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EXPARTE PRELIMINARY INJUNCTIONS WITH PREVIOUS INSPECTION DURING THE MOBILE WORLD CONGRESS

The Mobile World Congress, which is held each year in Barcelona, is the world’s largest event for the mobile communications industry. It is the venue for showcasing a great number of global developments and innovations in wireless and mobile communications (technology patents); new mobile applications and, in general, state-of-the-art software (intellectual property rights); new designs for mobile devices and other computer and communication media [tablets, phablets, laptops, etc. (industrial design)]; and ultimately, it is a place where leading companies in computing, electronics and telecommunications come together and compete with each other.

In an early blog entry, we reported about the “fast-action” protocol designed by Barcelona’s patent judges to address urgent interim relief applications filed during and on the occasion of the MWC in response tothe infringement of the participating companies’ IP rights.

Under this specific protocol, Barcelona Mercantile Courts nos. 1 and 4 and 5 granted three different preliminary injunctions requested by the Spanish company Fractus for the alleged infringement of one of their patents related to the internal antennas of mobile phones.

These interim injunctions were granted against a French company and two Chinese companies, all planning to participate as exhibitors in the MWC.

One of these decisions concerned a Chinese company which manufactures mobile telephone devices and components for other companies, which then put their own brand on the final product. This type of company is known in industry parlance as an Original Equipment Manufacturer (OEM).

It is common for a patentee to suspect that a competitor may attempt to offer an infringing product at such an event, but it is difficult to make an infringement determination before the Fair, since the products are not yet on sale or not easy to find in the market.

In this case, the patentee surmised that the devices which a particular company manufactured for third parties, which they were going to bring to the MWC, used the technology protected by their patents, due to the fact that most of the industry uses this technology. However, the patentee didn’t have conclusive evidence that the devices manufactured by the defendant, due to be promoted at the MWC, were in fact going to infringe on their patents with total certainty.

Although the applicant based its request on Art. 732.2 of the Civil Procedural Law, allowing the Court to inspect the dubious devices before ruling on the preliminary injunction request, Mercantile Court no. 5 decided to first carry out a preliminary verification of facts proceeding with the aim of determining the infringement of the patent.If infringement were then proven by an independent expert opinion, the Court would adopt precautionary measures in a quasi-immediate or automatic way.

The Court consequently decided to gather samples of the mobile phone devices at the respective stand and turn them over to the technical experts,who were allowed to examine the devices at their own lab in order to determine possible infringement.

As verification of infringement by an expert was one of the requirements for the adoption of the requested precautionary measures. Upon receiving the expert report the morning of the following day finding in favor of infringement, the Court automatically issued a resolution granting the precautionary measures.

In summary, the path taken by the Court before deciding to grant the preliminary injunctions was as follows:

  • A range of representative "samples" of the defendant companywireless communication device models wasselected by the expert the first morning of the Congress.
  • The expert analyzed the samples in his lab and submitted his opinion to the Court before 9:00 a.m. the following day, stating that all the analyzed deviceswere indeed found to be infringing.
  • After obtaining the expert report on infringement, the Court immediately issuedthe corresponding order granting the precautionary measures. The order was served upon the defendant at his booth in the Congress an hour after the issuance of the decision granting the preliminary injunction.

HOYNG ROKH MONEGIER Spain llp