Sun Patent Trust v Vivo Mobile Communication & Ors (UPC_CoA_755/2025 & UPC_CoA_757/2025)
Decision date:
31 October 2025
Osborne Clarke summary
- Sun Patent brought an infringement action in the Paris LD against Vivo, claiming, among other things, that the terms of a licence to the patent at issue offered by Sun Patent to Vivo were FRAND. On the same day, Sun Patent also filed an application for protection of confidential information under Rule 262A RoP, which were partially granted. Sun Patent appealed the order, with the oral hearing taking place on 26 November 2025. In the meantime, it applied for suspensive effect of the partially granted confidentiality order, arguing that the appeal would become pointless if the confidential information was disclosed to Vivo's employees. The Court of Appeal rejected Sun Patent's request for suspensive effect.
- Later, Vivo filed a preliminary objection under Rule 19 RoP, challenging the court's jurisdiction to decide Sun Patent's request for a FRAND rate determination. Vivo requested the court stay or postpone its deadlines for the statement of defence and counterclaim for revocation, until a final decision on the preliminary objection was made. The judge-rapporteur denied the request to postpone the filing under Rule 19.6 RoP, which was confirmed by the Panel. The Paris LD eventually rejected the preliminary objection.
- Prior to the Paris LD's rejection of Vivo's preliminary objection, Vivo had filed a request under Rule 9.3 RoP to the Court of Appeal for (i) a stay of the Paris LD proceedings pending the confidentiality appeals; or (ii) in the alternative, an extension resetting its statement of defence and counterclaim for revocation deadlines to two months starting from the day of service of the decision in the appeal proceedings concerning the confidentiality orders.
- The Court of Appeal refused the application. It held that Rule 21.2 RoP permits a stay only where an appeal has been lodged against a decision or order of the judge-rapporteur on a preliminary objection under Rule 21.1 RoP. Although a stay may be granted under Rule 21.2 RoP under exceptional circumstances, an appeal against a decision or an order on a preliminary objection must already have been lodged. There cannot be a stay based on anticipation or speculation of such an appeal.
- Rules 19 to 21 RoP provide specific rules for preliminary objections. The court emphasised a strict application of these provisions as they may differ from general rules, such as the rules for staying proceedings (Rules 295 to 298 RoP).
- The same approach applies to extensions of time limits for submissions in first instance proceedings under Rule 9.3 RoP. As a general rule, such extensions must be decided upon by the Court of First Instance. In this case, Vivo had not justified why the Court of Appeal should exceptionally decide first, nor had it justified why it had not applied to the Paris LD for the relief it sought first.
Issue
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