Short Summary
The Local Division Munich of the Unified Patent Court addressed preliminary objections and applications filed by the defendants (Volkswagen AG, Audi AG, Texas Instruments Incorporated, and Texas Instruments Deutschland GmbH) in an infringement action brought by Network System Technologies LLC concerning EP 1 552 399 B1. The defendants raised issues including invalid opt-out withdrawal, lack of standing, overly broad infringement allegations, and jurisdictional concerns regarding UK damages. The Court dismissed the applications under rule 361 RoP, partially dismissed the preliminary objections under rule 19 RoP, and deferred the remaining jurisdictional issues to the main proceeding.
Detailed Summary
This order was issued by the Court of First Instance of the Unified Patent Court, Local Division in Munich, on 8 May 2024, concerning preliminary objections and requests in an infringement action (Act. no. 597693/2023, UPC CFI no. 515/2023) brought by Network System Technologies LLC (NST) against Volkswagen AG, Audi AG, Texas Instruments Incorporated (TI), and Texas Instruments Deutschland GmbH (TID) regarding EP 1 552 399 B1 (integrated circuit and method for establishing transactions).
On 4 March 2024, Volkswagen AG and Audi AG filed identical preliminary objections (App. no. 11861/2024 and 11863/2024) under rule 19 RoP, requesting dismissal of the infringement action as inadmissible, inconclusive, or manifestly unfounded. On the same date, TI and TID filed a preliminary objection (App. no. 11795/2024) seeking to decline UPC jurisdiction over damages claims related to the UK. On 5 March 2024, Volkswagen and Audi filed further applications (App. no. 12104/2024 and 12111/2024) under rule 361 RoP requesting dismissal as manifestly unfounded.
The defendants raised four main grounds: (1) The Court lacked jurisdiction because the patent was opted out under Art. 83.3 UPCA and the opt-out was not validly withdrawn—the withdrawal application was allegedly filed by Xingye Huang of Simmons & Simmons LLP on 20 December 2023, who was neither the proprietor nor a registered representative at that time; (2) NST lacked standing, as it provided no evidence of the alleged patent transfer from Philips, and could not assert claims arising before 24 June 2022 without evidence of assignment; (3) NST attacked a broad scope of allegedly infringing embodiments (10 vehicle models for Volkswagen and 17 for Audi) but only properly detailed infringement allegations for one IC model, the TI DRA79x SoC; (4) Jurisdictional issues regarding UK damages under Art. 71b no. 3 of regulation EU no. 1215/2012, and parallel proceedings in the US District Court for the Eastern District of Texas involving TI.
NST submitted its comments on 5 April 2024, arguing that the opt-out withdrawal was validly filed, that it had standing as the registered proprietor, and that it was sufficient at this stage to provide a detailed infringement analysis for one device as an example.
The Court held that: (1) The opt-out withdrawal was validly filed because the Register showed NST as the proprietor at the time of filing, and the Court found no evidence that the withdrawal was filed by an unauthorized person; (2) NST's standing was sufficiently demonstrated through the Register entries, and the Court could not determine at this stage whether the patent was validly transferred; (3) The infringement allegations were sufficiently detailed, as it is acceptable at this stage to provide a detailed outline and mapping for one specific device by way of example; (4) Decisions on jurisdictional preliminary objections could be deferred to a later stage under rule 20.2 RoP, except regarding damages for UK activities or damages against TI, which could be postponed because they require resolution of validity issues already subject to counterclaims for revocation and a separate revocation action before the Central Division in Paris.
The Court ordered that the applications under rule 361 RoP be dismissed, the preliminary objections under rule 19 RoP be partially dismissed with the residual part to be dealt with in the main proceeding, costs to be addressed with the main proceeding, and leave to appeal granted to the extent of the dismissal. The order may be appealed within 15 days of service.
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 Network System Technologies LLC vs Volkswagen AG, Audi AG, Texas Instruments Incorporated, and Texas Instruments Deutschland GmbH is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Kinexon Sports & Media GmbHvsBallinno B.V.
This order concerns the release of a security deposit of EUR 25,000 in a revocation action before the Central Division of the Unified Patent Court. Following the revocation of Ballinno B.V.'s European patent EP 1 944 067 B1 and the subsequent settlement between the parties, Kinexon Sports & Media GmbH requested the release of the security for procedural costs that Ballinno had previously deposited with the Court. Both parties consented to the release, and the Court ordered the transfer of the EUR 25,000 to Kinexon.
Celltrion Healthcare Italy S.R.L., Celltrion Healthcare Belgium SPRL, Celltrion Healthcare Finland Oy, Celltrion Healthcare Netherlands B.V., Celltrion Healthcare France SAS, Celltrion Healthcare Deutschland GmbH, Celltrion Healthcare Hungary Kft.vsNovartis AG, Genentech, Inc.
Order
Nichia CorporationvsEndrich Bauelemente Vertriebs GmbH
This is a decision of the Local Chamber Düsseldorf concerning European Patent EP 2 323 178 B1. The parties settled their infringement dispute during the written procedure, and the court confirmed the settlement. The court also ordered a partial reimbursement of 60% of the court fees paid by the plaintiff, amounting to 9,000 EUR, and set the value of the infringement action at 1,000,000 EUR.
Memodo GmbH, Coenergia Srl a Socio Unico, PowerDeal SRL, VDH Solar Groothandel B.V., Libra Energy B.V.vsMaxeon Solar Pte. Ltd.
Defendants 3 and 5 to 8 in a patent infringement action concerning EP 3 065 184 B1 requested security for legal costs under Rule 158 RoP against the Claimant, Maxeon Solar Pte. Ltd. The Düsseldorf Local Division granted the request, ordering the Claimant to provide EUR 100,000 in security within six weeks, finding that the Claimant's financial difficulties justified the security and that the defendants' share of the amount in dispute was irrelevant when determining the cost ceiling.
Hologic, Inc.vsSiemens Healthineers AG, Siemens Healthcare GmbH, Siemens Healthineers Nederland B.V., and Siemens Healthcare SAS
Siemens sought an order requiring Hologic to provide security for costs (EUR 600,000 each for the infringement proceedings and the counterclaim for revocation) in a patent infringement action concerning EP 2 352 431 B1. The Düsseldorf Local Division dismissed the request, holding that Siemens failed to meet its burden of providing evidence of the applicable foreign law and its application regarding enforcement of cost orders in Massachusetts, USA, where Hologic is domiciled.
Dealing with a patent challenge?
Whether it's a Section 3(d) rejection, a post-grant opposition, or a FRAND dispute, Arctic's patent litigation team has handled it. Get a strategy call.
Disclaimer: This page contains an automated summary based on publicly available judicial records. The content is generated for informational purposes only and does not constitute legal advice. Always verify details against the original source judgment before relying on this information for any legal purpose. If you believe any information is inaccurate, please contact us.