Since ip fray‘s previous roundup (October 4, 2024 article), there have been various Unified Patent Court (UPC) decisions at all stages of proceeding.
1. Revocation claims
1.1 Nanostring achieves invalidation of patent asserted by 10x Genomics
The Munich seat of the Central Division (CD) has held EP2794928 invalid. That patent, owned by the President and Fellows of Harvard College, was asserted by 10x Genomics, but the Munich Local Division (LD) had denied a preliminary injunction (PI) over it. However, a PI did issue back then over EP4108782, which is from the same family and was deemed likely invalid by the Court of Appeal (CoA).
The decision says the court must make a determination on jurisdiction sua sponte (the order says “of its own volition”), clarifies the standard for non-novelty and reminds everyone of the frontloaded nature of UPC proceedings in connection with the denial of a request to present amendments out of time.
1.2 Bentley (VW) v. Network System Technologies hearings scheduled
On January 21-23, 2025, the CD’s Paris seat will hear three revocation claims brought by VW subsidiary Bentley against patents asserted by licensing firm Network System Technologies. Presumably Bentley was chosen to bring those claims so as to allow the actual defendants to the infringement claims, Volkswagen and Audi, to pursue revocation counterclaims. Identity of parties is interpreted narrowly and formalistically in this kind of context.
2. Claim amendments in two Abbott-Dexcom cases
2.1 Abbott and Dexcom: late-in-the-game maneuvering denied by Nordic-Baltic Regional Division
The frontloaded nature of UPC proceedings, also mentioned further above (subsection 1.1), was also the reason for which both Abbott and Dexcom saw some of their claim changes at an advanced procedural stage denied by the Nordic-Baltic Regional Division.
2.2 Paris LD says Abbott should bring separate declaratory-judgment action rather than amend claims at late stage
In a Dexcom v. Abbott case before the Paris LD, Abbott wanted to obtain declaratory judgment of non-infringement with respect to a modified version of its app. The Paris LD said it was too late for that, but they can still defend the new and supposedly non-infringing version of the app, and they can seek declaratory judgment of non-infringement in a separate proceeding.
3. Dyson gets documents from U.S. proceedings thrown out but SharkNinja can pursue some challenged invalidity contentions on appeal
The CoA denied Dyson’s motion(s) to strike with respect to SharkNinja’s invalidity contentions. SharkNinja is appealing a PI that Dyson won in the Munich LD (June 6, 2024p fray article).
What Dyson did get thrown out: some documents from U.S. proceedings (district court and ITC).
4. Default judgment
The Munich LD entered default judgment after a defendant didn’t respond to the complaint and not even to a notice that a default judgment was imminent.
5. Fee-shifting based on actual winner: CoA
After a settlement that amounted to surrender, the CoA’s first panel decided to shift fees based on which side got what it wanted, putting substance (success) over form (technically, it was a dismissal).
5.2 Munich LD: Rule 320 (re-establishment of rights) must still have meaning
6. Confidentiality clubs: potential membership of U.S. patent attorneys to be clarified soon by CoA
The Hamburg LD made a panel decision on access to confidential business information, but made it immediately appealable in light of a Milan LD decision where an appeal was also allowed. The question in Daedalus Prime v. Xiaomi is whether U.S. patent attorneys working on parallel proceedings (or, as alleged here, coordinating cross-jurisdictional enforcement campaigns) may be granted access to confidential business information protected by the UPC. The order distinguishes U.S. from UK patent attorneys, the latter ones being part of the UPC system.
7. Appeals thrown out: appellate review sought without leave
7.1 No discretionary review of decision on collateral without leave
Suinno, a Finnish non-practicing entity suing Microsoft, sought a discretionary review of a decision on collateral, but the related order did not grant leave to do so. The appeal was given short shrift.
7.2 Rule 220(2) appeals prior to final judgment only with explicit leave
(no corresponding LinkedIn post)
An appeal brought by Photon Wave (intervenor) against Seoul Viosys under Rule 220(2) was thrown out (PDF) because the lower court’s relevant order merely referenced Rule 220(2) without saying that this was meant to be a permission for an appeal prior to final judgment (which would be called an interlocutory appeal in the U.S.).
8. Extensions of time, postponement, expedition
8.1 No retroactive extension of time when re-establishment of rights under Rule 320 RoP must be requested
The Munich LD has thrown out a cost motion by a successful defendant (Hanshow, which fended off a PI motion by SES-imagotag) that filed its original fee-shifting motion too late and with the CoA instead of the court of first instance. The order explains that Rule 9(3) (extension in court’s discretion) can’t be invoked when there is a lex specialis in place to deal with that situation: Rule 320 RoP on re-establishment of rights.
8.2 No extension of time if only issue is method of service
The Dusseldorf LD declined to extend the time to respond to a complaint when the actual issue is whether service at a trade show (which the court had authorized) was proper service.
8.3 Pending appeal of decision on security for fees is no reason to push back hearing
The Dusseldorf LD declined an invitation to postpone a hearing only over the pendency of the defendant’s appeal of a decision on whether collateral had to be provided for legal fees.
8.4 No expedition of appeal after appellant waited relatively long to give notice of appeal
After a party awaited a decision on another motion instead of immediately appealing the denial of a connection-joinder motion, the CoA was not prepared to expedite the appellate proceedings.
9. PI decision scheduled for Halloween
The Dusseldorf LD held a PI hearing in Valeo v. Magna last week and scheduled the announcement of its ruling for the morning of October 31, 2024.
10. New cases
Collomix v. Lidl over dosing device patent
11. Overview of non-practicing entity litigation in the UPC
RPX published a report that also talks about NPE cases lodged with the UPC.
12. Clarification regarding FRAND jurisdiction
For the avoidance of doubt, ip fray never said that the UPC could not make FRAND determinations, but that it apparently (also in the Mannheim LD’s preliminary opinion) can’t entertain free-standing (i.e., detached from infringement of valid SEP) FRAND claims and that it can’t force a SEP holder to grant a license on specific terms.
13. Readership polls
13.1 UPC #1 topic for ip fray’s LinkedIn followers
The UPC (51%) and standard-essential patents (SEPs) (43%) are clearly the two most important topics for ip fray‘s readership among those covered extensively by ip fray. Both topics will also play a major role going forward, yet there is also a plan to further diversify the content.
13.2 Preferred frequency of UPC case law updates
Another poll was still running by the time this article went live. If you read this on Friday, or rather early on Saturday, you can still tell ip fray whether you prefer UPC case law updates instantly (“as it happens”) or on a daily or weekly basis.