Sisvel v Archos (JM Barcelona, 133/2016, 2016)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

Seised on 19 February 2016, on the eve of the Mobile World Congress, of an ex parte application for interim measures based on two European patents that Sisvel linked to the GPRS and UMTS standards, the Patents Section of Barcelona Commercial Court No 1 refused to grant them without hearing the defendants and referred the application to an inter partes hearing. There was no urgency: Sisvel had tolerated the use for more than three years of negotiations and more than seven months after the CJEU judgment of 16 July 2015 on which it relied, and its application was in truth aimed at obtaining a royalty. The measures sought were also disproportionate. A trade fair therefore does not by itself justify such measures where the holder has tolerated the use during negotiations.

Facts and procedure

Archos was to present and sell at the Mobile World Congress in Barcelona, from 22 to 25 February 2016, devices including the Archos 50d Oxygen implementing the GPRS and UMTS standards. Sisvel, proprietor of European patents EP 852.885 and EP 1.264.504 validated in Spain, stated that it had put Archos on notice in December 2012, negotiated for some three years, ended the negotiations by letter of 11 February 2016 and refrained from suing until the CJEU judgment of 16 July 2015 (C-170/13). On 19 February 2016, before bringing any main action, it applied, without the defendants being heard or alternatively after hearing them, for an order barring the presentation, offer or promotion of the products at the fair, failing which a deposit or guarantee of at least EUR 100,000, together with orders to cease selling and to withdraw and seize the products.

The applicable law

The court restated the general requirements for interim measures under the Civil Procedure Act (LEC): periculum in mora, fumus boni iuris and security (Arts 721, 728, 732 and 735 LEC), together with the requirement that the patent be exploited or that serious preparations have been made (Arts 133 and 83 of the Patents Act) (grounds 1 to 3). Measures granted without hearing the defendant (Art. 733.2 LEC) are exceptional, since they encroach on the right to be heard (ground 3). Measures sought before the main action require urgency or necessity (Art. 730.2 LEC) (grounds 12 onwards), and the measure ordered must be the least burdensome of those equally effective (Art. 726 LEC) (grounds 18 onwards).

Question

Can the holder of patents linked to a standard, engaged in licence negotiations for years, obtain ex parte, before any main action, measures barring the presentation of products at an international trade fair?

Decision

The measures were refused without hearing the defendants; the application was to be heard inter partes against Archos Technology España only (Art. 734.1 LEC), with a hearing set for 7 April 2016 (operative part). There was no periculum in mora: Sisvel sought to alter a factual situation it had tolerated for at least several months, more than three years after its notice and more than seven months after the CJEU judgment, whereas the reasons for delay must be objective and external to the applicant (grounds 8 to 11). The fair did not create urgency, since the alleged infringement was continuing rather than new (grounds 15 and 16). The application, filed without an expert report on infringement, was in truth aimed at a royalty rather than at excluding the technology, and the court observed that it could support the view that the procedure was being used as a means of pressure (grounds 12 to 17). The measures were disproportionate and very burdensome for that purpose: a mere attachment (Art. 727 LEC) would have been less harmful (grounds 20 and 21), and the court recalled the CJEU requirement that an alleged infringer using the patented technology before concluding a licence provide security (ground 22). Fumus boni iuris and security were not examined (ground 23).

Key points for practice

• Periculum in mora is assessed in the light of the holder’s conduct: use tolerated through years of negotiations, and for months after the 2015 CJEU judgment, rules out urgency (grounds 8 to 11).
• A trade fair does not establish urgency where the alleged infringement is continuing (grounds 15 and 16).
• Where the application is in truth aimed at a royalty, injunctive measures are disproportionate and a monetary measure is preferred (grounds 16, 20 and 21).
• Practical point: an essential patent holder seeking ex parte measures at a trade fair must explain its delay by objective causes and file technical evidence of infringement, failing which the application will be sent to an inter partes hearing.

Provisions applied

Treaty on the Functioning of the European Union

Art. 102 (relied on in the statement of facts)

National law

Civil Procedure Act 1/2000 (LEC), Arts 328, 721, 726, 727, 728, 730.2, 732, 733, 734, 735, 743 and 744; Spanish Patents Act, Arts 83 and 133

Case law cited

CJEU, 16 July 2015, C-170/13; Audiencia Provincial of Barcelona (Section 15), 8 January 2014 and 2 May 2013; Audiencia Provincial of Madrid (Section 28), 23 September 2011

Related decisions

• Huawei v ZTE, CJEU, 16 July 2015, relied on by Sisvel to explain its wait and recalled by the court on the security owed by the implementer (grounds 6 to 11 and 22).

Prepared by Dhenne Avocats from the text of the decision (WIPO Lex, Spanish text), consulted on 11 October 2026. Only the official text is authoritative.