Short Summary
Procedural order issued by the Local Chamber Mannheim in a patent infringement action concerning European Patent EP 2 568 724, brought by Panasonic Holdings Corporation against multiple Xiaomi entities and related companies. The order provides technical and legal guidance to the parties on issues relating to infringement (features 1.1, 1.3.2, and 1.3.3), validity (novelty attacks based on prior art documents FBD-T11a, T11b, T13, and T14), and the plaintiff's request to amend the patent under Rule 30.2 of the Rules of Procedure. The parties were given until July 19, 2024 to submit comments on the points raised.
Detailed Summary
This is an order (Anordnung) issued on July 4, 2024 by the Local Chamber Mannheim (Lokalkammer Mannheim) of the Unified Patent Court in case UPC_CFI_219/2023, presided over by Judge Dr. Tochtermann. The plaintiff is Panasonic Holdings Corporation of Osaka, Japan, represented by Christopher Weber. The defendants are Xiaomi Technology Germany GmbH, Xiaomi Technology France S.A.S, Xiaomi Technology Italy S.R.L, Xiaomi Technology Netherlands B.V., Odiporo GmbH, and Shamrock Mobile GmbH, all represented by Dr. Corin Gittinger. The patent in suit is European Patent No. EP 2 568 724, and the language of proceedings is German.
The order begins by referencing the court's guidance in a parallel case between Panasonic and Oppo (UPC_CFI_210/2023, order of June 27, 2024), whose findings apply correspondingly to the present case.
Regarding the infringement discussion, the court addressed three points raised by the defendants in their Duplik (reply). First, the defendants argued that feature 1.1 is not realized because the transmission bandwidth in certain scenarios (e.g., when PUCCH and SRS are transmitted in the same subframe using a shortened PUCCH format) may not lie between the control channels, leading to collisions. The court indicated this scenario depends on the specific configuration of signaling and referenced paragraph I.6 of the order in the parallel case. Second, regarding feature 1.3.2, the defendants argued that the LTE standard provides different configurations for narrowband SRS. The court questioned how the 'invariability criterion' of feature 1.3.2 should be defined—whether abstractly (never adjustable) or concretely (fixable once set). Third, regarding feature 1.3.3, the defendants argued there is no direct adaptation of SRS allocation in response to changes in PUCCH bandwidth because SRS is configured semi-statically while PUCCH is dynamically configurable. The court found this discussion-worthy, noting that the scenario may not preclude realization of the feature if it is realized in other situations.
Regarding the validity attack, the court addressed issues of impermissible extension and priority, again referencing the parallel case. On novelty, the defendants primarily attacked the subject matter of claim 1 as lacking novelty over a prior version of the LTE standard. Assuming the defendants' argument that priority was wrongly claimed, the court directed discussion on whether standard documents FBD-T11a and T11b, read together, constitute a uniform disclosure. Regarding novelty over FBD-T13, the court directed discussion of the disclosure content of Figures 3 and 4 and their descriptions, particularly whether the conflict addressed by the patent is excluded because resources are assigned to different frequency bands from the outset, and whether the patent includes this scenario when 'shifting frequency bands' is considered in frequency hopping. For Figures 5C and 5D, the court questioned whether Figure 5C shows the even distribution required by the feature, and whether the overlap of reference signals #1-#4 in Figure 5D discloses the claimed teaching. The court also noted that the PUCCH width in both scenarios is 2 RB, which may not vary, questioning whether the different depictions can represent a distribution 'corresponding to the change in transmission bandwidth.' Regarding FBD-T14, the court directed discussion on whether the conflict scenario is resolved by a different approach (the plaintiff's argument: a general prohibition on simultaneous transmission of PUCCH and CS RS) than that provided in the patent. The plaintiff was asked to explain the 'examinations in other jurisdictions' referenced in paragraph 229 of its Replik. On inventive step, the court indicated no further guidance was needed at this stage, with points to be discussed at the hearing.
Regarding the request to amend the patent, the court referenced Rule 30.2 of the Rules of Procedure, citing Tilmann/Plassmann and the Central Chamber Paris order of February 27, 2024 (UPC_CFI_255/2023, GRUR-RS 2024, 4923). The court characterized Rule 30.2 as a strict preclusion rule designed to prevent the patent proprietor from successively filing amendment requests that deprive the opponent of early reaction opportunities and the court of meaningful engagement. The court indicated that whether a new amendment is admitted will depend on whether it should have been filed earlier in response to the invalidity arguments already presented and whether the late request causes procedural delays. The patent proprietor must provide detailed reasoning for why the later amendment is necessary. The plaintiff's blanket reservation to respond with further amendment requests as needed raised concerns, and any new amendment requests would have to meet these requirements.
The court ordered that parties have the opportunity to comment on the raised points until July 19, 2024 (aligned with the existing FRAND-related deadline).
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Mannheim (DE) Local Division. Understanding the court's reasoning in Panasonic Holdings Corporation vs Xiaomi Technology Germany GmbH, Xiaomi Technology France S.A.S, Xiaomi Technology Italy S.R.L, Xiaomi Technology Netherlands B.V., Odiporo GmbH, Shamrock Mobile GmbH is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Juul Labs International, Inc.vsNJOY Netherlands B.V.
In an appeal from a revocation action concerning EP 3 498 115, the Court of Appeal of the Unified Patent Court granted a stay of proceedings at the request of Juul Labs, with the agreement of NJOY. The stay was ordered pending the outcome of parallel opposition proceedings before the EPO Boards of Appeal, where oral proceedings had been scheduled for 17 October 2025. The court found that a decision from the Boards of Appeal could be expected rapidly relative to the possible date for an oral hearing before the Court of Appeal.
Aiko Energy Germany GmbH, Solarlab Aiko Europe GmbH and OthersvsMaxeon Solar Pte. Ltd. (Language of Proceedings Order)
Seven defendants in a patent infringement action before the Local Division Düsseldorf applied under R. 323 RoP to change the language of proceedings from German to English, the language in which the patent EP3065184 was granted. The claimant, Maxeon Solar Pte. Ltd., objected. The President of the Court of First Instance granted the application, holding that the application was admissible despite being lodged in English, and that the balance of interests favored the defendants since both parties are international companies with significant internal resources, making the defendants' position decisive.
DDP Specialty Electronic Materials US, LLC.vsGreenchemicals S.R.L.
This case concerned an application for provisional measures filed by DDP Specialty Electronic Materials US, LLC. against Greenchemicals S.R.L. before the Düsseldorf Local Division of the Unified Patent Court in relation to European Patent EP 1 957 544 B1. The applicant withdrew its application for preliminary measures with the defendant's consent, and the court permitted the withdrawal, closed the proceedings, cancelled the scheduled oral hearing, and ordered reimbursement of 60% of the court fees paid by the applicant.
NUC Electronics Europe GmbH & WARMCOOKvsHurom Co., Ltd.
The Local Division Mannheim dismissed the Defendants' request under R. 262A RoP seeking to classify information they were ordered to provide to the Claimant as confidential. The court held that R. 262A RoP applies only to information contained in the pleadings, not to information ordered to be disclosed pursuant to a decision on the merits, and that the existing restrictions on the use of the information sufficiently protected the Defendants' interests.
Order of the President of the Court of Appeal concerning a petition for review of a decision by the Registrar (APL_18313/2025 UPC_CoA_347/2025)vsEx Parte
The President of the Court of Appeal rejected an applicant's petition for review of a Registrar's decision denying his application to be entered on the list of representatives before the Unified Patent Court. The applicant had completed a CEIPI course on patent litigation in 2022 but filed his registration application on 21 February 2025, after the expiry of the one-year transitional period under Rule 12.1 of the EPLC Rules. The Court held that the one-year transitional period does not violate the principles of equality and proportionality, and that the applicant's health-related circumstances did not justify re-establishment of rights.
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.