2025 Week 6
Lenovo/Motorola and Ericsson are battling it out in an ongoing global dispute about 5G standard essential patents (SEPs). The UK courts, the US ITC, the UPC and the EPO are all weighing in. We look first at the speed of the UPC and EPO proceedings, and then we consider a new issue that has arisen in this case: can a patentee file multiple infringement actions based on the same cause of action, and can the defendant file corresponding multiple counterclaims for revocation?
First UPC infringement action
In January 2024, Motorola sued Ericsson at the UPC for infringement of EP 3780758 B1, which granted in September 2023 and is a European Unitary patent. Interestingly, the remedies sought related only to damages – no injunction. This may have been for tactical reasons in view of proceedings elsewhere. But then in May 2024, Motorola applied to the court for permission to add injunctive relief to the existing infringement action. The court refused permission in August 2024. As a reaction to this, Motorola then filed a second infringement action based on the same patent against the same defendants. More on this below.
The first infringement action has rattled along, with Ericsson filing a defence and a counterclaim (cc) for revocation and Motorola replying along with an application to amend the patent. The interim conference is scheduled for February 2025 and the oral hearing for March 2025.
EPO opposition
Ericsson also filed an opposition against the patent at the EPO. Opposition proceedings were accelerated in view of the UPC infringement action. The EPO duly stepped up to the plate. As seen from the comparative timeline below, the first instance EPO opposition proceedings should be completed within 8 months. This is blazingly fast. The UPC infringement and revocation proceedings are scheduled to take 14 months at first instance, which itself is a lively pace for a complex SEP dispute involving infringement and validity.
As it happens, the preliminary opinion from the EPO is broadly negative for Motorola and so they have a hill to climb to persuade the EPO that their modified auxiliary request is inventive.
Comparing UPC and EPO timelines
The table below shows the pace of the EPO opposition compared with the first infringement action. To guide the eye, actions taken by Motorola, Ericsson, the UPC and the EPO are shown in different colours.
Second UPC infringement action
Motorola were refused permission to add injunctive relief to their original infringement action. In its order of 6 August 2024, the court considered whether the amendment to the case “should have been made with reasonable diligence at an earlier stage”. Based on the conduct of the proceedings in other jurisdictions, the court was satisfied that Motorola could and should have added the request for injunctive relief earlier. Permission to appeal was not given, the court considering this a “clear-cut case”.
So Motorola instead filed a further infringement action, including this time the request for injunctive relief. Presumably this second action does not include a request for damages.
Ericsson filed their defence to this second infringement action (apparently including a FRAND defence) and a counterclaim for revocation. Looking at the listing of documents in the UPC case files, it appears that this second counterclaim for revocation includes significantly more evidence than the first.
Motorola filed a preliminary objection in January 2025, against the second revocation action. A preliminary objection is intended to be used to challenge the jurisdiction of the UPC or the competence of a specific division of the UPC to hear a case.
Outcome of preliminary objection
The court’s order of 5 February 2025 decided that the second revocation is inadmissible. The court noted that the UPC Agreement (UPCA) and the UPC Rules of Procedure (RoP) do not deal specifically with this point.
The court first considered whether a preliminary objection can be raised in principle against a counterclaim for revocation. They decided that it must be available, given that it is clearly possible for a freestanding revocation action.
Following this, the view of the court was that the second revocation action was inadmissible:
There is no jurisdiction and competence of the Court of First Instance for a second counterclaim for revocation between the same parties on the same patent, if such an action is already pending before the Court of First Instance.
Probably the outcome is right. But the court based its decision on Article 33 UPCA and the related parts of the RoP that deal with the situation where related actions are filed at different UPC divisions. These provisions are intended to ensure that the proceedings are dealt with efficiently by one division where possible, while reducing the risk of conflicting decisions. Based apparently on the final sentence of Article 33.2 UPCA, the court decided that if the same action (based on the same patent and between the same parties) is brought twice before the same UPC division, then the second action is inadmissible. The logic is that if it would be inadmissible to bring the second action before a different division, it must also be inadmissible before the same division.
This outcome begs the question of whether there is fair treatment of both sides, which the court referred to in its order. It appears that there was no preliminary objection filed against the second infringement action. While it is arguable that the second infringement action is different to the first, in that it claims injunctive relief, the cause of action of the two infringement actions is surely the same. The second counterclaim for revocation also appears to be different to the first, in that it relies on additional evidence.
A further point is that Article 33 UPCA seems to make it clear the defendant has the right to bring a counterclaim for revocation in response to an infringement action. Still further, where the defendant needs to rely on arguments for invalidity in their defence to an infringement action, Rule 25 RoP makes it mandatory for the defendant to file a counterclaim for revocation.
All of this seems to suggest that, having found the second counterclaim for revocation inadmissible, the court will need to find a way to decide that the second infringement action is also inadmissible, perhaps explicitly based on a principle of cause of action estoppel, or by applying the same reasoning based on the final sentence of Article 33.2 UPCA.
But given the speed of the EPO opposition proceedings, including any future EPO appeal, it’s possible that the patent won’t survive long enough for the UPC Court of Appeal to decide conclusively on these points.
