This is a summary of developments in and around the Unified Patent Court (UPC) in the week since our April 12, 2025 UPC Roundup. This has been a relatively busy week at the UPC in terms of the number of decisions.
1. CoA denies three motions to stay enforcement of injunctions: high hurdle
The UPC’s Court of Appeal (CoA) is rather reluctant to lift injunctions for the duration of an appeal. Short of a showing of clear reversible error, such motions go nowhere. This week, all three such motions failed:
- In Edwards v. Meril, the defendant raised a large number of arguments for a stay, and the CoA gave short shrift to every single one of them, for the most part without going into detail (LinkedIn post). None of the principles discussed in that decision were new, but the decision as a whole shows that one or two extremely strong arguments and consistent behavior are what it takes to win a stay.
- In Fujifilm v. Kodak, one of the key holdings was that even if some facts were undisputed, the party that pleaded them is not necessarily entitled to any particular legal consequences as that is still for the court to decide (LinkedIn post).
- In Barco v. Yealink, the CoA did not see why a cost order couldn’t be enforced (LinkedIn post). In the end it’s just about money that can be repaid.
2. Jurisdiction over pre-June-2023 infringements, applicable law to be decided later: Munich LD
Pfizer and BioNTech raised a preliminary objection against Promosome’s lawsuit with respect to pre-UPC-start damages and the law applicable to them. Given that there was no dispute at this point over whether the alleged infringement, if proven, would also have occurred after the UPC opened its doors, the case was going to proceed anyway, which is one of the reasons why Judge-rapporteur András Kupecz (August 30, 2024 ip fray interview) declined to make a decision on those matters now. He indicated his own (non-binding) view that the UPC does have jurisdiction over such past damages.
3. Delivery notes and invoices can be obtained through evidence preservation measures: Dusseldorf LD
In Bekaert v. Siltronic, the plaintiff persuaded the Dusseldorf LD that it was appropriate to obtain delivery notes and invoices in a case where this was necessary to establish the actual use of allegedly-infringing saw wire in the relevant territory. The panel affirmed the judge-rapporteur’s decision.
4. Leave denied for additional pleading on alleged contradictions between arguments in USPTO and UPC: Mannheim LD
In a dispute between rivaling adult entertainment providers (DISH & Sling TV v. AYLO), the defendants argued that the patentee sought to salvage a related patent in a United States Patent & Trademark Office (USPTO) proceeding on a basis that runs counter to its claim construction and infringement arguments in the UPC. Judge-rapporteur Dirk Boettcher (“Böttcher” in German) threw out the motion for leave to file an additional brief, and he didn’t even need to hear the other side. But the defendants obviously new that there is no formal cross-border prosecution estoppel anyway. In the end it is all just about dissuading the court from granting the plaintiffs a “have it both ways” injunction. That effect may have been achieved regardless.
5. Vacation no reason for extension: Munich LD
In Heraeus v. Vibrantz, the plaintiff argued that some members of the confidentiality club that gets to see certain confidential documents will be on an Easter vacation. But the UPC wants to keep its timelines regardless of which party asks for more time. Presiding Judge (and here, judge-rapporteur) Dr. Matthias Zigann‘s answer was that personal vacation plans don’t justify extensions, at least not without more.
6. Can’t delay the inevitable by failing to pick up registered mail: Munich LD
In Jinko Solar v. LONGi, a defendant’s refusal to pick up registered mail containing the complaint did not help: Presiding Judge (and here, judge-rapporteur) Dr. Matthias Zigann deemed the complaint served as of 10 days after being sent out.
7. Post-BSH Hausgeräte amendment adding UK, Poland Czech Republic allowed: Munich LD
By now it is already a routine thing for UPC divisions to allow the addition of non-UPCland-but-EPOrg contracting states to the countries with respect to which infringement remedies are sought. The latest Munich case is Syngenta v. Sumi Agro (panel decision). The plaintiff added the UK, Poland and the Czech Republic to the list.
8. Revocation counterclaimant must give security regardless of recent funding: Munich LD
In Emboline v. AorticLab, Judge-rapporteur Tobias Pichlmaier did not have to address the question whether infringement plaintiffs are entitled to security. In this case, the infringement plaintiff is a revocation counterclaim defendant anyway. Also, a recent funding round of more than 10 million euros did not move the needle in favor of the party required to give security because it had argued (in the remedies context) that it would be driven out of business by the enforcement of a hypothetical sales ban, an assertion that weighs against its financial stability.
9. Cases against fifth defendant not severed because of confusion over appropriate party and in light of overall timeline: Munich LD
Decisions to sever cases against particular defendants are in the court’s discretion. Judge-rapporteur Dr. Daniel Voss (“Voß” in German) denied a motion to sever that the plaintiff brought in order to save time. First, the fifth party was served much later only because a wrong party had originally been named (it either did not exist or it was not an eligigble party). Second, the overall timeline of the case is such that there wasn’t much, if any, time for the plaintiff to gain from this.
10. Stipulated stay in Atlas v. Vantiva: Dusseldorf LD
The Dusseldorf LD stayed an Atlas Global v. Vantiva case at the plaintiff’s request and with the defendants’ consent. A non-binding preliminary opinion by the European Patent Office casting doubts on the validity of the patent-in-suit may be the reason.
11. New cases
- After settling with Amazon, Nokia filed infringement lawsuits against Acer, ASUS and Hisense (April 1, 2025 ip fray article). One of the related UPC cases has shown up in the public case registry. The defendant in that one is Hisense (LinkedIn post).
- A week ago we found two Huawei v. MediaTek cases in the public case registry (April 11, 2025 ip fray article). Both were filed in the Munich LD. A third one, filed in the Mannheim LD, just showed up this week (LinkedIn post).
- An igus v. Whale Technology case has surfaced in the Dusseldorf LD (LinkedIn post).
- Two new revocation actions have become discoverable (LinkedIn post):
- Wirplast v. Vilpe (Munich seat of CD)
- Scantrust v. Advanced Track & Trace (Paris seat of CD)
12. Recent and upcoming hearings
There were no hearings this week.
Upcoming hearings:
- Wednesday, May 7, 2025:
- DISH Technologies L.L.C. and others v. AYLO PREMIUM LTD and others (Mannheim LD)
- Monday, May 12, 2025:
- ILME GmbH Elektrotechnische Handelsgesellschaft, Industria Lombarda Materiale Elettrico I.L.M.E. S.p.A. v. PHOENIX CONTACT GmbH & Co. KG and XSYS Germany GmbH, XSYS Prepress N.V., XSYS Italia S.r.l. v. Esko-Graphics Imaging GmbH (CoA, two Rule 220.2 RoP appeals heard jointly)
- 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:
- Bruker Spatial Biology, Inc., Luxendo GmbH, Bruker Nederland B.V v. 10X Genomics, Inc., President and Fellows of Harvard College (CoA, Rule 220.2RoP appeal)
- 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:
- Amgen, Inc. v. Sanofi-Aventis Deutschland GmbH, Sanofi-Aventis Groupe S.A. and Sanofi Winthrop Industrie S.A. (CoA, Rule 220.1(a) RoP appeal)
- Nera Innovations Ltd. v. Xiaomi Communications Co., Ltd. (Hamburg LD)