Context: The Unified Patent Court (UPC) has the power to give patentees leverage in up to 18 countries at the same time, and is increasingly popular. Yesterday the UPC’s Munich Local Division (LD) held a Huawei v. Netgear trial (October 30, 2024 ip fray article). Most of the six standard-essential patent (SEP) disputes that have been settled since late last week (October 30, 2024 ip fray article) had a UPC component, which presumably contributed to the settlement pressure felt by defendants. Interesting new cases continue to be filed, most notably a lawsuit by German supercomputer company ParTec against the world’s most valuable corporation, Nvidia (October 28, 2024 ip fray article).
What’s new: This morning the UPC’s Dusseldorf LD is on fire. It just handed down a pair of closely-related preliminary injunctions (PIs) in an automotive supplier dispute (Valeo v. Magna), with an interesting carve-out enabling the enjoined party to fulfill certain outstanding orders by BMW, as well as a permanent injunction sought by a PepsiCo subsidiary named SodaStream against its competitor Aarke.
Direct impact: There will be appeals, and the enjoined parties will seek to get enforcement stayed. But the Dusseldorf LD’s track record on appeal is strong: the first UPC PI that got affirmed, Ortovox v. Mammut (September 27, 2024 ip fray article), originated from there.
Wider ramifications: The decisions provide guidance that is of relevance beyond the cases at hand. It is conceivable that today’s Halloween Triple Whammy is going to encourage more patentees to turn to the UPC for the enforcement of their rights.
This article discusses the two preliminary injunctions in one section and the permanent one in another.
1. Pair of preliminary injunctions in Valeo v. Magna
French automotive supplier Valeo filed applications for provisional measures (i.e., PI motions) against Austrian-Canadian competitor Magna over the following related patents:
- EP3320602 (Rotary electric machine provided with a reservoir of lubricant for lubricating a rolling bearing and for cooling the machine)
- EP3320604 (Rotary electric machine equipped with a means of adjusting the angular position of the shaft)
Valeo prevailed on both (1, 2 (PDFs)). The court has seized this opportunity to provide certain clarifications. Two of them relate to patent ownership. Whoever is the proprietor according to the patent register enjoys a rebuttable presumption, and if a defendant wants to bring a vindication claim (over an allegedly unlawful patent application) to challenge that ownership, it has to do so early (and not just when facing a PI motion).
Another headnote states that overall revocation rates of patents are not taken into consideration by the court when assessing the likelihood of success on the merits. It takes a patent-by-patent analysis.
The court also reserves maximum discretion with respect to what is an acceptable period of time during which a patentee, after becoming aware of an ongoing infringement, must request a PI. It’s very case-specific:
“Ultimately, the question is always whether the Applicant’s conduct as a whole justifies the conclusion that the enforcement of its rights is not urgent.”
Here, Valeo had to wait until May 7, 2024 to place an order of a car containing the allegedly infringing component (BMW Mini Countryman (U25)), which was delivered on May 15. It then had to dismantle an entire car (which it did within nine days) and get experts involved. It was only on June 4 that patent attorneys, attorneys-at-law and engineers were able to get together to decide on what patents to assert. Within less than a month of that meeting, the PI motions were filed.
Both PIs were tailored in the sense of still allowing Magna to make deliveries, under existing obligations, to BMW for five particular models (X1, X2, 1 Series, 2 Series Active Tourer and Mini Countryman), subject to the provision of collateral.
In the build-up to the PI hearing, there was an argument over whether claim amendments were allowed in a PI proceeding. That question was resolved in Valeo’s favor (July 26, 2024 ip fray article).
Panel: Presiding Judge (and in both these cases, judge-rapporteur) Ronny Thomas, Judge Dr. Bérénice Thom, Judge Mélanie Bessaud and Technically Qualified Judge Alessandro Sanchini.
Counsel for Valeo: Bird & Bird’s Felix Roediger, Jonas Smeets and Fabian Saupe, with support from Valeo in-house patent attorneys Nicolas Cardon and Amandine Ricard in both cases, and Pierre Prigent and Florian Saadi each in a different case.
Counsel for Magna: Hoyng Rokh Monegier’s Klaus Haft, Sabine Agé and Sebastian Kratzer, Hengeler Mueller’s Dr. Wolfgang Kellenter, and Cohausz & Florack patent attorneys Jan Ackermann, Felipe von Heereman and Dr. Margarete Rittstieg.
2. Permanent injunction in SodaStream v. Aarke
In SodaStream v. Aarke, there was a dispute over security, but it was resolved in favor the plaintiff, which is a PepsiCo subsidiary based in Israel (item 9 of this September 14, 2024 ip fray article).
The patent-in-suit is EP1793917 (a device for carbonating a liquid with pressurized gas). SodaStream (PepsiCo) won the desired injunction against its Swedish competitor (PDF).
The defendant sought to narrow the claim scope based on a preferred embodiment shown in a particular drawing, but that restrictive claim construction standard was flatly rejected by the court.
Drawings are used to interpret the claims, but the claims are the starting point. Prior art can also come into play to the extent it is referenced in the patent specification, particularly to the effect that claim construction must not run counter to the way in which the patent seeks to distinguish the claimed invention from the prior art.
The PepsiCo subsidiary asked for a right of publication under Art. 80 of the UPC Agreement, but the court declined to impose such an additional remedy, given that it represents an extraordinary punishment and is not warranted when the other remedial orders (injunction, damages etc.) already suffice to protect the plaintiff’s interests.
Panel: Presiding Judge Ronny Thomas, Judge-rapporteur Dr. Bérénice Thom and Judge András Kupecz.
Counsel for SodaStream: Hogan Lovells’s Dr. Andreas von Falck, Dr. Alexander Klicznik, Diana Rodriguez and Lea Gröblinghoff with additional contributions from Dr. Lars-Fabian Blume.
Counsel for Aarke: Advokatbyrån Gulliksson AB’s Jens Olsson, Magnus Dahlman, Emelie Rexelius and Ström & Gulliksson patent attorney Christian Arkelius.