Key takeaways
Challenging territorial competence requires more than denying infringement
The court held that simply denying infringement does not constitute a valid challenge to territorial competence under Art. 33 (1) (a) UPCA. Defendants must directly address and refute the “territorial connection element” to successfully contest jurisdiction. The court emphasized the distinction between a jurisdictional challenge and a defense on the merits.
Territorial jurisdiction over intermediaries hinges on the place of infringement
The court clarified that the rules governing territorial competence under Art. 33 (1) (a) UPCA apply equally to both infringers and intermediaries (Art. 62 UPCA). The location of the infringement, not the defendant’s role, is decisive.
Applicants must provide explicit evidence of urgency in preliminary injunctions
The court dismissed the application for a preliminary injunction due to a lack of urgency. The applicant’s failure to explicitly state the date they became aware of the alleged infringement, a crucial element in assessing unreasonable delay, proved fatal to their request. The court relied on the date of the alleged infringement to assess urgency, as the applicant remained silent on the actual date of awareness.
Cumulative requirements for preliminary injunctions don’t preclude judicial discretion
While reaffirming the cumulative nature of requirements for preliminary injunctions (patent validity, infringement, urgency, balance of interests), the court emphasized its discretion to assess other requirements even if one is potentially not satisfied, especially in early proceedings. This approach allows for a more contextual and balanced assessment.
Internet domain ownership in cases of patent infringement
While owning a domain name itself isn’t infringing, using it to offer or sell infringing products falls under Art. 25 (a) UPCA. This highlights the importance of examining the actual use of domains in patent infringement cases.
Division
LD Lisbon
UPC number
UPC_CFI_317/2024, ACT_35572/2024
Type of proceedings
PI proceedings re. patent infringement
Parties
Telefonaktiebolaget LM Ericsson (Ericsson) – Applicant/Claimant
ASUSTeK Computer Inc. (AsusTeK) – Defendant
Arvato Netherlands B.V. (Arvato) – Defendant
Digital River Ireland Ltd. (Digital River) – Defendant
Patent(s)
EP 2 819 131 B1
Body of legislation / Rules
Art. 33 (1) (a) UPCA, Art. 62 UPCA, Art. 25 (a) UPCA