The Munich Local Division (LD) of the UPC issued the first permanent injunction based on a standard essential patent (SEP) in force in eight UPC member states (Austria, Belgium, France, Germany, Italy, the Netherlands and Sweden), subject to carve out measures in Germany due to prior national infringement proceedings.
Munich LD held Philips’ wireless charging technology (Qi technology) patent valid and infringed by Belkin entities and that three corporate officers of Belkin are liable as intermediaries.
Key takeaways:
- Dismissal of a stay of the proceedings: Munich LD declined to stay the proceedings on the basis of an appealable first-instance decision considering that the duration of the appeal procedure before the Bundesgerichtshof, if any, would be excessive, i.e. several years (see contrary decision: CoA, Mala v. Nokia, 17 September 2024, APL_26889/2024, UPC_CoA_2274/2024)
- No stay but a carved-out injunctions and damages: To avoid irreconcilable decisions, the UPC decision excludes Germany. It is questionable whether this practice complies with the UPCA which aims at creating a unitary judicial system. It is worth noting that Belkin International Inc. which was not involved in the German prior infringement proceedings is not subject to any carve out and thus is held liable and under injunction even in Germany. It will be interesting to see how Philips will enforce the injunction in Germany in practice.
- Validity: The patent is held valid despite various grounds of revocation raised by Belkin.
- Infringement:
- Interestingly, Munich LD refers to the Louboutin v. Amazon decision, issued by the CJEU in a matter relating to trademark infringement[1]. Thus, according to the LD, is an infringer anyone who uses a patent contrary to Articles 25 and 26 UPCA, where “use” means “active conduct and direct or indirect control over the acts of use“. It then finds all three Belkin entities to infringe the patent at stake.
- Based on CJEU and German caselaw, the corporate officers are held liable as intermediaries within the meaning of Article 63(1) UPCA. Their services are used by a third party (Belkin) to infringe a patent. As executives, they enable the company to do so. By providing their services to Belkin, they could have prevented Belkin from infringing the patent. Hence, the corporate offices are subject to the injunction under penalty as intermediaries.
- No FRAND defence: Belkin had not file any FRAND defence thus the decision does address the issue of a FRAND defence and namely whether a defendant can raise it to avoid an injunction.
[1] CJEU, Christian Louboutin v. Amazon Europe Core Sàrl and Others, 22 December 2022, C-148/21 and C-184/21
