEEE 802.11 standard currently under development, a method and a device for transmitting information via a wireless local area network in which the signalling overhead described is avoided or reduced (cf. KPS, para. [0024]). V. Solution The patent in suit solves this problem by using a "special RA" as a "flag" within the standard and thus allowing signalling that makes it possible to dispense with a user scheduling information sub-field assigned to this RA. What can be achieved by this is shown in Figure 14 of the claim patent, which is also shown below in an edited version:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202342 In contrast to the example according to Fig. 15, the special RA-1 (light blue) here signals that no user scheduling information sub-field is contributed to the user- specific field of the first HE-SIG-B content. Accordingly, the user-specific field of the first HE-SIG-B content "only" contains six user scheduling information sub-fields, namely for the six recipients of the six RUs transmitted in sub-channel#3 (green). The user-specific field of the second HE-SIG-B content contains an additional user scheduling information subfield compared to the example shown in Figure 15 and therefore also six subfields in total. This is due to the fact that - signalled by RA-2 - user scheduling information subfields are available for all four receivers (orange) of the 484 tone RUs transmitted in the first two subchannels (#1 and #2). The number of user scheduling information subfields in the two HE-SIG- B contents can be "equalised", so to speak, by using the special RA-1. The overhead shown in the example in Fig. 15 can thus be clearly reduced (by one column). The highlight of the invention (expressed in features 1.6 and 1.7) is therefore the possibility of signalling using the hitherto unknown2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202343 "special RA" with which no user scheduling information subfield is necessary in the associated user-specific field of the HE-SIG-B content. Expressed in the words of the patent-in-suit (with respect to Preferred Embodiment 2): [0037] (...) The special RA is used to indicate that there is no corresponding user scheduling information field in a subsequent user specific field. [0038] After obtaining the indication of the special resource allocation mode, a receive end accordingly obtains that for this 20 MHz subchannel, no user scheduling information fields exist in a user specific field corresponding to this 20 MHz subchannel. In this case, the receive end may ignore this resource allocation mode indication information. This solution is provided by methods (independent claims 1 and 2, dependent claims 3-6) and devices (independent claims 7 and 8, dependent claims 9-12). The parties discuss the invention exclusively on the basis of independent method claim 1. From the court's point of view, this is correct.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202344 VI. Characteristic structure of claim 1 Claim 1 can be structured as follows (see Annexes K12 and FBD 11):2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202345 I. 4 I. â Pvt orein the frst user-specific firid corner'ices one or' more. first usr.r sr.mediating infoi'matioii subfields, each of tho. one or' mod'e fn'st use.r src ednling in/or memoir siibflelds comprising infoi'matioii sr.1iediile5 on ono. of the ogre or rioi'e i'esoin're units indicate.d b'' the ono. or more fii'st K4, arid 'vh orein tho. zerond user'-specific fieid comprises one or mod'e serond user' scheduling in%i mation ziibfo.ids, ench of the one or more seroiid use.r scheduling infoilnniion siibfields €OWfll7Siiig iirfoimaiion of one ST.4, the STD being scho.dutch out ore of tho one or riot'e i'esoi/rre units indicate.d bv the our. or mod'e serond M, 1.6 whereby the r.rste br.n usersye ifls rhr F'eld a one.r in rhmre r.rst User.eitylan iingsinfoi riatioii eit- L'"nto.rfelüo.r, where each jr.s comprises a.n or the mr.!n'ern.n ei'sten Beuumer: eitylan unr'sin/or riafion eit-ü'"nto.rfeldo.r Zu/oiuio tion eit i'ibei' a. StaNon, STD, includes, iv obei the 5!TA aif a r.r jr.r r.ineit or' So.r more'ern.n ressonrceiie unitii o.iiigr.ylont, which is r.irre or which in more eex fen W ongagebeii'den, and User.eitylan iingsinfoi riatioii eit- k'"nto.rfeldo i yoiniotioneii i'ibei' a. StaEon, STD, where the 5!TA aif a o.r So.r o.ineit or' So.r is apey/nnr several.ressonrceiieinheiteii, which are oiigo.ed by the r.irre or' those in a.hre.ren wide m oiigo, rushed first. M ü r .r ao.n or So.r in a.hre.ren o.rsteii RA a. o.rsteiii -iigetvir.seite Jeez om'ceiieinlieit, fi L', nnpifi f, which sirh within the eiitsyi'er.liendeii o.ineii ungs.rad:aliligen 20 .-iIf-In-- ü "iiterImnnis or' init this i!ibei'lnypt, whereby the one ei'ste RA fenier indicates that in dr.rt r.rsteii HE- :SIGB-iiihait ar.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023462024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202347 VII. Explanation of the individual features of claim 1 1. Principles of interpretation The patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent under Art. 69 EPC in conjunction with the Protocol on the Interpretation of Art. 69 EPC. The interpretation of a patent claim does not depend solely on its exact wording in the linguistic sense. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim. However, this does not mean that the patent claim merely serves as a guideline and that its subject matter also extends to that which, after examination of the description and the drawings, appears to be the patent proprietor's request for protection. The patent claim must be interpreted from the perspective of the person skilled in the art. When applying these principles, appropriate protection for the patent proprietor should be combined with sufficient legal certainty for third parties. These principles for the interpretation of a patent claim apply equally to the assessment of infringement and the legal validity of a European patent (CoA UPC CoA 335/2023). 2. Feature 1.0 By stating in the wording of the claim that the method relates to the transmission of a High-Efficiency Signal Field B (HE-SIG-B) in a wireless local area network, it is made clear to the person skilled in the art that the invention deals with an improvement in the context of the IEEE 802.11ax standard (802.11ax), which is currently under development. This is confirmed by the description [0014-0015]. This is because it explains how possible packet structures in 802.11ax look and2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202348 that one of the possible structures is the HE-SIG-B. Based on his knowledge of the details of the standard, the person skilled in the art thus knows that a known HE-SIG- B is structured as follows - according to Figures 5 to 7 of the patent in suit:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202349 The field therefore consists of a "Common Field" containing "resource allocation indication information" and a "User Specific Field" with the subfields "STA 1- ..." and "scheduling information". Due to the reference to the version of the standard known at the time of priority, it is also made clear to the person skilled in the art once again that the transmission therein is basically only intended in very specific bandwidths, namely 20, 40, 80 and 160 MHz [0011, 0012, 0013, 0016]. In the event that bandwidths with 40, 60, 80 or 160 MHz are available, signalling is required for each 20 MHz sub- bandwidth [0016]. Only in this case, namely if the bandwidth is greater than 20 MHz, is it also necessary for a preamble to be transmitted via the HE-SIG-B structure for each 20 MHz sub-bandwidth [0022]. Since the claim speaks of HE-SIG-B, it is clear to the skilled person that the invention can only relate to transmissions of the HE- SIG-B in bandwidths of 40, 80 and 160 MHz. These considerations are supported by feature 1.1. 3. Feature 1.1 The wording "Transmitted in a transmission bandwidth of multiples of 20 MHz" makes it clear that, according to the requirements, it is only a question of how HE- SIG-B is to be transmitted in cases where the bandwidth is a multiple of 20 MHz. According to feature 1.2, a first HE-SIG-B content is to be transmitted in every odd- numbered 20 MHz channel and a second HE-SIG-B content in every even-numbered 20 MHz channel. How many multiples the available bandwidth then has is, however, not claimed and is determined in individual cases by the external conditions. However, the person skilled in the art knows from the reference to "HE-SIG-B" that this formulation does not mean bandwidths with non-integer multiples of 20 (e.g. 1.5x20=30) and also not bandwidths of integer multiples of 20.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202350 odd-numbered multiples of 20 MHz, i.e. 1x20=20, 3x20=60 and 5x20=100 etc., but only those with integer even-numbered multiples of 20, i.e. 2x20=40, 4x20=80 and 8x20=160 are meant. This is because the "HE-SIG-B" field implicitly and explicitly refers to the principles and basic features of the IEEE 802.11ax standard, which were defined before the priority date of the patent in suit and which are only available in the IEEE 802.11ax standard. And only with these can the further features of the invention according to claim 1, which relate to pairs of even-numbered and odd- numbered subchannels, be realised, as will be shown shortly. 4. Feature 1.22024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202351 Features 1.2.1 and 1.2.2 are based on the structure of HE-SIG-B content known from the earlier version of the IEEE 802.11ax standard: Characteristically, the HE-SIG-B comprises two HE-SIG-B contents; this means that other components may also be included, but are left open by the claim. The two HE-SIG-B contents are referred to as "first HE-SIG-B content" and "second HE-SIG-B content". The chosen designations do not describe an ordering scheme in the sense of a sequence, but only serve the purpose of differentiation. The applicant could just as well have illustrated the differentiation using colours, e.g. "blue HE-SIG- B content" and "red HE-SIG-B content". The "first HE-SIG-B content" (e.g. blue) and the "second HE-SIG-B content" (e.g. red) each comprise a "common field" and a "user-specific field", which indicates that other components may also be included, but which are left open by the claim. These fields are in turn addressed as "first common field" (blue) and "first user- specific field" (blue) or as "second common field" (red) and "second user-specific field" (red) for allocation reasons alone. The respective first or second "common field" comprises one or more resource allocations, which means that other components may also be included. Depending on whether the resource allocations are located in the first or second common field, they are referred to as "multiple first/second resource allocations".2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202352 sions". Again, this does not convey an ordering scheme in the sense of a sequence. Rather, the characteristics only contain the information that there is one or more blue or red resource allocations in the blue or red common field. "First" (blue) user-specific fields are assigned to odd and "second" (red) user-specific fields are assigned to even sub-channels with 20 MHz each. From this it follows, as already explained above, that the invention relates only to those transmission situations in which integer even multiples of 20, i.e. 2x20=40, 4x20=80 and 8x20=160 MHz with subdivisions into the corresponding number of subchannels at 20 MHz are available. This breakdown can be summarised in the following table: blue red first second odd straight 5. Feature 1.32024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202353 The multiple "first/second" (blue/red) resource allocations (RA) correspond to an odd or even 20 MHz subchannel, with the "first" (blue) corresponding to an odd subchannel and the "second" (red) corresponding to an even subchannel. 6. Features 1.4 and 1.5 The respective first (red) or second (blue) "user-specific field" comprises one or more "user scheduling information subfields", which means that2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202354 other components may also be included. Depending on whether the "user scheduling information subfields" in the first (blue) or second (red) "user-specific field", they are referred to as "several first/second "user scheduling information sub-fields". Again, this does not convey an ordering scheme in the sense of a sequence. Rather, the features only contain the information that there is one or more red or blue "user scheduling information subfields" in the blue or red "user- specific field". Each of the one or more "User scheduling information subfields" includes information about a station (STA), which means that other components may also be included. Station refers to a user of the WLAN. The STA is scheduled on one of the one or more resource units indicated by the first (blue) or second (red) RA.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202355 7. Features 1.6 and 1.7 Features 1.6 and 1.7 first require that either a first (blue) or second (red) RA indicates a first (blue) or second (red) resource unit (RU). The specified first (blue) or second (red) RU is located within the corresponding odd-numbered (blue) or even- numbered (red) 20 MHz subchannel or overlaps with it. The further subfeatures of features 1.6 and 1.7 now modify the structure of a conventional HE-SIG-B described in the generic term in such a way that either a first (blue) or second (red) RA further indicates that in the first (blue) or second (red) HE- SIG-B content a number of a user scheduling information subfield corresponding to the first (blue) or second (red) HE-SIG-B content is to be entered.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202356 RU is zero. The wording "a number of a user scheduling information subfield is 0" does not express that the RA must also specify the numerical value "0" or that the numerical value "0" is to be used in a particular user scheduling information subfield. Rather, it expresses that there is no user scheduling information subfield at all in this respect. That "a number of a user scheduling information subfield is 0" can be expressed by the RA in any way, including with any measure, for example a convenient numerical value, as long as and to the extent that it is an otherwise unused value or measure, as explained in the description in [0042-0044]: [0042] Further, the indication of the foregoing special resource allocation mode may use various pos- sible specific indication methods. [0043] For example, an RA indication uses the above-mentioned manner of performing an index indication according to a stored table. Such a table of resource allocation mode comprises one type of such a special resource allocation mode. An index corresponding to the above mode is transmitted to indicate that the current transmission is a special resource allocation mode. The index of the special mode may be an unused index. [0044] For another example, for an RA indication that does not use a storage table manner, specifically, a special combination of resource indication bits, or one of the bits, may be used to indicate the forego- ing special resource allocation mode. The non-existent user scheduling information sub-field corresponds to the first RU, which in turn is only possible if this first RU also covers the complete 20MHz sub- channel. ("one first RA of the one or more first RA indicates a first allocated resource unit, RU, which is in or overlaps the corre- sponding one odd-numbered 20MHz sub- channel, wherein the one first RA further indicates that, in the first HE-SIG-B content, a number of a user scheduling information subfield corresponding to the first allocated RU is 0"). For the person skilled in the art, there is therefore no doubt that there is no resource unit (RU) allocated by the "special RA" that would only fill part of a 20 MHz sub-channel. Corresponding2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202357 Accordingly, the RU allocated by the "special RA" according to the invention comprises the full 20 MHz. Accordingly, the description also only discloses examples of embodiments in which the "special RU" referred to extends over the complete 20 MHz resource. Since within the previous known version of the IEEE 802.11ax standard, there is no provision for a number of a user scheduling information subfield to be zero [0041], this measure of the invention can therefore be understood, according to the description of the patent-in-suit [0037], to mean either that the number of users scheduled for a particular time interval is zero, or that the current transmission is in an invalid resource allocation mode: [0041] In FIG. 15, because the RA indication does not include a case with zero users, the number n1 of users indicated by RA-1 and the number n2 of users indicated by RA-2 are at least greater than or equal to 1. [0037] In Preferred Embodiment 2, a method is proposed and comprises a type of special information for resource unit(s) allocation (that is, special Resource Allocation, RA). The special RA is used to indicate that there is no corresponding user scheduling information field in a subsequent user specific field. An indication of the special RA may be plausibly understood as that the number of users scheduled on a current resource unit is zero, or, the current transmission is in an invalid resource allocation mode. The recipient of this information is therefore, according to the description of the patent in suit in [0038], able to recognise that no user scheduling information subfield exists in this respect and that the recipient can ignore this resource allocation information: [0038] After obtaining the indication of the special resource allocation mode, a receive end accordingly obtains that for this 20 MHz subchannel, no user scheduling information fields exist in a user specific field corresponding to this 20 MHz subchannel. In this case, the receive end may ignore this resource allocation mode indication information. Due to this trick of the invention, it is possible to communicate the knowledge described in paragraph [0037] to the receiver without additional signalling effort. This is because signalling instruments that are already known in the previous version of2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202358 the standard are used as a "flag", so to speak. The skilled person is2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202359 This means, for example, that the overhead of the prior art described in Figure 15 can be avoided in favour of a more compact transmission of information as described in Fig. 14. However, these further measures for realising the advantages made possible by the "flag" are outside the scope of the claim. These advantages therefore do not require further discussion. D. Counterclaims for annulment The admissible revocation counterclaims are unfounded. The patent in suit proves to be legally valid against the background of the understanding of the claim explained above, which is why the nullity counterclaims had to be dismissed. I. Admissibility The nullity counterclaims are admissible, even insofar as they concern the German part of the patent-in-suit. The nullity action brought by Netgear Switzerland GmbH before the Federal Patent Court (Ref. 4 Ni 33/23) against the German part of the patent-in-suit does not give rise to any other lis pendens. Netgear Switzerland is not a party to the present proceedings. In this respect, a narrow standard must be applied to verify the identity of the parties (CD Paris UPC CFI 255/2023). As there is no information about the further progress of the proceedings at the Federal Patent Court, a stay of the present legal dispute is obviously out of the question. II. unauthorised extension and use of priority The patent in suit, which is a European divisional application, does not go beyond the content of the earlier application, i.e. the parent application. The patent in suit is also not inadmissibly extended under Article 138(1)(a) and Article 52(1) EPC in conjunction with Article 65(2) EPC and Article 100(c) EPC. The patent in suit rightly claims the priority of 1 September 2015. The teaching of the patent in suit is, insofar as the objection is not in any case to be rejected as belated, disclosed in detail.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202360 1. The parties have referred to the following documents in this respect: K2 Patent in suit as granted PrioNm Pri- ority application CN 2015/10555654 PrioNotification English-language translation of the pri- oAnm as provided by the then registration submitted to the EPO PrioAnmÜ-SP Newly produced English-language Translation of the Prio-Anm StammAnmCN Master application drafted in Chinese (published as disclosure document WO 2017/036402 A1). light) TrunkNote English translation of the StammAnmCN as provided by the then Applicant filed with the EPO UrAnm Written in Chinese language Partial registration UrAnmÜ English translation of the UrAnm as filed with the EPO by the then applicant 2. Translations In a document dated 3 September 2024 (App 47068/2024), the plaintiff has undisputed that the translations submitted by the defendants are correct, but is of the opinion that this does not change the content of the disclosure:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202361 "As already communicated in our email of 2 September 2024, the translation submitted by the defendants, i.e. the document submitted as "Prio- AnmÜ-SP", can be used as a basis in the present proceedings. For the reasons set out in particular in our document of 1 May 2024 (see there e.g. para. 81 and 100 et seq.), the disclosure content of this document is apparent to the skilled person regardless of which of the translations in the proceedings is used. Therefore, for reasons of procedural economy, the plaintiff herewith puts the correctness of the translation submitted by the defendants (PrioAnmÜ-SP) beyond dispute in the present proceedings. It is therefore no longer necessary for the translation to be assessed by a court-appointed expert." The PrioAnmÜ-SP is a newly prepared English translation of the priority application CN 2015/10555654 drafted in Chinese. p. 17, line 10 - p. 19, line 5 of the newly prepared translation PrioAnmÜ-SP is also the translation of p. 11, line 1 - p. 12, line 13 of the parent application CN. It is rightly undisputed between the parties that claim 1, as granted, relates to embodiment 2 and that all questions (inadmissible extension; claiming priority, etc.) can therefore be answered on the basis of the disclosure of the Preferred Embodiment SP, in particular for embodiment 2. The translation of the section on "Preferred Embodiment 2" can be found in the UrAnmÜ in paragraphs [0063] - [0070] on p. 14, line 8 - p. 16, line 7 and in the newly prepared translation PrioAnmÜ-SP in the passages on p. 17, line 10 - p. 19, line 5:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202362 17 Example 2: Aden, all or partial bits of the "#syin HE-SlGB" field may be used to indicate a total number of scheduled users included in the HE-SIGB. Certainly, the bi1 occupied by the "#sym HE-SIGB" field is not limited lo 4 bits, and for example, rriay be 3 bits. The foregoing method may be applicable to ''arious cases of dil) "erent bandwidths. Example 3: Also, all or partial bits uf the "Fsym HE-SIGB" field may be used to indicate the greater onc, u f the number of scheduled users on the SIGB-1, and the number of scheduled users on the hICB-2. The forcgoing rncthud may be applicable to various cases of different bandwidths. Preferred Embodiment 2 In Prcfcrrcd Embodiment 2, a method is proposed and comprises a type of' • recial resource block allocation information (that is, special RA). The special RA is used to indicate that there is no corresponding user scheduling infonnation in a sub.sequent stalirin-hy-station field. An indication of the special RA mny be logically understood as that the numbcr of users un a current resource block is zero, or, currently it is in an invalid resource allocation mode. After rcading thc indication of this type of special receiv'ing end accordingly knows that for ihis 2 corresponding to it exists in a station-by-st ignores this resource allocation mode indicatio intom $gpfif°' c°°' mode. a FIG, 14 is used as an example for spec i ' cription, and RA-1 indicales that no user scheduling information corresponding to RA-1 exi sts in a subsequent station-by- station field, but the RA-I may indicate authentic or a fade resource allocation mride; for example, currently it is a resource block of 40 M or 2tl M, which comprises 0 user, or, the RA-1 may be understood as an invalid resource allocation mode, and there is no subsequent user scheduling information that corresponds to it, l'he receiving end may directly ignore this invalid resource allocation mode indication information. RA-2 then comprises an authentic resource allocation mode, that is, M(!-M IMt) 4mnsmission in which 4 users are included on a resource block with a size of 484. In this way, unly 6 pieces of user scheduling information on the third 20 M are included on the SIGB-1, and 6 pieces of user scheduling information on the second (and the first) and the fourth 20 M are included on the SIGb-1. Compared with FIG., l5, the HF.-SICiR in FIC. 14 reduces overheads of' a piece ot user scheduling information in length.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202363 18 l'he following describcs an cffect of the foregoing preferred embodiment by comparison with an exemple in FIG. 15. In the exanjple, siinilarly, the AP schedules 4 users to use M FJ- MlhJt3 of 40 M (rc8t3UTür blvck :si 4g4 , 6 users to use OFDMA oî20 M (renource blocks with 52 + 26 26 + 26 + 26 + 26 + 26), and MU-MIMO using 2tl M (resource block of 242) by 2 users. R8fCTfÎIlg to the RA indication method sliown in the Fl(i. 9, if this preferred embodiment is not used, it may be known thal RA-1 will indîcate that a resource block wnth a size of 484 (40 M) is in mc over the first 20 M. comprising ul users; IVA-2 will indicatc that a Resource block with 484 (40 M) is in use over the second 20 M, comprîsing n2 users; RA-1/2 indicates the same resource block with 484 (40 M), and the numher of users indicatcd in the RAs is n1+n2=4. Thèse 4 users use one resource hlock with 484, that is, too 20 M; therefore, scheduling information of thèse 4 users way be considered as belonging to cithcr one 20 M. RA-3 will indicatc that the third 2s Mr [ . is divided into 6 resource blocks, that is, resource blocks respeclively with sizes of 52+ 26+2ô+263 2fi +26, each rKsourcc bluck is used by l user, and there ere 6 users totalI5. HA-4 will indicatc that ti rcsource block with a size of 242 (20 M) is in use oveT the fourlh 20 II, comprisins 2 tlscrs. In £"I€i. 15, becausc a case with zero user is not included i ggîà indication, the numbcr n1 of Users indicated by RA-1 and lhe niiniber le by RA-2 aue at least greater than or cqual tu 1. Thls cause information, corresponding to RA-1 OU RA .station field. Howevcr, wc can see thnt there li mc SIGB-1 alrcady necessarily comprises 6 piece s°' coming ° iii a station-by- oithe third 20 Cf, that is, user scheduling information on the third 20 M. But an accumtilntive number of users over the first, the second, and the fourth 20 M is also 6, so, by using our preferred embodiment, as shown in FHi. 14, it is possible that the SIGB-I only comprise 6 users over the third 20 M, and thc SIGB-2 comprises schcduling information for the remaining 6 users. In this way, the overall HE-SIGB symbols can be smallest. Further, the indication of the foregoing special resource allocation mode may use various possible specific indication methods. ror crumple. an RA indication uses the above-mentioned manner of performing ari index indication according to a stored iable, one type of such a special resource allocation mode is comprised in the fies0uTce allocation mode table, and transmitting an2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202364 index corresponding to thc above mude indicates that currently it is a special resource allocation mode. Thc special index number may be an unused index number. F'or another example, tor an RA indication that does not use the manner of storing table, spccifically, a special combination of resource indication bits, or one of'the bits may' be used to indicate the foregoing special resource allocation mode. Preferred Embodiment 1 In this preferred embodiment, the HE-SIGA comprises: information for indicating a number of pieces of RA included in the common field of the HE-SIGB, Referring to l'IG, I éi, it is a simple schematic diagram of a pre fcrrcd structure of the HE- SI(iA. Afier receiving the ltA number indication information in the HE-SIGA, a receiving end may obtain lengths of the cummon fields of the SIGB-1 and SIGB-2 according to the RA numbeT indication information, and further, correctly decode the common fields of the SIGB-I and SIGB-2. With the information about the numbcr of pieces of RA, nn i " cation of a current transmission modc may not be included. In other words number uf pieces of RA may be used to indicate t words, when a numbcr of pieces of RA inclti thut (he current transmissioii mode is a nor about the mod In pthcr " *. ndicating n mode, that is, fñ!l bandwidth MU-MIMO ur single-user transiiii enthe number of pieces of RA is grruler lhan zero, for example. one or t -o, that is, indicating that the currerlt t ansmissinn modc is an OFDMA trnnsmission mode. Referring to FIG. 17, it is a simple schematic diagram of a structure rif the HE- SIGA/B indicated in Preferred Embodiment 3. Referring to FIG. 18, it is a simple schematic diagram of anotheT Stricture of the HE-SIGA/B indicated in Preferred Embodiment o. Compared with a case in FIG. 19, iI is ubviomly sheen that signalling is reduced, ln addition, because a fun cii M is divided into 2 resource blocks with a size of 484 (40 M), mods indication information in the HE-SIGA i z OFDMA, lhnt is, the common fields of the SIGB- l and the SIGB-2 need to include RA- I /3 rind W-2. 4 according to a normal stricture I'he solution in FIG. 18 inrlicfltes that the number of pieces of RA included on the SIGB is i , and only RA- I is comprised2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202365 An accurate translation of the remaining sections can be found in the patent specification. The judge-rapporteur has ordered that no translations into the language of the proceedings (German) need to be submitted. 3. Disclosure content of the PrioAnmÜ-SP a. Features 1.1 ("transmission bandwidth of multiple 20 MHz") and 1.2 are described in of the UrAnmÜ is revealed. As shown, the wording of the claim does not require "transmission over bandwidths that are integer multiples of 20 MHz", as the defendants state. The claim does not specify the bandwidths for the transmission. Instead, the wording of the claim literally states: "transmitting the HE-SIG-B in a transmission bandwidth of multiples of 20 MHz" ("transmitting the HE-SIG-B in a transmission bandwidth of multiple 20 MHz"). The wording "transmitting the HE-SIG-B in a transmission bandwidth of multiple 20 MHz" makes it clear that, according to the claim, it is only a question of how HE-SIG- B is to be transmitted in cases where the bandwidth is a multiple of 20 MHz. In this case, a first HE-SIG-B content is to be transmitted in every odd-numbered 20 MHz channel and a second HE-SIG-B content in every even-numbered 20 MHz channel. However, the number of multiples of the available bandwidth is not claimed and is determined in each individual case by the external conditions. In this respect, it is not correct to assume that the wording of the claim requires transmission over certain bandwidths. Accordingly, there can be no inadmissible generalisation. Secondly, the wording of feature [1.1] in paragraph [0048] of the UrAnmÜ is originally disclosed, where it says "When a transmission bandwidth is greater than 20 MHz, a preamble part needs to be transmitted over each 20 MHz. .... The high efficiency signal field B part uses a partial duplication mode". So here too, the general point is that HE-SIG-B must be transmitted in every 20 MHz multiple ("over each") if the bandwidth is greater than 20 MHz. This means that the wording of the claim is covered by the original disclosure.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202366 Neither claim 1 as granted nor the original disclosure includes a bandwidth of 60 MHz. As shown, the skilled person understands claim 1 as granted to mean that only the bandwidths 40, 80 and 160 MHz are covered. This follows both from the patent in suit and from the PrioAnmÜ-SP due to the reference to the 802.11ax standard, which excluded such bandwidths of 40, 80 and 160 MHz from its earlier versions, which precede the patent in suit as prior art. Insofar as the defendants also refer in this context to the claims originally submitted in accordance with Annex "UrAnspr", this does not lead to a different result. On the one hand, the claims to be taken as a basis here, filed on 22 April 2019 were only filed subsequently on 14 August 2019. They therefore have no significance, neither with regard to the inadmissible broadening of the content of the parent application nor with regard to Art. 123(2) EPC. On the other hand, this (irrelevant) disclosure generally expresses exactly what is then concretised in the granted claim. Thus, the original claim 1: Accordingly, it concerns the transmission of the HE-SIG-B, whereby one HE-SIG-B ("transmitting a HE-SIG-B") is transmitted in each 20 MHz, each of which has two HE-SIG-B contents ("first HE-SIG-B content" and "second HE-SIG-B content"). It is then specified that each of the two HE-SIG-B contents is transmitted with its "first HE-SIG-B content" and its "second HE-SIG-B content" in a 20 MHz ("each content is carried in a 20 MHz"). That is, a first HE-SIG-B content is carried in a 20 MHz and a second HE-SIG-B content is carried in another 20 MHz. Apart from the fact that this disclosure in the subsequently filed claim plays no role in the assessment of the inadmissible extension, it would thus support the granted claim.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202367 Feature 1.1 in claim 1 and its equivalents in claims 2, 7 and 8 are thus undoubtedly disclosed by origin. b. Features 1.4 and 1.5 are disclosed in UrAnm and UrAnmÜ respectively. The terms "user scheduling information" and "user scheduling information field". General "u- ser scheduling information subfields" are disclosed in UrAnmÜ. In connection with Fig. 7, the UrAnmÜ discloses "a concrete structure for the HE- SIG-B, which consists of the HE-SIG-B comprising a so-called "common field" as well as a "user specific field"." Figure 7 is shown below: It is clear from Figure 7 and the corresponding information cited by the defendants that the Disclosure (UrAnmÜ, para. [0042]) containing a "common field" (blue) "Resource allocation indication information" and a "User specific field" (green) containing several information blocks with "scheduling information" for each individual terminal device (STA) are disclosed. It is therefore immediately and clearly apparent from Figure 7 alone that the "user specific field" (marked in green) is divided into several "pieces", each of which contains "scheduling information" for the terminal device (STA) in question. Apart from this, the cited paragraph [0045] also speaks the same language:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202368 [0045] In the user specific field, each piece of user scheduling information has two possible structures, as shown in FIG. 10a and FIG. 10b. A structure in FIG. 10a represents a scheduling information structure in a single-user mode. The single-user mode means that a current STA exclusively occupies one resource unit. FIG. 10b represents a scheduling information structure in a multi-user mode. The multi-user mode means that a current STA does not exclusively occupy one resource unit, and some other STAs share one resource unit with the current STA in a MU-MIMO manner. Accordingly, each piece of user scheduling information in the user-specific field has a specific structure. It is immediately and unambiguously apparent to the specialist that this structure of the user scheduling information manifests itself in the form of a subfield of the user specific field, i.e. in the form of a user scheduling information subfield. c. Features 1.6 and 1.7 are disclosed in UrAnmÜ. Features 1.6 and 1.7 ("a first allocated resource unit, RU, which is in [...] the corresponding one odd-numbered 20 MHZ sub-channel" and "a second allocated resource unit, RU, which is in [...] the corresponding one even-numbered 20 MHZ sub-channel" respectively) are disclosed in UrAnmÜ. Features 1.6 and 1.7 ("one first RA of the one or more first RA" and "one second RA of the one or more second RA" respectively) are disclosed in UrAnmÜ. The defendants argue first of all that the feature "a first allocated resource unit, RU, which is in [...] the corresponding one odd-numbered 20MHz sub-channel", like its counterpart concerning the "second allocated resource unit", is not disclosed in the UrAnmÜ, whereby they want to hang this at this point primarily on the "in". They believe that, because of the "in", the wording of the claim not only covers RUs that would fill the entire bandwidth of the 20 MHz channel, but also RUs that would only fill part of the 20 MHz resource. Accordingly, the defendants believe that "a disclosure for an RU comprising only part of the bandwidths is not found in the original disclosure." This reading contradicts the interpretation found above. The specific RA indicates that the number of user scheduling information fields corresponding to the current RU is zero (SP, paragraph [0037], "the number of users scheduled on a current2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202369 resource unit is zero"). According to the claim wording, each RA in each HE- SIG-B content covers one 20 MHz sub-channel ("a first HE-SIG-B content carried at each odd-numbered 20 MHz sub-channel" and "each of the one or more first RA corre- sponds to one odd-numbered 20MHz sub-channel"). This means that the first RU in the special RA comprises a complete 20 MHz sub-channel. If it is then stated that in the first HE-SIG-B content the number of the user scheduling information sub-field corresponding to the special RA is 0 (para [0037]: "The special RA is used to indicate that there is no corresponding user scheduling information field in a subsequent user specific field"), then this means that the special RA in the first HE- SIG-B content comprising the entire bandwidth of the 20 MHz sub-channel has no existing user scheduling information sub-field. However, the non-existent user scheduling information sub-field corresponds to the first RU, which in turn is only possible if this first RU also covers the entire 20 MHz sub-channel. ("one first RA of the one or more first RA indicates a first allocated resource unit, RU, which is in or overlaps the corre- sponding one odd-numbered 20 MHz sub-channel, wherein the one first RA further indicates that, in the first HE-SIG-B content, a number of a user scheduling information subfield corresponding to the first allocated RU is 0"). Consequently, the claimed difference in the disclosure does not exist. The defendants further argue that the claimed "first/second RA" is described as a "special RA" in the original disclosure; to rely on the characteristic "special" is therefore accompanied by a generalisation. This is incorrect. The fact that the claim wording ascribes this characteristic, namely that there is no user scheduling information subfield in the corresponding HE-SIG-B content, to the RA makes the claimed RA a "special RA". Whether this is also labelled as such in the claim wording makes no difference. This also does not constitute an inadmissible generalisation. Insofar as the defendants based their arguments on the now outdated translations of the Chinese-language documents, this endeavour should be rejected. This is because the original documents are decisive,2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202370 The parties have agreed that the PrioAnmÜ-SP submitted by the defendants can be used as the correct translation. d. Features 1.6 and 1.7 ("a number of a user scheduling information subfield corresponding to the first allocated RU is 0" and "a number of a user scheduling in- formation subfield corresponding to the second allocated RU is 0" respectively) are disclosed in UrAnmÜ. Ultimately, the defendants believe that the claim wording can be understood to mean that there must be a zero in the respective user scheduling information subfield. This was not disclosed in the original application documents. However, the claim wording clearly states that the number of a user scheduling information subfield is 0. This clearly expresses, as explained above, that there are no user scheduling information subfields at all. This is also apparent from the original UrAnmÜ application documents, where it is stated, for example, in paragraphs [0063] and [0065]: [0063] In Preferred Embodiment 2, a method is proposed and comprises a type of special information for resource unit(s) allocation (that is, special Resource Allocation, RA). The special RA is used to indicate that there is no corresponding user scheduling information field in a subsequent user specific field. [0065] [...] For example, a current resource unit is a resource unit of 40 MHz or a resource unit of 20 MHz, and the resource unit is assigned to "0" user. This RA-1 may be understood as an invalid resource allocation mode, and there is no subsequent user scheduling information field that corresponds to the RA-1. Paragraphs [0063] and [0065] disclose that a specific RA (i.e. the first/second RA") indicates that there is no corresponding user time2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202371 scheduling information subfield, i.e. a number of a user scheduling information subfield is 0. There is no unauthorised extension in this respect either. Moreover, it is clear to the person skilled in the art that the invention uses certain information in the common field as a "flag" and that it is therefore irrelevant whether the "incorrect" information in the previous context relates to "user scheduling information", i.e. a date, or a field for a date. This is because in both cases a value is set that would be perceived as "incorrect" or "irregular" in the previous context, but is used as a "flag" in the new co-text. The revelatory content therefore does not differ. e. Insofar as the defendants object that features 1.1 ("transmission bandwidth of multiple 20 MHz") and 1.2 are not disclosed in the parent application, reference is made to the above explanations in order to avoid repetition. f. Insofar as the defendants object that features 1.6 and 1.7 are not disclosed in StammAnm, reference is made to the above explanations in order to avoid repetition. 4. Due to the identity of the disclosure content, the above findings also apply to the question of effective claiming of priority. To avoid repetition, reference is made to the above statements.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202372 III. Patentability 1. In this respect, the defendants have referred to the following publications: D1 Submission "RU Allocation in SIG-B" by Daewon Lee (Newracom) IEEE 802.11-16/0039r1 published on 19.01.2016 D1b Submission "Supported Resource Allocations in SIG-B" by Sungho Moon (Newracom) IEEE 802.11-15/1304r1 published on 10.11.2015 D2 Submission "SIG-B Field for HEW PPDU" by Young Hoon Kwon (Newracom) IEEE 802.11-15/0805r2 published on 13.07.2015 D3 Submission "SIG Field Design Principle for 11ax" by Young Hoon Kwon (Newracom) IEEE 802.11-15/0344r2 published on 12.03.2015 D4 US 2014/0 307 612 A1 by Vermani et al. (Qualcomm) published on 16 October 2014 D5 EP 3 318 030 B1 (Taori et al.) Priority days 1.7.2015 and 7.7.2025 etc. State of the art according to Art. 54(3) EPC EPD1 Submission "Specification Framework for TGax" by Robert Stacey (Intel) IEEE 802.11-15/0132r72024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202373 published on 20.07.2015 EPD2 Submission "SIG-B Encoding Structure" by Ron Porat (Broadcom) IEEE 802.11-15/0873r0 published on 13.07.2015 EPD3 Submission "HE-SIG-B Structure" by Joonsuk Kim (Apple) IEEE 802.11-15/0821r2 published on 15.07.2015 2. Novelty a. The citations D1a and D1b (Newracom) published on 19 January 2016 and 10 November 2015 respectively do not oppose novelty because the patent in suit rightly claims priority from 1 September 2015. Reference can be made to the above statements in the context of the examination of the allegation of inadmissible extension. b. The defendants only introduced citation D5 into the proceedings with the duplicate. They failed to provide a (valid) justification as to why they had not already submitted it with the action for annulment. It is therefore, in accordance with Rule 9.2 RoP to be rejected as late. Irrespective of this, D5 claims a total of seven priorities. Only the first (1 July 2015) and the second priority (7 July 2015) predate the priority of the patent-in-suit. The remaining five priorities of D5 date after the priority of the patent in suit. Accordingly, only the content of D5 that is also found in the two oldest priority documents can be relevant for the assessment of novelty. None of the passages and figures cited by the defendant in its novelty attack can be found in these two oldest priority documents. Accordingly, D5 is not novelty-destroying even if taken into account.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202374 c. EPD3 Insofar as the defendants argued for the first time at the oral hearing that the EPD3 citation was prejudicial to novelty, this argument must be rejected as belated pursuant to Rule 9.2 RoP. The defendants have not provided an explanation as to why this argument was not already submitted with the action for annulment. Insofar as they refer in this respect to paragraphs 655-667 of the nullity counterclaim, it should be noted that although the EPD3 is mentioned there in paragraph 655, it is not mentioned as a caveat in itself that is prejudicial to novelty. Rather, it is mentioned as background information because it has a certain connection with the EPD2 citation: "(655) On slide 8, the EPD2 summarises the state of the art from the IEEE development documents 802.11-15/821r2 and 802.11-15/822r0 in a section referred to as "Background". These documents each deal with the structure of the preamble ("11ax Preamble") of the IEEE 802.11ax standard, which was under development at the time. The focus of the first document (821r2; corresponds to EPD3) is on the internal structure of the SIG-B field, while the second document (822r0) deals with the internal structure of the SIG-A field. Since the EPD2 is primarily concerned with the coding of the SIG-B field when using different transmission bandwidths, it only lists the structural properties of the SIG-A and SIG-B fields that are relevant for its own considerations - although the two documents cited contain much more detailed information regarding the content and necessity of the SIG-A and SIG-B fields. For example, the EPD2 summarises the content of slides 10 and 11 of the IEEE 802.11-15/821r2 document as follows: "The "SIG-B" should only contain bits for the intended receivers of the current PPDU (and not, for example, also bits for receivers that are dialled in to a base station but are not served with the current PPDU) and can be subdivided into a so-called "common field" and a "user- specific field"." No noteworthy novelty attack can be derived from the mention as background information. The attack on novelty based on the EPD3 must therefore be rejected as belated. Irrespective of this, neither the EPD2 nor the EPD3 reveal how exactly to signify, which the plaintiff correctly pointed out at the hearing.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202375 3. inventive step a. EPD2 with D2 The method according to claim 1 is also inventive over the combination of EPD2 and D2. This applies taking into account both the case law of the Unified Patent Court and the case law of the Boards of Appeal of the EPO. aa) According to the case law of the Unified Patent Court, what is known from the prior art must have given the person skilled in the art a reason or a suggestion to arrive at the proposed teaching (CoA UPC CoA 335/2023; CD UPC CFI 1/2023, UPC CFI 14/2023, UPC CFI 252/2023; LD Munich CFI 201/2024). However, the disclosure of EPD2 does not give the skilled person any reason to change the disclosed teaching. Thus, it was far-fetched for the skilled person to combine EPD2 with anything, in particular with D2. Even if the skilled person had considered a combination of EPD2 and D2, he would not have come up with the claimed subject-matter. Finally, there are no references to features 1.6 and 1.7 in D2. According to the case law of the Boards of Appeal of the EPO, the assessment of the The "problem-solution approach" is used for the assessment of inventive step (G 1/19). Even with this, however, the skilled person would not have arrived at the solution according to claim 1, since neither the EPD2 nor the D2 disclose features 1.6 and 1.7. The characterising features 1.6 and 1.7 are simply absent in the combination of EPD21 and D2; they cannot be brought about by any approach. bb) With regard to the synopsis of documents EPD2 and D2, the defendants argue that EPD2 discloses all features of claim 1 with the exception of features [1.5a] and [1.5b]. However, it was obvious to the skilled person,2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202376 to use the "Resource Allocation Information" disclosed in the D2, which is available there. is only required for certain transfers. This is incorrect. cc) EPD2 only discloses the "common" field and the "user-specific" field, but not the structure of the "common" field. Accordingly, EPD2 also does not disclose the one or more resource allocations ("RA") contained in the claimed common field according to features 1.2.1, 1.2.2, 1.3 to 1.7. The defendants also do not specify at any point where EPD2 could disclose the one or more RA in the common field. In fact, EPD2 does not even mention the word "resource" or "resource allocation (RA)". Accordingly, the features 1.2.1, 1.2.2, 1.3 to 1.7 are not known from EPD2. In detail: On slide 9, the EPD2 discloses a SIG-B coding scheme in which a SIG-B field is coded for a bandwidth of 20 MHz. The SIG-B field comprises the fields "com- mon" (marked green) and "user specific" (marked pink), whereby the field "user specific" is divided into the sub-fields "user block [0]", "user block [1]" to "user block [N-1]". The EPD2 then discloses on slide 10 that at bandwidths of 40 MHz, two 20 MHz sub- bands carry different information, while at 80 MHz and 160 MHz, these two 20 MHz sub-bands are duplicated in the manner shown below:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202377 However, EPD2 only discloses the field "common" without any further structuring. Accordingly, EPD2 does not disclose the one or more (first or second) resource allocations (RA) contained in a common field according to features [1.2.1], [1.2.2], [1.3], [1.4] and [1.5]. It is therefore not clear from EPD2: 1.2.1 wherein the first common field comprises one or more first resource allocations, RA, 1.2.2 wherein the second common field comprises one or more second resource allocations, RA, 1.3 wherein each of the one or more first RA corresponds to one odd-numbered 20MHz subchannel, and each of the one or more second RA corresponds to one even-numbered 20MHz subchannel, 1.4 each of the one or more first user scheduling information subfields comprising information of one station, STA, the STA being scheduled on one of the one or more resource units indicated by the one or more first RA, and 1.5 each of the one or more second user scheduling information subfields comprising information of one STA, the STA being scheduled on one of the one or more resource units indicated by the one or more second RA,2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202378 The defendants claim that these features are disclosed in EPD2. However, they have not explained how and by which part of EPD2 these features are disclosed. This assertion can therefore not be accepted. The EPD2 also does not disclose features [1.6] and [1.7]. 1.6 one first RA of the one or more first RA indicates a first allocated resource unit, RU, which is in or overlaps the corresponding one odd-numbered 20MHz sub-channel, wherein the one first RA further indicates that, in the first HE-SIG-B content, a number of a user scheduling information subfield corre- sponding to the first allocated RU is 0; or 1.7 one second RA of the one or more second RA indicates a second allocated RU, which is in or overlaps the corresponding one even-numbered 20MHz sub-channel, wherein the one second RA fur- ther indicates that, in the second HE-SIG-B content, a number of a user scheduling information subfield corresponding to the second allocated RU is 0. Placing the claimed one or more resource allocations (RA) including a specific RA in a common field, such that no user scheduling information subfield specified in the specific RA and corresponding to the RU must be present in a corresponding user- specific field, is not obvious from either EPD2 or D2. Thus, the subject-matters of main claims 1, 2, 7 and 8 are inventive over an - already uninitiated - synopsis of EPD2 and D2. As mentioned above, any kind of structuring of the "com- mon" field in SIG-B is not an issue in the disclosure of EPD2. Accordingly, the skilled person would not have found any indication in EPD2 to even think about the structure. A fortiori, she would not have found any reference to the claimed structure of the common field, which makes it possible to dispense with a user planning information subfield corresponding to the special RA in the use-specific field of the HE-SIG-B. The disclosure of EPD2 thus gives the person skilled in the art no reason to modify the disclosed teaching. Thus, it was far-fetched for the skilled person to combine EPD2 with anything, in particular with D2. Even if the skilled person had considered a combination of EPD2 and D2, she would not have come up with the claimed items. After all, in2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202379 D2 makes no reference to the above-mentioned distinguishing features. In this respect, the defendant relies on slides 3 and 4 of D2. Slide 3 discloses RA information ("resource allocation information") and user-specific information ("user- specific information") that can be included in the HE-SIG-B field: Slides 3 and 4 also reveal that the RA information ("Resource allocation information") is only required for certain transmissions. For other transmissions, such as a single- user (SU) full-band transmission, each resource is used entirely by a single station (STA) and the RA information ("resource allocation information") is not required:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202380 According to the defendants, the RA information ("resource allocation information") according to D2 is to be compared with the information in the common field of the claimed HE-SIG-B because it comprises information on the structuring of the resource allocation structure (map) for all stations (STAs). Thus, slides 3 and 4 of D2 indicated that for SU full band transmission, where each resource is fully occupied by a single STA, the common field of HE-SIG-B did not contain RA ("resource allocation in- formation") information. This can also be seen on slide 5 of D2, according to which no "RA" is contained in the HE-SIG-B field for SU full-band transmission:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202381 Contrary to the defendant's opinion, however, the skilled person would have structured the common field of the HE-SIG-B in accordance with the teaching of D2 in such a way that it did not contain any RA information ("resource allocation information") at all. According to the teaching of D2, there would therefore have been no RA information at all in the common field of the HE-SIG-B if each resource is occupied by a single STA (SU full-band transmission). This is in contrast to the claimed solution, where one or more RA including a specific RA in the common field of the HE-SIG-B are required. Accordingly, even in the case of an - unmotivated - combination of EPD2 and D2, the skilled person would not have arrived at the subject-matter of the main claims, according to which a specific RA (features [1.6] and [1.7]) is provided in the common field, so that a subfield corresponding to the specific RA in the user-specific field can be dispensed with. Apart from the slides cited by the defendants, D2 also shows a situation where user- specific information of the HE-SIG-B is not needed for the UL MU transmission (see e.g. slide 4). In this case, the RA information is also not required (see e.g. slide 7): In this case, D2 further proposes to omit the complete HE-SIG-B field (e.g. slide 7, marked in green). This would have led the skilled person away from the claimed invention:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202382 Thus, the claimed subject-matter is inventive over an - unapproved - synopsis of documents EPD2 and D2. b. EPD2 and D3 The same applies to the EPD2 and D3 documents. The skilled person already had no reason for a synopsis. Even if she had done so, she would not have arrived at the subject-matter according to the invention. Document D3 does not contain any references to the above-mentioned distinguishing features. D3 describes two mechanisms for reducing the effort in the HE-SIG-A field. The defendants refer to the so-called "variable length HE-SIG field", which contains RA information ("resource allocation information") in HE-SIG-B instead of in HE-SIG-A (see slides 9 and 11). First of all, with respect to this mechanism, D3 discloses in general that the HE-SIG-B field contains resource allocation information.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202383 allocation and user-specific information (see slide 11, text highlighted in yellow). D3 does not reveal any details about the subfields of HE-SIG-B. The structure of the sub-fields of HE-SIGB is still explicitly unclear according to D3 (see slide 11, text highlighted in red). Without disclosing the structure of the sub-fields in the RA field and the user-specific field, document D3 cannot in principle have suggested the claimed invention. Contrary to the defendant's opinion, D3 does not disclose the situation in which the resource unit is not occupied by any user. Instead, D3 merely discloses that the number of allocated STAs affects the amount of resource allocation (RA) information. If only one or two STAs are allocated, the amount of resource allocation (RA) information is reduced.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202384 Therefore, D3 teaches how to reduce the information for the RA field itself instead of reducing the subfield in the HE-SIG-B user-specific field. D3 does not provide information on how to structure the RAs of the common field so that no user planning subfield corresponding to a specific RA is needed in the user-specific field. Thus, D3 could not suggest the claimed subject-matter. Moreover, D3 even leads away from the claimed invention when it describes the reduction of the signalling overhead in the HE-SIG field by limiting the maximum number of assigned STAs (see slide 5):2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202385 Thus, the claimed subject-matter is also inventive over an - uninitiated - synopsis of documents EPD2 and D3. c. EPD2 and D4 The above applies accordingly to documents EPD2 and D4. The skilled person already had no reason for a synopsis. Even if it had done so, it would not have arrived at the subject-matter according to the invention. D4 also contains no references to the above-mentioned distinguishing features. In D4, only "HE-SIG1", "HE-SIG2" and "HE-SIG3" are indicated in a downlink package (e.g. Figure 5). This structure disclosed in D4 differs significantly from the structure according to EPD2, where "SIG A" and "SIG B" are provided instead of three "SIG" fields. None of the HE-SIG1", "HE-SIG2" and "HE-SIG3" according to D4 corresponds structurally to the "SIG B" according to EPD2, which includes a "common" field and a "user-specific" field. From this point of view alone, the specialist would not have combined EPD2 with D4. Even a synopsis of EPD2 and D4 would not have led the skilled person to the subject-matter according to the invention. Without disclosure of the structure of the HE- SIG-B field, D4 cannot in principle have suggested the claimed subject-matter. The defendants argue that the "tone allocation information for2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202386 OFDMA" in the HE-SIG1 field of D4 corresponds to the RA information in the comment field of the SIG B field in EPD2, while HE-SIG2 and HE-SIG3 after D4 correspond to the user-specific information field of the SIG B field in EPD2. The "tone allocation information for OFDMA" in the HE-SIG1 field (e.g. "12 bits user specific tone al- location" in Figure 5, marked in red) comprises 2 bits per user, indicating how many sub-channels are allocated to each user. It is possible that no sub- channel is assigned to one of the users (here user-3). The defendants have concluded from this that the corresponding user-specific information in the fields HE- SIG2 and HE-SIG3 could be omitted ("Action for annulment", page 61 to 62). This is incorrect. Firstly, D4 gives no indication that the "Tone Allocation Information for OFDMA" in the HE-SIG1 field is the same or has the same function as the comment field of the SIG-B field in EPD2. The same applies to HE-SIG2 and HE-SIG3 with respect to the user-specific information field of the SIG-B field in EPD2. Secondly, in the example mentioned by the applicant (paragraphs [0070]-[0074]), D4 discloses that the HE- SIG1 comprises 6 bits group ID and the tone allocation information for OFDMA, where 10 bits of the tone allocation information for OFDMA are used for user-1, user- 2, user-3 and user-4. The 10 bits include 2 bits for the allocation granularity B and 2 bits per user to indicate the number of sub-bands/sub-channels allocated to each user.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202387 are assigned. This is also shown in Figure 6 of D4, where 6 bits of group ID are marked in yellow and 10 bits of "tone allocation information for OFDMA" are marked in orange. In this example, no sub-channel is allocated to user-3. However, the "tone allocation information for OFDMA" in the HE-SIG1 field (marked in orange) still includes two bits for user-3 (see e.g. below in Figure 6, emphasis added): Contrary to the defendant's view (page 62, Invalidity Action), D4 does not disclose that in the example in which User-3 is not allocated a sub-channel, no "tone allocation information for OFDMA" should be transmitted in the HE-SIG1 field in relation to a user (User-3). D4 also does not indicate that no user-specific subfield of HE-SIG2 or HESIG3 should be transmitted for user-3 in this example. This means that even the - uninitiated - synopsis of the EPD2 and D4 documents did not lead the expert to the claimed objects. 4. EPD3 with EPD2 Insofar as the defendants argued for the first time at the oral proceedings that the EPD3 citation together with the EPD2 opposed the inventive step, this argument must be rejected as belated pursuant to Rule 9.2 RoP. The defendants have failed to explain why the argumentation was not already presented with the nullity counterclaim. Insofar as they refer in this respect to paragraphs 655-667 of the revocation counterclaim, it should be noted that although the EPD3 is mentioned there in paragraph 655, it is not referred to as a joint defence.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202388 with EPD2 of the inventive step. Rather, it is mentioned as background information because it has a certain connection with the EPD2 citation. No noteworthy attack on the inventive step can be derived from the mention as background information. The attack now made on the basis of EPD3 with EPD2 must therefore be rejected as belated. Irrespective of this, neither the EPD2 nor the EPD3 reveal how exactly to signify, which the plaintiff correctly pointed out at the hearing. 5. Feasibility The argument that the patent in suit, as granted, is not executable over the entire range (Art. 83 EPC) must be rejected as belated pursuant to Rule 9.2 RoP. The defendants only raised this argument in the rejoinder. They have not provided any reasons as to why they did not present it in the revocation counterclaim. Irrespective of this, the patent in suit is executable over its entire width according to the interpretation found above. The defendants' argumentation to the contrary is based on their incorrect deviating interpretation. 6. Further claims The further claims are patentable for the same reasons or by virtue of their dependence on the main claim. IV. Auxiliary applications The auxiliary requests are therefore no longer relevant. It can therefore also be left open whether the further auxiliary requests 4`and 4``, which were only submitted during the oral hearing, should be admitted in accordance with Rule 30.2 RoP or whether they should be recognised as late in accordance with Rule 30.2 RoP.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202389 Rule 9.2 RoP and whether and to what extent Rule 30.1.a RoP grants the Board discretion. E. Injury On the basis of the above interpretation, the challenged embodiments make use of the asserted claims of the patent in suit in a literal and analogous manner. I. Challenged embodiments The defendants offer a variety of products in Germany that are labelled as Wi-Fi 6 compatible. These include Wi-Fi devices (including WLAN routers, WLAN repeaters, Orbi/mesh systems, switches, DSL routers, etc.) for private users, business users and service providers. The product range on offer includes, in particular, access points that enable access to the WLAN, in particular - the "NETGEAR Orbi Pro WiFi 6 - AX6000 Tri-Band Mesh System", - the "NETGEAR Tri-Band Orbi Pro WiFi 6 Router", - the "NETGEAR Nighthawk 12-Stream Dual-Band WiFi 6 Router", - the "Netgear 4 StreamDual-Band WiFi 6 Router, 1.8Gbps", or - the "4 Stream dual-band WiFi 6 router (up to 1.8 Gbps) with Netgear Armor". These are exemplary products. The defendants offer a variety of devices that use the Wi-Fi 6 standard in the manner described below. The action is directed against all products offered and sold currently and in the future that use the Wi-Fi 6 standard in the manner described below.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202390 II. Patent utilisation The plaintiff has proven the patent utilisation by the attacked embodiments by referring to the documents of the current version of the IEEE 802.11ax-2021 standard (K14) as well as the submitted test data (K41), whereby the proof is based on claim 1. Claim 7 is the device claim parallel to method claim 1. The realisation of the features of claim 7 therefore follows from the explanations on the infringement of claim 1. Claim 7 is therefore also directly infringed. The same applies to the infringement of claims 2 and 8 assigned to the receiving party. 1. Standard documents a. In the asserted standard WiFi 6, a resource allocation method is provided in the HE-SIG-B field according to the technical teaching of claim 1. aa) Feature 1 The HE-SIG-B field is part of the HE (high-efficiency) MU (multi-user) PPDU format provided for in the standard, see Figure 27-9 of the standard [marker added]: This format of the PPDU is used for the transmission situation according to section 27.3.4, in which an AP transmits to one or more STAs. The HE- SIG-B field is included in this format:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202391 Feature [1] is thus realised. bb) Features 1.1 and 1.2 A HE MU PPDU is transmitted with 20 MHz, 40 MHz, 80 MHz or 160 MHz bandwidth, see e.g. Table 27-25 of the standard: The transmission bandwidths of 40 MHz, 80 MHz and 160 MHz specified in the standard are all multiples of 20 MHz. When transmitting in a bandwidth of 40 MHz or more, two HE-SIG-B contents are transmitted in one HE-MU-PPDU in accordance with Para. 27.3.11.8.2 and Para. 27.3.2.5 of the standard:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202392 Accordingly, when transmitting in bandwidths of 40, 80 or 160 MHz, the PPDU is transmitted as standard in such a way that it contains two HE-SIG-B contents (so- called HE-SIG-B content channels). The "first" HE-SIG-B content is transmitted on the odd-numbered 20 MHz sub-channels and the "second" HE-SIG-B content on the even-numbered 20 MHz sub-channels. This transmission of the HE-SIG-B content on the respective sub-channels is described in the standard divided according to the different bandwidths in section 27.3.11.8.5: - 40 MHz bandwidth When transmitting in a bandwidth of 40 MHz, two HE-SIG-B contents are transmitted as standard, with the first HE-SIG-B content ("HE-SIG-B content channel 1") being transmitted on the first 20 MHz sub-channel (i.e. the 20 MHz sub-channel with lower frequency) and the second HE-SIG-B content ("HE-SIG-B content channel 2") being transmitted on the second 20 MHz sub-channel (i.e. the 20 MHz sub-channel with higher frequency): This transmission situation and the respective HE-SIG-B contents are shown graphically in Figs. 27-29 of the standard [emphasis added]. Shown is a first HE-SIG- B content [highlighted in blue], which is transmitted on each odd-numbered 20-2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202393 MHz subchannel, and a second HE-SIG-B content [highlighted in green] that is transmitted on each even-numbered 20 MHz subchannel: - 80 MHz bandwidth When transmitting in a bandwidth of 80 MHz, two HE-SIGB contents are transmitted as standard, with the first HE-SIG-B content ("HE-SIG-B content channel 1") being transmitted on each of the first and third 20 MHz sub-channels at the lowest and third-lowest frequency and the second HE-SIG-B content ("HE-SIG-B content channel 1") being transmitted on each of the second and fourth 20 MHz sub- channels at the second-lowest and highest frequency: This transmission situation and the respective HE-SIG-B contents are shown graphically in Figs. 27-30 of the standard [emphasis added]. Shown are a first HE- SIG-B content [highlighted in blue], which is transmitted on each odd-numbered 20 MHz subchannel, and a second HE-SIG-B content [highlighted in green], which is transmitted on each even-numbered 20 MHz subchannel:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202394 - 160 MHz bandwidth When transmitting in a bandwidth of 160 MHz, two HE-SIGB contents are transmitted as standard, with the first HE-SIGB content ("HE-SIG-B content channel 1") on each of the first, third, fifth and seventh 20 MHz subchannels at the lowest, third-lowest and seventh-lowest frequency and the second HE-SIG-B content ("HE- SIG-B content channel 1") on each of the second, fourth, sixth and eighth 20 MHz subchannels at the lowest, fifth-lowest and seventh-lowest frequency, The second HE-SIG-B content ("HE-SIG-B content channel 1") is transmitted on each of the second, fourth, sixth and eighth 20 MHz subchannels at the second-lowest, fourth- lowest, sixth-lowest and highest frequencies: This transmission situation and the respective HE-SIG-B contents are shown graphically in Figs. 27-31 of the standard [emphasis added]. A first HE-SIG-B content [highlighted in blue], which is transmitted on each odd-numbered 20 MHz subchannel, and a second HE-SIG-B content [highlighted in green], which is transmitted on each even-numbered 20 MHz subchannel, are shown:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202395 Consequently, characteristics 1.1 and 1.2 are realised. cc) Characteristics 1.2.1 and 1.2.2 According to section 27.3.8.11.2 of the standard, each HE-SIG-B field contains a "Com- mon field", if this is available in the respective transmission, and a "User specific field": The subdivision of the HE-SIG-B fields into a "Common field" and a "User Specific field" is also shown in Fig. 27-26 of the standard [emphasis added]:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202396 The content of the "Common field" is described in section 27.3.11.8.3 of the standard. Accordingly, the format of this field is defined in the following Table 27-24 of the standard: Accordingly, the common field contains, among other things, one or more (N) RU allocation subfields ("RU Allocation subfield", RU="Resource Unit"), i.e. one or more resource indications (RA). Each RU allocation subfield comprises 8 bits that specify the allocated resource unit ("RU"). The number (N) of RU assignment subfields depends on the transmission bandwidth. These comments on the content of the HE- SIG-B field apply to all HE-SIG-B content regardless of whether this is "first" content according to feature [1.2.1] or "second" content according to feature [1.2.2]. The first HE-SIG-B content ("HE-SIG-B content channel 1"), which is transmitted on every odd-numbered 20 MHz subchannel, comprises a "common field", which is referred to as the first "common field". The first common field comprises one or more RU allocation sub-fields (i.e. one or more RAs), which may be referred to as one or more first RAs. Similarly, the second HE-SIG-B content transmitted on each even- numbered 20 MHz subchannel comprises a "Common field", which is referred to as the second "Common field". The second common field also comprises RU assignment sub-fields (i.e. one or more RAs), which may be referred to as one or more second RAs.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202397 Features [1.2.1] and [1.2.2] are thus realised. dd) Feature 1.3 The assignment of the RUs by the one or more "first" RAs corresponding to the odd- numbered 20 MHz subchannels and the RUs by the one or more "second" RAs corresponding to the even-numbered 20 MHz subchannels is shown in the standard for each transmission bandwidth individually in sections 27.3.11.8.3 and 27.3.11.8.5: - 40 MHz bandwidth Table 27-25 of the standard shows that at a bandwidth of 40 MHz, there is an RU allocation subfield in the first HE-SIG-B content ("HE-SIG-B content channel 1") and one in the second HE-SIG-B content ("HE-SIG-B content channel 2"). As already explained in features 1.2, 1.2.1 and 1.2.2, the RU allocation subfield in the first HE- SIG-B content refers to RUs in relation to each odd 20 MHz subchannel and the RU allocation subfield in the second HE-SIG-B content refers to RUs in relation to each even 20 MHz subchannel. This information is also contained in the first column of Figs. 27-29 shown above:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202398 - 80 MHz bandwidth Table 27-25 of the standard shows that at a bandwidth of 80 MHz, there are two RU allocation subfields in the first HE-SIG-B content ("HE-SIG-B content channel 1") and two in the second HE-SIG-B content ("HE-SIG-B content channel 2"). As already explained in features 1.2, 1.2.1 and 1.2.2, the RU allocation subfields in the first HE- SIG-B content refer to RUs in relation to each odd 20 MHz subchannel and the RU allocation subfields in the second HE-SIG-B content refer to RUs in relation to each odd 20 MHz subchannel. in the second HE-SIG-B content to RUs in relation to each even-numbered 20 MHz sub-channel. This information is also contained in the first column of Figs. 27- 30 shown above:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/202399 - 160 MHz bandwidth Table 27-25 of the standard shows that, at a bandwidth of 160 MHz, there are four RU allocation subfields in the first HE-SIG-B content ("HE-SIG-B content channel 1") and four RU allocation subfields in the second HE-SIG-B content ("HE-SIG-B content channel 2"). As above, the RU allocation subfields in the first HE-SIG-B content refer to RUs in relation to each odd 20 MHz subchannel and the RU allocation subfields in the second HE-SIG-B content refer to RUs in relation to each even 20 MHz subchannel.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023100 This information is also contained in the first column of Figs. 27- 31 shown above: Feature [1.3] is thus realised. ee) Features 1.4 and 1.5 According to sections 27.3.11.8.1, 27.3.11.8.2 and 27.3.11.8.4 of the standard, the "User Specific field" contains the information of the respective STA to which the RUs previously specified in the RA are specifically assigned.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023101 The content of the "User Specific field" is shown again graphically in Fig. 27-26, whereby a "User Specific field" comprises, among other things, one or more user block fields, which in turn usually comprises two user fields: Each "user field", which corresponds to the user scheduling information sub-field in the terminology of the claim, contains information about a station, STA, as shown in Table 27-27 and 27-28/29 of the standard. Table 27-27 first shows the general structure of the "user specific fields", which includes N "user fields":2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023102 in each concerned STAs are included: Tables 27-28 and 27-29 then show that the respective "User fields" contain information for the STAs in question:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023103 The "first" user specific field, which is carried on each odd-numbered sub-channel, comprises one or more user scheduling information sub-fields. Each of these user scheduling information sub-fields contains information for a STA to which one of the one or more RUs referred to by one or more of the "first" RAs is assigned. The same applies to the "second" user specific field, which is transmitted on each even- numbered sub-channel. Features [1.4] and [1.5] are thus realised. ff) Features 1.6 and 1.7 The special signalling of features [1.6] and [1.7] is described in section 27.3.11.8.3 of the standard: RA information ("RU Allocation subfield") in the Common field, as contained in Table 27-24 (as already shown), is signalled by predefined indices according to Table 27- 26 of the standard:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023104 Index 113 refers, for example, to a transmission situation in which no user scheduling information subfields are contained in the relevant HE-SIG-B content for an RU comprising 242 subcarriers (since the number of assigned STAs is "0"). Indexes 114 and 115 refer to transmission situations where, for an RU spanning at least two 20 MHz sub-channels, no user scheduling information sub-fields are included in the relevant HE-SIG-B content for the relevant 20 MHz sub-channel. According to the claimed method, these user scheduling information sub-fields are contained in the other HE-SIG-B content. The corresponding index for this (200 - 207 for a 484-tone RU or 208 - 215 for a 996-tone RU) can also be found in Table 27-26 of the standard: Annex Z of the standard contains examples of HE- SIG-B content for various transmission situations. The transmission situation of an 80 MHz HE-MU- PPDU is the subject of example 1, where the exact RA information is given in Table2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023105 Z-1 is shown. It can be seen here that this is the special transmission situation of feature [1.6], according to which an RU comprising 484 subcarriers is represented by two "user fields" in the first HE-SIGB content channel and no "user fields" in the second HE-SIGB content channel. "User field" in the second HE-SIGB content channel: This can be seen in detail in Table Z-2. In the following processing, the binary values shown in the respective common field were converted into the corresponding indices as contained in Table 27-26 above:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023106 As shown above, index 114 (01001110) in the second HE-SIG-B content indicates that there are no user scheduling information sub-fields in this content channel for the 484 tone RU referred to. Instead, the signalling for this RU (2 users in a 484 RU) is carried out in HE-SIG-B content channel 1 by the corresponding index "201" (10010011). Characteristics [1.6] and [1.7] are realised. gg) Subclaims The realisation of the other features of the sub-claims also asserted is also clear from the above explanations. With regard to the infringement of claim 3 or 9, it should be noted that the RA information in the standard is expressed by a corresponding index in Tables 27-24 and 27-26. The associated 8-bit sequence (which corresponds to the index in binary notation) also indicates in the standard whether MU-MIMO is used. It can also be used to determine how many STAs the respective RUs are assigned to, whereby the latter results in each case from the variable sequences of the 8-bit sequence shown below:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/20231072024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/20231082024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023109 b. To the extent that the defendants object that the assignment in the standard is different from that in the patent in suit, namely according to the position in the respective HE-SIG-B con tent channel and not according to the assignment to the2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023110 "first" or "second" HE-2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023111 SIGB content, this is incorrect on the basis of the Board's interpretation. At the oral hearing, the defendants conceded that patent use by the standard cannot be disputed on the basis of the plaintiff's interpretation, which the Board now follows. A comparison shows that the standard uses a nomenclature that differs from the patent in suit because it designates the first RA (= RU allocation subfield) in terms of position within the respective HE-SIG-B content (=HE-SIG-B content channel) as the "first RU allocation subfield" and the second RA in terms of position as the "second RU allocation subfield", whereas the patent in suit designates all RAs in the first HE- SIG-B content as "first RA" (in the context of interpretation: blue) and all RAs in the second HE-SIG-B content as "second RA" (in the context of interpretation: red): blue) and all RAs in the second HE-SIG-B content with "second RA" (in the context of the interpretation: red). However, as the colour highlighting (which deviates from the interpretation) in the counterpart (Annex K40) shows, this is merely a deviating terminology. In substance, however, "RA" according to the patent in suit and "resource allocation" according to the standard correspond exactly: For each HE- SIG-B content/HE-SIG-B content channel, there are two RAs/resource allocations, which refer to the first and third, or the second and fourth 20 MHz subchannel: Furthermore, the defendants have explicitly admitted (see para. 39 of the DU) that according to Table Z-2 of the standard (K14), which shows an exemplary implementation of the standard specifications, the first RU allocation index of the second HE- SIG-B content channel assumes the value "114" (binary: "01110010") according to their diction:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023112 Since this value implements the "special RA" within the meaning of features 1.6 and 1.7 of the patent in suit, this is a "second RA" according to the terminology of feature 1.7. The fact that this specific second RA of the several second RAs is de facto transmitted at the first position within the second HE-SIG-B content channel is irrelevant for the realisation of the patent-compliant teaching. This is because the feature is only concerned with the fact that "a [in the sense of "any"] second RA of the one or more second RAs" signals the patent-compliant "special case" (number of user scheduling information sub-fields = 0) for the RU referenced by it. Which of the several RAs within the second HE-SIG-B content (or in the terminology of the standard: "HE-SIG-B Content Channels") this is, is left open by the claim.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023113 Nothing else results from Table Z-7 of Example 4 of K14 (p. 762) mentioned by the plaintiff for the first time at the hearing: The first entry in the fourth column of the first line and the first entry in the second column of the second line is a binary code "01110010" and corresponds to the information "0" user, as can be seen from the entry in the first line of column 4 or the second line of column 2. Since the patent infringement has already been proven independently of this, it can be left open whether this - despite the fact that it was not factually disputed and the standard document had been available since the action was filed - is to be seen as a late submission, as the defendants have asserted. c. Insofar as the defendants argue that the IEEE 802.11ax standard does not realise features 1.4, 1.5 and 1.6 or 1.7 if transmission takes place below 80 MHz channel bandwidth because, according to the interpretation of the patent, at least two RA must be contained in each HE-SIG-B field, this does not lead out of the infringement because the challenged embodiments undisputedly also work with a bandwidth of 80 MHz.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023114 d. The defendant's subsequent submission is also irrelevant: The individual protocols provided for in the IEEE 802.11ax standard specify a common code word space for Wi-Fi, which does not have to be fully utilised by access point implementations because there is considerable scope for implementing the standard in terms of which code words can be generated by an access point implementation. A binding effect with regard to the use of the (entire) IEEE 802.11ax specifications should be rejected. The access point of a Wi-Fi network decides which code words are used and communication with the connected stations is ensured even if only part of the code word space is used. Compatibility with the IEEE 802.11ax standard is also not to be equated with full implementation of the same. The full implementation of the IEEE. 802.11ax standard does not result in particular from the designation as Wi-Fi 6 supporting or Wi-Fi 6 compatible (see KE, Section F.I.3). With this submission, the defendants do not admissibly dispute the plaintiff's substantiated submission that the challenged embodiments use the standard. This is because the plaintiff does not rely solely on the standard documents to prove infringement, but also on the test data. With this test data, the plaintiff has shown, as will be shown in section 2, that and how the standard specifications and the claims of the patent in suit have been utilised. 2. The plaintiff has substantiated the above result with the submitted and analysed test data (K 41). This test data originates from the defendant's devices and relates to the product "Nighthawk RAX200" with Broadcom modem and the product "Orbi WiFi router AX6000" (RBR850) with Qualcomm modem, in each case with transmissions at 80 MHz. The defendant 1) submitted this test data itself in proceedings before the Düsseldorf Regional Court (Ref. 4c O 8/22). The corresponding files contain data packets which are characterised by exemplary forms of infringement according to the2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023115 WiFi 6 standard were transmitted. In the interpretation advocated by the Board, these test data show the actual realisation of the patent-compliant teaching by the challenged embodiments. The plaintiff examined the files submitted by the defendant in the above-mentioned proceedings for the functionality relevant in the present case. The plaintiff found a large number of PPDUs transmitted in the 80 MHz band in which the resource allocation was carried out exactly as described in the explained standard sections. As an example, an evaluation of the test file "RAX200 5G CH153 80MHz MIMO- ON.pcap" concerning the violation form RAX200 is shown, which was searched for the RU allocation index "114" according to Table 27-26 of the standard: Highlighted in red above are the respective indices "114" which indicate, according to Table 27-26, that the associated RU is a 484 subcarrier RU and no user scheduling information subfields are included in the relevant HE-SIG-B content for the 20 MHz subchannel concerned, as taught in feature [1.6]/[1.7]:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023116 The specific information for PPDU frame no. 300 is also shown below as an example (highlighted in grey in the screenshot above):2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023117 The RA information of this PPDU (frame 300) corresponds to the indices "200" and "192" in the first HE-SIG-B content channel and "114" and "192" in the second HE- SIGB content channel 2. This results in the following distribution of RUs within the 80 MHz band from Table 27-26 of the standard: The RU comprises 484 subcarriers - indicated by indices "114" and "200" - followed by two RUs, each comprising 242 subcarriers - indicated by index "192". The RA information corresponding to index "114" also indicates that there are no user fields (i.e. no sub-fields for user scheduling information) corresponding to this 484-tone RU in the user-specific field of the second HE-SIG-B content channel 2. The following comparison of the exemplary test data and the visualisation of the patent-compliant teaching according to the colour highlighting shows once again in a different way that the signalling data read out corresponds exactly to the patent- compliant specifications:2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023118 K41: At the hearing, the plaintiff also stated, without contradiction, that it had found an entry at position #4522 of the test data according to Annex K24 (USB stick) in which the signalling of the Special RA was carried out by index 114 for the second channel in the second position, i.e. in accordance with the defendant's incorrect interpretation. Since the patent infringement has already been proven independently of this, it can be left open whether this - despite the fact that it is the defendants' own data - is to be seen as a late submission, as the defendants have argued. Against this background, it is also irrelevant whether the manufacturers of standardised access points, as claimed by the defendants, are really completely free to decide which (mandatory) functionalities of the corresponding standard they actually want to implement and which they do not. This is because the plaintiff has proven to the conviction of the Chamber through the test reports that the challenged embodiments implement the passages of the standard relevant here. It is therefore also irrelevant whether the defendants as manufacturers were allowed to deny implementation by the challenged embodiments with ignorance and whether they maintained this denial.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023119 III. Patent infringement and passive legitimisation 1. Defendant 1) operates a website that can also be accessed in Germany under the link "https://www.netgear.com/". On its website, defendant 1) offers Wi-Fi products in the category "HOME SOLUTIONS" for private users. New technologies are also advertised on the website, including Wi-Fi 6 and Wi-Fi 6E. Furthermore, defendant 1) offers "BUSINESS SOLUTIONS" for business users. In this respect, it also advertises Wi-Fi 6 access points among its new technologies. From there, a click on one of the product images at the bottom of the page, here shown as an example the "Netgear 4 Stream Dual-Band WiFi 6 Router, 1.8Gbps" tothe respective product page (https://www.netgear.com/home/wifi/routers/rax10/). The region and language can be selected in the top right-hand corner of the subpage - including Germany (German). Clicking on this takes the user directly to the website of defendant 2). 2. Defendant 2) operates the website under the link "https://www.netgear.com/de", as can be seen from the legal notice https://www.netgear.com/de/about/impres- sum/). The legal notice expressly states that the online shop is operated by defendant 3). Similar to the website of defendant 1), a distinction is also made here between "HOME SOLUTIONS" (private users) and "BUSINESS SOLUTIONS" (business users). On the subpage accessible via "HOME SOLUTIONS", a large number of Wi-Fi devices are listed under "NETWORKED HOME" (https://www.netgear.com/de/home/). The same applies to the subpage for "BUSINESS SOLUTIONS" (https://www.netgear.com/de/business/). For example, if the user clicks on the product image of the "4 Stream Dualband Wi-Fi 6 Router (up to 1.8 Gbps) with Netgear Armor" shown a little further down on the subpage, they are taken to the following product page (https://www.net- gear.com/de/home/wifi/routers/rax10/). There they have the option of adding this device to the shopping basket by clicking on the "ADD TO CART" button. The user is then shown the shopping basket and can then continue the process by clicking on the "ADD TO CART" button. The2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023120 user is redirected to the subdomain "https://store.netgear.de/". There, the product is already added to the shopping basket and in the next step, the user can viathe button to the checkout andto the delivery details (https://store.net-gear.com/de/cart?lang=de DE). On the shopping basket sub-page, there is the option of continuing as a guest or registered customer, and then the option of specifying delivery within Germany and clicking the button "PAYMENT METHOD SELECT" BUTTON the process continue the process (https://store.net-gear.de/warenkorb). Finally, after entering and checking their address and payment details (which have been removed in the following screenshot) and confirming the General Terms and Conditions, the user can order the selected product for a fee (https://store.netgear.de/kasse). The online shop can also be accessed directly via a corresponding link on the homepage of defendant 2) (https://www.netgear.com/de). This link takes you to the subdomain https://store.netgear.com/de/home/. As already shown, the defendant 3) is also responsible for the operation of the online shop according to the imprint. This means that defendant 3) is also responsible for the distribution of the infringing forms in Germany. However, this does not change the responsibility of the defendant 2), as the defendant 2) links directly to the online shop for purchase via its website https://www.netgear.com/de, on which it advertises the products - namely both on the product pages via the "BUY NOW" button and separately via the "Store" link in the header area of the website. In this way, the defendant (2) makes any content of the online shop its own, especially since from the average user's point of view the transition to a ("different") website is not even recognisable due to the unchanged overall impression of the websites ("NETGEAR" banner, same design, same products, etc.). 3. Accordingly, the defendants offer access points in Germany (hereinafter: "forms of infringement") and supply these to customers in Germany, among others, for use in Germany. The same applies to Belgium, Italy, Finland, France and Sweden. These infringement forms are characterised by the fact that they support the Wi-Fi 6 standard. The infringement forms implement the technical specifications of the Wi-Fi 6 standard and are therefore compatible with it. They indirectly infringe claim 1 of the patent in suit because they are suitable and intended to2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023121 to carry out the process described in this claim. They also directly infringe claim 7 because they realise all the device features specified therein. The respective dependent claims are also infringed. F. Exhaustion The defendants' defence of exhaustion is valid on the merits with regard to those attacked embodiments in which a Qualcomm modem was installed in the period [redacted]. With regard to those challenged embodiments in which Qualcomm modems were installed at other times or modems from other manufacturers (MediaTek and Broadcom), the defendants have not raised an exhaustion defence. I. Art. 29 UPCA According to Art. 29 UPCA, the rights conferred by the European patent do not extend to acts relating to a product protected by the patent after the product has been put on the market in the European Union by the patent proprietor or with his consent, unless the patent proprietor has legitimate reasons for opposing the further commercialisation of the product. 1. Area of application The effects of exhaustion initially extend to device claims. However, the effects of exhaustion already extend according to the wording ("acts relating to a product protected by the patent") to process claims relating to the handling of a product protected by the patent.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023122 This applies both to a product obtained directly by applying the patented process with consent and to a product which uses a process claim if it is also protected by a device claim and has been placed on the market with the consent of the patent proprietor. Exceptions exist in the event that the patent proprietor has expressly reserved the right to authorise the use of this process. However, the same result also arises from the consideration that the patent proprietor may only commercialise his exclusive right once. Subsequent uses of the patent should therefore in principle be covered, unless otherwise agreed. In any case, this is the result if the patentee has explicitly agreed to such acts of use. The effects of exhaustion also extend to products in which the product covered by the authorisation has been incorporated, at least if the incorporation is covered by the authorisation. This is because this incorporation is in turn an "act relating to a product protected by the patent". The question of the existence of consent, insofar as it has been declared within the framework of a contract, is governed by the contractual statute. However, the legal consequences of the patent proprietor's consent are determined by the law of the respective country of protection, in this case Art. 29 UPCA. In order to preserve the marketability of the products concerned, the legal consequences are generally not subject to party maximisation. 2. Territorial reach Placing on the market in the European Union is covered. This means that placing on the market in other parts of the world, even if it has taken place with the consent of the patent proprietor, does not have any exhaustion effect in the European Union. Placing on the market is a concrete actual process in relation to individualised products.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023123 3. Exception according to Art. 29 2nd HS UPCA Exhaustion only applies as long as and to the extent that the patent proprietor cannot cite legitimate reasons for opposing further distribution. The case law of the European Court of Justice shows, for example, that the assumption of exhaustion in favour of the unrestricted marketability of the products in the case of express or implied consent of the rights holder is the rule. For an exception to be assumed, the exclusion of implied consent already requires recognisability for the public, which can be ensured, for example, in the case of perfume bottle testers (see ECJ, judgment of 3 June 2010 - C-127/09 Coty Prestige Lancaster Group GmbH/Simex Trading AG), Coty Prestige/Simex Trading, GRUR 2010, 723) by affixing the words "unsaleable sample" to them. The trade mark proprietor's interest in organising the distribution of testers differently from the distribution of the product intended for the end customer would then constitute a noteworthy reason for opposing further distribution. In the context of patent law, on the other hand, it is recognised that restrictions agreed by a patent proprietor in a licence agreement regarding the right to use products that are placed on the market on the basis of the licence have no fundamental influence on the occurrence of exhaustion effects. Against this background, it also appears doubtful whether a legitimate interest of the patent proprietor in preventing further distribution can ever be assumed. In any case, however, it would be necessary for a legitimate interest excluding exhaustion to be recognisable for the downstream market. This is the only way to limit the impairment of the marketability of such products to what is absolutely necessary. 4. Burden of presentation and proof The patent user bears the burden of presentation and proof for the placing on the market in the European Union with the consent of the patent proprietor. The2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023124 Accordingly, with regard to individualised products, the patent user must present specific events of placing on the market in the European Union and, in the event of a dispute, provide evidence. Insofar as the consent of the patent proprietor only relates to products that have been placed on the market within a certain period of time, the submission must also relate to this. The patent holder, on the other hand, has the burden of presentation and proof for the existence of legitimate reasons to oppose the further distribution of the product. 5. Handling in the process Insofar as the objection relates to all contested embodiments, it must be dealt with immediately in the discovery proceedings. If successful, the action must be dismissed. Insofar as the objection does not concern all of the contested embodiments, it depends on the circumstances of the individual case whether and to what extent the objection is to be pursued immediately or only in the context of enforcement. Since the objection relates to individualised products, a final examination of exhaustion by concrete acts of placing these individualised products on the market can regularly only take place in the context of the compulsory enforcement proceedings, namely if the patent proprietor names such individualised products and the patent user submits concrete evidence of placing them on the market in the European Union. Nevertheless, such a subsequent decision in the enforcement proceedings can be prepared in the discovery proceedings. This is because questions that can be raised before the parenthesis can be clarified immediately. This is usually also in line with procedural economy in order to avoid subsequent proceedings. If the questions referred to the parenthesis are answered in favour of the patent user, the objection to creation would be successful on the merits. A conviction would then be2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023125 are subject to proof based on specific acts of placing individualised products on the market during the relevant period. In this respect, both parties obtain legal certainty with regard to the questions raised before the parenthesis. Since the patent user should have knowledge of the provenance of the products he has placed on the market, he can orientate his further behaviour in the context of enforcement, for example with regard to injunctive relief, the provision of information, recall or destruction, accordingly. II. Enforcement of the exhaustion defence in the present proceedings In the present proceedings, the defence of exhaustion applies in principle with regard to challenged embodiments with Qualcomm modems, insofar as they were placed on the market in the European Union in the period [redacted]. Contrary to the plaintiff's opinion, this follows from the plaintiff's contract with Qualcomm, the "QC 2020 PLA" (K68). This concerns products according to the product list (FBD56). In the present case, considerations of procedural economy require that this question be addressed in the discovery proceedings. This is because this question is also the subject of the action for a declaration of non-infringement. By clarifying the fundamentals in the present proceedings, the declaratory proceedings could become unnecessary or at least be prepared and thus streamlined. 1. "QC 2020 PLA" (K68) [redacted] The Huawei-Qualcomm agreement relates in particular to [redacted]. However, the parties have also agreed on a comprehensive sui generis agreement.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023126 [redacted] 2. Effects of the "QC 2020 PLA" (K68) [redacted] Consequently, the plaintiff has consented to any acts of Qualcomm relating to the patent in suit and relating to products of the Access Point class within the meaning of Article 29 UPCA. The rights to protection against negotiation of access points with Qualcomm modems placed on the market in the European Union in the period from [redacted] are therefore exhausted. This legal consequence can also be asserted by Qualcomm customers, irrespective of the last sentence of the clause quoted above. This sentence reads. [redacted] This is because, as already explained above, the legal consequences of the patent proprietor's consent arise from the law of the respective country of protection, in this case Art. 29 UPCA. Since the property rights against access points with Qualcomm modems that were placed on the market in the European Union in the period from 1 January 2020 to 31 December 2024 have been exhausted, these access points may of course be further negotiated. This further negotiation is fundamentally exempt from the party maxim. 3. Exception under Art. 29 2nd HS UPCA does not apply The exception that the patent proprietor can provide legitimate reasons to oppose further distribution of the product does not apply in the present case.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023127 The applicant has not put forward any reasons for which it believes it can still stop the marketing of the exhausted products with reference to this exception. Such reasons are also not apparent in any other way. The Court takes into account that this is an exception to the main rule, which for this reason should be interpreted narrowly. [redacted] 4. Further presentation in enforcement proceedings After the plaintiff has named individual products in the enforcement proceedings, the defendants will have to submit and, if necessary, prove with regard to these individual products that they were placed on the market in the European Union during the period defined above on the basis of the contract with Qualcomm discussed above. G. FRAND objection Neither the defendant's FRAND objection based on European antitrust law (see G.) nor the IEEE LOA objection based on contract law (see H.) are valid. I. Admissibility of the objection 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 the case of questions concerning the correct interpretation of European law, the Court of First Instance may refer questions relevant to the decision to the ECJ, Art. 267 TFEU. The decisions of the CJEU are binding on the Unified Patent Court, Art. 21 UPCA (see Mannheim local division, decision of 22 November 2024, UPC CFI 210/2023, para. 189)2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023128 II. No referral to the ECJ However, the present case - especially for the Court of First Instance - does not give any (urgent) cause for a referral to the Court of Justice of the European Union, even against the background of the amicus curiae letter of the European Commission, which the Commission submitted to the Higher Regional Court of Munich on 15 April 2024 under the number 020078-24 MLO / DLF and with which the European Commission "encourages" the court there to refer the case to the Court of Justice of the European Union. Rather, the PANEL and the Mannheim Local Chamber are of the opinion that the only questions that arise in this case relate to the individual case at hand, which 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 an appropriate assessment of the case in question. The opinion of the European Commission - which is admittedly not binding on the constitutionally independent courts - can be taken into account at the same time, insofar as it is to be followed (see Mannheim local division, decision of 22 November 2024, UPC CFI 210/2023, para. 190). The document was also introduced in the present proceedings and discussed with the parties during the oral hearing. III. ECJ - Huawei v. ZTE In the Huawei v. ZTE decision, the Court of Justice of the European Union established a negotiation programme that has since been binding on the courts of the Member States - unlike the courts of the United Kingdom. Since then, the courts of the Member States have applied this negotiation programme and have continued to fill in its 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; the same case number: 200.233.166/01, judgment of 24 December 2019 - Philips v. ASUS; German Federal Court of Justice GRUR 2020, 961 - FRAND- Einwand, GRUR 2021, 565 - FRAND-Einwand II). In this regard, the ruling body agrees with the Mannheim local division that the hearing programme of the European Court of Justice is not solely based on a determination of the respective licences.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023129 The decision is not focussed on the enforcement of censorship conditions, which would be stripped of an assessment of the respective behaviour 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 question under EU primary law as to whether the enforcement of prohibition and recall rights under the patent is subject to antitrust restrictions. The determination of a FRAND licence rate, if applicable, is only one component of this programme (see Mannheim local division, decision of 22 November 2024, UPC CFI 210/2023, para. 191). In its leading decision in Huawei v. ZTE, the European Court of Justice established a negotiation programme which sets out the parties' respective obligations in the context of negotiations for a licence to a standard essential patent conferring a dominant position on the patent proprietor and enables the courts to assess the parties' conduct on the way to a licence. According to the settled case-law of the European Court of Justice (loc. cit. para. 46), the exercise of an exclusive right attached to an intellectual property right, in this case the right to bring an infringement action seeking an injunction, recall or destruction, 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 UK Court of Appeal's decision - that the Court of Justice of the European Union 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 in 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 holder cannot, in principle, be deprived of the possibility of2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023130 The European Court of Justice (ECJ, loc. cit. para. 58) has ruled that the user of these rights, if he is not their owner, must in principle obtain a licence before each use. The negotiation programme developed by the European Court of Justice serves these principles. An assessment of the conditions of a FRAND licence that ignores the steps established by the European Court of Justice in the sense of a purely economic licence level determination without taking into account the relevant conduct of the parties involved in the negotiations can therefore not stand up under European law and would violate mandatory law in the Member States (see Mannheim local division, decision of 22 November 2024, UPC CFI 210/2023, para. 192-193). 1. Injury note According to the decision of the European Court of Justice, the SEP holder, to whom the SEP confers a dominant market position, 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 become established in the cited case law of national courts that the sending of claim charts is sufficient for these purposes in any case (see, 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 9 December 2020, 6 U 103/19 - Mobilstation; Regional Court Mannheim, judgement of 19 August 2016, 7 OD 2016, para 4.157 et seqq. 19.08.2016, 7 O 19/16 - Secondary station; judgement v. 29.01.2016, 7 O 66/15 - control channel; LG Düsseldorf, judgement v. 11.07.2018, 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. 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. The judgement of the European Court of Justice2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023131 However, for good reason, it does not lay down any strict formal requirements at this point, but leaves it up to the courts of the Member States to assess each individual case. Particularly in the case of an allegation of infringement of a large number of standard-relevant patents, a reference in the formalised form deemed necessary by the Commission may lead to confusion rather than the desired transparency (see Mannheim local division, decision of 22 November 2024, UPC CFI 210/2023, para. 194). Since it is a question of the admissibility under antitrust law of bringing an infringement action for injunctive relief, recall and destruction of a specific patent, the time "before the action for injunctive relief was brought" must be determined on the basis of the time at which the action relating to this patent was brought. If the patent proprietor has filed an action relating to another patent at an earlier date, the date on which this earlier action was filed as well as acts or omissions prior to this date are irrelevant for the assessment of the admissibility under antitrust law of the action filed later. Otherwise, the patentee would never be able to remedy any deficiencies in the implementation of the negotiation programme and would be prevented for all time from enforcing claims against the defendant in the first proceedings for infringement of (other) standard-essential patents. That this cannot be correct follows from the fundamental admissibility of infringement actions concerning standard-essential patents as established by the European Court of Justice and cited above. Such actions are in line with the obligations under antitrust law if the conditions set out in the operative part of the decision are met. These conditions relate exclusively to the patent in suit from which the asserted claims for injunctive relief, recall and destruction are derived.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023132 2. Declaration of willingness to licence The patent user must then express its intention to conclude a licence agreement on FRAND terms in a further step - also 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): "It is therefore not sufficient, after the first indication, to establish further obligations on the part of the dominant patentee if the infringer then casually indicates its willingness to consider concluding a licence agreement or to enter into negotiations as to whether and under what conditions it might consider concluding an agreement (see Opinion of Advocate General Wathelet of 20 November 2014 - C-170/13 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 - Unwired Planet v Huawei)." According to the European Commission, this criterion, known as "willingness to licence", should be assessed solely "on the basis of the content and circumstances of the declaration, but not on the basis of subsequent conduct during any negotiations" (amicus curiae letter para. 7, 75, 80 et seq.). The first two 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 particular2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023133 this step should not be confused with the subsequent steps, the offer of the SEP holder and the counter-offer of the patent user (loc. cit. para. 84 et seq.). The Mannheim local division and the European Commission agree that the initial declaration of willingness to obtain a 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 Federal Court of Justice. However, consideration of the respective declaration alone does not generally lead to a determination of whether the 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 as if it were identical in wording, is not in itself a suitable point of reference for assessing whether the respective user is actually serious about his declaration. For this purpose, the respective behaviour must always be considered in an overall view (see Mannheim local division, decision of 22 November 2024, UPC CFI 210/2023, para. 195-198). 3. Further behaviour of the parties The Mannheim local division agrees to the extent that it states (see Mannheim local division, decision of 22 November 2024, UPC CFI 210/2023, para. 201-202) that the further conduct of both parties during the subsequent negotiations should not be excluded from the further examination of the objection. Rather, both the SEP holder and the infringer must behave in accordance with "commercial practice" during the negotiations and work in good faith towards the conclusion of a licence agreement. Their conduct must therefore be assessed according to whether it sufficiently takes into account the fundamental objective of the Union Court of Justice's negotiation programme to reach the timely conclusion of a FRAND licence agreement concluded on a primarily private-autonomous basis in targeted negotiations. This requirement results in obligations to be concretised for the individual case at each stage of the negotiations. Whether a (counter)offer fulfils FRAND criteria cannot be determined independently, but only on a case-by-case basis.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023134 be assessed solely on the basis of the specific negotiations and the behaviour of the parties. Just as the patent infringer cannot make a favourable FRAND offer without sufficient knowledge of any licensing conditions granted to third parties, the SEP holder cannot make a favourable offer if the patent infringer deliberately leaves him in the dark about the extent of his acts of use and his economic framework conditions, such as the sales prices he demands on the market, and if 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 behaviour is largely based on which points the patent infringer has objected to in the negotiation process and, conversely, which information he has made available to the patent proprietor in order to be able to make him, the patent infringer, an offer tailored to his circumstances. Complaints raised in court only against the background of the impending injunction are not sufficient. This is because the patent infringer always has the obligation to respond to an offer from the SEP holder, except in exceptional cases, and at least to raise its objections against it and request improvements (see 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.). Finally, patent infringers cannot expect patent proprietors to make an offer that fully reflects the circumstances affecting them if they are not willing to make these circumstances accessible, if not immediately and clearly upon request. In this respect, the patent infringer cannot demand more disclosure from the patent proprietor than he himself is prepared to disclose. 4. Offer by the patent holder Following the licensing request, it is incumbent on the patent proprietor to submit a specific written licence offer on FRAND terms to the alleged user in accordance with the obligation it has assumed vis-à-vis the standardisation organisation and, in particular, to indicate the licence fee and the way in which it is calculated (ECJ para. 63).2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023135 The patent proprietor must therefore submit an offer to the patent user in response to the latter's request for a licence. This offer should fulfil FRAND requirements and the patent proprietor is obliged to explain to the patent user why he, the patent proprietor, is of the opinion that his offer fulfils FRAND requirements. a. If the patent user has submitted several offers, the last offer that is still open for acceptance must be checked for FRAND conformity, provided that the above- mentioned requirements are met. In this respect, the opinion of the European Commission (loc. cit. para. 221) and the Higher Regional Court of Munich (loc. cit. para. 20, 25) as well as the Federal Court of Justice (loc. cit. para. 54, 70) that in this case only the first offer is to be examined for its FRAND conformity must be contradicted. Otherwise, focussing solely on the first offer for the court proceedings would mean that the first offer would always have to be examined for its FRAND conformity and would ultimately be the only decisive factor in determining whether the FRAND objection would prevail or not. Everything else that happened afterwards would never matter, because if the first offer was FRAND, the user would necessarily have had to accept it, but if it was not FRAND-compliant, according to this view, the patentee would always "lose out" (cf. OLG Munich loc. cit. para. 19). The fact that this cannot be correct results in particular from the ECJ's focus on promoting targeted, genuine negotiations between the parties. A market abuse does not yet lie in the submission of a non-FRAND-compliant initial offer. Rather, this is only the starting point of the negotiations, in the course of which a FRAND-compliant offer from the patent proprietor is to be developed. Only if the patent proprietor "is not prepared to back down [from unreasonable licence conditions] even at the end of negotiations" is there abusive conduct (see BGH loc. cit. para. 54). b. Insofar as the patent proprietor has submitted several different offers that are still acceptable in accordance with these requirements, for example an offer relating to a bilateral licence to the patent proprietor's portfolio and an offer relating to a2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023136 licence to the portfolio of a patent pool that includes the patent or portfolio of the patent proprietor to be licensed, the infringement action for injunctive relief, recall and destruction cannot be dismissed if it can be assumed that at least one of the two offers satisfies the antitrust requirements. This is because the patent proprietor is only obliged under antitrust law to show the patent user a licensing route that satisfies the FRAND requirements. The patent proprietor can fulfil its obligations under antitrust law in particular by offering a pool licence (see Regional Court Munich I, final judgement of 17 February 2023 - 21 O 4140/21, GRUR-RS 2023, 11247, para. 219). Insofar as it can be assumed that this complies with the FRAND requirements, it is irrelevant in the context of the FRAND defence against an infringement action for injunctive relief, recall and destruction how a bilateral licence offer made in parallel is to be assessed under antitrust law. c. The offer does not necessarily have to be ready to sign. What can be demanded of the SEP holder 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 of the examination is what a reasonable party interested in the successful conclusion of the negotiations 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 and LD Mannheim, para. 213). At the beginning of the negotiations, it is not in line with normal business practice to directly confront each other with draft contracts ready to be signed as long as the central economic points have not even been clarified. Therefore, it is also not in line with the behaviour of a patent infringer 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 conditions 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 offer of the SEP-2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023137 The patent owner's written offer allows the patent user to recognise the essential economic framework conditions of a proposed licence agreement and, if necessary, to respond with a different 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 he wishes to receive it at this stage of the negotiations in deviation from customary practice. 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 (cf. Local Chamber Mannheim, loc. cit. para. 213). 5. Counteroffer by the patent user, information and provision of security In its judgement in Huawei v. ZTE, the European Court of Justice explained this in paragraphs 65-67: "65 On the other hand, it is incumbent on the alleged infringer to respond to this offer with diligence, in accordance with recognised commercial practice in the field and in good faith, which is to be determined on the basis of objective considerations and implies, inter alia, that no delaying tactics are pursued. 66. If the alleged infringer does not accept the offer made to him, he can only invoke the abusive nature of an action for an injunction or recall if he makes the owner of the SEP in question a concrete counter-offer in writing within a short period of time that complies with the FRAND conditions. 67. In addition, if the alleged infringer uses the SEP before a licence agreement has been concluded, he shall, from the time his counter-offer has been rejected, provide adequate security in accordance with accepted commercial practice in the relevant field, e.g. by providing a bank guarantee or depositing the required amounts. The calculation of this security must take into account, among other things, the number of past acts of use in2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023138 SEP, for which the alleged infringer has submitted a statement of account. must be able to lay." a. This means that the user may invoke the infringement of antitrust law in the context of a defence against that part of the action which is aimed at injunctive relief, recall or destruction, but may only object if he himself has submitted a concrete counter-offer without delaying tactics which complies with FRAND conditions and, in the event of its rejection, has provided appropriate security and information on the scope of the acts of use. The background to this is that, according to the European Court of Justice, the FRAND defence under antitrust law is not primarily concerned with how a FRAND licence fee is to be calculated, but with the question of whether the patent proprietor has abused its dominant position by bringing a patent infringement action for an injunction against the infringement of its patent or for the recall/destruction of the products for the manufacture of which that patent was used without the following two conditions being met (para. 71): "- firstly, before bringing the action, it has drawn the alleged infringer's attention to the patent infringement of which it is accused, describing the SEP in question and indicating how it is alleged to have been infringed, and secondly, after the alleged infringer has expressed its intention to conclude a licence agreement on FRAND terms, it has made the infringer a specific written licence offer on those terms, indicating in particular the licence fee and the way in which it is calculated, and - that infringer, while continuing to use the patent in question, does not respond to that offer with diligence, in accordance with recognised commercial practice in the relevant field and in good faith, which is to be determined on the basis of objective considerations and implies, inter alia, that no delaying tactics are being pursued."2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023139 The PANEL deduces from paragraphs 65-67 and 71 above that even if the patentee's offer is not FRAND and the user nevertheless makes a counter-offer, he must provide security and submit assignments. Finally, the assignment - if not already requested by the patentee as part of his offer, see above - is needed to (financially) evaluate the counter-offer, while the security serves to take recourse against the patentee at some point for the lost licence fees or damages. Consequently, before examining the FRAND compliance of the patent proprietor's offer, it must regularly be examined whether the patent user has set the conditions for the infringement court to enter into this examination. The Commission and the Local Division of Mannheim must be conceded that, with such an understanding, there is a possibility that the examination of the offer of the SEP holder bound by antitrust law by the infringement court is completely omitted or is at best cursory (see Local Division of Mannheim, decision of 22 November 2024, UPC CFI 210/2023, paras. 195-198). That is correct. However, this result corresponds to the judgment of the Court of Justice of the European Union in paragraphs 66 and 67. The infringer, on the other hand, remains free to enforce his claim for the grant of a licence on FRAND terms, whether it is based on antitrust law or contract law, in the context of a separate action before the competent (antitrust) courts. The infringer also has the option of filing a counterclaim for the grant of a licence with the Unified Patent Court (see Mannheim local division, decision of 22 November 2024, UPC CFI 210/2023, paras. 236-241). b. In terms of amount, the security must be provided at least in the amount of the counteroffer. Whether the security must also be based on the plaintiff's (higher) offer under review, as proposed by the Munich Higher Regional Court in its reference order of 30 October 2024 (GRUR-RS 2024, 30064, para. 32), can be left open in the present case. This is because the defendants have not provided any security at all. c. Furthermore (see OLG Munich, para. 36), the patent user must ensure by means of a binding declaration as part of the security deposit that the2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023140 patent proprietor receives the security as a licence payment if its offer ultimately proves to be FRAND-compliant and the patent infringement asserted in the action for an injunction is also legally upheld. Although this requirement cannot be directly inferred from the ECJ judgement, it follows from the requirement of "adequate security". This must therefore be suitable to secure precisely the claim to a FRAND licence fee. However, this purpose would be defeated or the patent proprietor would not be "secured" in this respect if the user, who - in contrast to the patent proprietor - is not obliged to conclude a licence agreement in principle, were to refuse to do so after the FRAND examination by the court (possibly with the assistance of an expert). (for example, if it becomes apparent that the plaintiff's offer was indeed FRAND) and he could reject the offer, waive the FRAND objection and instead be ordered to cease and desist - and receive the security back (at least to the extent that it exceeds the claim for damages, which may be significantly lower due to the territorially limited international jurisdiction). This would mean that the patent user would have achieved exactly what the security is intended to prevent, namely that the patent user would have engaged in pure delaying tactics, continued to use the patent without a licence and the patent proprietor would ultimately only be referred to the (weak) claim for damages. d. If the patent proprietor has submitted two parallel offers, one for a bilateral licence and one for a pool licence, the security resulting from the offer for which a counter- offer has been submitted must be provided. The purpose of the security must be formulated in favour of the patent proprietor and the pool. e. If the patent infringer does not provide security in the aforementioned sense, there is no requirement according to the ECJ Huawei. The FRAND objection is then not successful. f. Whether the provision of a security that satisfies these requirements and the provision of information by the patent infringer is able to "cure" other deficits in the course of the proceedings that lie in the past, as the Higher Regional Court of Munich suggests (see para. 33), can also be left open, as will be shown shortly, due to the factual circumstances of the present case.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023141 IV. Application of these principles in the present case In the present case, the defendants did not signal a sufficient willingness to take a licence after an unobjectionable infringement notice, delayed the negotiations and did not provide any security or sufficient information after their counter-offer was rejected. Furthermore, they have not provided any substantive information as to why the pool licence offered in addition to a bilateral licence via SISVEL does not satisfy FRAND principles. Irrespective of this, the defendants have not conclusively argued that the patent in suit gives the plaintiff a dominant market position. 1. Dominant market position The defendants, who have the burden of presentation and proof in this respect, have not made a conclusive submission as to whether and why the patent in suit gives the plaintiff a dominant market position. a. Rather, the defendants have denied use of the patent in the context of the infringement discussion (see KE, section F.I.3). Furthermore, they have argued that the individual protocols provided for in the IEEE 802.11ax standard specify a common code word space for Wi-Fi, which does not have to be fully utilised by access point implementations because there is considerable scope for implementing the standard in terms of which code words can be generated by an access point implementation. A binding effect with regard to the use of the (entire) IEEE 802.11ax specifications should therefore be rejected. The access point of a Wi-Fi network decides which code words are used and communication with the connected stations is also ensured despite only partial utilisation of the code word space. Compatibility with the IEEE 802.11ax standard is also not to be equated with full implementation of the same. The full implementation of the IEEE. 802.11ax standard does not result in particular from the designation as Wi-Fi 6 supporting or Wi-Fi 6 compatible.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023142 b. Hereby, the defendants deny a mandatory use of the standard specifications and thus of the patent in suit by submitting facts and not only by a deviating legal assessment of the questions of patent interpretation and infringement examination. Thus, there is already no conclusive factual submission that the plaintiff is given a dominant market position by the patent because all market participants and thus also the defendants as manufacturers and distributors of access points would be forced to use the teaching of the patent in suit. It must be assumed that the UPC representatives of the defendants have observed Art. 48(6) UPCA or Rule 284 RoP in this respect and have not misrepresented the facts knowingly or due to negligent ignorance. It can therefore be assumed that the standard does not impose any mandatory requirements in this respect. Therefore, the plaintiff does not hold a dominant position in the market, even though, as shown, it is violated in accordance with the wording. Since the defendants bear the burden of presentation and proof for the question of market dominance, their objection must be rejected at this point. c. The possibility, in the alternative, of making an alternative factual submission and thus the "alternative facts" model in the event that the factual submission in the context of the non-infringement argumentation should not prevail, must be rejected on the basis of the provisions cited above. d. Ultimately, however, the question of antitrust liability can also be left open in the present case, because even if the plaintiff were subject to antitrust obligations on the basis of the patent in suit, it would have complied with them in the present case. 2. Injury note The plaintiff duly notified the defendants of the infringement of the patent in suit before the action was brought here. As explained above, the date of the filing of the present action, i.e. 2 July 2023, is decisive. [redacted]2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023143 Furthermore, the plaintiff also sent the defendants claim charts relating to the patent in suit: The allocation of claim charts is in any case sufficient evidence of infringement. The Chamber does not share the defendant's view that the transmission of a very large number of claim charts (here [redacted]) is inadmissible under antitrust law. If the parties negotiate the licensing of a very large portfolio, it is unavoidable to make a higher number of technical details the subject of the negotiations. [redacted] 3. Declaration of licence readiness Whether the defendants' licence request was sufficiently formulated and, if not, whether further disadvantageous legal consequences can be derived from it for the defendants, can be left open in the present case. On the one hand, the defendants have submitted an unconditional counter-offer and thus possibly abandoned earlier reservations. Secondly, due to the fact that the defendants have not provided any security, their FRAND objection is not successful anyway. In detail: [redacted]2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023144 4. Offers by the plaintiff It can be assumed that the offers nevertheless submitted by the plaintiff fulfil the FRAND requirements. [redacted] Whether these offers fulfil FRAND requirements can be left open, as will be shown below. 5. Counteroffer by the defendant [redacted] 6. Security deposit and information Although the plaintiff rejected their counteroffer, the defendants did not provide security or sufficient information by the time the action was filed. As discussed at the interim hearing, the defendants only provided generally available figures. This means that the condition laid down by the European Court of Justice (para. 66) for the defendants to be able to rely on the abusive nature of an action for an injunction or recall is not met. Since the defendants did not make up for this by the end of the oral hearing, it remains to be seen whether the opinion of the Munich Higher Regional Court that such a catch-up is worthy of consideration should be endorsed. 7. No presentation on the SISVEL patent pool Furthermore, the defendants have not made any substantive submissions as to why the plaintiff's alternative option of taking a pool licence via SISVEL constitutes an abuse of a dominant market position by the plaintiff. The defendants have not submitted anything on the pool offer in the documents. In the2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023145 At the interim hearing, they replied "this is still under consideration" to the judge- rapporteur's question in this regard. At the hearing, the defendants argued in response to the plaintiff's reproach that the plaintiff's bilateral offer discriminated against the defendants and therefore the pool offer could not be better. This does not go far enough. For an assumed price discrimination in the context of bilateral licence negotiations is not transferable to a pool licence for fundamental reasons alone. This is because a pool licence involves the licensing of significantly more patents, including those of other patent holders. Furthermore, licensing takes place with a pool licence rate that differs from bilateral offers. The defendants have also not argued that and why they are also discriminated against with regard to the pool licence rate already paid by other pool licensees. They have also not argued that and why the plaintiff should be obliged under antitrust law to make them a bilateral offer on FRAND terms over and above the offer of the pool licence. It can therefore be assumed, also on the basis of the lack of submissions, that the offer to take a pool licence for the patent in suit via the SISVEL pool meets the requirements of antitrust law. 8. Legal consequences However, if it can be assumed that the SISVEL pool licence offer satisfies antitrust obligations, the FRAND objection cannot succeed, irrespective of the above explanations. Since FRAND can contain a large number of conditions and licence rates (FRAND is a range), the defendant's FRAND objection cannot prevail, regardless of the quality of its counter-offer, because the plaintiff has sufficiently complied with its antitrust obligations established by the ECJ in the context of an infringement action.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023146 H. IEEE LOA objection The defence raised by the defendants in addition to the FRAND objection under antitrust law in accordance with the IEEE LOA is also not valid. I. As stated above, the plaintiff submitted an LOA to IEEE on 25 July 2019 with reference to the IEEE Bylaws 2007. These Bylaws contain the following clauses: According to the applicable New York law, a contract was thus - indisputably - concluded in favour of third parties, i.e. also in favour of the defendants. The defendants therefore have a contractual claim against the plaintiff in accordance with the clause reproduced above.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023147 According to the wording, this contractual entitlement includes the right to acquire a licence for consideration in relation to standard-essential patent claims, whereby the licence rate must be reasonable and the licence conditions must be reasonable and demonstrably free of unfair discrimination. The word "reasonable" is used twice, once in the licence rate and once in the licence conditions. The expression "demonstrable free of any unfair discrimination", on the other hand, is only used once at the end of the sentence. It therefore refers grammatically only to the licence conditions. If this had been intended differently, the expression would also have been used twice in the sentence, like the word "reasonable". This result is also supported by the further sentence construction using the word "that", which refers to the "terms and conditions". The elements of the offence are therefore as follows: • The defendants must apply to the plaintiff for a worldwide licence. • The plaintiff must offer one. • The subject matter of the licence must be standard-essential patent claims. • The licence is subject to a fee. • The licence rate must be reasonable • The other conditions of the licence agreement must be reasonable and demonstrably free of unfair discrimination. For the further proceedings, however, it can be assumed in favour of the defendant that this sentence construct is also intended to mean that the "reasonable licence rate" must also be demonstrably free of unfair discrimination. This does not change the result. With regard to the question of how to prove procedurally that the licence rate and the licence conditions are free from unfair discrimination, it should be noted that there are2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023148 this is a negative element of the offence. The plaintiff can therefore only fulfil its burden of presentation and proof if the defendants have previously presented circumstances that suggest unfair discrimination, i.e. the unequal treatment of comparable licensees or the equal treatment of dissimilar licensees without a justifiable reason. As soon as the defendants have fulfilled their secondary burden of proof, it is up to the plaintiff to either refute the unequal treatment or to present reasons to justify the unequal treatment from which it can be inferred that the unequal treatment is "fair" and not "unfair". II. As explained above, the defendants did request a licence from the plaintiff. However, this licence request was [redacted]. Since the defendants simultaneously argue that an implementation of the standard specifications leading to the infringement is not mandatory, the defendants are in this respect in an irresolvable argumentative contradiction. This is because the LOA only obliges the plaintiff to worldwide licensing if it concerns standard essential patent claims. III. The plaintiff submitted a bilateral licence offer to the defendants, which was improved twice, and also pointed out the possibility of taking out a pool licence with SISVEL. The defendants have only submitted an allegedly unfair price discrimination in relation to the bilateral offer. With regard to the pool licence that was also offered, they merely stated that this was "still under consideration". Reference is made to the above statements to avoid repetition. Accordingly, the defendants have neither argued that a patent proprietor cannot also fulfil the obligations assumed by the IEEE-LOA by offering a pool licence, nor have they argued that and why the pool licence rate or the other conditions of the pool constitute unfair discrimination. They have therefore failed to fulfil their secondary burden of proof. Their defence is therefore not valid. The defendants did not even know about the pool licence.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023149 offer said that it was not demonstrably free of unfair discrimination. I. Legal consequences The established patent infringement by the defendants of the national part of the bundle patent validated in the respective asserted contract states justifies the legal consequences sought by the plaintiff. This excludes products with Qualcomm modems (see Annex FBD 56) which were demonstrably placed on the market for the first time in the territory of the European Union in the period [redacted]. The injunctive relief sought by the plaintiff with regard to the infringing acts 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. In the present case, there are no circumstances for the court to refrain from exercising its discretion ("may ... issue") to issue a final injunction. Rather, proportionality aspects (Art. 42 UPCA and 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) have already been comprehensively taken into account in the context of the consideration of the examined antitrust and contractual compulsory licence objection by applying the balanced negotiation programme of the European Court of Justice. Further circumstances that would make it appear necessary from the point of view of proportionality not to issue an injunction in the present case have not been sufficiently demonstrated. The defendants themselves argue that the requirements of the standard are not2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023150 are mandatory and there is scope for implementation. Moreover, the defendants are free to take out a pool licence with SISVEL at any time. The requested threat of a penalty payment for the omission (Art. 63(2) UPCA) does not raise any objections. The threat of the measures of disclosure, information, recall and removal are based on Art. 82 para. 1 and 4 UPCA, R. 354.3 RoP. The application for destruction of the directly infringing products 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, the definitive removal from the distribution channels is a separate measure from the 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. The defendants can take the offered bilateral licence or the pool licence at any time. It is equivalent to destruction if the patent-infringing functionality is permanently switched off. The decision to provide the requested information is based on Art. 25 (a), Art. 67 (1) UPCA. The information is necessary to calculate the damages and to assess the method of calculating damages within the meaning of Art. 68 UPCA. The information on origin and distribution channels serves to clarify the facts of the infringement and the possibility of making claims against other co-responsible parties and being able to effectively stop further acts of infringement. In response to the application, it was also ordered that the defendants provide the plaintiff with the information in a list structured for each month of a calendar year and by patent infringing products in electronic form, which can be analysed with the help of a computer. This serves the efficient2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023151 enforcement of the right to information and takes account of the fact that an electronic statement, which can be analysed with the aid of a computer, is in any case the standard in business accounting. The subject matter of the information is also the requested accounting. 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 request 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 - delivery notes as an alternative. This is because, apart from the interest in the pure information that the patent proprietor receives 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 provided for in the pronouncement takes account of any confidential information (Rule 191 sentence 2, 190.1 sentence 2 RoP). The requested auditor's reservation allows an appropriate balance to be struck between the interest of the infringed party in receiving accurate information and the justified confidentiality interests of the infringer. 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. With regard to the indirect infringement of the patent in suit 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. Art. 63(1) UPCA. The plaintiff also has a right to information and transmission of information pursuant to Art. 26(1) UPCA in conjunction with Art. 67 UPCA, Art. 8 (3)(a), (b) UPCA in conjunction with Rule2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023152 191 p. Alt. Rule 191 p. 1 Alt. 2 RoP as well as for payment of provisional damages and determination of the award2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023153 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. The award of costs is based on Art. 69(2) UPCA, Rule 118.5 RoP. In view of the partial defeat of the plaintiff with regard to the defence of exhaustion concerning products with Qualcomm modems, a ratio of 80 to 20 in the infringement action appears to be appropriate. On the one hand, according to the defendant, winning with this defence should make it possible to significantly reduce the certainty of enforcement; on the other hand, the carve-out is subject to post-procedural device- related proof of the first placing on the market in the territory of the European Union in the relevant period. It should also be noted that exhaustion only applies until [redacted], while the injunction lasts until the expiry of patent protection, i.e. until 2036 at the longest. Pursuant to Art. 82(2) UPCA, Rule 118.8 sentence 2 RoP, the court may make any order or measure subject to the provision of a security, which it must set. The local division has a discretionary power when ordering the provision of security, whereby the interest of the applicant in the effective enforcement of its IP 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 requirement to provide security is rightly not in dispute between the parties. The plaintiff is domiciled in China. In this respect, difficulties in the enforcement of an order for costs are to be expected. The court exercises its discretion to order partial security as requested. With regard to the orders to provide information and render accounts, the sum of € 50,000.00 proposed by the plaintiff appears to be appropriate, otherwise the sum of € [redacted] proposed by the defendants in the event that the defence of exhaustion is successful. Insofar as the defendants can enforce a pro rata reimbursement of costs, 110 per cent of the amount to be enforced appears to be appropriate. Due to the partial agreement of the parties with regard to the text of a possible deed of guarantee (see Annex K93), the Chamber leaves the parties the choice between cash deposit and submission of a bank2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023154 guarantee deed.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023155 The Orders are enforceable only after the parties have notified the court which part of the Orders they intend to enforce and have 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 other party and the security has been provided, R. 118.8 RoP. Since the defendants are sufficiently protected by the security ordered in the amount requested by the defendants, it was no longer necessary to order the defendants to avert the proceedings. J. Leave to amend/clarification and dismissal of the remaining applications The clarifications made by both parties with regard to the territorial scope of the respective applications are appropriate and are approved. In this respect, it should be noted that the previous wording of the application inadmissibly assigned to the court the task of determining which member states had ratified the Agreement on a Unified Patent Court at the relevant time and should therefore be the subject of the application. The wording of the application now chosen takes these concerns into account. The applications of the parties that remained open at the interim hearing (see App 31099/202) must be rejected. Reference is made to the above explanations for the reasons. In particular, there is no need to take evidence or order the submission of further documents, as requested by the defendant in APP 47068/2024 of 14 August 2024. As shown, the panel, which includes a technically qualified judge, is itself in a position to subject the submission on the test data presented to an assessment. With regard to the defence with the IEEE-LOA, there is also no need to take evidence for the reasons set out above.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023156 ORDERS A. The defendant's objection pursuant to Rule 19 RoP is dismissed. B. The defendants' actions for annulment are dismissed. C. The defendants are ordered to cease and desist from infringing the provisions of the law on pain of a penalty payment to be imposed by the court for each case of infringement, I. to offer or supply equipment for transmitting a high-efficiency signalling field B or HE-SIG- B in a wireless local area network to customers in Belgium, Germany, Italy, Finland, France and Sweden for use in the said territory, which are suitable for use in a method for transmitting a high-efficiency signalling field B or HE-SIG-B in a wireless local area network, wherein the method comprises the following: Transmitting the HE-SIG-B in a transmission bandwidth of multiples of 20 MHz, wherein the HE-SIG-B comprises two HE-SIG-B contents including a first HE-SIG-B content carried in each odd-numbered 20 MHz subchannel and a second HE-SIG-B content carried in each even-numbered 20 MHz subchannel, wherein the first HE-SIG-B content comprises a first common field and a first user-specific field, the first common field comprising one or more first resource allocations, RA, wherein the second HE-SIG-B content comprises a second common field and a second user-specific field, the second common field comprising one or more second resource allocations, RA, wherein each of the one or more first RA corresponds to an odd-numbered 20 MHz sub-channel and each of the one or more second RA corresponds to an even-numbered 20 MHz sub-channel, wherein the first user-specific field comprises one or more first user scheduling information sub-fields, wherein each of the one or more first user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units indicated by the one or more first RA, and wherein the second user-specific field comprises one or more second user scheduling information subfields,2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023157 wherein each of the one or more second user scheduling information sub-fields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units indicated by the one or more second RA, when a first RA of the one or more first RA indicates a first assigned resource unit, RU, located within or overlapping with the corresponding one odd-numbered 20 MHz sub-channel, wherein the one first RA further indicates that in the first HE-SIG content channel, the STA is scheduled on one of the one or more resource units, RU, located within or overlapping with the corresponding one odd 20 MHz subchannel, the one first RA further indicating that in the first HE-SIG-B content a number of a user scheduling information subfield corresponding to the first RU is 0; or a second RA indicates to the one or more second RA a second assigned RU that is within or overlaps with the corresponding one even-numbered 20 MHz subchannel, the one second RA further indicating that in the second HE-SIG-B content, a number of a user scheduling information subfield c o r r e s p o n d i n g to the second RU is 0; - Indirect infringement of claim 1 - II. to offer or supply equipment for receiving a high-efficiency signalling field B or HE-SIG-B in a wireless local area network to customers in Belgium, Germany, Italy, Finland, France and Sweden for use in the said territory, which are suitable for use in a method for receiving a high-efficiency signalling field B or HE- SIG-B in a wireless local area network, wherein the method comprises the following: Receiving the HE-SIG-B in a transmission bandwidth of multiples of 20 MHz, the HE-SIG-B comprising two HE-SIG-B contents including a first HE-SIG-B content carried in each odd- numbered 20 MHz subchannel and a second HE-SIG-B content carried in each even- numbered 20 MHz subchannel, the first HE-SIG-B content comprising a first common field and a first user-specific field, the first common field comprising one or more first resource allocations, RA, umfasst, wobei der zweite HE-SIG-B-Inhalt ein zweites gemeinsames Feld und ein zwei- tes benutzerspezifisches Feld umfasst, wobei das zweite gemeinsame Feld eine oder meh- rere zweite Ressourcenzuweisungen, RA, umfasst, wobei jede der einen oder der mehreren ersten RA einem ungeradzahligen 20 MHz-Unterkanal entspricht und jede der einen oder der mehreren zweiten RA einem geradzahligen 20 MHz-Unterkanal entspricht, wobei das erste benutzerspezifische Feld ein oder mehrere erste Benutzerzeitplanungsinformationen-2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023158 subfields, wherein each of the one or more first user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units specified by the one or more first RA, and wherein the second user- specific field comprises one or more second user scheduling information subfields, wherein each of the one or more second user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units specified by the one or more second RA when a first RA of the one or more first RA is a first assigned resource, STA, the STA being scheduled on one of the one or more resource units specified by the one or more second RAs, when a first RA of the one or more first RAs specifies a first allocated resource unit, RU, located within or overlapping with the corresponding one odd 20 MHz subchannel, the one first RA further specifying that in the first HE-SIG-B content a number of a user scheduling information subfield corresponding to the first RU is 0; or a second RA indicates to the one or more second RA a second assigned RU that is within or overlaps with the corresponding one even-numbered 20 MHz subchannel, the one second RA further indicating that in the second HE-SIG-B content a number of a user scheduling information subfield corresponding to the second RU is 0; - Indirect infringement of claim 2 - III. in particular 1. when the first RA or the second RA is an index of a plurality of indices, the index being based on per 20 MHz bandwidth, the index indicating a combination of allocated RUs having 26, 52 or 106 subcarriers or an allocated RU having 242, 484 or 996 subcarriers, the index indicating whether multi-user MIMO or MU-MIMO is performed, respectively, and the index further indicating information for calculating a number of users on an allocated RU allowed for MU-MIMO; – Indirect infringement of claim 3 - 2. and/or if the first assigned RU has 484 subcarriers or the second assigned RU has 484 subcarriers – Indirect infringement of claim 4 -2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023159 3. and/or when the transmission bandwidth is 40 MHz, comprising first 20 MHz and second 20 MHz, wherein the first HE-SIG-B content is carried in the first 20 MHz and the second HE-SIG-B content is carried in the second 20 MHz, wherein the first HE-SIG-B content comprises a first RA indicating one or more RUs in or overlapping the first 20 MHz, and wherein the second HE-SIG-B content comprises a second RA indicating one or more RUs in or overlapping the second 20 MHz – Indirect infringement of claim 5 - 4. and/or when the transmission bandwidth is 80 MHz, comprising first 20 MHz, second 20 MHz, third 20 MHz and fourth 20 MHz in a frequency order, wherein the first HE-SIG-B content is routed in t h e first and third 20 MHz and the second HE-SIG-B content is routed in the second and fourth 20 MHz, wherein the first HE-SIG-B content comprises a first RA and a third RA, wherein the first RA specifies one or more RUs in or overlapping the first 20 MHz and the third RA specifies one or more RUs in or overlapping the third 20 MHz, and wherein the second HE-SIG-B content comprises a second RA and a fourth RA, wherein the second RA specifies one or more RUs in or overlapping the second 20 MHz and the fourth RA specifies one or more RUs in or overlapping the fourth 20 MHz; – Indirect infringement of claim 6 - IV. To offer, to place on the market, to use and/or to import and/or to possess for said purposes a device for transmitting a high-efficiency signalling field B or HE-SIG-B in a wireless local area network to customers in Belgium, Germany, Italy, Finland, France and Sweden, comprising the following: a module adapted to transmit the HE-SIG-B in a transmission bandwidth of multiples of 20 MHz, the HE-SIG-B comprising two HE-SIG-B contents including a first HE-SIG-B content carried in each odd-numbered 20 MHz subchannel and a second HE-SIG-B content carried in each even-numbered 20 MHz subchannel, the first HE-SIG-B content comprising a first common field and a first user-specific field wherein the first common field comprises one or more first resource allocations, RA, wherein the second HE-SIG-B content comprises a second common field and a second user-specific field, wherein the second common field comprises one or more second resource allocations, RA, wherein each of the one or more first RA corresponds to an odd-numbered 20 MHz subchannel, and each second RA corresponds to an odd-numbered 20 MHz subchannel.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023160 the one or more second RA corresponds to an even-numbered 20 MHz subchannel, wherein the first user-specific field comprises one or more first user scheduling information subfields, wherein each of the one or more first user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units specified by the one or more first RA, and wherein the second user-specific field comprises one or more second user scheduling information subfields, wherein each of the one or more second user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units indicated by the one or more second RAs when a first RA of the one or more first RAs indicates a first assigned resource unit, RU, located in the one or more second RAs, RU, located within or overlapping with the corresponding one odd 20 MHz subchannel, the one first RA further indicating that in the first HE-SIG-B content a number of a user scheduling information subfield corresponding to the first RU is 0; or a second RA indicates to the one or more second RA a second assigned RU that is within or overlaps w i t h the corresponding one even-numbered 20 MHz subchannel, the one second RA further indicating that in the second HE-SIG-B content, a number of a user scheduling information subfield corresponding to the second RU is 0; – direct infringement of claim 7 - V. To offer, to place on the market, to use and/or to import and/or to possess for said purposes a device for receiving a high-efficiency signalling field B or HE-SIG-B in a wireless local area network to customers in Belgium, Germany, Italy, Finland, France and Sweden, comprising the following: a module adapted to receive the HE-SIG-B in a transmission bandwidth of multiples of 20 MHz, the HE-SIG-B comprising two HE-SIG-B contents, including a first HE-SIG-B content carried in each odd-numbered 20 MHz subchannel and a second HE-SIG-B content carried in each even-numbered 20 MHz subchannel, wobei der erste HE-SIG-B-Inhalt ein erstes gemeinsames Feld und ein erstes benutzerspezi- fisches Feld umfasst, wobei das erste gemeinsame Feld eine oder mehrere erste Ressour- cenzuweisungen, RA, umfasst, wobei der zweite HE-SIG-B-Inhalt ein zweites gemeinsames Feld und ein zweites benutzerspezifisches Feld umfasst, wobei das zweite gemeinsame Feld eine oder mehrere zweite Ressourcenzuweisungen, RA, umfasst, wobei jede der einen2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023161 oder der mehreren ersten RA einem ungeradzahligen 20 MHz-Unterkanal entspricht und jede der einen oder der mehreren zweiten RA einem geradzahligen 20 MHz-Unterkanal entspricht, wobei das erste benutzerspezifische Feld ein oder mehrere erste Benutzerzeitplanungsinfor- mationen-Unterfelder umfasst, wobei jedes des einen oder der mehreren ersten Benut- zerzeitplanungsinformationen-Unterfelder Informationen über eine Station, STA, wherein the STA is scheduled on one of the one or more resource units indicated by the one or more first RA, and wherein the second user-specific field comprises one or more second user scheduling information sub-fields, wherein each of the one or more second user scheduling information subfields comprises information about a station, STA, wherein the STA is scheduled on one of the one or more resource units indicated by the one or more second RAs when a first RA of the one or more first RAs indicates a first assigned resource unit, RU, located in the one or more second RAs, RU, located within or overlapping with the corresponding one odd 20 MHz subchannel, the one first RA further indicating that in the first HE-SIG-B content a number of a user scheduling information subfield corresponding to the first RU is 0; or a second RA indicates to the one or more second RA a second assigned RU that is within or overlaps w i t h the corresponding one even-numbered 20 MHz subchannel, the one second RA further indicating that in the second HE-SIG-B content, a number of a user scheduling information subfield corresponding to the second RU is 0; – direct infringement of claim 8 - VI. in particular 1. when the first RA or the second RA is an index of a plurality of indices, the index being based on per 20 MHz bandwidth, the index indicating a combination of allocated RUs having 26, 52 or 106 subcarriers or an allocated RU having 242, 484 or 996 subcarriers, the index indicating whether multi-user MIMO or MU-MIMO is performed, respectively, and the index further indicating information for calculating a number of users on an allocated RU allowed for MU-MIMO; – direct infringement of claim 9 - 2. and/or if the first assigned RU has 484 subcarriers or the second assigned RU has 484 subcarriers; – Direct infringement of claim10 -2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023162 3. and/or when the transmission bandwidth is 40 MHz, comprising first 20 MHz and second 20 MHz, wherein the first HE-SIG-B content is carried in the first 20 MHz and the second HE-SIG-B content is carried in the second 20 MHz, wherein the first HE-SIG-B content comprises a first RA indicating one or more RUs in or overlapping the first 20 MHz, and wherein the second HE-SIG-B content comprises a second RA indicating one or more RUs in or overlapping the second 20 MHz; – direct infringement of claim 11 - 4. and/or when the transmission bandwidth is 80 MHz, comprising first 20 MHz, second 20 MHz, third 20 MHz and fourth 20 MHz in a frequency order, wherein the first HE-SIG-B content is routed in t h e first and third 20 MHz and the second HE-SIG-B content is routed in the second and fourth 20 MHz, wherein the first HE-SIG-B content comprises a first RA and a third RA, wherein the first RA specifies one or more RUs in or overlapping the first 20 MHz and the third RA specifies one or more RUs in or overlapping the third 20 MHz, and wherein the second HE-SIG-B content comprises a second RA and a fourth RA, wherein the second RA specifies one or more RUs in or overlapping the second 20 MHz and the fourth RA specifies one or more RUs in or overlapping the fourth 20 MHz. – Direct infringement of claim 12 - D. The defendants are ordered to provide the plaintiff with information in writing and in electronic form on the extent to which they (the respective defendant) have committed the acts described above under clauses C.I. to C.VI. since 26 May 2021, stating a) the names and addresses of manufacturers, suppliers and other previous owners; b) the names and addresses of the commercial customers and the points of sale for which the products were intended; c) the quantities of products manufactured, delivered, received or ordered, as well as the prices paid for the products concerned; copies of the relevant purchase documents (namely invoices, or alternatively delivery notes) must be submitted as proof of the information provided, whereby details requiring confidentiality outside the data subject to disclosure may be blacked out.2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023163 E. The defendants are ordered to provide the plaintiff with an orderly statement in writing and additionally in electronic form of the extent to which they (the respective defendant) have c o m m i t t e d the acts described above under clauses C.I. to C.VI. since 26 May 2021, stating a) of the individual deliveries, itemised according to delivery quantities, times and prices as well as type designations and the names and addresses of the customers; b) of the individual offers, itemised according to offer quantities, times, prices, type designation and the names and addresses of the commercial offerees; c) of the advertising operated, broken down by advertising media, their circulation, distribution period and distribution area; d) the prime costs broken down by the individual cost factors and the profit realised; whereby the defendants reserve the right to disclose the names and addresses of the non- commercial purchasers and the offerees instead of the plaintiff to a sworn auditor to be designated by the plaintiff, who is bound to secrecy towards the plaintiff and who is resident in one of the contracting member states, provided that the respective defendant bears his costs and authorises and obliges him to inform the plaintiff on specific request whether a particular purchaser or offeree is included in the list. F. The defendants are ordered to permanently remove the products described above under C.IV. to C.VI. from the distribution channels by the respective defendant taking back these items, if necessary enforcing their surrender with claims for surrender to which it is entitled or, at the plaintiff's discretion, arranging for the destruction of these items at the respective owner's premises at the defendant's expense. G. The defendants are ordered to recall the marketed products referred to above under clauses C.IV. to C.VI. from the commercial customers with reference to the patent-infringing condition of the products established by the court (judgment of the Munich local division of 18 December 2024) and with the binding undertaking to reimburse any fees and to bear any necessary packaging and transport costs as well as customs and storage costs associated with the return2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023164 and to take back the products, providing the plaintiff with a sample of the recall letters and a list of the addressees with their names and postal addresses or - at the defendant's option - a copy of all recall letters. H. The defendants are further ordered to surrender to a bailiff to be appointed by the plaintiff the products referred to in paragraphs C.IV. to V.VI. which are in their direct or indirect possession or ownership in Belgium, Germany, Italy, Finland, France and Sweden for the purpose of destruction at their - the respective defendants' - expense. I. It is hereby established that the defendants are jointly and severally liable to compensate the plaintiff for all damage that she has suffered and will suffer as a result of the acts referred to in C.I. to C.VI. committed since 26 May 2021. J. Those individualised products according to sections C.I. to C.VI. which are equipped with a Qualcomm modem (see Annex FBD 56) are exempt from the orders according to sections C. to I., provided that this Qualcomm modem was demonstrably placed on the market for the first time in the territory of the Member States of the European Union in the period [blackened]. K. The plaintiff shall bear 20 per cent of the costs of the infringement action (costs of legal and patent attorney representation and court costs) and the defendants shall bear 80 per cent as joint and several debtors. The defendants shall bear the costs (court costs and costs of legal and patent attorney representation of all parties) of the revocation counterclaims as joint and several debtors. The respective claim for reimbursement of costs is limited by the upper limit depending on the value in dispute. L. In all other respects, the action is dismissed and the parties' outstanding applications are rejected. The workflows concerned are deemed closed2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023165 M. The above Orders in paragraphs C, D, E, F, G, H, I, J, K are provisionally enforceable for the plaintiff against partial security as follows: - Numbers D, E against a total of € 50,000.00 - Digits C, F, G, H, I, J, K against total [redacted] € The Order in paragraph K is provisionally enforceable for the defendants against security amounting to 110 per cent of the amount to be enforced. The securities may be provided by cash deposit with the Unified Patent Court or by written, irrevocable, unconditional and unlimited bank guarantee(s) of a credit institution authorised to do business in the territory of a member state of the UPC Agreement. Insofar as the collateral is provided by bank guarantee(s), the partial agreement of the parties with regard to the details of the deed of guarantee (Annex K93) must be observed. INFORMATION ON THE APPOINTMENT An appeal against this decision may be lodged with the Court of Appeal by any party whose applications have been wholly or partially unsuccessful within two months of notification of the decision (Art. 73(1) UPCA, R. 220.1(a), 224.1(a) RoP). INFORMATION ON ENFORCEMENT (ART. 82 EPGÜ, ART. ART. 37(2) UPC AGREEMENT, R. 118.8, 158.2, 354, 355.4 ROP) A certified copy of the enforceable judgement or enforceable order is issued by the Deputy Registrar on application by the enforcing party, R. 69 RegR. ORDER DETAILS Order No. ORD 598538/2023 in PROCEDURE NUMBER: ACT 459771/2023 UPC number: UPC CFI 9/2023 Nature of the action: Action for infringement2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com UPC CFI 9/2023166 Signed in Munich on 18 December 2024 Dr Zigann Presiding judge and judge-rapporteur Matthias Digitally signed by Matthias ZIGANN ZIGANN Date: 2024.12.17 14:40:58 +01'00' Brinkman Legally qualified judge Edger Frank Digitally signed by Edger Frank BRINKMAN BRINKMAN Date: 2024.12.17 16:03:39 +01'00' Pichlmaier Legally qualified judge Digitally signed Tobias Günther from Tobias Günther Pichlmaier Pichlmaier Date: 2024.12.17 14:44:36 +01'00' Vidon Technically qualified judge Signature numérique Patrice, de Patrice, Emmanuel, Emmanuel, Pierre, Pierre, Marie Vidon Marie VidonDate : 2024.12.17 16:19:39 +01'00' For the Deputy Chancellor Veronica Digitally signed by Veronika Ruisinger Ruisinger Date: 2024.12.18 11:32:19 +01'00'2024-12-18 LD Munich UPC CFI 9-2023 ACT 459771-2023 ORD 598540-2023 en-GBDeepL machine translation provided by www.veron.com

Key Holdings

• The withdrawal from the opt-out (exception) under Rule 5.7 RoP is formally effective if submitted via the CMS workflow, as the provided template is merely supportive, not mandatory.
• The plaintiff is not subject to a prohibition of legal action based on its IEEE Letter of Assurance (LOA), as it was submitted under the 2007 Bylaws which lacked such a prohibition, and later Bylaws do not dynamically alter existing LOAs.
• An infringement action for injunctive relief cannot be dismissed if the patent proprietor has made multiple acceptable FRAND offers (bilateral or patent pool) that satisfy antitrust law requirements.
• An infringer's FRAND objection against injunctive relief is only valid if they have submitted a concrete, non-delaying FRAND counter-offer, provided adequate security, and disclosed information on the scope of use, as per ECJ - Huawei v. ZTE.
• The counterclaims for annulment of European patent EP 3 611 989 were dismissed, affirming the patent's legal validity.

Tags

• Competition Law
• Exhaustion
• FRAND
• Infringement
• Opt-Out
• Patent Validity
• Standard Essential Patents
• Telecommunications
• UPC
• Unified Patent Court

Related Rules

• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 4 – Lodging of documents
• Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out
• Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out
• Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out
• Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out
• Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out
• Rule 8 – Party and party’s representative
• Rule 9 – Powers of the Court
• Rule 1 – Application of the Rules and general principles of interpretation
• 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 1 – Application of the Rules and general principles of interpretation
• Rule 1 – Application of the Rules and general principles of interpretation
• 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
• Article 4 – Rejection of Request
• Article 8 – Multiple Defendants and Third Parties
• Article 5 – Exceptions to General Jurisdiction
• Article 6 – Defendants Domiciled Outside Member States
• Article 6 – Defendants Domiciled Outside Member States
• Article 1 – Scope of Convention
• Article 1 – Scope of Convention
• Article 6 – Defendants Domiciled Outside Member States

Related Cases

• UPC_CFI_743/2025 – Skechers v Fast IP
• UPC_CFI_804/2025 – TP Link (USA) v Huawei (China)
• UPC_CFI_119/2025; UPC_CFI_401/2025 – Shanghai v Longi
• UPC CFI 425/2024, UPC CFI 751/2024 – JingAo Solar Co., Ltd. v Chint New Energy Technology Co., Ltd. et al.
• UPC_CFI_771/2025; UPC_CFI_802/2025 – Solvay v Zhejiang