Key takeaways
Pre-Action Notice Cannot Be Repaired During Litigation (Art. 102 TFEU; Huawei v ZTE)
The Milan Local Division held that the first step of the Huawei v ZTE framework carries decisive practical weight. A dominant SEP holder must identify the patent and specify the alleged infringement before commencing proceedings seeking an injunction or recall. Notice given on the same day as, or after, filing the statement of claim cannot cure the omission. A conditional injunction request and the public availability of ITU registers are not adequate substitutes.
A Successful FRAND Defence Does Not Eliminate All Remedies (Art. 63, 64, 67, 68 UPCA; Huawei v ZTE)
A well-founded FRAND defence blocked the injunction, recall and destruction in UPC_CFI_318/2024, but did not extinguish the patent holder’s remaining claims. The court granted a declaration of infringement, a finding of damages liability and a disclosure order covering past acts of use from the date of grant. The key distinction is between restricting exclusionary remedies and eliminating the patent holder’s rights altogether.
Alternative Codecs Do Not Necessarily Defeat SEP Dominance (Art. 102 TFEU)
The dominance assessment focused on commercial reality rather than the mere technical availability of competing standards. ASUS could not realistically market devices without HEVC support without materially impairing competitiveness, since consumers expect compatibility with widely used video formats. The court found that H.264, AV1, VP9 and EVC did not constitute immediately available substitutes, having regard to switching costs, network effects and interoperability requirements. Technical alternatives are not effective commercial substitutes where a standard has become commercially indispensable.
The UPC Cannot Issue a General Certificate of Essentiality (Art. 32, 56, 64 UPCA)
The court distinguished determining essentiality as an incidental issue within infringement proceedings from certifying standard-essentiality for the market as a whole. Article 32 UPCA does not confer jurisdiction to issue an abstract erga omnes declaration of essentiality vis-à-vis a standard-setting organisation or the market generally. The UPC may assess essentiality only insofar as necessary to decide an infringement or non-infringement action. SEP holders must frame their requested relief accordingly.
Ambiguous Amendments Cannot Preserve Protection Through Selective Interpretation (Art. 84, 123(2), 123(3) EPC; Art. 76(1) EPC)
In UPC_CFI_319/2024, the court rejected the sole auxiliary request because deleting the limitation requiring the current picture to belong to a layer other than the highest decoded layer extended the scope of protection contrary to Art. 123(3) EPC. The replacement wording in feature 1.1Aux1 did not clearly restore the deleted restriction. A proprietor cannot rely on selectively narrowing constructions absent from the claim wording to avoid an extension of protection. The decision illustrates the risk of the inescapable trap where an added-matter limitation is the only feature distinguishing the claim from the prior art.
Standardisation Drafts Can Become Prior Art Upon Upload (Art. 54(2) EPC)
In UPC_CFI_319/2024, the HEVC draft JCTVC-K0030_v3 was held to be publicly available from the date it was uploaded to the JCT-VC document management server, 12 September 2012. The decisive criterion was access by at least one person not bound by a confidentiality obligation, not the document’s status as a working draft. The court additionally noted that Ericsson itself had identified 12 September 2012 as the publication date in the patent’s description. The ruling confirms that disclosures made in the course of standardisation activities carry significant prior art risk.
Division
LD Milan
UPC number
UPC_CFI_318/2024 & UPC_CFI_730/2024 (infringement and FRAND);
UPC_CFI_319/2024 & UPC_CFI_728/2024 (infringement and revocation)
Type of proceedings
Infringement; FRAND defence; Counterclaim for revocation; Application to amend
Parties
Claimant / Revocation Defendant: Telefonaktiebolaget LM Ericsson
Defendants / Revocation Claimants: ASUSTeK Computer Inc.; Arvato Netherlands B.V.
Patent(s)
EP 2 727 342 (UPC_CFI_318/2024);
EP 3 076 673 (UPC_CFI_319/2024)
Jurisdictions
UPC
Body of legislation / Rules
Art. 25 UPCA; Art. 26 UPCA; Art. 32 UPCA; Art. 33(1)(a) UPCA; Art. 56 UPCA; Art. 63 UPCA; Art. 64 UPCA; Art. 65 UPCA; Art. 67 UPCA; Art. 68 UPCA; Art. 69 UPCA; Art. 72 UPCA; Art. 80 UPCA; Art. 102 TFEU; Art. 54 EPC; Art. 56 EPC; Art. 69 EPC; Art. 76(1) EPC; Art. 84 EPC; Art. 123(2) EPC; Art. 123(3) EPC; Art. 138 EPC; R. 19 RoP; R. 20.2 RoP; R. 30.1 RoP; R. 125 RoP; R. 171.2 RoP; Regulation (EU) 2022/2065 (DSA); Regulation (EC) No 1/2003; Huawei v ZTE (C-170/13)
