Google's Android compatibility rules likely dictate patent infringement by device makers: patent trial scheduled for late June has ecosystemic implications

It's been about eight months since I reported on K.Mizra v. Samsung, a patent infringement case pending with the Landgericht Düsseldorf (Dusseldorf Regional Court) over a patent on a method to predict the remaining battery runtime of a mobile device.

I've checked on the status of that litigation again, and a spokeswoman for the Dusseldorf court has meanwhile confirmed that the trial (case no. 4c O 27/22; Presiding Judge: Sabine Klepsch) will be held on June 29, 2023. I would recommend to Samsung's competitors--other Android device makers--to dispatch lawyers and keep an eye on this case. Samsung may be the first company that has to defend itself against this patent, but my research indicates that Google requires all Android device makers to implement that kind of power consumption analysis.

The patent licensing firm that is asserting EP2174201 on a "method and system for predicting the power consumption of a mobile terminal" means business: last summer they won an infringement ruling in Munich against Niantic, the Google-Nintendo joint venture behind the popular Pokémon GO mobile game, over another patent that equally resulted from the research efforts of a reputable and sizeable Dutch organization named TNO (Nederlandse Organisatie voor Toegepast Natuurwetenschappelijk Onderzoek; Netherlands Organisation for Applied Scientific Research).

What I find particularly interesting here is that Google contractually obligates Android device makers to take certain technical measures that--according to my understanding of the patent--likely result in acts of infringement. Google's Android compatibility rules have drawn regulatory scrutiny, particularly in the EU and India. The Competition Commission of India put it bluntly: device makers choose "between signing a non-negotiable [contract] and commercial failure." This blog is critical of Google's abuse of market power in various ways, but with respect to compatibility rules, I've consistently advocated distinguishing between specifications that clearly are in the interest of consumers and/or app developers, and those that use "(anti-)fragmentation" or other pretexts for exclusionary practices, such as by disadvantaging rival app stores, search engines, or map services.

The compatibility rule at issue here is non-abusive: no exclusion, self-preferencing, tying, or other market distortion. Apart from the infringement problem I'll discuss below, its effects are purely positive:

• Users want to plan when and where to recharge their phones.

• Device makers strives to provide the best user experience (UX) possible.

• Google's Android competes with Apple's iOS on UX.

• App makers like me know that if our software is a "power hog" (a term also used by Qualcomm in an interesting paper on the subject), some users may find out about it or read or hear about it, and delete our apps for that reason. In the worst case we face a stern warning from the gatekeeper--Google--that an app will be ejected from the Google Play Store unless a problem of excessive power consumption is addressed.

  When we make apps, we obviously take a look at power consumption as we test pre-release versions of our software. It's pretty normal that an app is a power hog during the early stages of development, but energy efficiency is one of the most important aspects of optimization. As developers we know that our own usage pattern may differ greatly from real-world usage. That's why it's important that what the actual end users do is analyzed locally by Android. Google's Android Compatibility Definition (ACD) says:

  A more accurate accounting and reporting of the power consumption provides the app developer both the incentives and the tools to optimize the power usage pattern of the application.

Google ensures that Android device makers measure and provide data points relating to power consumption. It's about the power drain (per unit of time) of what in the claim language of the patent-in-suit is called a "terminal activity", such as WiFi data transfers, cellular data transfers, CPU usage for certain computations, or using a display in ambient mode. Device makers presumably perform such measurement under laboratory conditions and generate a "per-component power profile" as Google calls this in its Android Compatibility Definition (ACD).

Those data points are then used on a device for the purpose of predicting the remaining battery runtime based on a user's particular usage pattern, which naturally evolves as a given user's preferences change and new apps (or new version of existing apps) may drain more or less battery power. Android keeps track of what in the claim language is called "user activities" such as watching a video, downloading a document, placing a voice call, or playing a particular game. Android also knows what terminal activities a given user activity involves. Based on

• the terminal activities that different user activities entail,

• a given user's usage pattern, which will trigger a particular mix of terminal activities, and

• the power consumption of the various hardware components (found in the per-component power profile I mentioned before),

Android can then estimate the per-time power consumption during the remainder of the current battery cycle and, ultimately by a simple division, derive the remaining battery runtime.

Those non-negotiable Android compatibility rules are publicly accessible:

Handheld device implementations:

• [8.4/H-0-1] MUST provide a per-component power profile that defines the current consumption value for each hardware component and the approximate battery drain caused by the components over time as documented in the Android Open Source Project site.

• [8.4/H-0-2] MUST report all power consumption values in milliampere hours (mAh).

• [8.4/H-0-3] MUST report CPU power consumption per each process's UID. The Android Open Source Project meets the requirement through the uid_cputime kernel module implementation.

• [8.4/H-0-4] MUST make this power usage available via the adb shell dumpsys batterystats shell command to the app developer.

• [8.4/H] SHOULD be attributed to the hardware component itself if unable to attribute hardware component power usage to an application.

If Handheld device implementations include a screen or video output, they:

• [8.4/H-1-1] MUST honor the android.intent.action.POWER_USAGE_SUMMARY intent and display a settings menu that shows this power usage.

A section of the Android documentation is dedicated to Power Profiles for Android. Among other things, it says:

"Resource consumption is associated with the application using the resource. When multiple applications simultaneously use a resource (such as wakelocks that prevent the system from suspending), the framework spreads consumption across those applications, although not necessarily equally."

Further above I mentioned last year's Pokémon GO (Niantic) patent infringement ruling. That game is a good example of an app that uses multiple hardware components: data transfers (sometimes WiFi, sometimes cellular), camera, display, sound. Augmented reality is a resource-intensive type of application, so the makers of such an app must to make a significant optimization effort to prevent it from becoming a power hog. They need the kind of data that Android can provide by virtue of apparently implementing what the patent-in-suit covers.

While Samsung and Niantic are not affiliated, there are some interesting parallels. Both cases were brought by K.Mizra, both patents were originally obtained by TNO, and Google makes the allegedly infringing software (Android in the Samsung case, the cloud components at issue in the Niantic case). The relationship between Google and either defendant is different, however: Google is a major shareholder in Niantic, while it has imposed its compatibility rules on Samsung, including the mandate of power consumption profiles that has apparently given rise to the Dusseldorf patent enforcement action.

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Nokia patent case against OPPO stayed as Dusseldorf court is unsure of patent-in-suit's validity--same patent is also being asserted in London

A spokeswoman for the Dusseldorf Regional Court has confirmed to me that a Nokia v. OPPO case over EP3716560 on "processing transmission signals in radio transmitter" was stayed on Tuesday as the court saw a rather high likelihood of the patent being deemed invalid in a parallel proceeding.

This is patent has not been declared essential to any standard as far as I can see.

In October 2021 I also listed a case over the same patent in the High Court of Justice (London).

You can furthermore find EP'560 in the Nokia v. OPPO/OPPO v. Nokia battlemap I published earlier this month. That post also summarized the key litigation events. Nokia has prevailed on several patents, but OPPO has fended off a number of cases in different jurisdictions. Several Nokia v. OPPO cases have been stayed in Dusseldorf, and one in Mannheim, but in some cases there have also been findings of non-infringement.

It is worth noting that Ericsson and Apple have recently settled a dispute that began after the Nokia-OPPO patent spat. The first FRAND-related filings in that dispute came a few months after Nokia's first wave of lawsuits against OPPO, and the first Ericsson v. Apple infringement complaints about 6.5 months after Nokia sued OPPO, showing what a long-running dispute the latter already is. And who knows much longer it will take. It's definitely taken a lot longer now than I thought in the beginning that it would--and by now I can hardly imagine that OPPO's IP team will give up. It looks like they'll keep defending themselves vigorously until the terms are palatable and a settlement makes sense. Maybe some other implementers will still seize the opportunity to make Nokia a "Christmas present".

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Huawei suing Amazon in Germany over WiFi patent infringement--Chinese lawsuit previously became known

A Huawei v. Amazon patent enforcement action in China already became known in October. I have since been trying to find out about similar cases in Germany, and the Dusseldorf Regional Court has confirmed the pendency of case no. 4b 65/22 (Presiding Judge: Dr. Daniel Voss ("Voß" in German)) over EP2491662 on a "number of streams indication for WLAN" (WLAN is another term for WiFi).

The same German court has already granted Huawei a default judgment against Netgear.

I have also asked the Munich I Regional Court and the Mannheim Regional Court whether they can confirm any Huawei v. Amazon cases. However, Munich replied that they cannot (which doesn't necessarily mean that there's nothing there, but German courts can only confirm cases when all defendants have been served, and the administration of the Munich court tends to be a bit slow with service of process), and Mannheim hasn't responded (it has recently been more difficult than at any point during the past ten years to obtain information from the Mannheim court).

Other cases brought by Huawei in Munich and Mannheim have, however, become known, such as cellular standard-essential patent (SEP) actions against the Stellantis automotive group (Fiat Chrysler, Peugeot, Opel etc.) in both Mannheim and Munich, and two cases in Munich against German Netgear competitor AVM. The Munich court's Seventh Civil Chamber held a Huawei v. AVM FRAND hearing on Thursday, largely behind closed doors. The former Presiding Judge, famous patent judge Dr. Matthias Zigann, was promoted to the appeals court (and is serving on the Unified Patent Court). At this point, a permanent successor has not been appointed to preside over the Munich I Regional Court's Seventh Civil Chamber. Judge Dr. Zigann's former deputy, Judge Benjamin Kuttenkeuler, is the chamber's Acting Presiding Judge and, in that role, presided over last week's Huawei v. AVM FRAND hearing. It's too early to tell, but I have yet to meet someone who would describe AVM as a perfectly willing licensee.

Huawei says patent infringement lawsuits are only a last resort when infringers are otherwise not prepared to engage in good-faith negotiations. That point was made again at last week's IAM webinar. Actions speak louder than words, and Huawei's patent cross-license agreement with OPPO, which was announced ten days ago, lends further credibility to Huawei's preference for the amicable resolution of licensing issues.

I expect all of the currently pending Huawei patent cases to be settled during the course of next year, and possibly even before the middle of the year.

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Dusseldorf Regional Court stays Nokia patent case targeting OnePlus devices--parallel case in Mannheim targets OPPO itself

A spokeswoman for the Landgericht Düsseldorf (Dusseldorf Regional Court) has just informed me that a case brought by Nokia against OPPO affiliate OnePlus has been stayed pending the resolution of a parallel nullity action before the Federal Patent Court. In case no. 4c O 64/22, Nokia is asserting EP1700183 on a "method for secure operation of a computing device." It's a non-standard-essential patent.

Nokia is asserting this patent in Mannheim, too, but against OPPO itself. The Dusseldorf decision is not binding on the Mannheim Regional Court, but may have a persuasive effect (though the Dusseldorf court typically stays cases without stating the reasons for which a patent is deemed likely to be invalid).

Last week, the Dusseldorf court rejected a Nokia complaint against OPPO over a different patent, while Nokia won a third Munich case.

With all that's going on, I will soon publish an overview of what has happened to date in the earth-spanning Nokia-OPPO dispute.

In other German patent litigation news, Apple lost its first offensive case against Ericsson in Mannheim earlier this week. In that case, Apple was asserting a patent that had been granted to Tony Fadell, who oversaw the development of the iPad and was one of the co-creators of the iPhone, and went on to co-found Nest (which was acquired by Google). According to Wikipedia, "Fadell has authored more than 300 patents and was named one of Time's "100 Most Influential People in the World" in 2014."

Tomorrow, the Mannheim Regional Court will hold a preliminary injunction hearing in a DivX v. Netflix case over a patent that DivX is already enforcing against Netflix' Netherlands-based European HQ. The PI motion takes aim at Netflix Services Germany GmbH (case no. 7 O 111/22, provided by a spokeswoman for the Mannheim court). Judge Dr. Peter Tochtermann, who was presiding over the Mannheim Regional Court's 7th Civil Chamber, has left to become a full-time Unified Patent Court judge. For the time being, Judge Thomas Schmidt is filling in as Acting Presiding Judge, and will preside over the PI hearing tomorrow. I remember Judge Schmidt from the time when he was a side judge to Presiding Judge Andreas Voss ("Voß" in German), who is now serving on the Karlsruhe Higher Regional Court.

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Nokia wins third Munich case against OPPO--more specifically, against OnePlus--after amending patent deemed likely invalid by Dusseldorf Regional Court in August

A few hours after I found out about a Nokia v. OPPO patent ruling from Dusseldorf (complaint rejected), I learned about a Munich judgment that also came down on Black Friday:

The Munich I Regional Court ruled in Nokia's favor and held OPPO affiliate OnePlus liable for infringement of EP1728352 on "secure data transfer" (such as contacts that are already stored in the cloud being downloaded when setting up a new device). That patent has not been declared essential to any industry standard.

There's an interesting twist in this. As I already showed more than a year ago, Nokia's litigation strategy against OPPO in Germany involved parallel assertions of certain patents, targeting OPPO in one venue and OnePlus in another. EP'352 was asserted against OPPO in Dusseldorf and against OnePlus in Munich. In August, the Dusseldorf Regional Court stayed Nokia's EP'352 case against OPPO pending a parallel nullity action as the court doubted strongly that the patent would survive the challenge. What Nokia apparently did is that they amended the claim language with a view to the Munich decision, and that strategy worked.

The Munich court was not bound in any way by the Dusseldorf decision, and I understand that the Dusseldorf court didn't elaborate in writing on its reasons to order a stay pending the parallel nullity action. However, it appears that Nokia decided not to take any chances. What is impossible for me to tell--and none of us may ever find out--is whether the narrowed patent still gives Nokia meaningful leverage in case it enforces an injunction. The patent will expire in a little over a year according to Google Patents. OPPO and OnePlus devices are not being sold in Germany at this point due to other injunctions that are already being enforced (two other Munich injunctions, and two from Mannheim). That's why there likely won't be a real-life experiment that would tell us whether the amended patent can be worked around. Sometimes plaintiffs can salvage a patent through an amendment that makes it just as powerful in practice, but very often they feel forced to introduce a claim limitation that enables workarounds.

Given that the patent had been amended after the Dusseldorf stay, I wouldn't necessarily conclude from the divergent Dusseldorf and Munich outcomes over the same patent that Nokia prevailed in Munich because it's a plaintiff-friendlier venue. It could be that the original patent would have failed in Munich as it did in Dusseldorf, and that the amended one would have succeeded in Dusseldorf as it ultimately did in Munich. That said, the fact of the matter is that Nokia has won three cases (over four patents, but only from three different patent families) out of five in Munich (two Munich cases got stayed), and has not won a single one of the three that have been decided in Dusseldorf so far.

The dispute between Nokia and OPPO continues to be an interesting one to follow--more interesting than I would have thought when it all started in July 2021.

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OPPO fends off another Nokia patent lawsuit in Dusseldorf: no infringement

This month has been a pretty good month for OPPO's defenses against Nokia's multijurisdictional onslaught that started almost 17 months ago. An Indian court threw out a Nokia motion to require OPPO to make a deposit, and added insult to injury by calling the motion "fundamentally misconceived." In that blog post I also described the overall situation between the two parties, which is that Nokia's four German patent injunctions (which it can currently enforce) haven't ended the dispute and meanwhile OPPO is making progress elsewhere. The previous month--October--also had some good news for OPPO, with Nokia withdrawing a Mannheim case and a Nokia patent likely to be held invalid by the USPTO and the EPO.

Now I have just found out from the Dusseldorf Regional Court's press office that its 4c Civil Chamber (Presiding Judge: Sabine Klepsch) handed down a final judgment on Friday in case no. 4c O 37/21 over a non-standard-essential Nokia patent, EP2728964 on a "distributed multiradio controller." The complaint was rejected because the judges did not see that OPPO actually infringed that patent. The 4c Civil Chamber had already stayed two Nokia v. OPPO cases in August.

It's not that Nokia hasn't won anything: besides the four German injunctions I mentioned (over five patents, but two of them from the same family), it has also obtained some favorable decisions in the UK and the Netherlands. But OPPO hasn't folded, and probably won't anytime soon.

One change I've recently noticed in the marketplace is that Deutsche Telekom (T-Mobile) no longer offers OPPO and OnePlus phones. The injunction binds only OPPO, not resellers, but Deutsche Telekom may have decided not to upset Nokia by importing OPPO and OnePlus phones from neighbor countries in which no injunction is in force. Some other German resellers still carry OPPO and OnePlus phones. It is unclear how big the economic impact of Nokia's injunctions is on OPPO's business, but after all these months it's clear that it's not sufficient to bring about a settlement. Against other defendants, Nokia would already be laughing all the way to the bank. Not so here. This dispute is different.

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Huawei obtains German WiFi 6 patent injunction against Netgear: default judgment against NETGEAR Inc. of San Jose, CA

A little over a week ago, I reported on Huawei's WiFi patent enforcement actions against Netgear and its German competitor AVM. My further research into the dispute has resulted in a surprising revelation:

A spokeswoman for the Dusseldorf Regional Court has informed me that on September 27, 2022, a default judgment was handed down against one of the Netgear defendants, specifically against NETGEAR Inc. (of San Jose, California), though not against the other defendants, which is why it's called a "partial default judgment." The case no. is 4c O 8/22; the other case is no. 4c 9/22, but no default judgment is known in that one.

The trials (of both cases) are scheduled for March 21, 2023, so unlike the Motorola v. Apple default judgment of 11 years ago, which resulted from Apple's counsel not showing up for a Mannheim patent trial, this default judgment must be due to a failure to give notice of the intent to defend, or a failure to file a timely answer to the complaint.

Those Huawei v. Netgear cases are pending before the court's 4c Civil Chamber (Presiding Judge: Sabine Klepsch, who will also serve on the Unified Patent Court, but its Hamburg Local Division).

As Huawei is seeking an injunction, the default judgment technically amounts to a Germany-wide sales ban--and NETGEAR Inc. as the parent company of the entire corporate group can be held responsible for whatever its direct and indirect subsidiaries do in the German market.

Whether Huawei can actually enforce that default judgment is another question. In Motorola v. Apple, the Mannheim Regional Court set a new trial date as requested by Apple, and stayed enforcement until its final judgment. Here, there would be a considerable delay if Huawei had to wait until it could enforcement a judgment that would be rendered in the spring of 2023.

As I wrote in my previous post on that dispute, it's surprising that companies like Amazon, AVM, and Netgear--all of which have been making WiFi products for a long time--aren't licensed to what according to certain statistics is the largest and most valuable WiFi 6 patent portfolio. Also, as a large-scale implementer of WiFi (and other standards), Huawei is much less likely than some other WiFi patent holders to demand excessive royalties. In other words, Huawei v. Netgear is a mystery, and the fact that a (partial) default judgment has come down is another oddity that calls into question Netgear's handling of inbound patent licensing issues.

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Xiaomi is settling video codec patent lawsuits with Access Advance licensors--but not necessarily taking a pool license

The Dusseldorf Regional Court used to be the world's leading video codec patent litigation venue--and it may still be, though Munich has gained popularity. Four licensors of Access Advance's HEVC (H.265) pool sued Chinese consumer electronics giant Xiaomi over H.265 standard-essential patents (SEPs): Philips, Mitsubishi, General Electric, and IP Bridge. The latest information that I've obtained from the Dusseldorf Regional Court's press office suggests that those lawsuits are coming to an end, but interestingly, Xiaomi and the various litigants may be opting for bilateral licenses instead of a pool license.

Let's take a step back. The most important Access Advance licensor is Samsung, but Xiaomi is licensed to those patents by virtue of an MPEG LA license it took in early 2020, shortly before Samsung left MPEG LA.

In March, Xiaomi settled a patent dispute with Philips that involved not only video codecs but also wireless standards. As a result of that settlement, Philips withdrew all lawsuits against Xiaomi, including any case(s) over video codec patents.

That left three plaintiffs from Access Advance's circle of licensors: Mitsubishi, General Electric (GE), and Japanese licensing firm IP Bridge. Here's what the Dusseldorf Regional Court has told me about those cases:

• Case no. 4c O 50/20 (Mitsubishi v. Xiaomi) has been stayed by stipulation of the parties. Note that this is not a stay for the duration of a parallel nullity or opposition proceeding that is deemed likely to dispose of the case ("Aussetzung") but the kind of stay that parties seek when they believe they can work out a near-term settlement. That kind of stay is called "Ruhen" in German and rarely happens in patent infringement actions.

• Cases no. 4c O 49/20 and 57/20 (General Electric v. Xiaomi) have also been stayed by stipulation ("Ruhen").

• Case no. 4c O 51/20 (IP Bridge v. Xiaomi) was stayed by the court as Xiaomi's nullity complaint pending before the Federal Patent Court appeared likely to succeed.

It's unlikely that any of those cases will go anywhere. But what's the endgame? A set of bilateral licenses (to the extent that Xiaomi isn't already licensed to some of those patents thanks to MPEG LA)--or a pool license?

A pool license is an efficient one-stop solution; but when a pool has high administrative fees and when there are disagreements on how to avoid (partly) duplicative royalties, bilateral licenses may be easier for the parties to agree on.

If all complaints had been near-simultaneously withdrawn, the most plausible assumption would be that Xiaomi has taken a pool license. That would be the Tesla-Avanci pattern, where several cases brought by Avanci licensors against the automaker were voluntarily dismissed at around the same time, and no Avanci licensor has since filed suit against Tesla. It seemed odd that Tesla subsequently submitted an amicus brief against Avanci, supporting Continental's case that went nowhere and is now officially dead. That oddity, however, was outweighed by the extremely strong indications of a pool license that I mentioned before. But the Access Advance/Xiaomi situation is nowhere near that clear-cut. The procedural status of the IP Bridge case differs from that of the GE and Mitsubishi cases; Samsung's patents are the most important ones and Xiaomi is licensed to them; and what's telling is that Xiaomi agreed on a bilateral license with Philips instead of simultaneously taking an Advance license and settling only the non-codec parts of the dispute with Philips.

There's also a possibility of Xiaomi taking several bilateral licenses first, and a pool license later, just like Daimler settled with Sharp and Nokia before ultimately signing up to Avanci.

I'll try to find out more.

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Huawei enforcing WiFi (partly WiFi 6) patents against Netgear and its German competitor AVM in Dusseldorf and Munich

A few days after a media report revealed patent infringement litigation by Huawei against Amazon (presumptively over Amazon's WiFi devices Kindle and Echo), I haven't been able to find out more about that dispute, but as a side effect of my research efforts, two German courts have officially confirmed the pendency of patent infringement actions brought by Huawei against other parties: WiFi router makers Netgear and AVM. The latter is more of a local player, but according to Wikipedia, AVM's FRITZ!Box has a 68% market share in Germany.

This is the information I've obtained from the courts:

• Dusseldorf Regional Court:

  There are Huawei v. Netgear cases with case numbers 4c O 8/22 and 4c O 9/22, both of which will go to trial on March 21, 2023 (Presiding Judge: Sabine Klepsch). The patents-in-suit are EP3337077 on a "wireless local area network information transmission method and apparatus" and EP3143741 on a "method and transmitter for orthogonal frequency division multiple access (ofdma) resource allocation." At least one of them appears to read specifically on WiFi 6.

• Munich I Regional Court:

  • Huawei v. AVM, case no. 21 O 2576/22 (Presiding Judge: Dr. Georg Werner), EP3337077 on a "wireless local area network information transmission method and apparatus" (which is also being asserted against Netgear in Dusseldorf); and

  • Huawei v. AVM, case no. 7 O 2578/22, EP3241300 on a "system and method for communicating an orthogonal frequency division multiplexed (ofdm) frame format." As of next week, Presiding Judge Dr. Matthias Zigann will no longer sit on this court, but become the Presiding Judge of the new 38th Civil Senate of the Munich Higher Regional Court (the appeals court). For the time being, his deputy, Judge Benjamin Kuttenkeuler, is filling in for him. It is not yet clear when the court will appoint a permanent replacement.

I'm surprised that companies like Amazon, AVM, and Netgear--all of which have been making WiFi products for a long time--aren't licensed to what according to certain statistics is the largest and most valuable WiFi 6 patent portfolio. Huawei is a large-scale WiFi implementer at the same time, which makes it hard to imagine that its license fees would be excessive.

In the German patent infringement cases, the recent update to WiFi standard-setting organization IEEE's FRAND policy is not going to play a role. The applicable caselaw there is Sisvel v. Haier, which means Netgear and AVM are doomed to lose. Netgear and AVM realistically have no prayer with their FRAND defense and will almost certainly be deemed unwilling licensees. German courts attach no importance to the specific content of a FRAND declaration as it's all about a defendant's entitlement to a compulsory license under antitrust law. In any event, Huawei is one of the numerous major WiFi 6 contributors I listed earlier this year as companies that declined to provide Letters of Assurance under the IEEE's previous, exceedingly implementer-friendly patent policy.

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Fervent supporter of automatic injunctions to preside over German-dominated Unified Patent Court; Judge Pichlmaier returns to the patent bench (Munich Local Division), Judge Zigann finally promoted

Here's my reaction to yesterday's announcement of the Unified Patent Court's judicial appointments:

1. It comes as no surprise that Judge Dr. Klaus Grabinski of Germany's Bundesgerichtshof (Federal Court of Justice) will preside over the new (appeals) court. He devoted a lot of time to the UPC's preparations, which is now paying dividends. And it makes sense to appoint a senior (but not too old) judge from the top court of the European jurisdiction where the vast majority of all European patent infringement actions are filed.

2. While Judge Dr. Grabinski has been described as very likeable (and I, too, have only positive things to say about the conversation I had with him eight years ago after we were on the same panel and left the city of Bayreuth on the same train to Nuremberg), make no mistake: he's a patent enforcement hawk.

   No judge made as much of a lobbying effort as he did to dissuade the German government from softening the country's automatic patent injunction regime. There was a government roundtable in the spring of 2019, in the building of the Federal Ministry of Justice in Berlin, and he told ministry officials how wonderful and well-respected Germany's patent judiciary was and that the automatic injunction was a bedrock of that success. Then there was a conference at which he urged patent professionals to make their presence felt during the legislative process.

   Finally, Judge Dr. Grabinski seized an opportunity to declare the new injunction statute's references to third-party interests rather meaningless by saying that the same standard as the one for a compulsory license would apply. Meanwhile the Dusseldorf Regional Court (where Judge Dr. Grabinski's career as a patent judge once started) has issued two rulings that make any proportionality defense in cases where (in one of the two cases) a compulsory license may be available (or, in the other one of those cases, where a patentee is willing to grant a license) subject to an infringer's willingness (i.e., dedicated, good-faith efforts) to obtain a license.

3. I would also expect him to have the German Sisvel v. Haier attitude toward defenses. The driving force behind Sisvel v. Haier was then-Presiding now-Retired Judge Professor Peter Meier-Beck. Dissenting opinions attached to a decision are not available to German patent judges to express different views--you always just see the names of all panel members without knowing how they voted--but I strongly doubt Judge Dr. Grabinski would have filed a dissent even if he could have.

4. Another one of Judge Dr. Grabinski's wishes has been granted. I remember from our 2014 panel (we were the only panelists on that one) that someone in the audience asked a question about UPC appointments, and Judge Dr. Grabinski expressed his hope that appointments would be meritocratic as opposed to a politically-driven agreement to appoint comparable numbers of judges from each UPC contracting state.

   Indeed, German judges are going to dominate the UPC at all levels. Put another way, the UPC is going to be more like the European Parliament, where German is the de facto lingua franca in some political groups (surprisingly, that includes the Greens), than the European Commission, where the vast majority of the officials I've met over the years were from othercountries.

   The Court of Appeal of the UPC has seven members, two of whom are from Germany: Judge Dr. Grabinski as well as "Mrs. Career Overdrive" Judge Patricia Rombach, who started as a side judge in Mannheim, and two short years after becoming a presiding judge (succeeding Judge Andreas Voss ("Voß" in German) in 2017) was promoted to the Federal Court of Justice (her successor is Judge Dr. Peter Tochtermann)--and now to the top-level division of the UPC. I must admit I've never actually seen her in action, at least not as a presiding judge. The cases I watch typically get settled before they reach the Federal Court of Justice, and while she was a presiding judge, the cases I was interested in (Qualcomm v. Apple) were assigned to the other division (Second Civil Chamber, Presiding Judge Dr. Holger Kircher).

5. The UPC also has a Presidium, three of whose seven members are German: President Dr. Grabinski, Judge Ronny Thomas (Dusseldorf Higher Regional Court), and Judge Dr. Tochtermann.

6. What I didn't necessarily expect--but consider great news--is the return of Judge Tobias Pichlmaier (Munich I Regional Court) to the patent bench. Earlier this year, he was--at his request as far as I know--assigned to the court's antitrust division: a painful loss for the patent judiciary, and I say this although I disagreed with him in two contexts (I much preferred the stricter infection prevention measures imposed by Judge Dr. Matthias Zigann; and I disagreed with both of them on how to determine the amount of the security to be given when enforcing a permanent injunction during the appellate proceedings). A couple of months after the reassignment, the European Court of Justice agreed with his preliminary reference on the standard for preliminary injunctions over battle-untested patents. I guess that achievement weighed very much in favor of his appointment to the UPC. In light of recent decisions in Munich and Dusseldorf, I again defended Judge Pichlmaier and his panel's (which included now-Presiding Judge Dr. Anne-Kristin Fricke) preliminary reference to the ECJ (really well-crafted) against criticism of being unhelpful. That criticism came from a lawyer who has lost some major cases in recent years, not only but especially in Munich, and his largest client was hit by a preliminary injunction in Hamburg.

   Welcome back, Judge Pichlmaier!

7. The other judge on the Munich Local Division will be Judge Dr. Zigann. Surprise. Not.

   What was a surprise, however, is that he didn't succeed Presiding Judge Konrad Retzer (Munich Higher Regional Court, Sixth Civil Senate)--I couldn't have thought of a better choice than Judge Dr. Zigann. While the appeals court has not yet been able to confirm this officially to me, Juve Patent reports that Judge Dr. Zigann will divide his time between the UPC and the Munich Higher Regional Court, where as of next month he will preside over a new IP-specialized senate.

   Munich now matches Dusseldorf's two patent-specialized appellate divisions (civil senates) after previously matching its three patent-specialized first-instance divisions (civil chambers). While Dusseldorf gets more cases, Munich has become the most popular venue for smartphone and connected vehicle cases and increasingly also codec cases.

   According to Juve Patent, Judge Benjamin Kuttenkeuler--whom I've recently seen in action as judge rapporteur, and his decisions appeared very well-reasoned--is Judge Dr. Zigann's deputy and will fill in until a longer-term replacement has been appointed. It's also possible that we'll see another merry-go-round, such as Judge Dr. Werner of the 21stcivil Chamber taking over the 7th Civil Chamber (Judge Dr. Zigann, as whose deputy he once served) and Judge Dr. Fricke the 21st Civil Chamber.

   In terms of experience, Judge Anna-Lena Klein and Judge Dr. Hubertus Schacht appear the most obvious candidates to become the next patent-focused presiding judge in Munich. They're both very competent. Judge Dr. Schacht has been more active at patent law conferences, and I've seen him fill in as presiding judge for Judge Pichlmaier. He managed those hearings efficiently and smoothly.

8. One of three Central Divisions will also be based in Munich. The first two judges to have been appointed to it are Judge Mélanie Bessaud from France and Judge Ulrike Voss ("Voß" in German) from the Dusseldorf Higher Regional Court.

9. Germany has four (!) Local Divisions. I've discussed Munich. In Mannheim, the two Presiding Judges of the Mannheim Regional Court's patent-specialized divisions will serve on the Local UPC Division: Judge Dr. Kircher (who heard an Apple v. Ericsson case this week, and has half a dozen Ericsson v. Apple cases on his list for the next several months) and Judge Dr. Tochtermann. They both excel through their technical understanding especially in the field of radio frequency technologies, including but not limited to cellular standards and WiFi. And Judge Dr. Kircher is so eloquent that any of his impromptu speeches beats what most politicians read from a teleprompter.

   In Dusseldorf, Judge Bérénice Thom (from the lower court) and Judge Ronny Thomas (from the appeals court; he's Judge Dr. Kuehnen's deputy) will serve on the Local Division.

   With Dusseldorf having such a large pool of experienced patent judges, some of them will have to "commute": Judge Ulrike Voss serves on the Central Division in Munich; Judge Sabine Klepsch will join Judge Stefan Schilling (from the appeals court in Hamburg) on the Hamburg Local Division; and part-time judge Professor Maximilian Haedicke will sit on the Paris Central Division. Professor Haedicke is a recognized expert, but I believe he should (still) recuse himself from cases involving Google and Quinn Emanuel given certain historical ties.

10. The best strategy for litigants will be to file complaints with a German Local Division and to select German as the language of proceedings, which practically guarantees that a German judge will be the rapporteur.

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After ECJ ruling on availability of preliminary injunctions in patent infringement cases, PIs are presently far more likely to be granted in Munich than in Dusseldorf

This is a caselaw update further to my April 28, 2022 post, European Court of Justice opens floodgates to preliminary patent injunctions in major victory for Munich I Regional Court's patent-specialized judges. As the German law firm of Loeffel Abrar noted on Twitter, my prediction that Munich would henceforth be Ground Zero for preliminary injunctions against patent infringement is playing out so far.

In a September 29 ruling, the Seventh Civil Chamber (Presiding Judge: Dr. Matthias Zigann) of the Munich I Regional Court laid out a perfectly logical application of the above-mentioned ECJ ruling to German patent PI cases. You can find the full text of the decision, including the syllabus ("Leitsätze"), in German on a website operated by the State of Bavaria. Rather than a verbatim translation, I'll just paraphrase in a condensed form the four key principles:

1. The starting point of a patent PI analysis is a presumption of validity of any European patent based on the mere fact that it was issued. The alleged infringer bears the burden of making a showing to the contrary.

2. That burden is normally met if a defendant presents a validity forum's preliminary opinion or final decision deeming the patent invalid. In principle, this also applies to prelimininary or final invalidity opinions from domestic or foreign proceedings concerning parallel patents claiming priority to the same original application.

3. After a convincing showing by a defendant that the asserted patent is more likely than not to be invalidated, the burden shifts to the moving party, which has to make a showing that the (preliminary or final) decision presented by the defendant is erroneous ("diagnosis") and will be reversed ("prognosis").

4. Doubts concerning the validity of an asserted patent will normally be relevant only if the patent is challenged by means of an opposition or nullity complaint or, in cases in which the preliminary injunction hearing takes place very shortly after the defendant was put on notice of the infringement allegation, if an opposition or nullity complaint is undoubtedly foreseeable. Furthermore, the defendant has to provide its invalidity contentions in writing in a self-sufficient, intelligible, complete, coherent, and legally convincing form.

The only expression here that may be easily misunderstood is "more likely than not." That is the verbatim translation of "überwiegende Wahrscheinlichkeit"--which German patent infringement courts, however, apply in a way that is closer to (if not even more exacting a standard than) clear and convincing evidence, as opposed to a mere preponderance of the evidence.

At any rate, the Munich court's take is consistent with para. 41 of the ECJ ruling in Phoenix v. Harting:

"In that context, it must be borne in mind that filed European patents enjoy a presumption of validity from the date of publication of their grant. Thus, as from that date, those patents enjoy the full scope of the protection guaranteed, inter alia, by Directive 2004/48 [...]"

A few days ago, Juve Patent reported on the Dusseldorf Regional Court's denial of PIs in three parallel cases brought by Biogen against generic drug manufacturers. Those decisions have been appealed.

According to Juve Patent, "[i]n view of the EPO’s decision on the parent patent [which was revoked by an opposition panel, and that decision was affirmed by an appellate panel], Düsseldorf Regional Court also considered the validity of divisional patent EP 873 insufficiently secured to justify handing down a preliminary injunction." That decision per se would actually be consistent with the second part of the Munich court's approach summarized further above.

But there is a major divergence in the form of a dictum. The Dusseldorf court wrote:

"Selbst dann, wenn man die Ausführungen des EuGH in seiner Entscheidung [Phoenix v. Harting], wonach für europäische Patente ab dem Zeitpunkt der Veröffentlichung ihrer Erteilung eine Vermutung der Gültigkeit bestehe (EuGH, GRUR 2022, 811, Rn. 41), derart begreifen möchte, dass damit eine Vermutung im rechtlichen Sinne gemeint ist – woran die Kammer Zweifel hat –, [...]."

That passage translates as follows:

"Even if one were to interpret the ECJ ruling in Phoenix v. Harting as establishing a presumption of validity for European patents from the moment of the publication of their issuance [...] in the sense that it is a legal presumption of validity--which this [Dusseldorf] Court doubts-[...]" (emphases added)

Well, Flat-Earthers also "doubt" something, but that doesn't mean they have reasonable doubt.

What would a non-legal presumption of validity look like? I don't drink alcohol or smoke anything, so my imagination unfortunately isn't up to this challenge.

The term is pretty common in U.S. patent law. There's a presumption of validity (which in district court has to be overcome by clear and convincing evidence), and there can even be an enhanced presumption of validity if additional circumstances are present.

The Munich stance makes a lot more sense than that Dusseldorf dictum. The only way to read Phoenix v. Harting is that national courts must not require parties moving for patent PIs to earn their presumption of validity: they deserve it based on the EPO's decision to grant the patent, period. Whatever happens thereafter may change the picture, as the Munich court makes clear. But the ECJ deemed it contrary to EU law to require something more than the issuance of a patent in the first place.

Obviously, we need to see how it plays out at the appellate stage. Simply put, if only one of the appeals courts (Munich, Karlsruhe (for Mannheim), Dusseldorf, Hamburg, or even one in a less popular venue such as Berlin) adopts the Munich I Regional Court's approach (in my opinion, they all should), all patentees can just file their PI motions there and don't have to care about the other appellate circuits. Theoretically, even a patent PI case could reach the Federal Court of Justice, but it would require the parties to keep litigating way beyond the final adjuciation of the PI motion. Not going to happen anytime soon, and quite possibly never going to happen. It's another question what will happen at the UPC, but presumption of validity means presumption of validity means presumption of validity.

In all fairness, there is a policy argument that the high post-grand invalidation rate of European patents warrants some caution at the PI stage, from a balancing point of view. However, the ECJ in Phoenix v. Harting didn't take that into consideration at all. That is a failure of the lobbying departments and organizations of companies who frequently have to defend against patent infringement claims. Those organizations proved their worthlessness in connection with German patent injunction reform as I explained again a few days ago. If they weren't as uncapable as they are, they'd have lobbied the governments of many EU member states to make submissions to the ECJ that would have made an impact. Now it's too late.

I also wouldn't adopt the take on the ECJ decision that a lawyer espoused at a recent conference. In particular, I disagree with any suggestion that the Munich court's preliminary reference question was unhelpful. It's better to ignore that, especially as it comes from someone who's suffered some major defeats--not only, but particularly--in Munich lately and has recently been on the receiving end of a patent PI motion.

So far, my view that Munich is a great choice for patent PIs has been validated. While the Dusseldorf Regional Court has at least refrained from taking an outlier position on the proportionality defense to patent injunctions, and has become a lot faster than it was a few years ago, it's still not the best venue for patent holders in such fields as smartphones and connected vehicles, for which Munich is the go-to venue, followed by Mannheim. Most Dusseldorf plaintiffs are small and medium-sized companies. Many patent litigators who are based in Dusseldorf want to maintain the importance of their home venue, but the Dusseldorf judges don't make it particularly easy to justify that forum choice to clients.

Dusseldorf is a wild card, Munich is pretty predictable, and I would like to see patentees give Mannheim a try if they have enough patents-in-suit to hedge their bets.

[Update] After my post I became aware of the following Bardehle Pagenberg video on the subject:

[/Update]

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In SEP and non-SEP cases alike, unwilling licensees have no proportionality defense to patent injunctions in Germany: Dusseldorf court ruling also clarifies need to seek compulsory license first

There's an expected but nevertheless interesting development here that is of interest to those litigating patent infringement cases in Germany's national courts and/or its local divisions of the Unified Patent Court (a new judiciary scheduled to go into operation next year). A couple of judgments by two different divisions of the the Dusseldorf Regional Court that have recently been published contain passages on the narrow (actually, next to non-existent) applicability of the proportionality defense to patent injunctions under last year's amendment to Germany's patent injunction statute (§ 139 PatG, Art. 139 Patent Act):

• On June 30, 2022, the court's 4b Civil Chamber (Presiding Judge: Dr. Daniel Voss ("Voß" in German)) enjoined an automotive supplier

  from making sunroofs. The patent-in-suit was set to expire two months after the judgment, so any grace period would have been tantamount to ordering no injunction at all. The impact on downstream customers like BMW was deemed tolerable, especially given how short the relevant period was.

• One week later, the court's 4c Civil Chamber (Presiding Judge: Sabine Klepsch) enjoined pharmaceutical company Gilead from making a hepatitis C medication that infringed a NuCana patent. Juve Patent reported on July 21, and now the Kluwer Patent Blog has published a redacted version of the judgment (PDF).

As Juve Patent noted on August 17 on the occasion of the first anniversary of the entry into force of Germany's amended patent law, and as I've been predicting for a long time, "nothing has changed." Not a single case is known in which the proportionality defense made even the slightest difference. That was, by the way, the legislative intent--and if there had ever been any doubt, Germany's chief patent judge eliminated it speaking at a Chinese conference in October 2021.

The same two Dusseldorf judges who handed down the two decisions I'm talking about now already outlined their thinking in January 2022. No surprise there either. The only way anyone can be surprised now is if one listened to the wrong "experts."

While the Unified Patent Court Agreement (UPCA)--not the German Patent Act--is the statute governing the UPC, defendants will try to raise proportionality defenses there a well. As per Art. 62 (2) UPCA, "[t]he Court shall have the discretion to weigh up the interests of the parties and in particular to take into account the potential harm for either of the parties resulting from the granting or the refusal of the injunction." The UPC will have to develop its case law from scratch (while complying with applicable EU law), and competitive dynamics between the UPC and national courts during a transitional period will force the UPC to be reasonably patentee-friendly: otherwise patent holders will avail themselves of national courts for as long as possible, and the UPC won't take off for some time.

These are my take-aways from the proportionality-related passages of the two Dusseldorf judgments:

1. Either of those judgments places the emphasis and, especially, the burden on defendants. The net effect is that a "willing licensee" standard applies, whether the patent-in-suit is a FRAND-pledged standard-essential patent (SEP) or a non-SEP. I'm not saying it's going to be an absolutely identical willing-licensee standard, but should there be any differences, they'll be minor. Patentees enjoy broad discretion as they make their demands, while infringers will be enjoined if they make the smallest mistake. For instance, the sunroof ruling contains a sentence that I interpret as saying that the patent holder is in its right to demand that the infringer take a portfolio license as opposed to a license covering only the particular patent-in-suit. No one ever doubted that a non-SEP holder could take that position, but this is now another parallel to Germany's FRAND caselaw.

2. In either case, the patent holder was willing to grant a license. I've been saying for a long time that patent holders will be on the safe side if they offer a license. And I explained even prior to the formal adoption of that patent bill that the amendment failed a 'Keep It Simple, Stupid' test. Almost three years ago, I said the situation in Germany wouldn't change without an equivalent of eBay factor #2. There you have it. Those advocating proportionality always said that the pattern they were concerned about was just the one of patentee overcompensation--and not the kind of case in which a company truly seeks to enforce exclusivity to combat counterfeiting or to maintain a competitive advantage. But a patentee that pursues royalties rather than exclusivity can easily make a licensing offer.

3. In the pharmaceutical case, the Dusseldorf court bases its rejection of Gilead's proportionality defense on a doctrine according to which a defendant making a public-interest (here, harm to patients) argument has to seek a compulsory license in the Federal Patent Court (Art. 24 Patent Act) in the first place, and the proportionality defense under Art. 139 Patent Act is merely "subsidiary" to that one (meaning that if there are issues left to be addressed after the compulsory-license proceeding, some minor adjustments to an injunction, such as a use-up period, may be an option). However, the court also explains that even without that hard-and-fast doctrine, the proportionality defense would have failed anyway if the overall conduct of the parties--particularly also that of the infringer--is considered.

   So, you can be deemed an unwilling licensee for all sorts of reasons anyway, but if you don't seek a compulsory license, that fact in and of itself calls into question your willingness to take a license and fairly compensate the patentee. Whether proportionality is a "subsidiary" defense or whether your failure to bring a compulsory-licensing action goes into a Sisvel v. Haier-style behavioral analysis, the outcome is the same.

   The new injunction statute's reference to the interests of third parties (which I simply equate to the public interest for the purposes of this analysis) was misperceived as a major breakthrough for the pro-reform movement. In early 2021, Judge Dr. Klaus Grabinski of the Federal Court of Justice (and soon of the UPC) took an even patentee-friendlier position: he essentially wrote that a proportionality defense based on third-party interests would have to meet the exact same standard as a request for a compulsory license.

   We're now probably going to see more and more compulsory-licensing cases under Art. 24 Patent Act--as if the Federal Patent Court wasn't busy enough already. And those cases usually go nowhere. In the entire history of the Federal Republic of Germany, only two compulsory licenses were granted, and one of them was overturned on appeal.

   The UPCA refers defendants to national courts if they seek compulsory licenses (even with respect to the future Unitary Patent). This is a built-in asymmetry: patent holders can obtain a multi-country injunction from the UPC, but compulsory-licensing cases would have to be brought in multiple countries in parallel.

4. Those two Dusseldorf non-SEP decisions that nevertheless apply a SEP-like standard show that some of those who were seeking to reform Germany's patent injunction framework are wrong when they say that SEP decisions (such as in the Ford and OPPO cases) were always outside the intended reform's scope. That makes no sense because any non-SEP holder, by doing what it takes to be considered a willing licensor (such as by making a formal licensing offer), can immediately be in at least as strong a position as any SEP holder vis-à-vis a proportionality defense. Arguably, a non-SEP holder can even argue that its position should be stronger as there is no FRAND licensing obligation under antitrust law (even non-SEPs can be subject to antitrust rules, but those cases are few and far between).

   Post-Sisvel v. Haier, no defendant has been deemed a willing licensee except for one case in which a particular patent pool's duplicative-royalties policy was at issue. Apart from that outlier, Philips was the last SEP holder to be denied an injunction in Germany despite prevailing on the merits, and about five years have passed since then.

   As I've been saying for a very long time, unless you have the equivalent of eBay factor #2 (meaning that an injunction will issue only if monetary relief is inadequate), you won't get different outcomes in cases where the patent holder has an obligation or expresses a will to grant a license. All you get then--and that's what we can see happening now in Germany--is a total waste of money (by raising the additional defense and pursuing compulsory-licensing actions in the Federal Patent Court).

5. Both Dusseldorf judgments make it clear that a defendant firstly has to meet its own obligations to avoid harm to third parties (be it BMW or hepatitis C patients) before it can raise a defense centered around third-party interests.

6. Companies who were advised by outside counsel in early 2020--when the German government's first official draft patent reform bill was made public--that the law would make a difference should ask themselves whether they asked the right professionals. That early draft was no defendant-friendlier than the version that was finally adopted (it didn't even recognize third-party interests as an element of a proportionality defense, for instance). And the results are clear now. So whether some lawyers intentionally overstated the future impact of the measure in order to dissuade their clients from seeking meaningful reform or whether they were unrealistic, their opinions were wrong, as the course of events has meanwhile shown.

Another element of last year's legislative amendment took effect earlier this year: the six-month target for preliminary opinions by the Federal Patent Court. And it's doomed to be no more than marginally more useful than the modified injunction statute.

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Moderna files patent infringement actions against Pfizer and BioNTech in Massachusetts and Dusseldorf over COVID-19 vaccine, seeking only damages and carefully excluding 92 poorer countries

One month ago, I noted--in my first blog post ever on a life sciences patent case--that "Pfizer-BioNTech is the more sophisticated side [than CureVac], which may be attributable to Pfizer's ample experience more than anything else." And I was wondering "whether other companies holding mRNA-related patents will sue BioNTech and/or Pfizer." That question has just been answered: Moderna just announced that they filed parallel patent infringement complaints against Pfizer and BioNTech "for infringing patents central to Moderna's innovative mRNA technology platform" in the United States and Germany.

The U.S. complaint was filed with the United States District Court for the District of Massachusetts, which is precisely the venue Pfizer and BioNTech picked for their declaratory-judgment action against CureVac; the German action was filed with the Dusseldorf Regional Court (CureVac's choice).

The patents-in-suit were filed between 2010 and 2016. In 2010, Moderna began building a "foundational platform"--according to its CEO Stéphane Bancel (a native of France who now lives in the United States)--and in 2015 and 2016, Moderna specifically obtained patents on its "work on coronaviruses." COVID-19 is colloquially referred to as "the coronavirus" but it's called SARS-CoV-2 for a reason: there was an earlier SARS (severe acute respiratory syndrome) coronavirus, and there are also non-SARS coronaviruses (such as one that causes the same symptoms as the common cold).

Moderna's press release reads like a textbook example of corporate social responsibility: not only does it stress that no injunction is being sought (which is also what CureVac was very clear about), but Moderna is not even "pursuing monetary damages on sales to the 92 low- and middle-income countries in the GAVI COVAX Advance Market Commitment (AMC 92)." Such a carve-out is exemplary, if not unprecedented. Also, "[n]one of the patent rights which Moderna is seeking to enforce relate to any intellectual property generated during Moderna's collaboration with the National Institutes of Health to combat COVID-19. That collaboration began only after the patented technologies at issue here were proven successful in clinical trials in 2015 and 2016."

The complaint also doesn't relate to "sales to the U.S. government that are subject to 28 U.S.C. § 1498" or to sales prior to March 8, 2022. Moderna once made a pledge for the duration of the pandemic, but made it clear earlier this year that the time had come to get compensated.

Another interesting aspect of Moderna's press release is the unusually detailed description of the infringement allegations:

"First, Pfizer and BioNTech took four different vaccine candidates into clinical testing, which included options that would have steered clear of Moderna's innovative path. Pfizer and BioNTech, however, ultimately decided to proceed with a vaccine that has the same exact mRNA chemical modification to its vaccine as Spikevax®. Moderna scientists began developing this chemical modification that avoids provoking an undesirable immune response when mRNA is introduced into the body in 2010 and were the first to validate it in human trials in 2015.

"Second, and again despite having many different options, Pfizer and BioNTech copied Moderna's approach to encode for the full-length spike protein in a lipid nanoparticle formulation for a coronavirus. Moderna scientists developed this approach when they created a vaccine for the coronavirus that causes Middle East Respiratory Syndrome (MERS) years before COVID-19 first emerged."

Here's the U.S. complaint (this post continues below the document):

https://www.documentcloud.org/documents/22266051-22-08-26-moderna-v-pfizer-biontech-patent-infringement-complaint

The patents-in-suit in the Massachusetts case are

• U.S. Patent No. 10898574 on the "delivery and formulation of engineered nucleic acids";

• U.S. Patent No. 10,702,600 and U.S. Patent No, 10,933,127, both on a "betacoronavirus mRNA vaccine."

Interestingly, the law firms and even some of the key attorneys representing Moderna against Pfizer and BioNTech have previously represented Apple against Samsung and other companies (more recently, just in defensive cases, but originally on the enforcing side):

• Moderna's U.S. lead counsel is William F. "Bill" Lee of WilmerHale. He's a legendary patent litigator, and I've repeatedly quoted something he said in 2013: "I'm old enough not to believe in coincidences anymore."

  Mr. Lee is based in Boston, the venue where the complaint was brought.

• Moderna's European law firm is Freshfields, with Netherlands-based Rutger Kleemans having the European lead, and Dr. Frank-Erich Hufnagel (typically Apple's lead counsel in Germany, thus mentioned on this blog on countless occasions; he's based in Dusseldorf) and Munich-based Dr. Nina Bayerl litigating the German enforcement action.

It remains to be seen who will represent Pfizer and BioNTech; most likely, the same attorney as in the CureVac case: Dr. Christine Kanz of Hoyng Rokh Monegier.

Pfizer and BioNTech are now facing infringement actions brought not only by a company whose initial effort to create a COVID-19 vaccine failed (CureVac), but also one by a company that delivered one of the very best COVID vaccines: Moderna. A "sore loser" narrative wouldn't work in this context.

I'm a "mix-and-match" vaccinee: I started with AstraZeneca's vaccine, followed by BioNTech's Comirnaty (which was the plan from the beginning), and in January I got a Moderna booster. I have great respect for all the parties to Moderna v. Pfizer & BioNTech, and will read the answer to the complaint with great interest. At this early stage, Moderna makes a fundamentally stronger first impression than CureVac for various reasons, and they'll definitely have a better story to tell in court. That said, an alleged infringer is innocent until proven liable.

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Dusseldorf court stays two Nokia v. OPPO patent cases pending validity determinations by Federal Patent Court--same patents are being asserted against OnePlus in other cities

After four injunctions in a row (two in Mannheim (1, 2) and two in Munich), the Dusseldorf Regional Court's 4c Civil chamber under Presiding Judge Sabine Klepsch today stayed two Nokia v. OPPO cases, as a spokesman for the court just confirmed to me.

This means the court deems it very likely that the Federal Patent Court will not uphold those patents in their granted form. It also means that the court wasn't convinced of there being no infringement; otherwise it would have rejected the complaints.

The patents-in-suit are

• EP1741183 on a "front-end topology for multiband multimode communication engines", targeting OPPO devices in Dusseldorf (case no. 4c O 40/21) while OnePlus devices are being accused in a Mannheim action; and

• EP1728352 on "secure data transfer", targeting OPPO devices in Dusseldorf (case no. 4c O 35/21) while OnePlus devices are being accused in a Munich action.

Neither of these patents is standard-essential, so even if Nokia had prevailed, we wouldn't have learned today about how the Dusseldorf court views the parties' conduct in licensing negotiations.

The Federal Patent Court will probably not conduct a hearing in those nullity actions before the second half of next year. At some point closer to the hearings, the Federal Patent Court will communicate a preliminary assessment.

The Dusseldorf court's assessment that the patents are rather likely to be invalidated is not binding in any way on the courts in Munich and Mannheim, so legally there still is a possibility of those patents getting enforced in Germany against OnePlus even before the Federal Patent Court has spoken. It seems that the court hasn't provided any specific reasoning for those stays.

Each patent is different. Just because the Dusseldorf court stayed two Nokia v. OPPO cases after Mannheim and Munich each ruled twice in Nokia's favor doesn't mean that Dusseldorf is generally a less plaintiff-friendly venue. Also, it is remarkable that all three courts were similarly swift. It wasn't always that way.

That said, it is remarkable that Dusseldorf once again proves to be the venue in which things aren't going as smoothly for Nokia as in the two southern venues. In the dispute with Daimler, it was the same division of the Dusseldorf Regional Court that referred the question of component-level standard-essential patent licensing to the European Court of Justice (where it never got resolved as the parties settled along the way). Shortly after the referral decision, Nokia withdrew two other Dusseldorf cases (almost literally on the eve of a trial), which were actually pending before another division (under Presiding Judge Dr. Daniel Voss ("Voß" in German)), only to refile them in Munich. Again, each case is different, and this here is still a small statistical sample. Also, let's see how Ericsson's Dusseldorf cases against Apple will fare--the patent litigation community will be watching closely.

At the moment, OPPO and OnePlus can't sell their smartphones in Germany because of Nokia's patent enforcement. OPPO has issued a press release to clarify that it remains committed to the German market and hopes that the current situation is only temporary:

"As an owner of many 5G patents, OPPO highly values the role of intellectual property in innovation. We have a history of establishing cross-licensing agreements with many leading companies and are committed to promoting a healthy intellectual property ecosystem. The day after OPPO and Nokia's 4G contract expired, Nokia immediately went to court after asking for an unreasonably high renewal fee.

"Our long-term commitment to the German market remains the same and we are proactively working with relevant parties to resolve the ongoing matter. Aside from sales and marketing of relevant products being put on hold over OPPO-owned channels, OPPO will continue operations in Germany. In the meantime, users can continue using OPPO products, access after-sales services, receive future OS updates, and more."

What OPPO's statement doesn't say is that the temporary withdrawal of its smartphones from the German market displays decisiveness. Not all companies of that size would be able to do that. Without naming them, I could think of some others (not Apple, obviously) who'd already have caved. This course of action may ultimately save OPPO more money than the short-term sales opportunities it is losing. Let's not forget that Nokia is not the only SEP holder to be suing OPPO and OnePlus in Germany as we speak. At least two other litigation campaigns (by licensing firms InterDigital and VoiceAge EVS) are known, and even that list may not be exhaustive. That also makes it hard to predict when OPPO will determine that Germany is again a country in which it can operate without having to fear the next patent injunction.

These days the German sales ban made headline news even on the website of Bild, the country's #1 tabloid paper.

There are currently two countries in the world in which various smartphones are unavailable as a result of SEP enforcement: the other is Colombia, where a court yesterday threw out--except for a mere request for clarification--a constitutional emergency motion by Apple against Ericsson.

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BioNTech, Pfizer file complaint against CureVac in District of Massachusetts, seeking declaratory judgment of non-infringement of three mRNA patents

This is the first time for FOSS Patents to report on a life sciences case--a first that is warranted by the extraordinary significance of the related dispute. Less than three weeks after CureVac, a biopharmaceutical company headquartered in Germany and funded by (inter alia) SAP co-founder Dietmar Hopp, announced its Dusseldorf patent infringement action against BioNTech over the alleged use of foundational mRNA-related patents in the latter's COVID vaccine (named Comirnaty), BioNTech and its strategic partner Pfizer filed a declaratory judgment action in the District of Massachussetts taking aim at three of CureVac's U.S. patents.

While BioNTech and Pfizer need no introduction anywhere in the civilized world, there as a time when politicians were bullish about the prospects of CureVac delivering one of the first COVID vaccines--if not the first. Then-President Trump even offered a funding bonanza to CureVac--in exchange for which the company would have had to relocate to the U.S. at least with respect to its work on a coronavirus vaccine. Alarmed by those overtures, the German federal government became minority shareholder, and the European Commission--together with the European Investment Bank--entered into a financing agreement with CureVac. In the end, CureVac wasn't among the winners of the race, though the company is working on a next-generation COVID vaccine that may ultimately be approved.

The question on which it is still too early for me to take a position is whether CureVac is a "sore loser" who is now attempting a patent shakedown of the glorious winner of the race to the first truly effective COVID vaccine--or whether BioNTech was "standing on the shoulders of giants" from the get-go, in which case CureVac would clearly be entitled to substantial compensation. It is potentially a multi-billion dollar question, and it would be wrong to harbor prejudice toward one party or the other, as the idea of patent law is not to reward success in the marketplace but to incentivize research and development. It's not a ball game where you just count the goals. It's a lot more complex and nuanced than that. Simply put, if CureVac made a wrong call in its COVID vaccine development, but had the right vision before BioNTech even started to develop Comirnaty, then its case may be perfectly meritorious and patent law may then be more meritocratic than the marketplace. We just don't know yet.

Here's the U.S. complaint:

https://www.documentcloud.org/documents/22121278-22-07-25-pfizer-biontech-dj-non-infr-complaint-v-curevac

CureVac's German complaint is not seeking an injunction--just fair compensation. CureVac emphasized that it never intended to disrupt the development or delivery of COVID vaccines in the midst of a pandemic, and that the company waited even with its complaint for monetary relief until this point. That makes sense.

At the same time, Pfizer and BioNTech have made a strategically very smart move, too:

• With its narrative that portrays CureVac as a sore loser (without using that term), the complaint is directed not only at the court of law (and the jury to be selected further down the road) but also at the court of public opinion.

• Pfizer is headquartered in New York but has a home-field advantage anywhere in the United States, and BioNTech has one of its two U.S. offices in the Bay State--and that's where CureVac's U.S. office is based, so it would be hard for CureVac to get the case transferred to another district.

  As a cross-jurisdictional patent litigation watcher I don't agree with CureVac's choice to bring only a Dusseldorf case. If CureVac had brought the first U.S. case as well, it could have tried to pick the most favorable district. Some of the preferred districts for patent holders (Eastern District of Texas, Western District of Texas, Eastern District of Virginia) would probably not have been defensible choices as they are merely target markets for Pfizer and BioNTech just like, say, the Southern District of Alabama. But CureVac could have sued in the Southern District of New York (Pfizer HQ), which has recently also been a pretty good venue for patent holders to assert their rights, or in the District of Delaware (Pfizer is a Delaware corporation, as are possibly other parties).

• Pfizer and BioNTech are seeking declarations of non-infringement, not of invalidity. That makes sense for two reasons: U.S. juries are very hard to persuade of invalidity contentions, and when you are already being sued in Germany and don't know whether the patentee may at some point throw in an additional prayer for injunctive relief, any determinations by foreign courts that confirm the validity of the patents-in-suit will dissuade a German court from staying the infringement proceedings pending a local invalidity action. Should Pfizer and BioNTech have reasonably meritorious invalidity arguments, they might instead file for PTAB inter partes reviews.

At this point it looks like Pfizer-BioNTech is the more sophisticated side here, which may be attributable to Pfizer's ample experience more than anything else. But litigation tactics won't prove decisive in the event that CureVac truly did pioneer mRNA-related technologies relevant to mRNA-based COVID vaccines.

It also remains to be seen whether CureVac will enforce its intellectual property rights against other COVID vaccine makers, which would be the logical thing to happen if CureVac's patents are truly mRNA-essential, and whether other companies holding mRNA-related patents will sue BioNTech and/or Pfizer.

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Munich I Regional Court reports new record number of patent infringement actions in 2021: 262, an increase of 30% over 2020 (202 cases)

There has been some confusion out there, but thanks to canonical information from the Munich I Regional Court's press office I'm able to report that 262 patent infringement cases were filed with the Landgericht München I last year, marking a steep increase (by almost precisely 30%) over the previous year (202 cases).

In response to that trend, the Munich court created a third patent law division last year. I attended the 44th Civil Chamber's inaugural hearing. There have meanwhile been various reassignments.

Dusseldorf still has a larger caseload, a very significant part of which is attributable to cases involving small and medium-sized enterprises (such as cigarette paper manufacturers), while the courts in Munich and Mannheim are particularly popular for patent--quite often standard-essential patent (SEP)--assertions against large companies (smartphone makers, car makers, telecommunications carriers, game publishers, and so forth).

Codec (encoder/decoder) caes are one category of SEP matters for which Dusseldorf has traditionally been popular. Currently, some MPEG LA licensors are suing Samsung there. VoiceAge EVS, however, has achieved a 100% hit rate in Mannheim and Munich.

Hamburg is a distant fourth with but a fraction of Mannheim's caseload, but occasionally also gets interesting cases. The remaining German patent infringement venues (Berlin, Braunschweig, Frankfurt, and Nuremberg) are, at best, "also-rans" for the time being. Unlike in the United States, where patent cases can be filed with any of the 94 federal district courts (and can then be heard by any federal judge), only seven German courts handle patent infringement actions in the first instance (with specialized divisions focusing on patent law).

All in all, Germany's share of European patent cases still appears to be growing. In my personal observation, that makes a whole lot of sense, though I would encourage patent holders looking for additional enforcement venues in Europe to give consideration to Spain, particularly the Juzgado de lo mercantil no. 5 in Barcelona (Barcelona Commercial Court V), which is a rocket docket and where the standard applied to requests for injunctive relief is comparable to Germany (without the so-called injunction gap, as infringement and validity are adjudicated at the same time). Nokia and InterDigital have already brought lawsuits there.

Europe as a whole is likely to experience significant growth in the number of patent infringement cases when the Unified Patent Court (UPC) commences its operation next year. Judicial appointments should become known fairly soon. If the UPC appointed a number of German judges proportionate to the jurisdiction's current popularity with patent plaintiffs, that would yield the best results for the new patent judiciary, which during a multi-year transitional period "competes" with national courts (patent holders can even opt out of the UPC system for certain patents). But with Germany being so overwhelmingly strong in this field, chances are that a disproportionate number of UPC judges will hail from other countries--a price to pay to get a pan-European off the ground. Plaintiffs will likely prefer German venues for their UPC cases as well, as the judicial philosophy of German UPC courts of first instance will likely be fairly consistent with that of the country's regional courts.

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