This is a summary of developments in the Unified Patent Court (UPC) since the previous roundup (December 7, 2024 ip fray article). There have been some interesting decisions lately, with quite a bit more to come before the holidays.
1. Assertion of additional category of patent claims during course of proceedings does not constitute an amendment of the litigation claim: Munich LD
This decision by the Munich Local Division (LD) is somewhat bold and it remains to be seen whether it will stand on appeal. The holding is that if a patentee throws in some additional patent claims (here, of a claim category not asserted before) from the same patent-in-suit, it should be treated as just some additional argument to underpin the original infringement allegation as opposed to an amendment of the complaint that would require leave.
The panel reached that conclusion in light of recent caselaw by the Court of Appeal (CoA) according to which a plaintiff can, during the course of the proceedings, bring additional infringement allegations based on equivalence. The difference is, of course, that the asserted claims remain the same in that scenario.
The decision also has a non-controversial part: both parties wanted to add Romania, which joined the UPC as of September 1, 2024, to the territorial scope of both the infringement claim and the revocation counterclaim.
2. Abbott gets Dexcom patent invalidated: Paris LD
In a wide-ranging dispute between two medical device makers, Abbott has scored another win by getting Dexcom’s EP3831282 (“Remote monitoring of analyte measurements”) revoked. Dexcom will presumably appeal.
3. Midnight shift: in venue fight (Milan seat of CD or Dusseldorf LD), Pfizer files revocation action 9 seconds after midnight on patent grant date
The Milan seat of the Central Division (CD) comes from the assumption that one can assert patents in the UPC only after their issuance has been published, as opposed to being able to file (as GlaxoSmithKline did) between the EPO Examination Division’s decision to grant and the formal publication of the grant. On that basis, the CD retains jurisdiction over a revocation claim filed by Pfizer 9 seconds after midnight on the patent grant date.
Pfizer’s counsel shared our reporting with what may be the funniest repost of any of our LinkedIn posts to date:
4. Nordic-Baltic RD won’t stay hearing pending EPO opposition decision, but won’t turn blind eye to opposition ruling
In one of various Edwards-Meril UPC cases, the Nordic-Baltic Regional Division (RD) first denied a motion to stay its proceedings merely on the basis that an EPO opposition hearing scheduled for the day after the UPC hearing was not going to lead to a final decision, but even if the patentee lost, it would appeal. The CoA disagreed that this fact (appealability) was dispositive, but remanded for further consideration, along with several alternative ideas for how the Court of First Instance (CFI) could factor in the upcoming EPO ruling. The Nordic-Baltic RD adopted one of those suggestions: the parties shall inform the court of the outcome of the opposition proceedings.
5. Leave to appeal denied because neither risk of divergence nor outcome-determinative issue: CD Paris
The Paris seat of the CD denied Microsoft leave for an interlocutory appeal against a pretrial order the value of the dispute with Finnish licensing firm Suinno and explained that leave to appeal must either serve the purpose of clarifying questions on which UPC judges disagree or of resolving a question that may be dispositive. In this case, the CD felt that the question could still be addressed later.
6. Appellate decisions relating to jnjunction enforcement: Magna carve-out, no post-reversal contempt fines
6.1 Magna remains allowed to fulfill existing orders for parts incorporated into BMW Series 2 Gran Coupé
The question of whether a pair of preliminary injunctions (PIs) granted by the Dusseldorf LD on Halloween (October 31, 2024 ip fray article) carves out, besides a handful of other BMW models that were listed, the Series 2 Gran Coupé has led to some back-and-forth between the lower court and the CoA. After a month and a half, that one may have come to an end. Enforcement with respect to those deliveries is stayed pending the appeal. At some point the orders will have been fulfilled anyway.
6.2 NanoString does not owe contempt fines for (alleged) violations of PI that got overturned
The reversal of a PI on appeal is retroactive, leaving no room for contempt of an injunction that the CoA believes should never have issued in the first place.
7. Service of process: Munich LD finds that enough is enough
Judge Tobias Pichlmaier decided that a PI motion was deemed served after a lot of back-and-forth concerning service of process in China that did not appear to him to be fruitful.
8. U.S.-UPC cross-jurisdictional dispute settled: ICPillar v. Arm
For whatever reason, it took almost three weeks longer for the parties to notify the UPC’s Paris LD of a settlement than it did in the Western District of Texas.
9. Newly discovered cases
- Trump Laser UK v. IPG Laser (Mannheim LD) (link to LinkedIn post)
- Fingon v. Samsung (Mannheim LD) (link to LinkedIn post)
- Sunstar v. CeraCon (Mannheim LD) (link to LinkedIn post)
- Pirelli follows up to recent ex parte seizures orders by starting merits proceedings (Milan LD) (link to LinkedIn post)
10. Recent and upcoming hearings
Recent 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): This one could give rise to the first patent PI in Mannheim not only for the UPC but even for the city as a whole (at least in many years) (link to LinkedIn post). In Germany, the patent PI hotspots were traditionally Dusseldorf and Munich (the latter especially in light of Judge Pichlmaier and his panel’s successful preliminary reference to the European Court of Justice).
Major upcoming decision:
- Wednesday, December 18, 1 PM: Huawei v. Netgear (Munich LD)
That ruling, further to a hearing on the day before Halloween (October 30, 2024 ip fray article), stands out for several reasons. The UPC has already entered two standard-essential patent (SEP) injunctions, but one of them (Philips v. Belkin; September 13, 2024 ip fray article) did not involve a FRAND defense and the other did (Panasonic v. OPPO; November 23, 2024 ip fray article), but the case had already practically settled. That makes this one, potentially, the first SEP injunction over a FRAND defense in a dispute where it would matter.
Netgear has recently created another reason for which the developments in and around that case will be interesting to watch: it launched the first-ever antisuit attack on the UPC (December 6, 2024 ip fray article).
In a parallel case in the Federal Patent Court of Germany, Netgear suffered a major setback on Thursday as a Huawei SEP was upheld in the form in which the Munich I Regional Court deemed it essential to WiFi 6 and, therefore, presumably infringed by another router maker (AVM) (December 12, 2024 LinkedIn post by ip fray).
Upcoming hearings:
- Monday, December 16: Total Semiconductor, LLC v. Texas Instruments EMEA Sales GmbH et al. (CoA, Rule 220.2 RoP)
- Tuesday, December 17:
- canceled: C-Kore Systems v. Novawell (Paris LD)
- potentially going into a second day: Fujifilm v. Kodak (Dusseldorf LD)
- Thursday, December 19: Abbott v. Dexcom (Nordic-Baltic RD) (experts will be heard the day before)
There are no other 2024 hearings listed on the UPC website. The next two will be Rule 220.2 RoP appeals on January 9, 2025 (Scandit v. Hand Held) and January 15, 2025 (Daedalus Prime v. Xiaomi), and the first CFI hearing in 2025 to be listed on the UPC’s website is Tridonic v. Cupower on January 17, 2025 (Dusseldorf LD). On that day, there would also have been an ICPillar v. Arm hearing in the Paris LD, but due to the settlement mentioned in section 8 above, it will hardly take place.