2026-11-06 - LD Milan - Ericsson v. ASUS et al. - UPC_CFI_318/2024

HEADNOTES: 1. Article 32 UPCA does not confer a general and abstract jurisdiction to certify that a patent is standard-essential vis-à-vis a standard-setting organisation or the market as a whole. Neither Article 56 nor Article 64 UPCA provide a basis for a principal declaration of essentiality with erga omnes effect. The UPC may, however, determine essentiality as an incidental issue insofar as necessary to decide an action for infringement or a declaration of non-infringement. That assessment concerns whether implementation of the specific standard necessarily entails implementation of the asserted patent claims. 2. Competence over a claim against an intermediary must be assessed by reference to the principal infringement facilitated by its services, on the basis of the parties’ pleaded case and the information available to the Court, without requiring a comprehensive taking of evidence on disputed facts also relevant to the merits. Storage and logistics services connected with deliveries of the accused products to Italy may establish competence of the Milan Local Division under Article 33(1)(a) UPCA. Article 63(1) UPCA provides a remedy, not a separate rule of competence. 3. An intermediary may be subject to an injunction without itself directly infringing or being at fault; liability for damages requires additional conditions and cannot follow solely from the use of its services by an infringing third party. 4. Ownership of an SEP does not give rise to a presumption of dominance under Article 102 TFEU. The licence seeker bears the burden of establishing dominance, following definition of the relevant product and geographic markets and assessment of all relevant competitive circumstances, including barriers to entry and countervailing buyer power. Defining the market solely by reference to the asserted patent cannot make dominance automatic. 5. The procedural steps laid down in Huawei v ZTE must be followed in their chronological sequence, having regard to the parties’ overall conduct and the circumstances of the case. Before commencing proceedings seeking an injunction or recall, a dominant SEP holder must identify the patent concerned and specify how it is allegedly infringed, providing sufficient information to enable the implementer to assess the allegation and an opportunity to engage in licensing negotiations. Notice given upon or after commencement cannot cure the omission. The public availability of ITU registers and a request for an injunction conditional on acceptance of a licence are not adequate substitutes. In this case, the requirement was not satisfied before lodging the Statement of Claim; its purpose also requires notice sufficiently in advance to allow a willing implementer genuinely to respond. 6. A well-founded FRAND defence does not extinguish the patent proprietor’s rights or dispose of all infringement remedies alike. In the present case, it precludes an injunction and the requested recall and destruction of products, but does not prevent a declaration of infringement, a finding of liability for damages or an order to provide information concerning past acts of use. An information order under Article 67 UPCA may also extend to an intermediary notwithstanding the withdrawal of the damages claim against it. Where liability is determined in principle, the amount of damages and the relevant compensable period may be reserved for subsequent proceedings under R. 125 et seq. RoP. Information may cover the period from grant without prejudging that determination. Any penalty payment must be directed to securing compliance with the information order, rather than enforcing injunctive relief that has been refused.

The Milan Local Division maintained Ericsson's HEVC patent against novelty and inventive-step attacks and found that ASUSTeK indirectly infringed it by selling computers whose processors provide dedicated HEVC hardware decoding, while direct infringement failed because users must install additional software. The Court held that it has no jurisdiction to declare a patent standard-essential as a principal finding with erga omnes effect, only incidentally to an infringement claim, and that it is competent over a logistics intermediary under Art. 33(1)(a) UPCA by reference to the principal infringement in Italy. On the FRAND defence it defined the relevant market as the licensing of the individual SEP's technology, found Ericsson dominant on the facts without any presumption, and held that Ericsson breached the first Huawei v ZTE step by giving no infringement notice before filing suit, which a conditional injunction request cannot cure. The well-founded FRAND defence barred the injunction, recall and destruction, but not a declaration of infringement, liability for damages in principle, or an information order, which also reaches the intermediary.