This is a summary of developments in and around the Unified Patent Court (UPC) since the previous weekly roundup (November 30, 2024 ip fray article).
1. UPC faces its first-ever antisuit injunction attack: Netgear motion in the Central District of California
After deciding a standard-essential patent (SEP) case where no FRAND defense was raised in the first place, and a practically (and meanwhile probably totally) settled case where it didn’t matter anymore either, the UPC is now about to decide on a SEP case with a FRAND defense where there could be a multi-country market impact: Huawei v. Netgear (Munich Local Division (LD)). Netgear is apparently not very confident of its defenses in the UPC and filed a motion for a preliminary antisuit injunction with the United States District Court for the Central District of California (Los Angeles). In the event the UPC hands down an injunction December 18, the next step is presumably going to be a request for a temporary restraining order (TRO), on which the court may decide within a matter of hours.
It is not known yet whether Huawei has asked or will ask the UPC for an anti-antisuit injunction, but Netgear is anticipating so and, as a fallback, wants an interim license to be put in place by the U.S. court.
2. Preliminary injunction (PI; officially called “provisional measures”) news
2.1 Ex parte PI in time for trade fair but with general sales ban effect and guidance on how to show likelihood of validity: Milan LD
Ex parte PIs are granted without the non-moving side being heard because of an extreme degree of urgency. So far, that has been done by the UPC a few times, always in connection with trade fairs (where service and execution typically takes place at a booth). In Cardo Systems v. Asmax & Yiheng, the effect goes beyond thwarting the presentation of certain products at trade show and constitutes a general UPCland-wide (18 countries) sales ban. Judge Sam Granata (primarily of the Brussels LD, but helping out here) reached a high degree of conviction that a PI was warranted. Pictures that said more than 1,000 words turned out helpful, and with respect to the likelihood of a patent granted only weeks earlier, what helped the movant was that the European Patent Office (EPO) had identified only three pieces of potentially relevant prior art and that the United States Patent & Trademark Office (USPTO) had granted, just a few months earlier, a patent based on essentially the same claimed invention.
2.2 Dyson PI overturned: Court of Appeal
In May, the Munich LD granted Dyson a vacuum cleaner PI against SharkNinja (June 6, 2024 ip fray article). The Court of Appeal’s (CoA) second panel overturned it based on videos that had already been made available to the court below and showed the collected dust flowing in a way that raised doubts about centrifugal forces.
2.3 UPC now world-leading PI forum
The UPC now gets a similar number of patent PI motions per month as all U.S. district courts combined, but the grant rate is a multiple of the meager 12% seen in the U.S. in recent years.
Even with some injunctions being lifted by the CoA (see section 2.2 above), the UPC is a wildly popular patent PI jurisdiction. Some practitioners fear that the strong demand for PIs threatens to slow down the court’s main proceedings. Of course, that problem could be solved by means of additional resources.
3. UPC attracts leading U.S. patent monetizer once dubbed “America’s most notorious patent troll” (New York Times)
Over the years, Erich Spangenberg turned an initial six-figure investment into a nine-figure business. The way in which he professionalized and industrialized patent licensing and enforcement contributed, possibly more than any other patentee’s activities, to the enactment of the America Invents Act (AIA). After many years of pursuing different IP-related business models, Mr. Spangenberg is back, and he is now betting on the UPC.
U.S. patent attorney Eli Mazour (Foley), who also runs the Clause 8 patent law podcast, commented on this development on LinkedIn.
4. Security cuts both ways: Dusseldorf LD
In 10x v. Curio, the Dusseldorf LD has clarified that not only plaintiffs but also defendants may be required to provide security. The fact that the plaintiff chose to bring litigation in the first place may be considered where the court has discretion, particularly with respect to the amount of the security to be provided. The defendant’s access to justice also matters.
5. Access to justice and applicable law: President Dr. Grabinski at panel discussion of EU SEP Regulation
The President of the UPC, Judge Dr. Klaus Grabinski, has previously gone on the record with his criticism of the proposed EU SEP Regulation. At a recent Euractiv event sponsored by Qualcomm, he reiterated his concerns over disproportionate restrictions on access to justice, noting that European Court of Justice (ECJ) case law so far indicates that a one-month delay of pending litigation may or may not be allowed, but there is no precedent supporting a (practically) one-year delay when the intellectual property right at issue only has a fairly limited lifespan. He also raised the issue of what law should be applied when conducting essentiality checks under the auspices of the EUIPO, given that the interpretation of an EPO-granted patent starts with the European Patent Convention (EPC), but EU institutions are normally not bound by the EPC.
6. Newly-discovered cases
Note: we would appreciate if you could let us know of new cases you have filed. We will not name the source unless you ask us to do so (which you probably won’t).
- ParTec v. Nvidia: Munich LD
- Hand Held Products v. Scandit: another case surfaced in Hamburg LD
- Polidoro v. Bekaert: Mannheim LD
- Centripetal v. Palo Alto Networks: Mannheim LD
- Biolitec v. Lightguide: Munich LD
- Adeia v. Disney: another case surfaced in Munich LD
- Teleflex Life Sciences v. Speed Care Mineral: Hamburg LD
7. Recent and upcoming hearings
Recent hearing:
- Monday, December 2: Abbott Diabetes Care Inc. v. Powell Gilbert LLP; defendants in the main proceedings: Sibio Technology Limited and Umedwings Netherlands B.V. (CoA)
- Tuesday, December 3: SWARCO FUTURIT Verkehrssignalsysteme Ges.m.b.H. v. STRABAG Infrastructure & Safety Solutions GmbH (Vienna LD)
Upcoming hearings:
- Monday, December 9: NJOY v. Juul Labs (revocation; Paris seat of Central Division (CD))
- Tuesday, December 10: Dexcom v. Abbott (Munich LD)
- Wednesday, December 11: Lionra v. Cisco (Hamburg LD)
- Thursday, December 12:
- I.G.B. v. Unilever France has been canceled (presumably due to a settlement)
- G. Pohl-Boskamp GmbH & C. KG v. pharma-aktiva GmbH, ALDI SÜD Dienstleistungs-SE & Co. oHG, ALDI Nord Deutschland Stiftung & Co. KG, ALDI SE & Co. KG and Hofer Kommanditgesellschaft (PI hearing in Mannheim LD)
8. ip fray’s growth and a reminder for law firm PR & marketing departments
ip fray announced that Olivia Sophie Rafferty, who has previously reported on antitrust and patents for other business-to-business publications, is now contributing to this website (and to ai fray). At the same time, but separately, ip fray announced the creation of an IP Dealmaking Opportunities page (litigation finance, insurance for plaintiffs and defendants, patent transactions, licensing).
Furthermore, please don’t forget about our December 10 deadline (a day or two later will also be timely) for input on the number of UPC venues in which your firm and particular attorneys have practiced (November 25, 2024 ip fray article).