DISH v Aylo (UPC_CFI_471/2023)

• DISH sued various Aylo group companies for alleged literal infringement, or alternatively for infringement under the doctrine of equivalence, of its patent concerning a method for the representation of a rate-adaptive (data) streaming by Aylo's streaming services. DISH's patent had expired by the time of the oral hearing. Aylo counterclaimed for invalidity on the basis of lack of novelty, lack of inventive step and insufficient disclosure.
• Aylo had argued that DISH was abusing the law by filing multiple actions relating to the same acts and patents from the same patent family. For example, DISH had brought a patent infringement action before the Munich Regional Court the day before this infringement action relating to the same acts and another patent from the same patent family. However, the Mannheim LD found that this did not constitute an abuse of rights as a patent proprietor (or party able to sue) is free to decide for each of its patents that have not been opted out during the UPC's transitional period whether to assert them before the national courts or the UPC (Article 83 UPCA).
• At the oral hearing, DISH filed an application for a declaration of patent infringement. The court rejected this as an inadmissible extension of the action under Rules 263.1 and .2(a) RoP. The Mannheim LD stated that the application was not caused by the expiry of the patent and therefore by the cessation of the claim for injunctive relief. It held that it went beyond the original claim for injunctive relief because DISH was instead seeking a declaration of patent infringement.
• A declaration of patent infringement is one of the remedial measures available under Article 64 UPCA, but this is in addition to a claim for injunctive relief under Article 63 UPCA. A claim for declaratory relief therefore exists independently of a claim for injunctive relief.
• The court found that there was no apparent reason why the application for declaratory relief was only filed at the oral hearing. The Mannheim LD went further in noting that even if the extension of the claim had been permitted, the application for declaratory relief would have been inadmissible because DISH lacked an interest in the remedy. This was because Aylo sold their own products and, as the patent had expired, there would be no third party providers who would need to be notified in the form of a judicial determination to deter them from future infringement.
• Claim 1 of the patent as granted was found to extend beyond the application filed but DISH had submitted a number of auxiliary requests. The patent was found to be valid in an amended (narrower) form (that of auxiliary request 12).
• The Mannheim LD found that there was no literal infringement or infringement by equivalence. The court noted that there was some question as to which doctrine of equivalence should be applied and whether the UPC should develop its own doctrine or whether it should apply the substantive law of the UPCA contracting member states to the respective acts.
• The court stated that this did not need to be decided in the present decision and, irrespective of which doctrine was applied, equivalent patent infringement was excluded according to all equivalence doctrines or tests of UPCA contracting member states "if there is no technical-functional equivalence of the replacement means in the sense that the modified means do not essentially perform the same function to achieve essentially the same effect. To the extent that the same function is not taken into account, at least essentially the same effect is taken into account."
• The Mannheim LD concluded that there was no infringement by equivalence because the means of substitution were not equivalent means: they did not perform essentially the same function and did not have essentially the same effect. As a result of this finding, it was not necessary for the court to decide whether the means of exchange named by DISH were actually realised by the challenged embodiments.
• This approach to infringement by equivalence was different to that taken by The Hague LD in Plant-e v Arkyne. In this decision, the Mannheim LD said that The Hague LD had applied the principles developed in Dutch case law "without further justification, but with the consent of the parties". In what was perhaps a plea to the Court of Appeal to decide on the issue, the Mannheim LD stated that without a uniform approach to the scope of protection of a European Patent (both literal and equivalence protection), the UPC's aim of eliminating fragmentation in the European patent market would remain incomplete.

This analysis is based on a machine translation of a decision not available in English.