2025-10-30 - LD Paris - Sun Patent Trust v. Vivo

ENGLISH: -Competence of the UPC (Art.32.1 (a) UPCA): Claimant has merely anticipated the so-called “FRAND defence” that 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, in view of several decisions issued by UPC local divisions, notably in PANASONIC /OPPO cases. (UPC LD Mannheim, CFI 210/2023, decision of 22 November 2024, §237-240) Defendant admits that infringement actions relating to an SEP and the issue of competition rules relating to the possible abuse of dominant position on the market of the patentee of the said “essential invention” to the implementation of a particular technology standard are intrinsic to the matter of finding an infringement and therefore to the question of future FRAND licences. The court notes that the two issues are undoubtedly linked: the main issue is the infringement of an essential patent, whereas the question of the FRAND offer is only incidental or dependent on the main issue. In the case at hand, Claimant anticipated this incident and made it a condition of its application for an injunction against infringement. Thus, the question is whether the FRAND condition raised by Claimant at the time of the SoC is admissible as it falls within or not within the scope of Art. 32.1 UPCA. Against this background, in any event, the UPC has jurisdiction to hear the main infringement claim, including a claim for an injunction. Furthermore, a discussion of FRAND terms, at least as a defence raised by Defendant 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 Defendant. In this context, the court considers that it is appropriate to rule on the admissibility of the FRAND condition claim in the main proceedings in accordance with Rule 20.2 RoP. -Internal competence of the local division (Art.33 UPCA): Claimant based the internal competence of the Paris LD on the 1rst criterion of Art. 33.1 (a) UPCA. In the case at hand, one alleged infringing product offered by Defendant’s group has been purchased by Claimant on an online shop which is clearly dedicated to the French market. The offer and the delivery of Defendant's alleged infringing product have occurred in the French territory. (UPC CoA, order of 3 September 2024, UPC_CoA_188/2024, Aylo/Dish, §13)

Companion case to UPC_CFI_362/2025, same parties, same panel, identical reasoning. Paris LD rejected Vivo's preliminary objection on UPC jurisdiction and Paris LD competence in SEP infringement action. FRAND incidental to infringement. Paris LD competent via Fnac.com purchase.