Local division Düsseldorf dismisses Ona Patents infringement claim against Google

The dispute centres on Ona Patents’ EP 2 263 098. The patent, entitled “Positioning of mobile objects based on mutually transmitted signals”, protects technology that can locate paired accessories such as headphones, even after signal interruption. This enables the saving of the device’s last known location at the point where the signal was lost.

Ona Patents accuses Google of infringing its EP 098 with tablets and smartphones in the Pixel series. The company filed an infringement action against Google at the Düsseldorf local division on 14 March 2024 (case ID: UPC_CFI_100/2024). Google responded on 22 July with a counterclaim for revocation (case ID: UPC_CFI_411/2024).

Today, the local division Düsseldorf dismissed the infringement action and counterclaim for revocation.

One down one to go

On 29 October, the judges’ panel in Düsseldorf heard the case between Ona Patents and Google. Parallel proceedings against Apple over the same patent concluded before the oral hearing.

The discussion centred mainly on the construction of claim 9 of EP 098. The judges found Google had not infringed the patent because they do not show every claimed component: “Claim 9, asserted for infringement, is a product claim. Even if the product consists of different components, the alleged infringing product must show every claimed component. Cases
where only certain features of a product are infringed may be examples for an indirect infringement (Art. 26 UPCA), but not for direct infringement (Art. 25 UPCA).”

Furthermore, the judges found the counterclaim is admissible but unfounded because the challenges to validity are unsuccessful.

This marked Google’s first dispute at the UPC. The panel comprised legally qualified judges Ronny Thomas, Bérénice Thom, Margot Kokke, Heike Strysio, and technically qualified judge Gérard Myon. It was Myon’s first time on the panel at the Düsseldorf local division.

Both parties have two months to appeal.

IP boutique vs US firm

Patent owner Ona Patents instructed Düsseldorf-based IP boutique Kather Augenstein. The team, led by partner Christof Augenstein, represented the NPE for the first time following recommendations. The team included associates Benedikt Walesch, Melissa Lutz and Nicole Schopp.

Patent attorney Benjamin Bubendorfer, formerly of Munich firm WBH Wachenhausen, provided technical expertise for Ona Patents. He left the patent attorney firm in June to establish his own practice.

Google banked on its regular advisors from Quinn Emanuel Urquhart & Sullivan. Partners Marcus Grosch and Jesko Preuß, who frequently represent the US tech firm including in its dispute against Sonos, led the team. Andreas Hahne, Tonio Allendorf, Holger Hiss, Isabel Ruigewaard and Anahita Mousavi provided support. They worked closely with Google’s in-house lawyer and Head of Patent Litigation, Ralf Uhrich, who attended the oral hearing. (Co-author: Christina Schulze)