Kapischke on Interim Licenses and AILIs

Justus Kapischke has published an article titled Interim Licences and Anti-Interim-Licence Injunctions:  Semi-strict non-interference or rules for the race?, 5/2026 GRUR 275.  Here is the abstract:

This article analyses and provides background information on two recent decisions of the LG Munich I and the LD Mannheim.  In both decisions, the courts react negatively to the English practice of awarding interim licence declarations in FRAND disputes, enjoining implementers from applying for such relief.  The LD Mannheim further offers its opinion on the limits of final FRAND determinations in England.

The decisions at issue are, of course, Judgment of Nov. 26, 2025, LG Munich I, 21 O 12112/25, and InterDigital VC Holdings, Inc. v. Amazon.com, Inc., UPC_CFI_936/2025 (LD Mannheim Dec. 22, 2025), both of which entered anti-interim license injunctions (AILIs) directed against Amazon.  (Both decisions are also excerpted in this same issue of GRUR, at pp. 313-30.  The appeal from the Mannheim LD decision will be heard on May 28.)  The author ably illustrates the incompatibility of the English approach to FRAND disputes (under which the court’s task, ultimately, is to set a rate) and the German/UPC approaches (which to date have focused on conduct), writing that “[a] foreign court making injunctions unavailable by ordering the SEP holder to grant a licence interferes with the incentive structure of injunction focused approaches,” whereas “conduct-based injunctions may force settlement before any court had the chance to establish FRAND terms either by determining them or by confirming the FRANDness of the SEP-holder’s offer, frustrating a rate-setting approach” (p.177).  He questions some of the analysis of the above two decisions, noting that they both seem premised on the coercive effect of an English declaration concerning interim licenses (effectively equating them to antisuit injunctions), even though “it is clear that interim licences do not force an SEP-holder to accept rate-setting proceedings in the implementer’s preferred forum” (p.179).  True, the SEP holder’s refusal to comply with the declaration could result in its being deemed an unwilling licensor, but the author states that the SEP holder’s seeking an AILI is “unlikely to change anything about that” (p.180).  (In addition, it would seem to me, the odds that the SEP holder would obtain an injunction in the U.K. are pretty negligible anyway, aren’t they?)  In addition, he notes both courts’ emphasis on the territorial nature of patents, which however in a strictly jurisdictional sense “appears not to be the current law in Germany or the EU as exemplified by the ECJ’s judgment in BSH” (p.182).  I’m glad to see someone making this connection, which seems quite important to me.  The author argues, however, that strict territoriality is not the Mannheim LD’s position, but rather only what he refers to as “semi-strict” territoriality in the sense that “courts can, on behalf of SEP holders, impose their view of global FRAND licences on implementers by way of injunctions,” but implementers “may not use similarly coercive measures as means of imposing global FRAND determinations on SEP holders, since this would interfere with foreign infringement proceedings” (p.182).  I’m not entirely sure of the author’s view here, but I’m not convinced of the merits of this distinction.  (I plan to explore the question more deeply in a forthcoming essay I will contributing to the Research Handbook on Extraterritoriality and Intellectual Property, which I mentioned here the other day.  Consistent with the author’s observation that “both sides can at least plausibly accuse each other of having taken the first ASI-like measure” (id.), it has long seemed to me that when courts start issuing ASIs, AASIs, AILIs, declarations concerning interim licenses, and so on, it is awfully difficult to say which jurisdiction is the one violating the comity norm.)  The author closes by suggesting that it would be helpful “to obtain authoritative constructions of the relevant (F)RAND undertakings from the French of Swiss courts,” and also if SEP holders “offer[ ] to refrain from seeking injunctive relief if the implementer agrees to be bound by a rate-setting procedure in Germany or at the UPC” (id.).  Might the German courts and/or UPC ever head in this direction?      

UPC’s Hamburg L.D. Concludes that Infringing Offer Caused No Proven Damages

The decision is Fives ECL v. REEL GmbH, UPC_CFI_274/2023, issued on February 11, 2026.  The decision is the subject of a recent blog post on ip fray.  Last June, I blogged about an earlier decision (of the UPC Court of Appeal) in this dispute, writing that “the patent owner had obtained from a German national court a judgment of infringement, prior to June 1, 2023, and a declaration that the defendant would be liable for damages; but it thereafter pursued its damages claim before the UPC.  The UPC Court of Appeal held that the UPC was competent to hear the damages claim (but left open the question of whether national or UPC law would apply to that claim).”  The current decision holds that German domestic law applies to the damages claim, but that it wouldn’t matter in any event in view of the Intellectual Property Rights Enforcement Directive (paras. 100-10).  More interesting, however, is the court’s conclusion that, although the defendant was adjudicated to have made an infringing offer, it isn’t liable for any damages.  A copy of the original decision, in German, is linked to above; below, I use a machine translation that I have compared with the original.

The patent in suit is EP  c1 740 740 B1, for a “compact service module which is intended for electrolytic aluminium production plants.”  Plaintiff and defendant compete “in the market for special purpose cranes, which are used worldwide in various countries in aluminum furnaces as part of aluminum production” (para. 5).  In December 2016, the parties submitted competing bids for a project in Bahrain, which was to be built by Bechtel.  The first offers, dated December 2, were for twelve service modules and auxiliary bridges.  Defendant’s offer was higher than plaintiff’s.  Bechtel then requested that the parties provide a price “in the event these two parts were split and continued separately,” which the parties responded to on December 15.  Defendant offered a price reduction, while the plaintiff did not (para. 70).  Plaintiff didn’t get the contract; but then Bechtel decided to reopen the bidding process, and plaintiff submitted a new bid on February 21, 2017, which included a price decrease of €6,500,000.  Apparently plaintiff was then awarded the contract, but it (successfully) sued the defendant for having made an infringing offer, which it then followed up with this claim for lost profits.

The court rejects the claim for lost profits, for failure of proof as to amount and for lack of proof of causation.  From what I gather, the plaintiff didn’t proffer the December or February offers to the court (see paras. 18, 47), but rather sought to rely on evidence of (1) the defendant’s typical profit margin, according to the latter’s publicly available financial data from 2011-16, and (2) “projects implemented by the plaintiff in the past” (para. 51).  The former, however, is not sufficient proof, given that “defendant’s activities span multiple business segments,” and also that the submitted evidence reports the defendant’s gross margin (Bruttomarge), which may not be comparable to the profit margin for this project.  The latter as well is not sufficient, because the projects “predate the tender for the [present project] by eight to thirteen years,” “included contracts with a wide range of volumes,” and were reflective in part of both the greater market power enjoyed by the plaintiff at those earlier dates and a better economic environment generally for aluminum manufacturers and suppliers.  In addition, the court casts doubt on the technical advantage provided by the patented technology in comparison with alternatives (discussed further below), and concludes that in any event there is no evidence that any assumed advantage over the state of the art could justify the plaintiff’s alleged margin.  Moreover, the defendant’s bid included an “erection and installation concept” that Bechtel favored, to the point of requesting the plaintiff to include a similar concept in its proposal when bidding reopened—which “contradicts the assumption that the plaintiff would have prevailed in a hypothetical scenario without the defendant’s patent-infringing bid,” insofar as “the defendant had a competitive advantage over the plaintiff that was independent of the” machinery at issue (paras. 76-77).

Finally, we come to the causation issue.  The court begins this section by stating that it cannot “be ruled out that, even if the defendant had submitted an alternative offer that did not infringe the patent, the plaintiff would have had to reduce its offer of December 2/15, 2016” (para. 78).  Here, the analysis gets a bit confusing, with the court first seeming to indicate that the existence of a noninfringing alternative is irrelevant to the plaintiff’s entitlement to lost profits, and then appearing to walk it back:

79 As a general rule, the claim—in this case, the asserted loss of profits—cannot be countered by the defense of lawful alternative conduct (see BGH, GRUR 2024, 1201, para. 43 et seq. – Verdampfungstrockneranlage). According to the case law of the Federal Court of Justice (BGH), the defense that the damage would have occurred even if lawful conduct had been adopted may be relevant for the attribution of the damage. The relevance of the defense depends on the protective purpose of the respective infringed provision (BGH NJW 2017, 1104, para. 24; BGHZ 194, 194 = GRUR 2012, 1226, para. 35 – Flaschenträger).

 

80 In the case of a patent infringement, the defense that the same economic result could have been achieved through non-infringing acts cannot, in principle, lead to the exclusion of a claim for damages. A patent does not preclude third parties from competing with the right holder by offering non-infringing products. However, the offering and placing on the market of the protected subject matter is reserved to the right holder. A culpable infringement of this exclusive right must result in the infringer having to compensate for the resulting damage even if he could have offered other products. These principles also apply to the patent-infringing offering of a product.

 

81 These principles do not apply in the present case. This is because it is undisputed between the parties that the customer would always have requested a second offer in order to foster competition . . . .

 

82 If one therefore assumes that a non-infringing alternative offer must be included in the assessment, it cannot be definitively established that the plaintiff would certainly have been awarded the contract with its original offer.

The court then goes on to explain why the defendant’s Pavlodar model would have been both technically and economically more attractive than the proposals the plaintiff submitted in December 2016.  As a consequence, as stated above, the plaintiff fails to prove that it “would certainly have been awarded the contract with its original offer” (paras. 83-89).

I’ve noted (what I view as) similar inconsistencies in the German courts’ analyses of noninfringing alternatives before, for example in my June 2024 post on the Verdampungstrockneranlage decision cited above.  Maybe it’s fair to say, however, that under German law, the existence of a noninfringing alternative doesn’t necessarily preclude the plaintiff from recovering damages for infringement, but that the plaintiff still must present evidence as to the amount of those damages; and where, as here, it proceeds instead with an untenable lost profits theory, it gets nothing, though perhaps under other circumstances it would still be entitled a reasonable royalty—as may have been the case in Verdampfungstrockneranlage, where it is conceivable that there was some value to the defendant in making an infringing offer within Germany, as opposed to a noninfringing offer somewhere else, even if the end result would have been the same in that the defendant would have been awarded the contract (for a noninfringing project carried out outside of Germany).  If so, the German position may not be all that different from the U.S. position, under which (as reflected in cases such as Grain Processing Corp. v. Am. Maize-Prods. Co., 189 F.3d 1341 (Fed. Cir. 1999)), the existence of a noninfringing alternative means that the plaintiff can’t recover a lost profit (because it wouldn’t have made the allegedly forgone sales even absent the infringement), but the plaintiff may still recover a reasonable royalty reflecting the cost saving the defendant incurred by having used the patented technology over the noninfringing technology. 

In any event, my most recent effort to compare and contrast the law of noninfringing alternatives can be found at page 144 of my book Remedies in Intellectual Property Law, where I note that, although Canadian and French case law seems more or less consistent with the U.S. approach, the U.K. courts “continue to follow the House of Lords’ 1888 decision in United Horse-Shoe & Nail Co. v. John Stewart & Co., holding that the existence of noninfringing alternatives is irrelevant” to both lost profits and awards of infringer’s profits (though the U.K. courts recognize that noninfringing alternatives are relevant to reasonable royalties); and that “German courts also have held that the existence of noninfringing alternatives does not preclude an award of lost profits, though such evidence can affect the amount awarded,” citing both Verdampfungstrockneranlage  and Flaschenträger.

Herr, Alymov & Nothmann on Whether the UPC Can Set Global FRAND Rates

Jochen Herr, Nikita Alymov, and Martin Nothmann have published an article titled Can the UPC set global FRAND rates?, 1/2026 GRUR Patent 18-24.  Here is the abstract:

The Unified Patent Court (UPC) is emerging as a key forum for SEP and FRAND disputes, yet its authority to set FRAND rates remains only partly defined.  This article examines whether, and under what conditions, the IPC may determine global FRAND rates focusing on procedural hurdles such as the party disposition principle, judicial discretion, territorial scope and the Huawei/ZTE compliance.  Furthermore, a recent order by the Local Division Paris confirms jurisdiction for counterclaims but leaves critical questions unresolved including whether stand-alone FRAND rate-setting actions are admissible beyond counterclaims in infringement actions.  This article will shed light on how the UPC’s evolving role could reshape licensing practices and forum selection.

The authors begin with a brief survey of FRAND determinations (or non-determinations) in Germany, the U.K., the U.S., and China, before taking on the principal topic of whether the UPC has competence to engage in FRAND rate-setting.  As noted in the abstract, in October 2025 the Paris Local Division in Sun Patent Trust v. Vivo concluded that it had jurisdiction to consider Sun Patent Trust’s request that the court, as an incident to Sun’s infringement claim, whether its offer was FRAND or if not.  (That order is now before the UPC Court of Appeal.  As the authors note in the body of the article, the request is not technically a counterclaim, notwithstanding the description of it as one in the above abstract; and it is fairly limited in what it says, to wit "The claimant has merely anticipated the so-called 'FRAND defence' that the defendant is raising against this type of infringement action. This FRAND defence falls within the jurisdiction of the UPC, according to a consistent UPC CFI caselaw which indicates that the FRAND issue can be dealt with incidentally by the UPC . . . . [A] discussion of FRAND terms, at least as a defence raised by VIVO at the time of the statement of defence, will undoubtedly follow, as anticipated by both parties. In the present case, all facts and arguments relevant to the determination of FRAND terms, whether admissible or not, will have to be debated by the defendants.")  The article then discusses the UPC’s decisions in Panasonic/OPPO and Huawei/Netgear, both of which concluded that they were competent to consider a FRAND rate-setting counterclaim, but did not actually do so after finding the implementers to be unwilling licensees.  The authors also discuss the possibility of stand-alone FRAND rate-setting actions in the UPC, but describe it as “problematic” in view of the various legal and practical obstacles that would have to be overcome.  

Gervais on Territoriality and Global FRAND Rate-Setting

Daniel Gervais, one of the world’s leading experts on the TRIPS Agreement, has published a very interesting article titled The Principle of Territoriality in International Intellectual Property Law and Its Implications for Global FRAND Rate-Setting, GRUR Int. (advance access pdf available here).  Here is the abstract:

The principle of territoriality under which intellectual property (IP) rights exist and are enforced only within national borders sits uneasily alongside the global nature of standard-essential patent (SEP) licensing disputes. In recent years, courts in Brazil, China, Colombia, Germany, India, the United Kingdom, and now the Unified Patent Court have asserted authority, directly or indirectly, to determine worldwide fair, reasonable, and non-discriminatory (FRAND) licensing terms, often without both parties’ consent. These practices, ranging from injunction-driven leverage to comprehensive judicial rate-setting, raise difficult questions about jurisdiction, comity, competition norms, and the coherence of international IP law.

 

This article provides a systematic and comparative analysis of the principle of territoriality in international IP law and its tension with non-consensual global FRAND determinations. It traces the origins and enduring role of territoriality in treaties such as the Paris Convention and TRIPS Agreement, examines its implications for jurisdiction and choice of law, and explains why territoriality remains a cornerstone of global IP governance. It then turns to the distinctive case of SEPs, highlighting the role of standard-setting organizations and the unique licensing challenges they generate. Against this backdrop, the article maps national approaches across key jurisdictions, identifying functional categories (adjudicators, regulators, and leverage providers) and analyzing how their practices interact in transnational disputes.

 

Drawing on recent case law, WTO findings, and comparative treatment of other IP rights, the article argues that non-consensual global FRAND rate-setting undermines the territorial foundation of international IP law and risks destabilizing global markets. At the same time, it acknowledges arguments for efficiency and uniformity, and considers how these objectives might be pursued within a framework that respects sovereignty and due process. The article concludes by proposing both short-term and longer-term solutions, ranging from national court strategies and WTO enforcement to a possible role for WIPO, the US Congress, and the EU, designed to reconcile innovation incentives, market access, and the legitimacy of international dispute resolution.

I may have more comments to follow, but two things leap out to me upon first reading.  One is Professor Gervais’ argument that even the granting of purely domestic injunctions in FRAND cases, as in Germany, effectively albeit indirectly erodes the territoriality principle by “plac[ing] enormous pressure on the implementer to capitulate to the SEP holder’s terms” (p.13).  It might seem to follow from his analysis, then, that to uphold the territoriality principle nations would have to temper their enthusiasm for granting injunctions in at least some cases.  This may be right, though it also may seem a bit paradoxical that upholding the territorial principle under international law, as Professor Gervais understands it, would require nations to temper the use of a remedy (injunctions with domestic effect only, as a legal if not practical matter) that domestic law otherwise would permit in a given case.  (Again, that may be right—the principle seems logically appealing—but I wonder what the limiting principle would be?)  The other thing that caught my attention was Professor Gervais’ embrace of the view that, absent consent by both parties, only domestic courts can adjudicate questions of infringement and validity under domestic patent law.  This is, as previously noted here, the issue at the heart of the pending BMW v. Onesta dispute, in view of the CJEU’s 2025 decision in BSH v. Electrolux (which seems to me to point, whether rightly or not, in the opposite direction).   (Note that the Federal Circuit has temporarily stayed Judge Albright's antisuit injunction from last week, and we are still awaiting Judge Albright's written decision in that case.)

UPC Court of Appeal Reverses Moral Prejudice Damages Award

The case is Bhagat Textile Engineers v. Oerlikon Textile GmbH & Co. KG, decided by Panel 1b of the UPC Court of Appeal on December 9, 2025.  In one respect at least it resembles the Federal Circuit decision I blogged about earlier this week, in requiring non-speculative evidence of alleged reputational harm.

Plaintiff Oerlikon owns EP 2145848 for a “false twist texturing machine.”  In July 2023, Oerlikon initiated an action for infringement in the Milan Local Division of the UPC.  That court found Bhagat liable based upon its “promotion and offer to the public of a structuring/textiling machine exhibited at the ITMA trade fair in June 2023 in Milan” (para. 6).  It also entered an injunction and awarded “provisional damages in the amount of €15,000 as a result of reputational  damage to Oerlikon’s image” and “ordered Bhagat to bear 80% of the proceedings costs” (id.) 

On appeal, the court notes that, consistent with IPRED article 13, UPCA article 68 “distinguishes between situations in which the infringer knew or had reasonable grounds to know that he or she was engaging in a patent infringing activity (Art. 68(1) to (3) UPCA) and situations where the infringer did not knowingly, or with reasonable grounds to know, engage in the infringing activity (Art. 68(4) UPCA)” (para. 18).  For the first situation, the court shall award “damages appropriate to the harm actually suffered,” taking into account “all appropriate aspects,such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the injured party by the infringement (Art. 68(3)(a) UPCA) or, alternatively, may decide to set the damages as a lump sum under certain conditions (Art. 68(3)(b) UPCA)” (paras. 19-20).  On the other hand, “[w]here the infringer did not knowingly, or with reasonable grounds to know, engage in the infringing activity, the Court may order the recovery of profits or the payment of compensation (Art. 68(4) UPCA)” (para. 21).  Here, there was no “evidence of negative economic consequences such as lost profits . . . or unfair profits made by Bhagat,” but the parties disagree regarding damages for moral prejudice (para. 22).  First, Bhagat argues that it did not know or have reasonable grounds to know that the product it exhibited at the trade fair was infringing, but the court disagrees:

Bhagat . . . presents itself as an international leading manufacturer of texturing and winding machines (see a press release in the magazine Textile Insights dated 13 July 2023, cited in Oerlikon Exhibit # 20) and is a direct competitor of Oerlikon in the field of textile and winding machines. It actively participated in the ITMA trade fair, which Bhagat does not deny is the most important textile machines trade fair globally, and exhibited a sizable textile machine (the attacked embodiment).

 

It follows that, being an active stakeholder in the industry, Bhagat was at least reasonably expected to monitor the patent landscape before exhibiting its product on the market and should have had reasonable grounds to know about the existence of the Patent and the infringing nature of the attacked embodiment. Failure to do so was at least negligent . . . (paras. 24-25).

Nevertheless, there was no evidence of reputational harm resulting in moral prejudice.  Oerlikon’s evidence consisted merely of “general statements” made by Bhagat about its success at promoting its products at the trade fair; and that further evidence submitted by Oerlikon for the first time on appeal concerning the accused product exhibited at the fair, even if admissible, did not change this result.

On costs, the court affirmed that Bhagat was liable for 80% of Oerlikon's recoverable costs, and Oerlikon 20% of Bhagat's, in accordance with UPCA article 69.  Oerlikon did not cause Bhagat to suffer any unnecessary costs by not first sending a warning letter, given the urgency and the short time frame of the fair.  The specific amount of costs to be recovered, however, will be determined in view of the value of the proceedings, which the court lowered from €750,000 to €250,000 (meaning that recoverable costs cannot exceed €38,000).  

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.

Müller-Stoy and Lepschy on BSH v. Electrolux

Tilman Müller-Stoy and Paul Lepschy have published an article titled Practical Implications of BSH v Electrolux for resolving global patent disputes, 7/2025 GRUR Patent 331.  Here is the abstract:

Until recently, the following practical rule applied (with a few exceptional cases in the Netherlands in interim proceedings):  39 EPC Member States — theoretic need for 39 infringement actions.  This rule changed when the UPC opened its doors on 1 June 2023 offering a one-stop-shop for patent disputes in the EU, centralizing infringement and revocation proceedings for meanwhile 18 Contracting Member States.  And it changed again in spring 2025 with the ruling of the CJEU in BSH v Electrolux offering a one-stop-shop litigation solution also for the remaining nine EU Member States, the remaining 12 non-EU members of the EPC, and in fact any third state when dealing with EU-domiciled defendants.  This article analyses practical implications of the ruling on the level of national courts as well as on the UPC level from a claimant’s and a defendant’s perspective.  Some open questions are addressed and a short outlook is provided.

The article makes a number of interesting observations, among them that an EU-domiciled defendant can now be sued for the infringement of a U.S. patent.  (According to ip fray and JUVE Patent, this has now happened in at least one case pending in Munich—a good reason, perhaps, for U.S. patent professionals who don’t already do so to start reading some of the non-U.S. commentary and journals!)  The authors also suggest that some plaintiffs may try a “split strategy” of suing for an injunction in the E.U. (which might apply eBay differently from a U.S. court—assuming that remedies are considered substantive law, I assume) and for an award of damages in the U.S. (given the possibility of treble damages for willful infringement—though as the authors also note, there might a question whether an E.U. court would refuse to award treble damages on public policy grounds).  I wonder, though, if such a split strategy would be advisable, or is even possible?  The authors also discuss whether the UPC has authority under the UPCA to determine invalidity on an inter partes basis, in a case in which that would otherwise be permitted under BSH (see p. 335).

For previous posts on this blog about BSH, see, e.g., here, here, and here.

The EWHC’s Ex Parte Order Against InterDigital

As noted here two weeks ago, following reports on ip fray, the Mannheim Local Division of the Unified Patent Court and the Munich Regional Court both recently entered ex parte orders forbidding Amazon from pursuing a declaration of entitlement to an interim FRAND license from the High Court of England and Wales.  In response, it was reported a few days ago, Amazon obtained an ex parte order from the Patents Court for England and Wales, enjoining InterDigital (on an interim basis, prior to an inter partes hearing next week) from trying to prevent Amazon from pursuing “Final Relief” (a declaration of the terms of a FRAND license and possibly an order of specific performance) against InterDigital in its action in the EWHC.  Mr. Justice Meade explains his reasoning here, stating inter alia that Amazon is complying with the Munich and Mannheim orders not to pursue an interim license in the U.K.  Amazon’s concern, he writes, is rather that “InterDigital may be formulating a position or an application to either the UPC in Mannheim or the German national court in Munich (or both, as before, or some other court):  an application to restrain Amazon from carrying on its claim to the substantive, final RAND relief, which remains within these proceedings” (para. 13).  (The judgment also sets out, in para. 22 et seq., a concise summary of English law relating to the entry of antisuit injunctions, though Mr. Justice Meade characterizes his order as an anti-antisuit injunction.) ip fray suggests, however, that the Munich and (possibly) the Mannheim judgments might be understood as implicitly forbidding Amazon from pursuing final relief in the U.K. (see discussion here and here).  I’m not in a position to evaluate whether it is likely the Munich and Mannheim decisions would be so interpreted under German (or still-to-be-determined UPC) law; I take it that Mr. Justice Meade is proceeding on the assumption that those orders are limited to the explicit prohibition on interim licenses, and that he views his order as a prophylactic one to prevent InterDigital from obtaining an order, somewhere, forbidding Amazon from litigating the matter to final judgment in the U.K.  But how all of this will play out after upcoming inter partes hearings in the U.K. and Germany, I cannot begin to guess.   

Jüngst and Schroeder on Damages for Wrongly-Issued Preliminary Injunctions in the UPC

I commend to readers’ attention an article by Oliver Jan Jüngst and Moritz Schroeder titled ֦PI damages֞:  Revocation of provisional measures and compensation of the Defendant under R.213.2 RoP, 2025 GRUR Patent 340.  Here is the abstract:

The tide can turn in any patent case for various reasons – e.g. if a patent is revoked at some point.  Yet, what can be done to compensate for damages incurred by a party because of provisional measures being granted on the basis of said patent?  The economic consequences of such a measure can be severe and hence, a compensation mechanism is necessary to strike a fair balance between the interests of right holders and other parties as emphasized in the UPCA considerations.  While the RoP indeed provide for a compensation in R. 213.2 RoP, once again, the specific assertion raises many questions, some of which are presented here.

The authors state that, to their knowledge, there are at present no cases in which the UPC has addressed the compensation due to a defendant who is preliminarily enjoined on the basis of a patent that is subsequently determined to be invalid or not infringed; and the wording of the relevant provisions, namely article 60(9) of the UPCA (read in conjunction with article 62(5)) and Rule 213.2 of the Rules of Procedure, require some interpretation.  The authors suggest that there may be no uniformly correct answers in regard to the court (first instance or appellate) in which the claimant should seek relief, or the deadline for filing its claim   And while they do not discuss the CJEU’s decision in Mylan v. Gilead (previously noted on this blog here), which holds that a regime of strict liability is compatible with IPRED article 9(7)—and they note that the wording of Rule 213.2 suggests a discretionary standard (“. . . the Court may order”)—they imply that it might make sense for the UPC “to ‘mirror’ its developing practice of allowing injunctions on a regular basis . . . via also regularly finding the general liability of a PI applicant under R. 213.2 RoP if a PI is lifted at a later stage.”  They also suggest that, in an appropriate case, liability could include not only the accused infringer’s lost profits but also other expenses incurred as a result of the injunction, and (perhaps) even losses suffered outside the UPC territory if these are caused by the injunction.

In the same issue of GRUR is Hans-Jürgen Ahrens’ article Schadensersatz nach aufgehobener einstweiliger Verfügung wegen nichtigen Arzneimittelpatents—zugleich Besprechung von BGH GRUR 2025, 574—Glatirameracetat (“Damages following a preliminary injunction vacated on the basis of an invalidated drug patent—the German Federal Supreme Court’s Decision in Glatiramer Acetate, GRUR 2025, 574").  The decision under consideration—BGH, Judgment of March 13, 2025,  IX ZR 201/23, previously noted on this blog here under the heading “Update” —holds, inter alia, that consistent with previous German case law and the Mylan decision, the patentee can be held strictly liable to the wrongly-enjoined party for the latter’s damages attributable to the injunction, though not (as a general matter) the patentee is not liable to affected third parties (here, a sister corporation of the accused infringer to whom the latter had leased its business); and that the claimant cannot also recover the patentee’s profit attributable to the wrongly-issued injunction (though it may be possible for the amount of the patentee’s profit to serve as evidence of the claimant’s damages, if I understand correctly).  (Regarding the issue of recovering the patentee's profits, cf. the recent EWHC decision to similar effect, noted here.)    

The UPC and Munich Anti-Interim License Injunctions

As I noted on Friday, following reports elsewhere, the Mannheim Local Division of the Unified Patent Court and the Munich Regional Court both have entered orders forbidding Amazon from pursuing a declaration of entitlement to an interim FRAND license from the High Court of England and Wales.  The cases are InterDigital VC Holdings, Inc. v. Amazon.com, Inc., UPC_CFI_936/2025 (L.D. Mannheim Sept. 30, 2025), and InterDigital VC Holdings, Inc. v. Amazon.com, Inc., Judgment of the Munich Regional Court, Case No. 21 O 12112/25 (Sept. 26, 2025, as amended).  The decisions are available, with redactions, in the original German and in English translation on ip fray.  Both were entered ex parte—in other words, they are ex parte preliminary injunctions.  The UPC decision provides the more extended analysis, concluding that jurisdiction over the matter is proper even though InterDigital has not yet initiated a patent infringement action in the UPC, and that InterDigital has satisfied the requirements for a preliminary injunction, namely a risk of imminent infringement (Erstbegehungsgefahr), in the sense of imminent undermining of InterDigital’s ability to enforce its property rights; urgency; and the balance of harms.

The context in which these actions are being litigated, for readers who are not familiar with the subject matter, is the evolving practice of the English courts of granting declarations that the owner of a portfolio of FRAND-committed SEPs is obligated to enter into an interim license of those SEPs, pending the final resolution of its dispute with the implementer over terms.  The first such decision, Panasonic Holdings Corp. v. Xiaomi Tech. UK Ltd., [2024] EWCA Civ 1143, was handed down just over a year ago.  As the UPC panel notes, in that case Panasonic had previously agreed that the English court would establish the terms of a global FRAND license, only to subsequently initiate actions in Germany that would seem to undermine that commitment.  Rather than enter an antisuit injunction (ASI), however, the Court of Appeal for England and Wales concluded that a willing licensor in the position of Panasonic “would agree to enter into, and would enter into, an interim licence of” Panasonic’s portfolio “pending the determination by the Patents Court of the FRAND terms of the final licence,” and that a declaration to this effect “would serve a useful purpose in forcing Panasonic to reconsider its position.”  In two subsequent decisions, however, the English courts have entered similar declarations despite the absence of any agreement on the part of the SEP owner that the English courts would determine the terms of a global license.  (For previous discussion on this blog, see here, here, and here). 

Anyway, these two recent decisions from the UPC and the Munich court may put an end to the English practice.  The UPC decision in particular emphasizes that the effect of a declaration for an interim license is intended to, and likely would, deprive the SEP owner of its ability to litigate claims for patent infringement in other courts that are properly seised of infringement actions pending before them.  (If the SEP owner agrees to an interim license, then the existence of the license puts an end to any claim for injunctive relief elsewhere; if the owner refuses, it then becomes, at least in the eyes of the English courts, an unwilling licensor, which could have negative consequences.  And, at least in the present case, assuming that Swiss law governs the terms of InterDigital’s FRAND commitment to the ITU, Amazon might be entitled to specific performance of any obligation to enter into an interim license.)  In this sense, then, the interim license, even if less formally coercive than an ASI, is nevertheless likely to coerce the affected party to abandon litigation in other forums.

The decisions of these two courts, while dramatic, is not altogether surprising, given the similar effect of an interim license to an ASI, and the willingness of the continental courts to enter anti-antisuit injunctions (AASIs) in similar circumstances.  Although it remains an open question whether these courts would reach the same result in a case with facts similar to Panasonic v. Xiaomi, I would guess there may not be other cases like that one anytime soon; SEP owners, I suspect, will be quite reluctant to agree to having the English courts make global FRAND determinations—quite a reversal of what most people thought would be the case after Unwired Planet v. Huawei, when the English courts were perceived as being more favorable to SEP owners.      

UPC and Munich Courts Enter Anti-Interim License Injunctions

This news broke yesterday on ip fray (here and here) and on IAM.  The Mannheim Local Division of the UPC and the Munich Regional Court have both entered orders enjoining Amazon from seeking or enforcing a declaration for an interim license in the U.K.  (The English courts pioneered the practice of granting declarations regarding interim FRAND licenses in Panasonic v. Xiaomi one year ago today, see here, and have continued the practice since then, see, e.g., here.)  Translations of the decisions are available on ip fray; I plan to read them over the weekend and will probably have something to say about them next week. 

From Around the Blogs

1. On SpicyIP, Ambika Aggarwal has published two posts (here and here) concerning the Supreme Court of India’s recent decision dismissing an appeal from a 2023 Delhi High Court judgment in Ericsson v. Competition Commission of India (CCI), previously reported on this blog here, holding that the “CCI cannot exercise jurisdiction over actions of an enterprise that are in exercise of their rights as a patentee.”  Although the Supreme Court's decision is apparently not publicly available yet, it is reported that the Court dismissed the action on the ground that the parties had, in the meantime, settled their dispute.  Dr. Aggarwal argues, persuasively in my view, that the current state of affairs in India leaves a gap in antitrust oversight of SEP-related issues, and is at odds with the positions taken in other major markets including the E.U., the U.K., China, Japan, and Korea.  For discussion on ip fray as well, see here and here.

2. Enrico Bonadio has published two posts on SEP matters on the Kluwer Patent Blog.  The first, titled Judgment Without Trial:  The Erosion of Appellate Restraint in UK Patent Law, takes issue with the Court of Appeal’s decision in Optis Cellular Tech. LLC v. Apple Retail UK Ltd., [2025] EWCA Civ 552 (previously discussed on this blog here), increasing the award of global FRAND royalties from $56 million to $502 million.  Professor Bonadio contrasts this result, which he views as the appellate court improperly serving as finder of fact, with the Federal Circuit’s en banc decision in EcoFactor v. Google (previously discussed on this blog here), which after reversing the trial court for admitting expert testimony in violation of the rules of evidence remanded for a new trial on damages.   He also recently published a post titled Restoring Balance in SEPs Governance—Next Steps for the EU After the Regulation’s Withdrawal.  He argues, inter alia, that a step forward “would be a strategic referral to the CJEU that addresses the gaps and inconsistencies left by Huawei v. ZTE.”

3.  Also on Kluwer, Jiří Slavík published Substantiating Infringement (or Risk Thereof) at the UPC:  Divide & Conquer or One to Rule Them All?, discussing, inter alia, UPC decisions on whether courts may grant preliminary or permanent injunctions throughout all of the contracting member states (CMSs) and, after BHS Hausgeräte (discussed on this blog here) non-CMSs as well.

A Couple of New Articles on FRAND/SEPs

1. Michael Nieder has published an article titled EPG-Widerklage auf gerichtliche Bestimmung einer angemessenen FRAND-Lizenz?—Zur Entscheidung der LK Mannheim vom 22.11.2024—UPC CFI 210/2023 (“UPC Counterclaim for a Judicial Determination of a Reasonable FRAND License?—On the Nov. 11, 2024 Decision of the Mannheim Local Division— UPC CFI 210/2023”), 2025 GRUR Patent 401.  Here is the abstract:

The EPG [UPC] has so far issued two injunctions for infringement of a standard-essential patent (SEP) in cases where the FRAND issue played a role.  These are the decisions of the EPG Local Division Mannheim of November 22, 2024—UPC CFI 210/2023—Panasonic/OPPO an OROPE and the EPG Local Division Munich of December 18, 2024—UPC CFI 9/2023—Huawei/Netgear.  Due to corresponding counterclaims by the defendants, the question of the possibility of a court determining the appropriate rate for a FRAND license arose only in the Panasonic/OPPO and OROPE case.  The following remarks deal with this issue.

In the course of the article, Dr. Nieder argues against the position taken by Matthias Leistner (who believes the UPC has jurisdiction to determine FRAND rates), and in favor of the position taken by Peter Meier-Beck and by Tim Dornis (that it doesn’t).  For my previous commentary on the Mannheim decision, see here; for previous posts on Dr. Leistner’s and Judge Meier-Beck’s takes on the issue discussed by Dr. Nieder, see here and here.   

2.  Runhua Want has posted an article on ssrn titled Irrational Unwillingness in SEP Licensing, 34 Tex. Intell. Prop. L.J. __ (forthcoming 2025).   Here is a link to the paper, and here is the abstract:

The role of injunctions in guiding standard-essential patent (SEP) licensing negotiations is important but remains unclear. Many SEP holders argue that a high threshold for injunctions fails to protect them against holdout and efficient infringement. By contrast, SEP implementers are concerned about patent holdup resulting from threats of injunctions by SEP holders. This conflict raises a broader policy issue: how should legal institutions guide parties toward efficient licensing negotiations? However, since the United States withdrew its most recent guidance in 2021, it has lacked a clear position on this issue. Other jurisdictions likewise face challenges in designing effective injunction rules. Among these challenges, the definition of unwilling licensees, a key factor in granting injunctions, remains inconsistent and under development. This Article addresses the unsettled role of injunctions in SEP licensing negotiations and contributes to the policy debate by analyzing cognitive and structural barriers to implementer cooperation. Specifically, it examines whether injunction rules can be designed to effectively enhance the willingness of implementers to license. To that end, it reviews public feedback submitted in a semi-structured survey, which was conducted by the United States Department of Justice in 2022. The survey examined both the thresholds for injunctions and the standards for identifying unwilling licensees. This Article documents various approaches to identifying unwilling licensees, as suggested in the feedback. Based on the documented feedback and textual analysis, the Article identifies four motivations that underline SEP implementers' lack of cooperation in licensing negotiations: 1) resistance to holdup, 2) information asymmetries, 3) habitual holdout and efficient infringement, and 4) financial constraints. These motivations reflect not only strategic behavior but also deeper cognitive biases held by both SEP holders and implementers. This Article argues that due to the cognitive biases, injunction rules, regardless of their design, face inherent limitations in promoting efficient licensing.