Ericsson v (1) ASUSTek (2) Arvato (3) Digital River Ireland (UPC_CFI_317/224)
Decision date:
15 October 2024
Osborne Clarke summary
- This was the first decision concerning a preliminary injunction application issued by the Lisbon LD. However, the application for provisional measures was ultimately rejected.
- Ericsson was found not to have acted with sufficient urgency in initiating the preliminary injunction proceedings. The court emphasised that the onus is on the claimant to establish that it has not delayed proceedings unnecessarily. When the applicant is silent about the date it became aware of the infringement and the court has no way of ascertaining it, the court may solely rely on the date of the alleged infringement when assessing unreasonable delay. This emphasises that the claimant must explicitly show urgency.
- The requirements for granting preliminary injunctions (validity of the patent, actual or imminent infringement, urgency and balance of interests) are cumulative, which allows the court not to address them all if one aspect is not satisfied. However, such an assessment may not always be possible at an early stage of the proceedings so the court may exercise discretion in assessing the other requirements presented by the parties.
- Ericsson failed to refute the defendants' argument that it would have known of the alleged infringement before its test purchase of the infringing products in May 2024, either after the launch of the products in 2019 and 2021 (which was publicised widely online) or as a result of concurrent proceedings between Ericsson and Lenovo in the US relating to the accused modules in October 2023 or separate ongoing SEP licensing negotiations between the parties to this action.
- Despite its finding on lack of urgency, the court still considered the issues of validity and infringement, finding the patent to be prima facie more likely to be valid and infringed than not.
- For the purposes of Article 25(a) UPCA, merely owning and operating an internet domain constitutes infringement if the infringing products are offered and/or sold on that domain.
Issue
Curious about how UPC decisions might impact your business? Have questions about the UPC?
Reach out to our patents team for expert guidance and support.