UPC – the Court of Appeal denies requests for more comparable licenses for FRAND defence
Written By
Of Counsel
UK
I am a British and European patent attorney in our Intellectual Property group in London. I am involved with UK patent infringement actions relating to standard essential patents (SEPs), FRAND setting litigation and globally coordinated litigation, as well as SEP essentiality reviews and valuation. I am also authorised to represent clients before the Unified Patent Court (UPC) that opened in Europe in June 2023.
After the UPC recently issued its first decision concerning a SEP case on 13 September 2024, see our post on this here, the UPC Court of Appeal issued another SEP-related decision on the 24 September 2024.
Panasonic sued OPPO and Xiaomi for infringement of multiple patents and is seeking injunctions. In response, OPPO filed a so-called FRAND defence and as part of this requested that Panasonic be ordered to provide OPPO with additional comparable licences. The Mannheim LD had refused these requests and OPPO filed an appeal.
The Court of Appeal held that the Mannheim LD had been correct in refusing the requests at this stage. They agreed that this was not appropriate at the current stage of the proceedings, as no decision has yet been made on the question of willingness.
We now wait for the oral hearing on the full dispute, which is set for 7-9 October 2024 in Mannheim. It will be the first time that a FRAND defence is considered by the UPC.
Background
There are currently only a few SEP-related proceedings before the UPC. One of these is the Panasonic vs. OPPO and Xiaomi dispute. Panasonic filed infringement actions in July 2023 relating to multiple patents relevant to the 3G and 4G cellular standards. The value of the claim is given as over 50m EUROS.
At least six infringement actions, against Xiaomi and OPPO, were filed before the Munich LD, and at least three injunction claims against Xiaomi and Oppo were filed before the Mannheim LD. In response the defendants counterclaimed for revocation. OPPO also filed a FRAND rate determination counterclaim.
OPPO raised a FRAND defence and filed requests (under R.190 RoP) for an order for Panasonic to produce evidence regarding comparable licences and divestment transactions and also requested permission to introduce its own licence agreements. In May 2024 Mannheim LD rejected the requests (ORD_598191/2023, ORD_3980/2024 and ORD_6152/2024) and gave the reason as, at the current stage of the proceedings, no decision had yet been made on the question of OPPO's…
