Key takeaways
The Düsseldorf Local Division partially upheld the patent-in-suit, which relates to “SHARING MULTIMEDIA CONTENT IN A PEER-TO-PEER CONFIGURATION”, and found that the patent in its upheld version was indirectly infringed by the Disney+ streaming service. The decision focusses on claim construction, validity and some procedural aspects, applying the UPC’s established case law, for example regarding the inventive step test introduced in Meril v Edwards and Amgen v Sanofi.
Auxiliary requests are to be reviewed in the order secified by the Claimant, and dependent claims can be defended even without filing an auxiliary request under Rule 30 RoP (Application to amend the patent); cf. UPC_CoA_473/2025.
mn. 230: “In a decision handed down after the oral hearing in this case, the Court of Appeal held that R. 30 RoP does not require that the patentee submit an auxiliary request as a prerequisite for defending dependent claims (UPC_CoA_473/2025, Decision of 13 July 2026, Headnote 5 – Fujifilm v Kodak). In any case, this has no bearing on the present case. The Claimant explicitly based some of its auxiliary requests on dependent claims 4
and 8. According to auxiliary request D1, claim 1 is further limited by the features of dependent claim 4. The additional features of dependent claim 8 are subject to auxiliary request F1. Auxiliary request K6 combines the claimed features of auxiliary requests D1 and F1, therefore adds the features of both dependent claims 4 and 8 to claim 1 as granted. Further auxiliary requests combine the features of dependent claims 4 and 8 and also include additional features. As the Claimant has expressly specified an order for all auxiliary request, including those containing the features of claims 4 and 8, this order remains decisive.”
The argument that a current implementation does not infringe the patent can only be raised successfully, if such implementation is attacked as a separate embodiment or if the Defendant substantiates that the previous implementation is no longer in use and provides a cease-and-desist declaration in that regard.
mn. 322 et seqq: “In their rejoinder in the infringement action, the Defendants argue that a new implementation (‘current implementation’) of the Disney+ cast receiver integrates the Disney Media Player, which does not use ‘currentTime’ to determine the playback position.
The ‘current implementation’ is not being asserted as a separate embodiment in the present proceedings.
It is not clear from the Defendants’ submission that the ‘original implementation’, as challenged by the Claimant, is no longer in use at all (see rejoinder in the infringement action, mn. 59). Furthermore, the Defendants have not issued a cease-and-desist declaration in this regard.”
The right to information under Article 67 UPCA and Rule 191 RoP can be restricted to protect trade secrets under Rule 262A RoP .
While the Court made it clear that the claimant has a right to information and accounting under Articles 67 and 68(3) UPCA, it also confirmed the Defendants’ legitimate in the protection of trade secrets and issued a confidentiality order pursuant to Rule 262A RoP, restricting access to outside counsel and two pre-named representatives, limiting the use of the information to be provided to damage calculations.
Division
Local Division Düsseldorf
UPC number
UPC_CFI_297/2025, UPC_CFI_651/2025
Type of proceedings
Main infringement action and counterclaim for revocation
Parties
CLAIMANT:
InterDigital CE Patent Holdings, SAS (Issy-les-Moulineaux, France)
DEFENDANTS:
1. The Walt Disney Company
2. The Walt Disney Company (Benelux) B.V.
3. Disney Interactive
4. Disney Electronic Content, Inc.
5. Disney Platform Distribution, Inc.
6. The Walt Disney Company Limited
7. Disney Enterprises, Inc.
8. Disney Streaming Services LLC
9. Disney Media & Entertainment Distribution LLC
10. Disney Entertainment & Sports LLC
11. BAMTech LLC
Patent(s)
EP 2 080 349
Body of legislation / Rules
Rules 9, 19, 30, 36, 118.8, 191, 262A, 263.1, 336 RoP, Art. 24(4), 26(1), 32(1)(e), 33, 63(1), 67, 68(3), 82(2) UPC, Art. 54, 56, 69, 84, 123(2) EPC
