Telefonaktiebolaget LM Ericsson v ASUSTEK Computer (CFI, 15 October 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 15 October 2024 (UPC_CFI_317/2024, ACT_35572/2024), the Lisbon Local Division (R. Lopes, presiding and rapporteur, S. Granata, P. Rinkinen, J. Mesa Pascasio) dismissed for lack of urgency Telefonaktiebolaget LM Ericsson’s application for provisional measures against ASUSTEK Computer, Digital River Ireland and Arvato Netherlands under EP 2 819 131 (inductor layout for reduced VCO coupling). The division nonetheless found the patent prima facie valid and infringed. For practitioners, the order shows that the applicant must itself date its knowledge of the infringement, and accepts the competence of a local division over an intermediary on the sole basis of the place of infringement.

Facts and procedure

Ericsson targeted laptops fitted with Intel AX201 and AX211 Wi-Fi modules, launched in 2019 and 2021, whose use in laptops sold in Europe had been publicised since September 2019 and October 2021 (paragraphs 31 and 34). On 12 October 2023 Ericsson had brought proceedings before the US ITC against Lenovo on the US counterpart patent (paragraph 36), licence negotiations with ASUSTEK had been running since 2018. The application was filed on 14 June 2024, with test purchases on 5 May, 10 June and 22 July 2024, at the hearing on 12 September, Ericsson stated that it had instructed its representatives on 15 April 2024 (paragraph 53). The defendants disputed competence, infringement, validity and urgency.

The applicable law

Provisional measures are governed by Art. 62 UPCA and Rules 206, 209 and 211 RoP. Their exceptional nature requires urgency: the applicant must act diligently from the start of the infringement or from when it became aware of it (paragraphs 48 to 50), the Court of Appeal having taken that date of awareness as the starting point (Mammut v Ortovox, 25 September 2024). Art. 33(1)(a) UPCA confers competence on the division where the infringement occurs.

Question

Does a local division have competence over an intermediary, and can a patentee that does not say when it learned of the infringement establish urgency?

Decision

Competence: arguing that the products do not embody the claim goes to the merits, not to the territorial connection (paragraph 42). Art. 33(1)(a) UPCA creates an objective link to the place of infringement, irrespective of whether the defendant is an infringer or an intermediary. It therefore applies to intermediaries under Art. 62 UPCA, which efficiency and legal certainty also require (paragraph 43).

Urgency: the launch of the modules could hardly have gone unnoticed by Ericsson, which did not refute this (paragraph 52). Ericsson never stated when it became aware of the products, and neither the test purchases nor the instruction of 15 April 2024 is likely to be that date (paragraph 53). The division can therefore rely only on the 2019 and 2021 dates or, at best, October 2023, none of which allows an application filed in June 2024 to be regarded as made without undue delay (paragraph 55). The application is dismissed against all defendants (paragraph 56).

For completeness, the division addresses the merits (paragraph 57): the patent is prima facie more likely valid than not, the added matter, novelty and inventive step attacks failing, and an auxiliary request is held inadmissible in provisional proceedings (paragraphs 61 to 80), infringement is more likely than not (paragraph 86). ASUSTEK and Digital River offer or sell the products, ownership of the domain through which they are offered being sufficient (paragraph 97), and Arvato, which stores the products, is an intermediary (paragraph 99). Ericsson bears the costs up to the ceiling, and the value of the dispute is set at EUR 1,000,000 (paragraphs 100 and 101).

Key points for practice

• Art. 33(1)(a) UPCA allows an intermediary to be sued before the division of the place of infringement, without a separate action.
• The burden of showing diligence lies on the applicant: absent a date of awareness, the division takes the date on which the products became publicly known.
• A test purchase or the date of instructing counsel does not start the urgency clock where the products had long been known on the market.
• Practical point: a patentee contemplating provisional measures should document and state the precise date on which it learned of the infringement, likely validity and infringement do not make up for unproven urgency.

Provisions applied

Agreement on a Unified Patent Court

Arts. 25(a), 31, 33(1)(a), 62, 63, 69(1) and 73

Rules of Procedure

Rules 118.5, 150.2, 206, 209, 211, 220.1 and 224.1

European Patent Convention

Art. 56, Art. 69, Art. 123(2), Art. 138

Regulation (EU) No 1215/2012

Arts. 4, 7(2), 71, 71a and 71b

Directive 2004/48/EC

Arts. 9 and 11

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024, Mammut Sports Group v Ortovox Sportartikel, Court of Appeal, 25 September 2024, Court of Appeal, 3 September 2024, UPC_CoA_188/2024, 10x Genomics v NanoString, Munich Local Division, 19 September 2023, myStromer v Revolt Zycling, Düsseldorf Local Division, 18 October 2023, Ortovox Sportartikel v Mammut Sports Group, Düsseldorf Local Division, 9 April 2024, 10x Genomics v Curio Bioscience, Düsseldorf Local Division, 30 April 2024, Ballinno v UEFA, Hamburg Local Division, 3 June 2024, The Hague Local Division, 31 July 2024, UPC_CFI_195/2024

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.