Home » UPC decisions » Local Division » LD Lisbon, October 15, 2024, order dismissing PI based on patent infringement, UPC_CFI_317/2024

LD Lisbon, October 15, 2024, order dismissing PI based on patent infringement, UPC_CFI_317/2024

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Key takeaways

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.

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.

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.

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.

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


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