Don’t take the Mickey with the UPC

Disney, in particular, is the defendant in a global effort by InterDigital to push back on perceived infringements of its technology on Disney’s various streaming platforms, such as Disney+. Alongside proceedings in the US and Brazil, Europe is on the front line. On the 24^th July, a decision was published by the Unified Patent Court (UPC), issuing an injunction covering Austria, Belgium, Germany, Denmark, Finland, France, Italy, the Netherlands, Portugal, Romania, and Sweden, requiring Disney to refrain from providing streams in these jurisdictions that meet certain criteria which have been held to infringe InterDigital’s patent EP2449782.

This comes a few weeks after the UPC issued another injunction in InterDigital’s favour against Disney, relating to another InterDigital patent, as a result of which Disney ceased offering some video features like Dolby Vision or 3D presentation in the affected countries.

These cases touch on a large number of issues including – SEPs, FRAND (Fair, Reasonable and Non-Discriminatory) licensing, the treatment of non-disclosure agreements in FRAND proceedings, and whether InterDigital holds a dominant market position. But the key lesson here is that these cases, and several others relating to InterDigital’s portfolio, have been brought before the UPC at all.

This is not a Unitary Patent Case

The Unitary Patent and the UPC are often conflated, but InterDigital took this action on the basis of EP2449782 – a patent that was granted at the end of 2017, well before the Unitary Patent became available in June of 2023. National validations arising from European Patent applications in UPC member states fall under the jurisdiction of the UPC unless they have been opted out – and by taking the UPC route, InterDigital only had to seek one injunction to cover this range of countries instead of 11.

Risks and Rewards

Clearly, for a claimant seeking to enforce their IP in a wide range of countries, the UPC is very appealing as a venue. A risk for proprietors is that invalidity proceedings before the UPC – including those brought as counters to invalidation proceedings – can result in revocation orders invalidating the underlying patent in all UPC member states. Before the UPC came into existence, many proprietors filed opt-outs for fear of what the new court would do.

As it stands, in both cases Disney brought counterclaims for revocation, and in both cases these failed.

UPC: Working As Designed?

With both cases received in February 2025 and decided in June-July 2026, reaching a decision on both the infringement and the revocation action represents a brisk and efficient process.

InterDigital’s case is precisely the sort of cross-border matter the UPC was intended to deal with, and using the UPC is clearly working out for them. For Disney, the impact of these injunctions may be significant, though there is at least some benefit from receiving injunctions which apply the same terms across the 11 jurisdictions, rather than the injunctions varying from country to country as they may have done had InterDigital sought 11 different injunctions in the national courts in each case.

Will more proprietors follow InterDigital in embracing the UPC for enforcement in Europe?

While these cases are set in the context of a global patent dispute, the UPC offers significant advantages even to those who are “only” interested in Europe, and confidence in the UPC is growing. Our patents team at Greenwoods can act as your representatives before the UPC and advise on the benefits and risks of the system.

Make sure your international patent strategy is keeping up with new developments; we stand ready to advise.