Vivo Mobile Communication v Sun Patent Trust (UPC-COA-904/2025, UPC-COA-905/2025)
Decision date:
16 March 2026
Osborne Clarke summary
- Sun Patent brought two infringement actions against Vivo before the Paris LD, seeking a finding of infringement of two standard essential patents (SEPs), a determination that the licence terms it proposed were FRAND and, conditionally, an injunction.
- Vivo filed a preliminary objection under Rule 19 RoP in each set of proceedings, arguing that an independent claim for determination of a FRAND rate did not fall within the exclusive competence of the UPC under Article 32(1) UPCA, nor did it fall within the exclusive competence of the Paris LD under Article 33(1) UPCA. The Paris LD rejected the preliminary objection, deferring the admissibility of the FRAND determination claim to the main proceedings, but granted leave to appeal.
- On appeal, Vivo argued that the Paris LD was wrong in exercising its discretion and by deferring the jurisdictional question in accordance with Rule 20.1 RoP: only the judge-rapporteur, not the panel, may defer a preliminary objection to the main proceedings under Rule 20.2 RoP. It also alleged that the Paris LD had mischaracterised the FRAND determination claim as it was not incidental to infringement but a separate and independent request for a binding res judicata declaration of FRAND licence terms for which the UPC lacks jurisdiction.
- The Court of Appeal dismissed the appeal. It held that the decision to defer a preliminary objection to the main proceedings could be taken by either the judge-rapporteur, as set out in Rule 20.2 RoP, or by the panel if the judge-rapporteur has decided to refer it to the panel for a decision – the judge-rapporteur may refer any matter to the panel for a decision under Rule 102.1 RoP, which applies equally to the interim procedure and the written procedure.
- In considering whether the Paris LD overstepped the boundaries of its discretion, the Court of Appeal concluded that it had not and that there were sound reasons of case management efficiency for the FRAND determination claim to be dealt with in the main proceedings. The Court of Appeal agreed with the Paris LD that Sun Patent’s main claim was primarily an infringement action and that the FRAND determination was incidental or dependent on the infringement question rather than a freestanding claim.
- Vivo had failed to demonstrate that the FRAND determination would need to be decided even if the court were to conclude that there was no infringement. This finding was reinforced by the express wording of Sun Patent’s statement of claim, which presented the FRAND determination as “a condition of the granting of remedies”.
- In any event, the Court of Appeal noted, as had been pointed out by the Paris LD, that all facts and arguments relevant to the determination of FRAND terms, whether admissible or not, would have to be debated by Vivo in its FRAND defence filed in its statements of defence, which would have to be dealt with in the main proceedings.
Issue
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