EWHC: Acer, ASUS, and Hisense Are Entitled to Declarations of Interim Licenses

Mr. Justice Mellor's decision in Acer, Inc. et al. v. Nokia Technologies Oy is here.

 

I have grading to complete, after which I will be taking a few days off around Christmas.  Consequently, I hope to have something to say about this complex SEP decision--and about the UPC Court of Appeal's recent decision on damages in Bhagat Textile Engineers v. Oerlikon Textile GmbH & Co KG, and the Federal Circuit's decision yesterday on injunctive relief and willfulness in Wonderland Switzerland  AG v. Evenflo Co.--sometime after January 1.  This has proven to be a busy month!  Anyway, happy holidays to my readers--see you in 2026.

Judge Albright Issues Antisuit TRO Relating to Assertion in Munich of Claims for the Infringement of U.S. Patents

This dispute is reported this morning on Law360 and on ip fray.  When BSH v Electrolux came out earlier this year (see my blog post here, a more recent one noting an article about the case here, and a third I hadn't previously noted here), I predicted that before long it would cause a stir in the U.S.  Well, here we are.  It was reported recently that Onesta, an NPE, had asserted claims in the Munich I Regional Court against BMW for, inter alia, the infringement of two U.S. patents.  U.S. District Judge Albright has now issued a TRO ordering Onesta to refrain from making “any request, claim, application, or motion further pursuing or enforcing an injunction from a foreign court—including but not limited to the Munich Regional Court I—which would prohibit, deter, impose monetary fines on, or otherwise limit in any way BMW’s, and all of its corporate parents, subsidiaries, and affiliates, ability to fully and completely prosecute this action, request and enforce relief, or which would impair this Court’s ability to adjudicate any and all matters in this lawsuit”; and from making “any request, claim, application, or motion further pursuing or enforcing an injunction from a foreign court—including but not limited to the Munich Regional Court I—which would prohibit or otherwise limit in any way BMW’s, and all of its corporate parents, subsidiaries, and affiliates, ability to make, use, offer to sell, or sell within the United States or import into the United States any vehicle, product, or other item on the basis of Onesta’s United States patent.”  The TRO was granted ex parte, so there will be a further hearing.  The Law 360 article includes BMW’s complaint and motion(see pp. 13-14).

One very important issue lurking in the background, in cases like this and in the event that other litigants invoke BSH v. Electrolux in an effort to litigate claims for the infringement of U.S. patents in European courts, is whether those courts will apply U.S. or their own domestic law with regard to remedies, especially injunctive relief (which is much more limited in the U.S.--here's a decision rendered today, for example, by the Federal Circuit, which I will have to blog about at some point after I finish exam grading).  Another is whether an EU court might, at least in some cases, voluntarily stay litigation involving foreign patents so that claims involving those patents could be litigated on their home turf.  To my knowledge, civil law jurisdictions do not recognize, as a general matter, recognize the doctrine of forum non conveniens; but the BSH decision itself suggests the possibilities of at least stays pending invalidity determinations, and perhaps domestic law would allow stays more generally where there is parallel litigation in another country.  (I'd appreciate any information others may have on this issue.)  A third is whether paragraph 61 of BSH (which states that "It follows that, under the general rule laid down in Article 4(1) of the Brussels I bis Regulation, the courts of the Member State in which the defendant is domiciled have, in principle, jurisdiction in an infringement action brought against that defendant by the holder of a patent granted or validated in a third State which is domiciled in another Member State") authorizes a plaintiff such as Onesta, which if I understand correctly is domiciled in the U.S. (or is the German action being filed by a German subsidiary?  I don't think so, but if any readers know better, please correct me), to assert a claim in an EU member state against a defendant domiciled in a member state, for the infringement of a U.S. patent.  In other words, does the Brussels Regulation (Recast) apply in such a case, regardless of where the plaintiff is domiciled?  My understanding is that it does, but I would appreciate any insights from someone who is more knowledgeable than I about that very specific issue. 

Criminal Contempt in Munich

Florian Mueller has published a post on ip fray concerning a December 10 decision of the Munich I Regional Court, ordering the general manager of a patent infringement defendant to be imprisoned for one month, following the defendant’s alleged failure to comply with an Auskunft (essentially, an order for the provision of information that will be relevant to assessing damages) and a previously-imposed contempt fine of €15,000.  According to ip fray, the order likely will be stayed pending appeal (and, to be sure, may induce compliance with the Auskunft in the interim). 

To my knowledge, resort to contempt proceedings is not all that common either in Germany or the U.S.—and this use of criminal contempt is, according to ip fray, unprecedented in Germany (and would be unavailable in the UPC).  (For a good discussion of contempt proceedings in U.S. patent cases, see my former student Nina Elder’s article The Contours of Contempt in Patent Law After TiVo, Inc. v. EchoStar Corp.: An Empirical Study, 25 Minnesota Journal of Law, Science & Technology 145 (2023), previously noted on this blog here.  She describes criminal contempt in U.S. patent cases as "nearly non-existent," id. at 147 n.18 (citing John M. Golden, Injunctions as More (or Less) than “Off Switches”: Patent-Infringement Injunctions’ Scope, 90 Tex. L. Rev. 1399, 1409–10 (2012).)  On a related note, which I discuss in chapter 6 of my forthcoming book Remedies in Intellectual Property Law, the U.S. does not impose criminal sanctions for patent infringement itself—although many other countries do, at least in principle.  (Germany is one, though in practice German prosecutors rarely if ever file charges for patent infringement.)  The criminal prosecution of IP infringement may be most common in certain Asian jurisdictions, as discussed by a group of authors (Masabumi Suzuki, Su-Hua Lee, Byungil Kim, Xiuqin Lin, Prashant Reddy, Heng Gee Lim, Jyh-An Lee, and Kung-Chung Liu) in a chapter titled Civil Follow Criminal or Criminal Follow Civil Procedure as Models to Deal with IP Infringement: Asian vis-à-vis Western Approaches, in Kreation Innovation Märkte - Creation Innovation Markets:  Festschrift Reto M. Hilty 663 (Florent Thouvenin, Alexander Peukert, Thomas Jaeger & Christophe Geiger eds., Springer 2024), previously noted on this blog here—but the only jurisdiction discussed in that chapter that appears to make extensive use of criminal prosecution for patent infringement appears to be Japan.  (The TRIPS Agreement, for its part, only requires criminal sanctions for “wilful trademark counterfeiting or copyright piracy on a commercial scale,” and in most places I am aware of criminal sanctions are generally reserved for copyright and trademark infringement, and for trade secret misappropriation.)  Among the reasons for some Asian jurisdictions’ more extensive use of criminal law are, according to Suzuki et al., the perceived need for additional deterrence, in view of the practical difficulty of obtaining preliminary injunctions, enforcing permanent injunctions, and/or obtaining fully compensatory damages awards; and, relatedly, the ability of civil litigants to file criminal complaints as a means for obtaining discovery.  (For other useful sources of information on criminal IP law, see, e.g., Eldar Haber,  Criminal Copyright (Cambridge Univ. Press 2018), and other sources cited in chapter 6 of my book.)

Anyway, the German court’s resort to criminal contempt certainly is notable—and, somewhat paradoxically perhaps, contrasts with Japan, where--despite the country's heavier reliance on criminal law generally--Professor Suzuki writes that courts do not order criminal contempt for failure to comply with injunctions.  As for Germany, however, I wonder if we will see more of this, as a deterrent to perceived non-compliance with court orders?

AIPPI 2025 Study Question Q296: Preliminary Injunctions: Requirements for compensating damage suffered by defendant

One of the topics I discuss at some length in other forthcoming book, Wrongful Patent Assertion:  A Comparative Law and Economics Analysis (Oxford Univ. Press, forthcoming May 2026), is whether a patentee who obtains a preliminary injunction on the basis of a patent that subsequently is determined to be invalid or not infringed should be obligated to compensate the temporarily excluded defendant for its losses, and if so in what amount.  As I discuss in the book, practice around the world differs in many important respects.  Courts in the U.S. almost always limiting the patentee’s liability to the amount of the injunction bond it is required to post (which amount may turn out, ex post, to be undercompensatory).  The U.K. requires plaintiffs to agree to a cross-undertaking, essentially a contract obligating the payment of compensation in the event the preliminary injunction is thereafter lifted, while the CJEU has given mixed signals regarding what is permitted under EU law (see, e.g., discussion on this blog here).  Anyway, the AIPPI has made available its Resolution, its Summary Report, and the individual reports for 43 members, including not only the U.S. and the U.K. but also China, Japan, South Korea, India, several EU member states, and a smattering of countries in South America, Asia, and Middle East.  Among these members, there is substantial support for a rule that would require, as a general matter, full compensation of the defendant’s actual damages suffered as a result of the wrongly-issued preliminary injunction (as opposed to a more plaintiff-friendly approach that would limit liability to bad-faith assertions), albeit perhaps subject to some mitigating factors.  Whether or not you are an AIPPI member yourself, you can download all of the reports by going to aippi.org, clicking on “Library” and then “Search,” and then typing in “Q296.”

On this same topic, Hans-Jürgen Ahrens recently published an article titled Schadensersatz nach aufgehobener einstweiliger Verfügung wegen nichtigen Arzneimittelpatents—zugleich Besprechung von BGH GRUR 2025, 574—Glatirameracetat (Damages compensation following the lifting of a  preliminary injunction concerning an invalidated medicament patent—As well as case law of the Federal Supreme Court, GRUR 2025, 574—Glatirameracetate).  (The German case itself is related to the European Commission’s investigation of Teva relating to the drug Copaxone, which I have discussed previously here and will also be discussing, albeit briefly, in my forthcoming book.)  Here is a copy of the BGH decision itself, in which the court holds, inter alia, that the infringement defendant seeking to recover its own lost profit caused by the preliminary injunction may not also claim the infringer’s profit in excess of that lost profit—though it leaves open the question whether the defendant could choose to use any of the three methods for calculating its own actual loss, including the patentee’s profit, as the (single) method for estimating its actual loss.  For discussion of a recent British decision rejecting the argument that defendants may recover the plaintiff’s profits, see my previous blog post here.       

“FRAND Cases in Context” Due Out in January

Jorge Contreras’ new edited volume, FRAND Cases in Context (Edward Elgar Publ.) is now scheduled for publication in January.  The book will be available on an open-access basis, and for sale in hardcover.  My chapter, on the U.S. Apple v. Motorola litigation, is one of the chapters.  As the book description states, the volume “provides concise summaries and analyses of 28 leading global cases concerning the licensing of standards-essential patents on fair, reasonable, and non-discriminatory (FRAND) terms. Cases are drawn from leading jurisdictions in global FRAND disputes across Asia, Europe, North America, and South America.”  More information is available here.

 

 

UPC Court of Appeal Invokes Proportionality in Approving Injunction Carve-Out

In the joined appeals in Meril Italy Srl et al. v. Edwards Lifesciences Corp., UPC__CoA__A464/2024 et al. (Nov. 25, 2025), Panel 1 of the UPC Court of Appeals decided several important issues, most notably relating to inventive step, in regard to a claim of infringement of EP 3 646 825, for “a system comprising a prosthetic heart valve and a delivery catheter” (p.6).  For present purposes and for brevity, I will focus exclusively on the (also very important) remedy question presented, namely whether the hardship resulting from a permanent injunction directed against certain infringing products would be disproportionate, and therefore should be subject to a carve-out.  The Court concludes that the answer is yes.

To put the matter in perspective, UPCA article 63(1) states that “Where a decision is taken finding an infringement of a patent, the Court may grant an injunction against the infringer aimed at prohibiting the continuation of the infringement,” and article 64(1) states that the court “may order . . . that appropriate [corrective] measures,” such as recall, removal, and destruction, be taken.  Article 64(4) further states that “[i]n considering a request for corrective measures pursuant to this Article, the Court shall take into account the need for proportionality between the seriousness of the infringement and the remedies to be ordered, the willingness of the infringer to convert the materials into a non-infringing state, as well as the interests of third parties.”  There is no corresponding provision in article 63.  The UPCA should be interpreted in conformity with the Enforcement Directive, however, which states in article 3(2) that “remedies shall . . . be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse”—though as most readers probably are aware, it has long been a matter of debate whether this provision requires courts to consider the proportionality of injunctive relief in every case, or only certain special cases, or (as some have argued) perhaps no cases at all, as long as proportionality is guaranteed “from the functioning of the patent system as a whole.”  See, e.g., Lea Tochtermann, Injunctions in European Patent Law, 11 ZGE//IPJ 257, 265 (2019). 

Anyway, in the present matter, the Munich Local Division had concluded that one of Meril’s product lines (the Meril XL devices), though infringing, should be subject to a carve-out from permanent injunctive relief and corrective measures, because for certain patients there are no good substitutes for a product of the same size; but for Meril’s intermediate-size products, the evidence did not demonstrate any “notable enhancement in patient care” (p.46 para. 192), and thus no carve-out would be appropriate.  The Court of Appeal affirms, and in doing so actually makes it a bit easier for Meril to keep the XL devices on the market.

The Court begins its discussion of these matters by stating that “Art. 64 IPCA does not merely confer on the Court the power to grant the measures requested.  The Court has no discretion” (p.45, para. 187), and that “[t]he same applies to permanent injunctions” (p.46, para. 188).  “Accordingly, where the proprietor files an infringement action and the Court finds that an intellectual property right has been infringed or is threatened to be infringed, it shall issue an order prohibiting the continuation of the infringement unless there are special reasons for not doing so” (p.46 para. 189).  However—and this, I think, is significant:

A special reason for denying an injunction may apply if, in the circumstances of the particular case, granting an injunction does not comply with the general obligations of Art. 3 of the Enforcement Directive, in particular the obligation that the remedies shall be proportionate. In addition, the Court must ensure that the application of its power under Art. 63(1) UPCA is not in conflict with fundamental rights protected by the European Union legal order or with other general principles of EU law, such as the principle of proportionality (CJEU, judgement of 29 January 2008, Promusicae, C-275/06, ECLI:EU:C:2008:54, paragraph 68; judgement of 27 March 2014, UPC Telekabel Wien, C-314/12, ECLI:EU:C:2014:192, paragraph 46; judgement of 16 July 2015, Coty Germany, C-580/13, ECLI:EU:2015:485, paragraph 34).

 

When considering the proportionality of injunctive relief and corrective measures, the Court may take into account not only the interests of the parties to the litigation but also the interests of third parties, such as patients. The Munich Local Division correctly held that the interests of the patients justify an exception to the right to injunctive relief and corrective measures if it is established that the infringing embodiment is the sole available treatment method or represents an improvement upon the available treatment methods, resulting in a notable enhancement of patient care (id. paras. 190-91).

As noted, the Court agrees that the XL devices may remain on the market, but disagrees with the Munich Local Division in one respect:

As far as Meril’s XL devices are concerned, the Munich Local Division acknowledged a legitimate interest in their availability. It established that there may be patients who can only be adequately treated with Meril’s XL devices, in view of inter alia the fact that Edwards’ products are not recommended for native annulus sizes of more than 28 mm. It therefore exempted XL devices that were scheduled for implementation in an individualized patient by 15 November 2024 from the injunction and the corrective measures. This part of the judgment is not challenged on appeal.

 

In respect of XL devices not scheduled for implementation, the Munich Local Division held that the interest in their availability is adequately addressed through Edwards’ Medical Request Portal. Via this online portal, practitioners can upload relevant patient data. A team of doctors at Edwards review the data and determine whether use of Edwards’ product is an option. If the doctors find that using Edwards’ products is not an option, Edwards will grant an exception to the injunction.

 

The Court of Appeal agrees with Meril India and Meril Germany that Edwards’ portal does not adequately address the legitimate interest in the availability of Meril’s XL devices. The availability of these products should not depend on the willingness of Edwards to maintain the portal or on the assessment by Edwards’ team of doctors. A notification of an intention to use Meril’s XL device by a physician confirming that such product is the only available treatment option for a particular patient should be sufficient. The Court of Appeal will therefore amend the injunction and orders for corrective measures accordingly and maintain them on the basis of an auxiliary request which the parties have drafted in common accord during the oral hearing in the appeal proceedings.

 

Under the amended orders, the making, offering, placing on the market and use of Meril’s XL devices, and the importing and storing of the products for those purposes, are not covered by the injunction and corrective measures, provided that a physician has submitted the required notification. Contrary to the concerns put forward by Meril India and Meril Germany, this implies that the injunction does not prohibit them from making doctors aware of the availability of the XL devices where it is the only treatment option for a particular patient (p.47, paras. 194-97).

The Court concludes this section of the judgment by noting that, although the Munich Local Division “regarded Meril India and Meril Germany as unwilling licensees,” its “findings were not decisive for the Court’s decision to grant the injunction and the corrective measures” with respect to the intermediate-sized products.  The Court of Appeal therefore does not need to review the “unwilling licensee” issue.  It also permits Edwards to publish the decision and amends the costs award.

Alba, Helmers and Love on Octane Fitness’ Effect on PAEs and Innovation

Tommaso Alba, Christian Helmers, and Brian J. Love have posted a paper on ssrn titled A Tale of Trolls and Fees:  The Role of Fee-Shifting in Patent Litigation.  Here is a link to the paper, and here is the abstract:  

Patent Assertion Entities (PAEs) are often viewed as taxing innovative activity; we show how fee shifting in patent litigation can effectively deter their more frivolous assertions, increasing exposed firms' R&D, innovation output, and startup success. Our identification relies on the U.S. Supreme Court's 2014 ruling in Octane Fitness v. ICON Health & Fitness, which broadened courts' discretion to award attorneys fees against exceptionally weak infringement claims. Using a quasi-regression discontinuity design comparing cases pending at Octane's release with those filed and decided before or after, we find that the decision increased defendants' willingness to contest weak claims and prompted plaintiffs, especially PAEs, to file stronger ones. Pending cases saw more fee awards and lower settlement as well as plaintiff success rates; subsequent PAE cases involved stronger patents and higher success rates. A difference-in-differences analysis further shows that Octane boosted innovation: public firms that were particularly exposed to PAE assertions prior to Octane increased R&D and patenting in response, and private startup firms performed better in venture capital markets.

On a somewhat related note, the Federal Circuit last week affirmed a judgment awarding fees in EscapeX IP, LLC v. Google LLC, precedential opinion by Judge Stark joined by Judges Taranto and Stoll.  The court found no abuse of discretion in view of the district court’s finding—“well-supported in the record and . . . part of the totality of circumstances,” that "EscapeX failed to conduct an adequate pre-suit investigation” (p.8).  The court also affirmed additional fees and an award pursuant to 28 U.S.C. § 1927, in connection with the patentee’s Rule 59(e) motion to amend the judgment.