2024 Week 26
On 3 June 2024, the UPC Local Division in Hamburg decided to refuse a preliminary injunction in Ballinno vs. UEFA and Kinexon. However, that order was given without any reasons. The reasoned decision of the court was issued 25 days later, on 28 June 2024.
Background
The subject of the patent is particularly topical – it relates to football technology for helping referees to decide offside decisions as well as other decisions such as a handball. At least some readers may be relieved to hear that a full discussion of the offside rule in football (soccer) is way beyond the scope of this blog. But the technology is topical because related technology is being used in the UEFA Euro 2024 football championships underway in June and July in Germany this year.
The court decided not to award the preliminary injunction. Their reasons were mainly (i) that the patent proprietor had delayed too long and (ii) they thought it more likely than not that there was no infringement.
The independent method and system claims aim to detect a contact between a player and a football. Specifically, these claims require sensing of a sound signal that may indicate such contact and then processing that signal by comparing against known signals that would indicate such contact.
The Kinexon system is a development between Adidas and FIFA, which they refer to as “Connected Ball Technology”. In the ball itself is an accelerometer. This is used with other parts of an overall system to help referees decide on various decisions such as offside.
How long is too long?
The court considered that the previous owner of the patent had knowledge of the Kinexon system in September 2023. A warning letter was sent in October 2023. Kinexon responded in November 2023 to deny infringement. On 26 February 2024, Ballinno, as the new owner of the patent, sent a warning letter to Kinexon, attaching a draft application for a preliminary injunction, presumably to show that they were serious and ready.
Kinexon filed a protective letter on 4 March 2024, and then Ballinno filed the application for a preliminary injunction on 18 April 2024.
Referring to the decision in 10x vs. Curio, the court considered that the patent proprietor should, as soon as they had knowledge of the alleged infringement, investigate it and take the necessary measures to clarify it and obtain the documents required to support its claims. And then, as soon as the patent proprietor has all the knowledge and documents that reliably enable a promising legal action, it must file the application for a preliminary injunction within one month.
The court decided that the three month delay by the patent proprietor between November 2023 and February 2024 reflected a lack of suitable urgency. This is a useful datapoint – to be contrasted with the UPC Local Division considering that a two month time period was acceptable on the facts in Dyson vs. SharkNinja.
Bumps and bangs
The court also considered the substantive question of infringement, at least on a summary basis. Interestingly, both parties provided expert evidence on the main point of contention: should a “sound sensing means” include an accelerometer?
The court approached this question first considering literal infringement and then briefly considering infringement by equivalence.
For literal infringement, the court took the now-familiar and uncontroversial approach set out by the UPC Court of Appeal in 10x vs. Nanostring to explain that the scope of protection is determined by the claims, as interpreted in the light of the description and drawings.
The court decided that the feature “sensing a sound signal produced by the ball” required the sensing of acoustic sound waves in air. This may be right in the end, but it seems to me that the court was caught offside by one justification that they gave for this – the court used the French and German translations of the claims (which should have no legal effect) in the B specification of the patent to confirm their interpretation that audio sound waves were intended.
The court did briefly consider the question of equivalents, in a way which may show how this issue will be addressed in the future. Of interest to the court was their view that the “Connected Ball Technology” of Kinexon does not make use of the same technical effect as the patent. In fact, the patent does suggest additionally including an acceleration sensor. This did not help Ballinno, because the separate mention of acceleration sensing as being useful in addition to sound sensing itself indicated that the two are not equivalent.
And in real life?
For anyone closely following the Euros, the “Connected Ball Technology” has been on show. In one particularly contentious incident, it was used to rule out a goal for handball in a match between Belgium and Slovakia on 17 June 2024, which may well have been when the court was writing their decision. In that case, the evidence for handball was shown as a graphical trace that looks remarkably like a sound trace, but apparently related only to sensing of contact using an accelerometer.
Next steps
Euros 2024 will be won well before we next hear substantive news in this case. We understand that the refusal of the preliminary injunction is being appealed. Additionally, the defendants in this case have filed a UPC revocation action against the patent. In the meantime, the clear lesson is to act with speed to bring preliminary injunction applications – do it within a month if you can, or in more complex cases about 1-2 months may be acceptable.
