Short Summary
This is a decision of the Local Chamber Munich of the Unified Patent Court concerning an infringement action based on European Patent EP 3 110 072. The defendants filed oppositions under Rule 19.1 RoP challenging the jurisdiction of the Munich Local Chamber. The court rejected the oppositions, holding that the plaintiff could rely on Art. 33(1)(a) EPGÜ in addition to Art. 33(1)(b) EPGÜ, and that Art. 33(1)(b) sentence 2 EPGÜ constitutes an extension of jurisdiction to defendants who neither committed infringement nor have their seat in the relevant contracting member state.
Detailed Summary
Headwater Research LLC filed an infringement action against several Motorola entities and Flextronics International Europe B.V. concerning European Patent EP 3 110 072, alleging infringement through the distribution of Motorola and Moto mobile devices running Android 7 or higher in Germany, France, the Netherlands, and Italy. Digital River Ireland, Ltd. was originally a defendant but was dropped from the suit after falling into insolvency.
The defendants filed oppositions under Rule 19.1 RoP challenging the jurisdiction of the Munich Local Chamber. Defendants 1-3 (Motorola Mobility LLC, Motorola International Sales LLC, and Motorola Mobility Germany GmbH) argued that the requirements of Art. 33(1)(b) sentence 1 EPGÜ were not met because defendants 1 and 2 did not have their principal place of business in Germany. Defendant 5 (Flextronics) similarly challenged jurisdiction.
The court addressed two key legal questions. First, it held that the plaintiff could rely on Art. 33(1)(a) EPGÜ as a basis for jurisdiction even though the complaint only explicitly cited Art. 33(1)(b) EPGÜ, following the approach of the Court of Appeal in NST/VW and OrthoApnea. Second, the court interpreted Art. 33(1)(b) sentence 2 EPGÜ as an extension of jurisdiction rules to actions against persons who have neither committed a patent infringement in the relevant contracting member state nor have their seat there, rather than as a provision enabling joinder of multiple defendants where only one has infringed in that state.
Applying these principles, the court found that jurisdiction over defendants 1-3 was established under Art. 33(1)(a) EPGÜ because defendant 3 (Motorola Mobility Germany GmbH) has its seat in Germany and is alleged to have committed infringing acts there. As for defendant 5 (Flextronics), the court held that jurisdiction was established because the plaintiff alleged that Flextronics, as a logistics service provider, was involved in the distribution of the accused products in Germany, making it potentially liable as an intermediary under Art. 63(1) sentence 2 EPGÜ. The court noted that the substantive question of whether actual infringement occurred was reserved for the main proceedings.
The court rejected all oppositions, ordered the proceedings to continue, and declined to admit an appeal, noting that the legal questions had been clarified by the Court of Appeal and that the parties could appeal against the final decision.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Munich (DE) Local Division. Understanding the court's reasoning in Headwater Research LLC vs Motorola Mobility LLC, Motorola International Sales LLC, Motorola Mobility Germany GmbH, and Flextronics International Europe B.V. is valuable context for structuring arguments or assessing risk in similar proceedings.
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