This is a summary of developments in and around the Unified Patent Court (UPC) in the week since our April 7, 2025 UPC Roundup. Besides various procedural matters, some substantive questions such as product-by-process claims and laches were addressed as well.
1. CoA affirms denial of preliminary objection, allows addition of defendant and two countries, among them Spain on BSH grounds
AIM Sport v. TGI Sport started as AIM v. Supponor with the denial of a preliminary injunction by the Helsinki Local Division (LD) in September 2023 on a basis (invalid withdrawal of opt-out) the Court of Appeal (CoA) disagreed with later. The case was remanded and the main proceedings in Helsinki are ongoing.
The CoA has now affirmed the Helsinki LD’s order denying a preliminary objection by the defendant. The procedural dispute related to the addition, by means of an amendment to the complaint, of another legal entity from the defendant’s corporate group so as to capture alleged infringements in Germany, and the addition of Spain, which for the time being is not a UPC contracting state.
The CoA agreed with the LD’s balancing. Other than the complaint and the preliminary objection, nothing had happened yet in the case. The CoA did not see that the defendant’s later-added entity was disadvantaged (apart from the fact that it’s the same corporate group represented by the same lawyers anyway). It was also deemed reasonable for the patentee to have awaited the Advocate General’s opinions in BSH v. Electrolux (European Court of Justice). From the CoA’s summary of AIM’s related pleadings:
“A permanent injunction for the territory of Spain had initially not been considered in view of established case law since GAT v LuK (C-4/03), but were added as a result of the two opinions of AG Emiliou of 22 February 2024 and 5 September 2024 in BSH v Electrolux (C-339/22), later followed by the CJEU in its decision of 26 February 2025, under which the UPC’s jurisdiction in relation to infringement is no longer blocked if an invalidity defence is raised.”
2. Munich LD unstays 10x Genomics v. Bruker (acquirer of NanoString’s assets): four auxiliary requests are safe harbor; length of stay weighs in favor of quick resumption of proceedings
An opposition panel of the European Patent Office (EPO) upheld 10x Genomics’ EP’782 in an amended form (“slightly amended” according to counsel for 10x) (March 20, 2025 ip fray article). 10x won one of the very first UPC preliminary injunctions (PI; officially called provisional measures) in 2023 over that one against NanoString, which went out of business and saw its assets acquired by Bruker. The CoA lifted the PI over doubts concerning the validity of the patent, but in the EPO proceedings the patent apparently fared better than predicted. Therefore, the litigation (now at the stage of main proceedings) is ready to continue. It had been put on hold in light of the CoA’s (in)validity assessment.
The Munich LD has unstayed the proceedings, and the case is on track for a September 17-18, 2025 hearing. In its case management decision, the panel clarified a couple of principles:
- The current number of four auxiliary requests (down from 55, over the admissibility of which an appeal is still pending) is so low that the Munich LD says this number must be allowed by definition. That is, for now, a Munich LD safe harbor. And in this case the Munich LD held that the CoA’s recommendation to await its decision on the admissibility of 55 auxiliary requests was not a reason to wait, given that the massive reduction to four auxiliary requests was unforeseen.
- The longer a case has been stayed, the more of a duty the court believes it has to proceed swiftly toward a judgment when the litigation is ready to resume.
3. Dusseldorf LD enters another injunction and discusses product-by-process claims, publication-to-grant damages, laches
The Dusseldorf LD has already granted various injunctions, and the latest came down in Yellow Sphere Innovations v. Knaus Tabbert. The decision discusses some concepts of transcendental importance:
- Product-by-process claims are all about the technical properties achieved by a certain process, not about the process itself. That is key to consider in the infringement analysis.
- It is a matter of national law whether a patentee is entitled to infringement damages for the period between publication and grant of the underlying application. The UPC does have jurisdiction over such damages, but the question must be addressed, starting with the pleadings, on a country-by-country basis.
- The decision doesn’t mention laches, but that would be the closest comparable concept in U.S. law. Like in U.S. patent litigation, the hurdle for that is high. The Dusseldorf LD clarified that the relevant period during which litigation must be brought begins with the identification of the last fact supporting the claim. And then there must be sufficient time for a patentee to develop a solid infringement case.
4. Milan LD applies BSH to Spain
The Milan LD held in Alpinestars v. DAINESE that the UPC must be treated as a member state court for BSH Hausgeräte v. Electrolux purposes, and therefore has jurisdiction over infringing acts committed in Spain by an Italy-based defendant.
5. CD Milan throws out belated injection of new prior art reference
In the EOflow v. Insulet revocation action, the Milan seat of the CD denied leave to amend the pleadings through the addition of a prior art reference that the revocation claimant could have researched and fielded much earlier. Put differently, there was no justification for bringing it up only now (at the reply stage).
6. Dusseldorf LD grants-in-part, denies-in-part correction of judgment
Obvious errors can be corrected upon request, and in Tridonic v. CUPOWER, the Dusseldorf LD agreed that three key words (“directly or indirectly”) were mentioned in the decision even though the patentee had actually deleted them along the way. However, a correction aiming to add another representative of the winning side to the document was denied because there is no entitlement for multiple representatives to be named and failure to do so is not an obvious error that warrants correction.
7. New cases: Huawei suing MediaTek (Munich LD)
Huawei is now asserting SEPs against MediaTek in the UPC’s Munich LD. The dispute started in China, where it still has its center of gravity, but MediaTek sued in the Munich I Regional Court and in the UK.
8. Recent and upcoming hearings
Recent hearings:
- Tuesday, April 8, 2025:
- MED-EL Elektromedizinische Geräte Gesellschaft m.b.H. v. Advanced Bionics AG and others (Mannheim LD)
- Wednesday, April 9, 2025:
- F. Hoffman-La Roche AG v. Tandem Diabetes Care, Inc. a. o. (Dusseldorf LD)
- Boehringer v. Zentiva (Lisbon LD; preliminary injunction hearing)
Upcoming hearings:
- Tuesday, May 13, 2025:
- Tiroler Rohre GmbH v. SSAB Swedish Steel GmbH and SSAB Europe Oy (Munich LD)
- 10x Genomics v. Curio Bioscience (Dusseldorf LD)
- Wednesday, May 14, 2025:
- Steros GPA Innovative S. L. v. OTEC Präzisionsfinish GmbH (Hamburg LD)
- Tuesday, May 20, 2025:
- Headwater Research LLC v. Samsung Electronics GmbH (Munich LD)
- Thursday, May 22, 2025:
- Nera Innovations Ltd. v. Xiaomi Communications Co., Ltd. (Hamburg LD)