2026-08-19 - LD Paris - Orange et al. v. HMD Global et al. - UPC_CFI_301/2025

1-The Court agreed to declare the Defendant's request permissible, i.e. to decide upon the Counterclaim for revocation only if the patent is found infringed, thereby making the Counterclaim for revocation subject to an intra-procedural condition. This procedural approach is consistent with established case-law on conditional Counterclaims for revocation (cf. LD Munich, Decision issued on 11 March 2026, UPC_CFI_180/2025 and UPC_CFI_210/2025; LD Mannheim, Decision issued on 5 December 2025, UPC_CFI_414/2024; LD Munich, Decision issued on 13 January 2026, UPC_CFI_628/2024 and UPC_CFI_125/2025, and recently confirmed by the CoA, see decision UPC-CoA-40/2026, Emboline v AorticLab, 16 July 2026; HEADNOTES 1) “Limiting a counterclaim for revocation by making it conditional upon a finding of infringement is permissible”.) Thus, the Court will examine the infringement matter prior to the validity matter in the present decision. (see §7 of the present decision) 2-The Court recalls that the burden of proving infringement rests on the Claimant of the main action. It is therefore for the Claimant to establish that the accused products implement all features of the asserted claims, either by direct use or by indirect use of the invention. In the present case, the Court considers that a solution requiring the transmission of any additional data goes against the teaching of the patent and is not encompassed in the scope of the claim. The Claimant has not established that the claimed technical effect is achieved by the attacked embodiments; the demonstration of the infringement proposed by the Claimant relies on additional corrective information that is inconsistent with the technical teaching of the Patent. Therefore, the Claimant fails to prove the alleged infringement. (see § 74 and 92-95 of the present decision)

The Paris Local Division dismissed an infringement action brought on a patent declared essential to an audio-coding standard, and in doing so accepted that a counterclaim for revocation may be limited by making it conditional upon a finding of infringement, so that infringement is examined before validity. On the merits the Court held that the burden of proving infringement rests on the claimant, who must establish that the accused products implement every feature of the asserted claims, whether by direct or indirect use. Construing the claims under Art. 69 EPC and its Protocol in line with the Court of Appeal's framework, the Court read the claimed solution as excluding any implementation that achieves the claimed result by transmitting additional corrective data, because the patent presents the avoidance of such transmission as the very advantage of the invention over the prior art. The claimant's reliance on the fact that the standard signals the additional-data tool through an optional flag did not assist it: the question is not whether the tool is optional but whether the pleaded implementation path is shown to achieve the patent's technical result. Infringement of neither the method claim nor the entity claim being established, the action failed, the conditional counterclaim fell away undecided, and the exhaustion and FRAND defences were left unexamined.