Short Summary
Panasonic Holdings Corporation brought a patent infringement action against ten Xiaomi-related defendants concerning European Patent EP3024163. The defendants filed a stay application based on a parallel UK High Court action seeking determination of FRAND license terms. The presiding judge referred the stay application to the full panel for decision, proposing that the matter be addressed during or after already scheduled oral hearings concerning related patents.
Detailed Summary
Panasonic Holdings Corporation filed a patent infringement action (ACT_545619/2023) against ten defendants, including Xiaomi Inc., Beijing Xiaomi Mobile Software Co. Ltd., several Xiaomi Technology national subsidiaries in Germany, France, Italy, and the Netherlands, Xiaomi H.K. Limited, Xiaomi Communications Co., Ltd., Odiporo GmbH, and Shamrock Mobile GmbH. The action concerned European Patent EP3024163. Panasonic was represented by Sören Dahm of Kather Augenstein, while the defendants were represented by Henrik Lehment of Hogan Lovells. The defendants also filed counterclaims for revocation (CC_3450/2024 through CC_3470/2024).
The defendants filed an application (APP_31889/2024) seeking to stay the proceedings pursuant to Rule 295(l) and/or Rule 295(m) of the Rules of Procedure. The basis for the requested stay was a parallel action pending before the UK High Court of Justice (Case No. HP-2023-000025), which concerned the determination of the final terms of a FRAND license agreement. The plaintiff, Panasonic, opposed the application and requested its rejection.
The presiding judge, Dr. Matthias Zigann, acting as the rapporteur, determined under Rule 102.1 of the Rules of Procedure that the matter should be referred to the full panel for decision. The rapporteur reasoned that the handling of stay possibilities in the context of a parallel pending action for the determination of a FRAND license required a decision by the panel. In the rapporteur's view, such a decision could best be made after an oral hearing. Considering that oral hearings were already scheduled for the end of November 2024 (concerning EP 132) and the end of January 2025 (concerning EP 163), the rapporteur found it procedurally economical to decide on the stay application during or following these already scheduled hearings.
The rapporteur referred the matter to the panel and proposed that the panel render its decision on the stay application during the scheduled oral hearings or thereafter. Unless the panel issued different directions, the previously communicated hearing dates remained in effect. The rapporteur also noted that, since a decision during or after the EP 132 hearing was being considered, no separate oral hearing in the case management system (CMS) was scheduled for EP 163. The order was issued as ORD_39681/2024. Under Rule 333 of the Rules of Procedure, any party could request review of this order by the panel, and pursuant to Rule 102.2, the order remained effective until such review.
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 Xiaomi Communications Co., Ltd., Xiaomi Technology Netherlands B.V., Xiaomi Technology France S.A.S, Xiaomi H.K. Limited, Shamrock Mobile GmbH, Xiaomi Inc., Beijing Xiaomi Mobile Software Co. Ltd., Odiporo GmbH, Xiaomi Technology Germany GmbH, Xiaomi vs Respondent is valuable context for structuring arguments or assessing risk in similar proceedings.
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