Vivo Mobile Communication Co., Ltd. and others v. Sun Patent Trust, Order of the Court of Appeal, 16 March 2026, UPC_CoA_904/2025 and UPC_CoA_905/2025
The UPC Court of Appeal upheld the Paris Local Division’s preliminary objection orders, confirming the decision to defer the admissibility of Sun Patent Trust’s request for the Court to set FRAND terms to the main proceedings. In doing so, the Court reaffirmed the broad case management discretion afforded to the Court of First Instance when deciding whether a preliminary objection should be addressed immediately or deferred to the merits.
Background
On 18 April 2025, Sun Patent Trust (Sun Patent) brought two infringement actions before the Paris Local Division (LD) of the UPC against three companies of the Vivo group (Vivo). In addition to seeking findings of infringement regarding 4G+ compatible mobile devices marketed in France and Germany, Sun Patent requested that the Court determine the terms of a fair, reasonable and non-discriminatory (FRAND) licence for the patent at issue.
As its principal claims, Sun Patent sought:
– A.I. – a declaration of infringement,
– A.II – a finding that the terms proposed by Sun Patent were FRAND, or alternatively that the Court adjust them to fall within the FRAND range,
– A.III – the grant of injunctive and corrective measures should Vivo fail to enter into such a licence within the timeframe set by the Court.
Vivo raised a preliminary objection (PO) under Rule 19 of the Rules of Procedure (RoP) challenging the UPC’s jurisdiction. It submitted that a standalone request for the determination of FRAND terms does not fall within the exclusive competence of the UPC under Article 32(1) of the Agreement of a Unified Patent Court (UPCA), nor within the territorial competence of the Paris LD under Article 33(1) UPCA.
By decisions of 30 October 2025, the Paris LD rejected the PO in its entirety. The full panel held inter alia that the admissibility of the FRAND related claim (claim A.II) should be examined in the main proceedings. Regarding jurisdiction under Article 32(1) UPCA, the Court considered that the core of the dispute concerned the alleged infringement of an essential patent, and that the FRAND assessment was incidental or dependent on that principal issue, Sun Patent having made the negotiation of a FRAND licence a condition of its request for an injunction.
Vivo appealed, arguing that the LD should have decided the jurisdiction issue at the preliminary stage and that only the judge rapporteur, not the panel, may defer such objections under Rule 20.2 RoP. It further submitted that claim A.II is not incidental to infringement but a separate request for a binding FRAND determination, which in its view falls outside the UPC’s jurisdiction.
Vivo subsequently raised a FRAND defence it its Statement of Defence (SoD) in the main proceedings.
Order of the Court of Appeal
The Court of Appeal rejected Vivo’s appeals.
Deferral by the panel was procedurally correct
The Court of Appeal first confirmed that the Court of First Instance has discretion under Rule 19.5 RoP to decide a PO either immediately or in the main proceedings. This discretion may be exercised:
• by the judge rapporteur, who may defer under Rule 20.2 RoP; or
• by the panel, where the judge rapporteur refers the matter pursuant to Rule 102.1 RoP.
The CoA emphasised that Rule 102.1 applies mutatis mutandis in the written procedure, as the judge rapporteur is responsible for case management throughout (Rules 331–333 RoP), including the power to refer proposed orders to the panel.
Against this background, the Court rejected Vivo’s argument that only the judge rapporteur could decide to defer the objection. The Paris LD committed no procedural error in having the full panel order that admissibility of claim A.II would be addressed in the main proceedings.
The LD acted within the bounds of its discretion
The Court of Appeal then examined whether the Paris LD had improperly exercised its discretion. Given that the issue concerned the Court of First Instance’s margin of discretion, the scope of review was narrow: the Court assessed only whether the LD had exceeded or misapplied that discretion.
The Court held that the Paris LD had acted within the limits of its discretion. It endorsed the LD’s view that Sun Patent’s action is, first and foremost, an infringement action concerning an essential patent, and that the FRAND related request in claim A.II is merely incidental or dependent upon that infringement issue, Sun Patent having simply anticipated the FRAND defence typically raised in such cases. The Court concluded that the LD therefore considered that it might ultimately not need to rule on the admissibility of claim A.II if infringement were rejected in the main proceedings.
The Court held that Vivo had not demonstrated that claim A.II amounted to an independent request requiring adjudication regardless of the infringement outcome. The structure of the operative claims made clear that the FRAND determination sought under A.II served only as a necessary step for the injunction requested under A.III, which would arise solely if infringement were established and Vivo declined to enter into a FRAND licence. Should the Court ultimately find no infringement, no injunction could be granted and there would be no need to decide on FRAND terms. This interpretation was confirmed by the Statement of Claim itself, where Sun Patent expressly presented the FRAND determination as a condition precedent to the remedies sought.
Finally, the Court noted that, in any event, all FRAND related facts and arguments would need to be examined in light of Vivo’s own FRAND defence. As the Paris LD had already noted, these issues will have to be addressed in the main proceedings regardless of the admissibility of claim A.II, all the more so since Vivo eventually filed a FRAND defence in its SoD.
Practical implications
The decision illustrates that a PO may be deferred to the main proceedings where this approach supports the efficient conduct of the case, and that such deferral falls within the broad case management discretion afforded to the Court of First Instance.
On the FRAND side, the order remains largely procedural, but its outcome indicates that requests for FRAND determinations may still proceed when they are embedded within an infringement action, as Sun Patent’s request was not excluded at the preliminary stage.
The decision also reflects the Court’s broad understanding of what may be considered incidental or dependent on an infringement claim. This suggests that a claimant may legitimately structure its claims so as to anticipate a likely defence, including, but not limited to, a FRAND defence, and integrate the related issues within the framework of the remedies sought, rather than presenting them as standalone claims requiring separate jurisdictional analysis. Such an approach, while illustrated here in the FRAND context, could equally apply in other areas where a claimant seeks to address an expected defence as part of its overall claim strategy.
The order can be found here.
