Wednesday, October 12, 2022

Munich court denies Apple's motion to dismiss Ericsson's allegedly duplicative patent infringement complaint prior to final (post-trial) judgment

Motions to dismiss are part and parcel of U.S. litigation, but no direct equivalent exists in Germany at the pretrial stage: a complaint typically leads to a trial, after which the court will decide. It can happen in Germany, too, that the court finds a party has failed to meet the pleading requirements, but that determination is normally made post-trial. That said, Apple--known for leaving no stone unturned in litigation--tried the closest thing to a U.S. motion to dismiss in a German patent infringement case brought by Ericsson: Apple asked the court (under Art. 280 of the German Code of Civil Procedure) to bifurcate the case and firstly make a determination on the admissibility of the complaint.

Apple's theory is based in Art. 145 of the German Patent Act, which is meant to prevent parallel patent infringement actions so duplicative that if the patent asserted in one of the cases is deemed infringed, the one asserted in the other will necessarily constitute an act of infringement, too. I reported on Apple's duplicative-assertion theory after the court's first hearing (which is typically followed by a second one amounting to a full trial), which took place on September 14.

Today, the Landgericht M√ľnchen I (Munich I Regional Court) issued a press release (in German) on its decision on Apple's Art. 280 motion.

The press release doesn't name the parties, but the case numbers are the ones you can find in my September 15 blog post. The panel adjudicating the case consists of Presiding Judge Dr. Georg Werner, Reporting Judge Dr. Benz, and Judge Anna-Lena Klein.

The court's press release states that the 21st Civil Chamber used its discretion to the effect of denying Apple's motion to bifurcate the question of admissibility; as a result, the court does not take a position on admissibility at this procedural stage. Instead, Apple may argue inadmissibility on the basis of Art. 145 of the Patent Act--which is comparable to a collateral estoppel defense in the U.S.--again at the March 15, 2023 trial.

Here's my unofficial translation of the reasons given by the court:

"It runs counter to the objective of judicial economy--the rationale behind Art. 280 Code of Civil Procedure--to address and definitively resolve numerous technical questions at this early stage of proceeding. [To make the requested determation,] the Court would already at this point have to comprehensively analyze and definitively construe the asserted patent claims in order to ensure a consistent adjudication of the case, as the claim scope is determinative of the merits and the request for a stay. This applies to the question of culpability raised by Plaintiff as well as to whether Plaintiff can overcome Defendant's theory based on an absence of culpability because numerous technical details (may) play a role in a given case. However, it is only at a later stage that the Court has a sufficient basis to form an opinion on those details."

Apple cannot appeal the denial of its motion.

The court's press release further notes that Art. 145 Patent Act frequently results in multi-patent complaints (which, as Judge Dr. Werner explained at the September 14 hearing, the courts routinely sever at any rate). Ericsson is asserting six patents against Apple in Munich, five of which are standard-essential patents (SEPs). A first hearing in the non-SEP case, in which the iOS version of WhatsApp is accused, was held on the same day (September 14). All SEP claims were brought in the form of a single 535-page complaint---and then split up by the court into five separate proceedings.

I believe that the Munich court issued this press release just to provide guidance to litigants. Defendants to patent infringement cases in Munich now know that a motion for a pretrial decision on admissibility that depends on a final construction of the claims will be denied.

While the Munich court's first hearings in patent infringement cases are in no small part about claim construction, they are not identical to a U.S. Markman hearing, at or (more likely) after which the court makes a binding decision on how to interpret any disputed claim terms. The purpose of those first hearings in Munich is to have an exchange on claim construction and infringement well before the actual trial, enabling the parties to optimize their argument in their subsequent pleadings. Also, German courts rarely enunciate a formal construction of claim limitations: claim construction and infringement analysis are usually amalgamated. Against that backdrop, the Munich court's stance on the prematurity of such motions to dismiss is even easier to understand.

In other Ericsson v. Apple news, I reported earlier today that the parties have brought summary judgment motions in the Eastern District of Texas, and Ericsson has asked the ITC to impose discovery sanctions on Apple.