Procedural Order
of the Court of First Instance of the Unified Patent Court
Local Division Munich
issued on 3 March 2025
CLAIMANT
Headwater Research LLC, 110 North College Ave., Suite 1116 - 75702 - Tyler, Texas - US
represented by: Representative Thomas Adam, 110 North College Ave., Suite 1116 -
75702 - Tyler, Texas - US
DEFENDANT
Samsung Electronics GmbH, Am Kronberger Hang 6 - 65824 - Schwalbach – DE
represented by: Representative Denise Benz, Maximilianstraße 35 - 80539 - Munich - DE
Samsung Electronics France S.A.S, 6 Rue Fructidor - 93400 - Saint-Ouen-sur-Seine – FR
represented by: Representative Denise Benz, Maximilianstraße 35 - 80539 - Munich - DE
Samsung Electronics Co. Ltd., 129, Samsung-ro - 16677 - Yeongtong-gu, Suwon-si,
Gyeonggi-do – KR
represented by: Representative Denise Benz, Maximilianstraße 35 - 80539 - Munich - DE
PATENT AT ISSUE
European patent n° 2 391 947
Local Division Munich
UPC_CFI_54/2024
UPC_CFI_396/2024
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UPC_CFI_396/2024
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PANEL/DIVISION
Panel 1 of the Local Division Munich
DECIDING JUDGE/S
The order was made by Presiding Judge Dr. Matthias Zigann, acting as Judge-Rapporteur.
LANGUAGE OF THE PROCEEDINGS
English
SUBJECT-MATTER
Rule 105.5 Order following the Interim Conference of 28 February 2025.
SUMMARY OF THE INTERIM CONFERENCE
The Interim Conference was held by videoconference on 28 February 2025. The following
people participated:
For the court:
Dr. Matthias Zigann, Presiding Judge and Judge-Rapporteur
András Kupecz, Legally Qualified Judge, as observer
Eric Augarde, Technically Qualified Judge, as observer
For Headwater:
Dr Thomas Adam (Peterreins Schley)
Felix Glöckler (Peterreins Schley)
Dr. Claudia Feller (Peterreins Schley)
Dr. Christoph Horst (Peterreins Schley)
Dr. Michael Schneider (Eisenführ Speiser)
Jochen Ehlers (Eisenführ Speiser)
Dr. Désirée Heintz (Eisenführ Speiser)
Philipp Rastemborski (Eisenführ Speiser)
Dr. Karin Rosahl (Eisenführ Speiser)
Marc Fenster (Russ August & Kabat)
Reza Mirzaie (Russ August & Kabat)
Kris Davis (Russ August & Kabat)
Jason Wietholter (Russ August & Kabat)
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For Samsung:
Dr. Jan Ebersohl (A&O Shearman)
Anna Nottingham (A&O Shearman)
Sophie van Asten (A&O Shearman)
Dr. Joel Nägerle (Zimmermann & Partner)
Dr. Christian Ginzel (Zimmermann & Partner)
Ulrich Graf (Zimmermann & Partner)
The following issues were discussed:
- Value of the claim and counterclaim
JR argued that the value of the counterclaim should be 3 million, as the guidelines suggest
that, in the absence of better information, the value should be set at 150% of the value of the
infringement claim. The parties did not object.
- Parallel proceedings
The parties informed the Court of the ongoing parallel proceedings. To date, Headwater has
not been successful. The Landgericht München I has scheduled a hearing in EP 3 110 071
for 12 July 2025.
- Settlement, at least as far as reimbursable costs are concerned
Headwater has confirmed that it is prepared to grant a licence to Samsung. Further details of
the negotiations were not disclosed. JR encouraged the parties to reach an agreement on the
amount of recoverable costs in any event before the Panel's decision.
- Deficiencies in the formal pleadings
The JR noted a number of deficiencies or ambiguities in the formal pleadings. As far as an
interim award of damages or costs is concerned, the parties have to provide some figures. As
to the wording of the injunction, Headwater should clarify what is meant by "... or claim 1 and/or
2 claim 10 and/or all preceeding claim 35".
Both parties have been asked to respond to these questions in writing within 10 days.
- Security for Headwater's costs
JR informed the parties that Headwater had paid the security ordered in due time.
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- Action for revocation based on Art. 138(1)(e) EPC
The JR informed the parties that Samsung's invalidity attack based on Art. 138(1)(e) EPC was
inadmissible under the applicable German and French law.
- Standing to sue
The JR informed the parties that the Court did not see the need to hear live witnesses at this
time.
Samsung pointed out that Exhibit "K Witness Raleigh" did not qualify as a written witness
statement as it lacked some of the requirements set out in Rule 175 RoP.
Headwater countered that the details of the relationship between the witness and Headwater
had already been extensively pleaded.
- Late filed documents ZP8 to ZP9
JR informed the parties that the late submission of these documents appeared to be justified
in response to AR 1-15 and that Headwater's further amendments (AR1-24) had already been
admitted App_66588/2024, APP_66589/2024.
Headwater responds that it is not concerned with the production of these documents as such,
to the extent that they are used to argue against the auxiliary request. Headwater is concerned
that Samsung is also using these documents to attack the patent claims as granted or as
amended with previously filed auxiliary requests.
The JR pointed out that admitting these documents and arguments in relation to the latest
auxiliary requests, but not for other purposes, could put the court in an awkward position.
Consequently, Samsung`s arguments are not refused. Headwater will have until 20 March
2025 to respond to Samsung's latest validity arguments as requested in the auxiliary
application. This does not mean that the Court will automatically grant leave to file new
auxiliary requests.
Samsung is not permitted to file a response to this brief. If this issue is crucial, Samsung will
be given the opportunity to comment during the Oral Hearing.
- PowerPoint slides at the Oral Hearing
The JR has explained that and how PowerPoint slides can be used during the Oral Hearing.
The slides shall be made available to the Court and the opponent by e-mail by 15 May 2025.
- Hybrid Hearing
Headwater has indicated that a hybrid hearing may be necessary.
Either party may submit a request for a hybrid hearing, including the names of the participants
in person and remotely by email, by 15 May 2025.
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ORDER
1. The date for the oral hearing on 20 May 2025, 9:00 a.m., Courtroom 212 and Overflow
Room 220b, Denisstr. 3 in Munich, is confirmed.
2. The parties are summoned to the hearing.
3. The parties have 10 days to remedy any formal defects and to submit amounts for
damages/costs.
4. Headwater has until 20 March 2025 to respond to Samsung's latest arguments for
revocation. The written procedure will be closed on 20 March 2025.
5. Both parties may comment on the questions by e-mail until 15 May 2025:
- Names of participants in the oral hearing
- the need for a hybrid videoconference
- Possible agreement on the amount of costs to be reimbursed.
6. There is no need to translate the original English or German annexes.
7. The parties may use PowerPoint slides to support their arguments at the hearing. These
must be sent in advance by e-mail to the other party and to the Court by 15 May 2025 at the
latest. The content must be limited to a reproduction of the content already submitted in the
written pleadings.
8. The value of the claim is set at €2 million and the value of the counterclaim at €3 million.
The value of the case is therefore €5 million.
9. The Court does not call witnesses or experts but reserves the right to do so at a later date.
10. All other requests are dismissed.
INFORMATION ABOUT REVIEW BY PANEL
Any party may request that this Order be referred to the panel for a review pursuant
to R. 333 RoP. Pending review, the Order shall be effective (R. 102.2 RoP)
INFORMATION ABOUT ORAL HEARING HELD IN COURT
The oral hearing shall be open to the public unless the Court decides to make it, to
the extent necessary, confidential in the interests of one or both parties or third
parties or in the general interest of justice or public order (R. 115 RoP).
INFORMATION ABOUT AUDIO RECORDING
The oral hearing shall be audio recorded. The recording shall be made available at
the premises of the Court to the parties or their representatives after the oral hearing
(R. 115 RoP).
INFORMATION ABOUT ABSENCE OR DELAY OF A REPRESENTATIVE
A decision by default may be given, upon request, against a party that was duly
summoned but fails to appear at the oral hearing (R. 355.1 (b) RoP.
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INFORMATION ABOUT DECISION BY DEFAULT
Should a party fail to comply with the present Order within the time period specified,
a decision by default may be given in accordance with R. 355 RoP (R. 103.1, last
subparagraph and .2 RoP).
Details of the Order
Order no. ORD_69051/2024 in ACTION NUMBER: ACT_7603/2024
UPC number: UPC_CFI_54/2024
Action type: Infringement Action
Order no. ORD_69052/2024 in ACTION NUMBER: ACT_7603/2024
UPC number: UPC_CFI_396/2024
Action type: Counterclaim for revocation
Dr. Zigann
Presiding Judge
Matthias
ZIGANN
Digital unterschrieben
von Matthias ZIGANN
Datum: 2025.03.03
09:53:40 +01'00'