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Sisvel v Sun Cupid, District Court of The Hague

2 March 2020 - Case No. C/09/582418 HA ZA 19-1123

http://caselaw.4ipcouncil.com/dutch-court-decisions/sisvel-v-sun-cupid-district-court-hague

This case law summary was also published by The IPKat.

A. Facts

Sisvel International S.A. (Sisvel) licenses patent EP 2 139 272 B1 (EP 272) as part of its LTE/LTE-A Patent Pool [1] . The LTE/LTE-A Patent Pool is a subsection of Sisvel’s MCP licensing program [2] . EP272 has been declared as essential to the 4G-LTE standard [3] .

Sun Cupid Technology (HK) Ltd. develops and sells, through exports from China and imports in European countries, smartphones that implement the LTE technology [4] . On 22 May 2015, Sisvel notified Sun Cupid Technology (HK) Ltd about its licensing program [1] . Sun Cupid did not want to execute a license under the LTE/LTE-A Patent Pool [2] .

Sisvel filed proceedings against Sun Cupid Technology (HK) Ltd., the parent company [5] , and its subsidiaries, Sun Cupid (Shen Zhen) Electronic Ltd., Nuu Limited, Nuu Mobile (HK) Limited , Neotic Inc., Nuu Mobile UK Limited, and Pyramid Ltd. Before the District Court of the Hague (Court). Sisvel sought an injunction against Sun Cupid and its subsidiaries for infringement of EP 272 [6] , as well as the interdiction for Sun Cupid and its subsidiaries to directly or indirectly infringe the patent EP 272 [7] , act unlawfully against Sisvel through direct or indirect infringement [8] , the notification of infringement to resellers [9] , market participants and professional users, the recall and destruction of products [10] , the removal of infringing products from the websites [11] , a notification in Dutch newspapers [12] and on relevant websites [13] , a compensation for damages [14] and the provision of the list of resellers and models as well as their price [15] .

The Court granted Sisvel’s claims (apart on incident and market participants and customers), subject to the following limitation explained below.

B. Court’s reasoning

Injunction and recall of products

To avoid execution issues, the Court determined that infringing products are products that infringe the Dutch part of EP 272 and support or implement the LTE standard [16] . The Court granted the injunction to Sisvel [17] .

But it rejected Sisvel’s claims based on unlawful handling for lack of interest [18] : Sisvel did not demonstrate that those claims would lead to broader measures or interdictions than those based on direct or indirect infringement [2] .

With respect to the notification and recall of products requested by Sisvel, the Court limited it to resellers [19] : Sisvel did not sufficiently indicated who were the market participants who should be notified about the infringement and required to return the products [20] . The Court also highlighted that the recall of products was mostly focused on resellers and measures against customers would not be taken into account [2] .

Compensation for damages, penalty fee and process costs.

Regarding damages, the Court used Sisvel’s notification to Sun Cupid Technology (HK) Ltd. dated 22 May 2015 as the starting point to calculate the compensation for damages [5] . As all defendants cooperate for the commercialisation of infringing products and Sun Cupid Technology (HK) Ltd is the parent company of all other defendants, the Court considered that this date applies to all defendants as starting point for damages calculation [2] . Sisvel’s request to have an independent accountant to calculate the profits made by Sun Cupid was rejected by the Court because it could lead to execution problems, as accountants have to comply with rules that prevent them from drawing conclusions that can confirm the accuracy of their task [21] . Therefore, the Court ordered Sun Cupid to provide Sisvel with the profits on infringing products since 22 May 2015 [22] and either compensate Sisvel for the damages occurred or the profits made on the infringing products, at Sisvel’s choice [23] .

Sisvel asked for a penalty payment of either €10,000 per day where the defendants do not comply with the decision or €1,000 per product, at its choice [24] . The Court decided that the penalty fee per product would be applicable only when the violation of the decision occurs per product and would be capped to the process costs amounts [18] .

Sun Cupid has to pay for the process costs [25] .

Jurisdiction

The Court assessed its competence for Sisvel’s principal claim against defendants not based in the Netherlands [26] on Article 7.2 and 6.1 [27] of the Brussels I Regulation [28] . The competence is limited to the Netherlands [27] .

  • [1] Court of The Hague, judgement dated 2 March 2020, par. 2.4.2
  • [2] Ibidem
  • [3] Court of The Hague, judgement dated 2 March 2020, par. 2.4.1
  • [4] Court of The Hague, judgement dated 2 March 2020, par. 2.4.3
  • [5] Court of The Hague, judgement dated 2 March 2020, par. 5.7
  • [6] Court of The Hague, judgement dated 2 March 2020, par. 2.1 (I) and 2.2. (i)
  • [7] Court of The Hague, judgement dated 2 March 2020, par. 2.2. (ii)
  • [8] Court of The Hague, judgement dated 2 March 2020, par. 2.1 (II) and 2.2. (ii)
  • [9] Court of The Hague, judgement dated 2 March 2020, par. 2.2 (iii)
  • [10] Court of The Hague, judgement dated 2 March 2020, par. 2.2 (iv) and (v)
  • [11] Court of The Hague, judgement dated 2 March 2020, par. 2.2 (vi)
  • [12] Court of The Hague, judgement dated 2 March 2020, par. 2.2 (vii)(a)
  • [13] Court of The Hague, judgement dated 2 March 2020, par. 2.2 (vii)(b) and ( c)
  • [14] Court of The Hague, judgement dated 2 March 2020, par. 2.1 (III) and 2.2 (xiv)
  • [15] Court of The Hague, judgement dated 2 March 2020, par. 2.2 (xv) and (xvi)
  • [16] Court of The Hague, judgement dated 2 March 2020, par. 5.4
  • [17] Court of The Hague, judgement dated 2 March 2020, par. 6.3
  • [18] Court of The Hague, judgement dated 2 March 2020, par. 5.5
  • [19] Court of The Hague, judgement dated 2 March 2020, par. 6.4
  • [20] Court of The Hague, judgement dated 2 March 2020, par. 5.6
  • [21] Court of The Hague, judgement dated 2 March 2020, par. 5.8
  • [22] Court of The Hague, judgement dated 2 March 2020, par. 6.9
  • [23] Court of The Hague, judgement dated 2 March 2020, par. 6.8
  • [24] Court of The Hague, judgement dated 2 March 2020, par. 2.1 (III) and 2.2 (xvii)
  • [25] Court of The Hague, judgement dated 2 March 2020, par. 5.11
  • [26] Court of The Hague, judgement dated 2 March 2020, par. 5.3
  • [27] Court of The Hague, judgement dated 2 March 2020, par. 3.1
  • [28] Regulation (EU)No. 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgements in civil and commercial matters