Irides: Weekly patent litigation update

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world. Taking its name from the plural of “iris” - a nod to the ability of Irides to see what’s happening around the world.

Our latest edition - 3 March 2025 - is below:

UK - STOP PRESS

Court of Appeal grants Lenovo's request for interim licence declaration.

Today, the UK Court of Appeal handed down its appeal judgment in Lenovo v Ericsson allowing Lenovo’s appeal and granting a declaration that “a willing licensor and a willing licensee in the situation of the parties would agree to, and actually enter into, a short-term cross-licence”. As a result, if Ericsson does not enter into the short-term cross-licence that the Court of Appeal has deemed to be FRAND, it will be deemed by the UK Court to be an unwilling licensor. In a decision that closely mirrors the Court of Appeal’s decision in Panasonic v Xiaomi [2024] EWCA Civ 1143, Ericsson were further held to be in breach of their obligation of good faith under clause 6.1 of the ETSI IPR Policy by pursuing their claims for injunctions and equivalent remedies in foreign courts and tribunals, despite Lenovo having undertaken to enter into a licence on the terms determined by the UK Court to be FRAND. The declaration was held to serve a useful purpose and was not to be refused on the grounds of comity.

More detail will follow in next week's Irides Update.

CJEU

CJEU Clarifies Jurisdictional Issues in Cross-Border Patent Disputes – Electrolux.
(C-339/22)

On 25 February 2025, the CJEU delivered a decision in BSH v Electrolux (C-339/22), providing important guidance on jurisdictional rules for cross-border patent disputes under the Brussels I bis Regulation. The decision confirms that:

• A patent holder can sue for infringement in the courts of the EU member state where the defendant is domiciled, even if the patent was granted in another EU country. A validity challenge raised as a defence does not strip the court of its jurisdiction over infringement.
   
• Only the courts of the EU member state where the patent was granted have (exclusive) jurisdiction to rule on their validity. If an alleged infringer raises a validity defence, the court hearing the infringement case cannot rule on that defence or declare foreign EU patents invalid. The defendant must bring separate revocation proceedings in the granting state. In such circumstances, the court hearing the infringement case may grant a stay if it considers it to be justified but is not obliged to do so.
   
• The Court confirmed that Art. 24(4) of the Regulation does not apply to patents granted outside the EU (e.g. in the UK, Turkey, or even further afield as the Court has not restricted its judgment to European patents granted by the EPO). This means that an EU court where the defendant is domiciled can decide infringement claims involving non-EU patents. To the extent that validity is raised as a defence, the court can assess the validity of non-EU patents with inter partes effect (i.e. it will not formally invalidate the patent in the third country). Thus, EU courts have broader jurisdiction to consider non-EU IP rights than they do to consider EU IP rights, contrary to the approach that the Advocate General had recommended.
   
• Only where an equivalent provision to Art. 24(4) of the Regulation had been incorporated into an international treaty as between the country in which the patent was granted and the EU as whole (as in the Lugano Convention), or the EU member state in question, is the EU court required to decline jurisdiction in relation to validity. No such treaty is in place in relation to Turkey (the subject of the current dispute).
   
• Where a related case is already ongoing in a non-EU country, EU courts may stay or dismiss proceedings under Art. 33 & 34. However, this is discretionary, and the EU court must assess whether there is a risk of conflicting judgments and whether staying proceedings would serve the proper administration of justice.

The decision attempts to strike a balance between efficiency in infringement litigation and respect for national sovereignty over patent validity, although not everyone will agree that the right balance has been achieved. The approach adopted aims to prevent defendants from using validity challenges to derail infringement claims while allowing patent holders to consolidate enforcement actions in a single EU jurisdiction, although use of validity challenges to derail cross-border claims is potentially available for patents granted within the EU.

Our further analysis can be found here.

UPC

Hamburg Local Division dismisses infringement claim and nullity counterclaim.
(UPC_CFI_58/2024)

On 19 February 2025, the Hamburg Local Division rejected an infringement claim brought by Lionra Technology against Cisco Systems, but upheld the patent’s validity in its main action decision. Lionra asserted its European patent EP 2 201 740 B1, which relates to fast packet switching in wireless networks that seeks to reduce latency time during packet transmission.

Lionra alleged that the defendant Cisco companies infringed its patent in Germany in particular in relation to Cisco’s network switches in the “Catalyst 9000” product family which contain at least one “Cisco Unified Access Data Plane” (UADP) chip. Switches are devices that distribute data streams. They allow connected devices in a network to share information and communicate, thus simplifying shared use of network resources by packaging information in data packets. Lionra argued that the network switches of Cisco’s Catalyst 9000 series directly infringed its product claim and indirectly infringed its method claim.

The US Cisco entity manufactures the allegedly infringing articles. The German Cisco entity displays them on the German homepage it operates. Lionra alleged that the US Cisco entity meanwhile distributed the products in Germany.

There was a dispute about Lionra’s ownership of the patent in suit. Cisco disputed the alleged transfer of ownership from the original applicant company to Lionra. The Court noted the rebuttable presumption that Lionra is entitled to be registered as the patent proprietor in view of the fact that it is listed as such on the register. Cisco relied on inter alia that the purchase agreement for one of the transfers was only submitted to the patent office in redacted form and the fact that Lionra did not attach a written witness statement to the statement of claim relating to the certificate for payment of purchase price it relied upon. However, the Court considered that Cisco’s arguments seeking to cast doubt on the presumption of correctness were not sufficient to overcome the presumption.

In resolving a dispute on claim interpretation, the Court applied the principles of construction from A69 of the EPC and the Protocol on its Interpretation as confirmed by the Court of Appeal in Nanostring v 10x Genomics.

On infringement, the Court held certain features of the claims to be missing from the attacked embodiment. The Court took into account Lionra’s expert report on which it relied for infringement in reaching its conclusions.

In its revocation counterclaim, Cisco argued lack of novelty and obviousness. The Court rejected all of Cisco’s lack of novelty allegations.  It found that none of the cited prior art disclosed a direct memory access (DMA) device with programmable channels which executes the write operations in parallel without switching on the main processor (the CPU), which was a feature of the claims. On inventive step, the Court rejected Cisco’s arguments based on various combinations of prior art, noting that the documents are based on different technical approaches and therefore the skilled reader has no reason to combine the separate self-contained solutions . It went further that even if the skilled person had been so motivated, the claims were still inventive over the combined documents as several features of the claims were not rendered obvious.

Given this outcome, the Court ordered payment of the costs of the proceedings be split in a 40:60 ratio between Lionra and Cisco.

UPC

Munich Local Division gives Order on evidence preservation in SWARCO v Yunex
(UPC_CFI_156/2024)

This application for the preservation of evidence related to SWARCO’s allegation that Yunex has infringed its patent by an optical system in LED panels used for outdoor displays and in particular certain panels that had been installed in Germany. SWARCO’s allegation was that the LED panels in use were identical to a sample device. However, to further substantiate its claim SWARCO sought an evidence preservation order under Art. 60(1) UPCA to allow their expert to remove and dismantle a display module of one of Yunex’s LED panels.  

SWARCO accepted in an earlier oral hearing that the evidence preservation order would be unnecessary if Yunex admitted that the products in use in Germany were identical to the analysed sample. Although Yunex did not make this admission, the Court held that Yunex’s statement of objection did not make a substantiated denial, and that, pursuant to r. 191.1.a.ii and 171.2 RoP, SWARCO’s assertion that Yunex’s product was identical to the sample was deemed to be undisputed between the parties. The Court held that this would continue to be the consequence in the main proceedings and it would be an abuse for Yunex to subsequently make a denial.

Under r. 360 RoP, the application for preservation of evidence was therefore deemed to be redundant and was rejected. Addressing a regulatory gap in r. 198.2 RoP, the Court ordered that the decision on costs remains reserved for the main proceedings, which SWARCO must initiate within a period of 31 calendar days or 20 working days.

USA

Federal Court of Appeal Upholds PTAB Decision on LED Patent Claims.

In Lynk Labs v Samsung, the key legal issue was whether, under the pre-AIA patent statute, a third party patent application that is abandoned between publication and grant (and thus never becomes a granted patent) qualifies as prior art in IPR challenges from its filing date, or whether this is only the case after its publication date.

35 USC 102 (pre-AIA) provides that: “A person shall be entitled to a patent unless —

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States”

Lynk Labs argued that 35 USC 102(a) and (b) sets out when a printed publication can be prior art, and that these provisions contain a requirement that the printed publication be publicly accessible to qualify as prior art. On the basis that a patent application is not publicly available until it is published, Lynk Labs therefore suggested that a patent application filed pre-priority, but published post-priority, could not be prior art for its patent.

However, the Court held that although s.102(a) and (b) apply to books, articles or other types of printed publications, Congress created s.102(e)(1) as a special rule for published patent applications. 35 USC 102(e) (pre-AIA) provides that a person shall be entitled to a patent unless:

“the invention was described in —

(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or

(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language;”

The Court explained that the effect of s. 102(e)(1) is that, even if a patent application was published after a claimed invention, it may serve as prior art to the invention if the application was filed before the invention. This prevents patent applications that are later published but subsequently abandoned from being treated differently from patent applications that later become granted patents. Lynk Labs’ further argument that the historical context of the statute provides a different interpretation were rejected. On that basis, the Court of Appeal upheld the decision that Lynk Labs’ claims were unpatentable due to obviousness in light of the prior art.