2024-12-18 - LD Munich - Huawei v. Netgear - UPC_CFI_9/2023
- Aktenzeichen:
- UPC_CFI_9/2023
- Datum:
- Spruchkörper:
- Court of First Instance - Munich (DE) Local Division
- Art:
- Proceeding Order
- Parteien:
- Huawei Technologies Co. Ltd v. Netgear Inc., NETGEAR Deutschland GmbH, Netgear International Limited
Kernaussage: The Munich Local Division upheld a standard-essential patent in full and granted the complete remedy package against the implementer.
2024-12-18 - LD Munich - Huawei
v.
Netgear - UPC_CFI_9/2023
landmark
The Munich Local Division upheld a standard-essential patent in full and granted the complete remedy package against the implementer. It dismissed a R. 19 preliminary objection, holding that the only official online form for withdrawing an opt-out is the CMS workflow itself, so a differently formatted uploaded template does not make the withdrawal invalid. On the merits it dismissed every revocation ground and found literal direct and indirect infringement, proved not by the standard alone but by the defendants' own test data. The exhaustion defence under Art. 29 UPCA succeeded in principle for products containing Qualcomm modems covered by a licence agreement, producing a carve-out from all orders subject to product-specific proof at the enforcement stage. The competition-law FRAND defence and the contractual IEEE-LOA defence both failed, principally because the implementer provided neither security nor accounting information after its counter-offer was rejected, and because the patentee had additionally opened a pool-licence route through SISVEL that the implementer never engaged with.
Nichtigkeitsgründe
Art. 138 EPCNovelty
Patent survived (this ground)Art. 54 EPC · Art. 138(1)(a) EPC
“Every novelty attack failed and the patent survived. D1a and D1b (published 19 January 2016 and 10 November 2015) are not prior art because the priority of 1 September 2015 is validly claimed. D5 was disregarded as late-filed under R. 9.2 RoP and, in any event, none of the cited passages appears in the only two of its seven priority documents that predate the patent's priority date, so it is not novelty-destroying under Art. 54(3) EPC. The EPD3 novelty attack raised for the first time at the oral hearing was also disregarded under R. 9.2 RoP and would have failed anyway because neither EPD2 nor EPD3 discloses how the signalling is to be done [D.III.2].”
Inventive Step
Patent survived (this ground)Art. 56 EPC · Art. 138(1)(a) EPC
“The inventive-step attack failed on every combination. EPD2 discloses no structure at all for the common field and never uses the word 'resource allocation', so it gives the skilled person no prompting to modify its teaching and none of features 1.2.1 to 1.7 is present; D2, D3 and D4 supply nothing for the characterising features 1.6 and 1.7, and D2 and D3 point away from the invention. The court reached the same result under UPC case law (a prompting or incentive is required, CoA UPC_CoA_335/2023) and under the EPO problem-solution approach [D.III.3]. The EPD3-with-EPD2 combination was disregarded as late under R. 9.2 RoP. The patent was maintained and the auxiliary requests never had to be considered [D.IV].”
Added Matter
Patent survived (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“The added-matter attack under Art. 138(1)(a), Art. 52(1) EPC in conjunction with Art. 65(2) UPCA and Art. 100(c) EPC failed in full. The divisional does not go beyond the parent application: feature 1.1 is disclosed at [0048] of the original application, features 1.4 and 1.5 follow directly from Figure 7 and [0042], [0045], and features 1.6 and 1.7 rest on the 'special RA' disclosure at [0063] and [0065]. Dropping the label 'special' is no impermissible generalisation, because the claim itself ascribes the characteristic to the RA [D.II.3].”
Insufficiency of Disclosure
Patent survived (this ground)Art. 83 EPC · Art. 138(1)(b) EPC
“The Art. 83 EPC objection that the patent is not enabled across its full width was raised for the first time in the rejoinder without any justification for the delay and was disregarded under R. 9.2 RoP. The court added that on its own construction the patent is enabled across the full width, and that the contrary argument rests only on the defendants' divergent construction [D.III.5].”
Priority
Patent survived (this ground)Art. 87 EPC · derivative
“The attack on priority entitlement failed. Because the disclosure content of the priority application, the parent application and the divisional is identical, the findings on added matter apply equally to priority, and the claim to the priority of CN 2015/10555654 of 1 September 2015 is validly made [D.II.4]. This was outcome-determinative: it removed D1a and D1b from the prior art and it limited the usable content of D5 to its two oldest priority documents.”
Inoffiziell
Inoffizielle KI-Übersetzung
Dies ist eine automatische, von KI erstellte Übersetzung, die Fehler enthalten kann. Rechtsverbindlich ist allein das Originaldokument in der Verfahrenssprache (German).