This week (since the previous roundup) has not been particularly eventful in the Unified Patent Court (UPC), but some decisions are worth reading and some developments worth watching.
1. Can a procedural order (here, security-related) be entirely unappealable?
The UPC’s Court of Appeal (CoA) has previously told appellants that certain orders must first be put before the first-instance panel before a petition for discretionary review can be brought. But what if the first-instance judge-rapporteur seemingly blocks access to appellate review? The CoA is aware of the fact that this is an interesting and important question, and will resolve it soon.
2. Standard for new arguments and patent application as indicator of common general knowledge: CD (Paris)
At NJOY’s request, the Paris seat of the Central Division (CD) revoked a vaporizer patent held by VMR. The decision discusses the standard for new arguments, explaining that even the concept of frontloaded proceedings doesn’t mean parties are required to anticipate any argument the other side may or may not make. An even more interesting aspect of the decision is that a passage from a patent specification that describes a certain technique as widely known served as an indicator of common general knowledge.
NJOY is challenging various vaping-related patents held by VMR as well as Juul Labs (affiliate entities). Some decisions have come down in that dispute, and there will be more soon, but it is important (as ip fray explained on LinkedIn) to understand that patent holders can lose various assets as long as one or more “killer” patents survive.
3. Requests for judicial notice: Paris LD
In one of various Abbott-Dexcom cases, Dexcom could not resist the temptation to try to influence the Paris Local Division (LD) between the hearing and the decision. Dexcom therefore brought a motion suggesting to the court to request further briefing related to a national court decision (Munich I Regional Court) on the parent patent of the patent-in-suit in the relevant UPC case. The motion was rejected, but in a way that will not dissuade some other parties from trying. Even if requests for judicial notice of allegedly relevant decisions are rejected, the moving party gets the psychological benefit of the court having seen what happened elsewhere.
4. Back and forth regarding alleged oversight in Valeo v. Magna injunction: CoA
How many more weekly updates will contain an item relating to whether the BMW Series 2 Gran Coupé should nor should not be on the list of cars with respect to which Magna may still fulfill existing orders despite the injunction the Dusseldorf LD had granted Valeo? The current state of affairs is that the CoA has, for the second time, stayed enforcement with respect to that particular car.
5. Security decisions
5.1 Subsidiary of larger company; practical enforceability in foreign country: CoA
Aarke’s appeal did not result in a different outcome (PepsiCo subsidiary SodaStream still doesn’t have to provide collateral), but in two clarifications:
- The mere fact that a company is a subsidiary of a larger company does not mean that it does not have to give security. The parent company may decline to meet the subsidiary’s obligations.
- The “unduly burdensome” standard means that practical issues with trying to enforce a fee award in a foreign country may be sufficient to warrant a security requirement, even if the law as it stands in the country in question theoretically allows recovery.
5.2 NPE ordered to give security, but gets plenty of time and default wouldn’t automatically result in entry of judgment: Munich LD
In GXD-Bio v. Myriad Genetics, the plaintiff (a Korean non-practicing entity) must post collateral, but has until mid January to do so, which appears very long (even if one takes the Holiday Season into account). And the court did not accept a conditional motion for entry of default judgment in the event that security is not provided in time.
6. Limited opportunity for written pleadings on prior use: Dusseldorf LD
A panel decision by the Dusseldorf LD affirms the judge-rapporteur’s order according to which plaintiff Fujifilm will have only one more opportunity to brief the court on Kodak’s prior-use defense: at the mid-December hearing. But no further written pleadings on that question will be allowed.
7. Translation to Japanese only at moving party’s expense: Dusseldorf LD
In other Fujifilm v. Kodak news, the Dusseldorf LD applied the same standard to a request for simultaneous translation to Japanese as The Hague LD did in some other case with respect to another non-UPC language (Polish). The party that requests such translation will have to foot the bill. The fact that a language is a non-UPC language is formally only part of the consideration, but it appears that the hurdle to get such translations treated as part of the overall cost of court proceedings is more or less insurmountable.
8. FRAND debate continues
The debate over how to adjudicate FRAND defenses to injunction requests over standard-essential patent (SEP) continues. Right or wrong, the UPC is in the European mainstream by requiring implementers to take global portfolio licenses.
9. New cases discovered
- Advanced Standard Communication v. Xiaomi (link to detailed article)
- Hand Held v. Scandit (link to LinkedIn post)
10. Recent and upcoming hearings
Recent hearings:
- Tuesday, November 26: Ortovox Sportartikel GmbH v. Mammut Sports Group AG & Mammut Sports Group GmbH (main proceedings; this is the dispute that led to the first affirmance of a PI by the CoA)
- Wednesday, November 27:
- two related appeals involving Abbott and SiBio (Rule 220.1 RoP)
- on short notice (if not after the fact), the Mannheim LD listed a hearing in Rematec GmbH & Co KG v. Europe Forestry B.V., before only the Judge-rapporteur, suggesting that it was an interim conference though the calendar on the UPC’s website doesn’t designate it accordingly
- Thursday, November 28: Hybridgenerator ApS v. HGSystem ApS et al. (evidence preservation; Copenhagen LD)
Upcoming hearings:
- Tuesday, December 3: SWARCO FUTURIT Verkehrssignalsysteme Ges.m.b.H. v. STRABAG Infrastructure & Safety Solutions GmbH (Vienna LD)
11. Call for input from UPC litigation firms: in how many venues have you practiced?
Please let us know by Tuesday, December 10, in how many different UPC venues your firm’s lawyers have (physically) appeared.