Sun Patent Trust v. Vivo Mobile Communication Co., Ltd., Vivo Tech GmbH, Vivo Mobile Communication Iberia SL

On 18 April 2025, Sun Patent Trust filed an infringement action before the Paris Local Division of the UPC against three Vivo entities (Vivo Mobile Communication Co., Ltd., Vivo Tech GmbH, and Vivo Mobile Communication Iberia SL) concerning European Patent EP3407524, a standard-essential patent (SEP) related to 4G+ compatible mobile phones and devices. The Statement of Claim included a principal claim structured in subsections: A.I sought a finding of infringement; A.II sought a determination that the licence terms offered by Sun Patent were FRAND (or alternatively, that adjusted terms were FRAND); and A.III sought an injunction in the event the defendants did not enter into a licence on FRAND terms within a specified period.

On 29 September 2025, Vivo filed a preliminary objection under Rule 19 RoP. Vivo argued primarily that the UPC lacked jurisdiction under Rule 19.1(a) RoP, contending that a FRAND determination could only be addressed as a defence within an infringement action, not as a main claim. Vivo asserted that the subject matter of claim A.II did not fall within the types of action exhaustively listed in Article 32 UPCA, and that consequently the dependent claim A.III (injunction) was also inadmissible. Vivo additionally contested the internal competence of the Paris Local Division under Rule 19.1(b) RoP. Vivo requested dismissal of the action in its entirety, or partly, as inadmissible, and asked the Court to decide on the preliminary objection as soon as practicable under Rule 20.1 RoP rather than deferring it under Rule 20.2 RoP. A stay request was rejected by preliminary order on 13 October 2025 and confirmed by review order on 28 October 2025.

Sun Patent, in its comments of 21 October 2025, argued that there was only one principal claim (claim A) for infringement under Article 32(1)(a) UPCA, and that the FRAND determination in A.II was not a separate claim but a necessary condition precedent to relief for infringement of an SEP. Sun Patent relied on the CJEU's decision in Huawei v. ZTE and the UPC's decision in Panasonic v. OPPO, arguing that patent infringement and FRAND issues must be decided together to comply with EU competition law. Sun Patent further argued that Article 32(1)(a) UPCA encompasses FRAND determinations within infringement actions, and that this interpretation is consistent with Article 63 UPCA, which provides that the Court 'may' grant an injunction.

The Court rejected the preliminary objection in its entirety. On the question of UPC competence under Article 32 UPCA, the Court held that the admissibility of claim A.II would be dealt with in the main proceedings pursuant to Rule 20.2 RoP. On the question of internal competence, the Court applied Article 33(1)(a) UPCA, which requires actions to be brought before the local division of the Contracting Member State where the actual or threatened infringement has occurred or may occur. The Court interpreted this provision in line with Article 7(2) of the Brussels I recast Regulation, citing the UPC Court of Appeal's order in Aylo/Dish (UPC_CoA_188/2024). The Court found that one alleged infringing product had been purchased by Sun Patent from the online shop 'Fnac.com', which was dedicated to the French market, and that the offer and delivery of Vivo's product had occurred in French territory. The Court further noted that all three defendants belonged to the worldwide Vivo group, with Defendant 2 (Vivo Tech GmbH) being identified as the 'Authorised European Representative' on the product packaging. The Court held that Sun Patent had sufficiently demonstrated that its claim concerned alleged infringement acts occurring in France, justifying the internal competence of the Paris Local Division.

The Court ordered that the preliminary objection was entirely rejected, that the admissibility of claim A.II under Article 32.1 UPCA would be addressed in the main proceedings under Rule 20.2 RoP, that costs would be taken into account in the main proceedings, and that the time period for lodging the Statement of Defence would not be affected by the decision. An appeal could be brought within 15 calendar days of notification pursuant to Article 73(2)(a) UPCA and Rule 220.2 RoP.