UPC Roundup (1 week) and update on ip fray subscriptions

There was only a small quantity of Unified Patent Court (UPC) news this week. You find the usual summary below, but let’s start with a quick update on ip fray‘s subscription offering:

Here’s our UPC Roundup now, with all developments since the previous roundup on January 18, 2025:

1. Court of Appeal

1.1 Amicus curiae briefs returned to sender

Bardehle Pagenberg’s Professor Tilman Mueller-Stoy (“Müller-Stoy” in German) shared on LinkedIn that the UPC’s Court of Appeal (CoA) has rejected amicus curiae (“friend of the court”) briefs in an unnamed case as there is no basis for them in the UPC Agreement (UPCA) or the UPC’s Rules of Procedure (RoP).

While that procedural decision is unsurprising, it means that the CoA — unlike the Supreme Court of the United States and the United States Court of Appeals for the Federal Circuit — will not get the benefit of such submissions when deciding fundamental questions of patent law.

There is, however, at least one exception. The UPC is bound by European Union law, and the European Commission has a statutory right to intervene as amicus curiae when it so decides in connection with questions of EU law, such as in connection with standard-essential patents (SEPs).

1.2 No stay of injunction pending revocation proceedings in which the defendant is not participating

In a textile engineering case, Oerlikon won an injunction against Bhagat last year (item 1.3 of ip fray‘s November 16, 2024 UPC Roundup). Bhagat appealed and sought a stay of the enforcement of the injunction. Judge-rapporteur Emmanuel Gougé has denied the stay (PDF) because Bhagat itself brought no revocation counterclaim or standalone revocation action and is not involved with the third-party revocation action with a view to which it sought a stay.

1.3 SharkNinja jumped the gun on by seeking decision on costs before final judgment in merits proceedings following provisional measures

After the CoA overturned Dyson’s preliminary injunction (called “provisional measures” in the UPC) against SharkNinja (item 2.2 of this December 7, 2024 ip fray article), there were signs of an impending settlement. It now turns out that SharkNinja asked the CoA to make a decision on costs (based on the appeal that SharkNinja had won), but the CoA’s second panel has thrown out that motion as premature. After a PI decision it still takes a full-blown proceeding on the merits to arrive at a final judgment. According to the CoA’s second panel (Presiding Judge Rian Kalden, Judge-rapporteur Ingeborg Simonsson, Judge Patricia Rombach, Technically Qualified Judge Graham Ashley and Technically Qualified Judge Max Tilmann), motions for costs are allowed only after a final decision on the merits or, if the party that lost the PI part fails to seek a final decision on the merits, at the point where it has run out of time to do so (PDF). Otherwise there would be a situation in which a party that has prevailed definitively cannot seek a decision on costs:

“If the applicant does not start proceedings on the merits of the case pursuant to R. 213 RoP, for example, if the application for provisional measures was unsuccessful, R. 150 and 151 RoP do not appear to be applicable, at least on a strict literal reading. However, to fulfil the objectives of Art. 69(1-3) UPCA that the successful party can have its reasonable and proportionate legal costs and other expenses compensated by the unsuccessful party, an application of R. 150 and R.151 RoP mutatis mutandis would be justified in that situation.”

2. UPC’s Mannheim LD awaiting ECJ guidance before granting permanent injunction with UK effect

In Fujifilm v. Kodak, a request for a UPC injunction covering not only some UPC contracting states but also the UK is pending before the UPC’s Mannheim Local Division (LD). In a case management order (PDF), Presiding Judge (and here, judge-rapporteur) Professor Peter Tochtermann says the court would like to see the forthcoming decision by the European Court of Justice (ECJ) in BSH Hausgeraete v. Electrolux (May 31, 2024 ip fray article) before ruling on the UK-related part of the case.

If the ECJ ruling does not come down in time for the oral hearing, the Mannheim LD may sever the part concerning the UK and stay it until the ECJ has ruled.

3. Revocation decisions

3.1 VMR defends vaping patent: CD Paris

(link to LinkedIn post)

The UPC has numerous vaping patent cases before it, and the Paris seat of the Central Division (CD) has now upheld a VMR patent over a revocation claim by NJOY.

3.2 Intervenor Photon Wave’s second attempt to challenge Seoul Viosys patent failed: Paris LD

Last spring, the Paris LD held that an intervenor cannot bring a revocation counterclaim after the defendant the intervenor seeks to support elected not to do so during the time limit (May 6, 2024 ip fray article).

Less than two weeks later, Photon Wave filed a standalone revocation claim with the Paris seat of the CD. From there it was referred to the Paris LD, which has now declared it inadmissible for the same reason as before: Photon Wave would have had to do so together with the formal defendant and within the same time limit (PDF).

4. Nordic-Baltic RD (like CD Paris) denies fee shifting in connection with request for third-party access to case file

In Meril v. SWAT, the Paris seat of the CD denied a fee-shifting motion over a third-party request to access the case file (see item 7 of ip fray‘s January 18, 2025 UPC Roundup).

In connection with an Edwards v. Meril case, the Nordic-Baltic Regional Division (RD) has now taken the same stance (PDF).

Panel: Presiding Judge Stefan Johansson, Judge Kai Härmand (Talinn, Estonia), Judge Mélanie Bessaud (Paris, France) and Technically Qualified Judge Stefan Wilhelm.

5. Preference for English-language filings voiced

Simmons & Simmons’s Oscar Lamme mentioned on LinkedIn that a German UPC judge said at a recent conference that parties should make their filings in English (“if possible”) as it makes the process more efficient for the UPC.

6. Another ZTE v. Samsung case discovered

We mentioned a “Vintage Year 2025” ZTE v. Samsung case in our January 18, 2025 UPC Roundup. A second such case, brought by Vossius & Partner’s (Vossius & Brinkhof UPC Litigators) Dr. Georg Andreas Rauh, has become discoverable. In that action, ZTE is asserting EP3577874 (“Methods, apparatus and systems for determining a transport block size in a wireless communication”).

Panel: Presiding Judge Professor Peter Tochtermann, Judge Dirk Boettcher (“Böttcher”) in German) and Judge Carine Gillet (Paris, France).

7. Recent and upcoming hearings

Recent hearings:

Thursday, January 23, 2025: Biolitec Holding GmbH & Co. KG v. Light Guide Optics Germany GmbH, S.I.A. LIGHTGUIDE International (CoA; Rule 220.1 appeal)

Upcoming hearings:

• Tuesday, January 28, 2025: Hurom Co v. NUC Electronics Europe GmbH, WARMCOOK (Mannheim LD)
• Wednesday, January 29, 2025:
  • Suinno Mobile & AI Technologies Licensing Oy v. Microsoft Corporation (CoA, Rule 220.2 appeal)
  • Teleflex Life Sciences II LLC v. Speed Care Mineral GmbH (Hamburg LD)
• Tuesday, February 11, 2025:
  • 10x Genomics, Inc. and President and Fellows of Harvard College vs. Vizgen, Inc. (CoA, Rule 220.1 RoP appeal)
  • TEXPORT Handelsgesellschaft mbH v. Sioen NV (Nordic-Baltic RD)
• Thursday, February 13, 2025:
  • Yellow Sphere Innovations GmbH a. o. v. KnausTabbert AG (Dusseldorf LD)
  • AGFA NV v. Guccio Gucci S.p.A. a.o. (Hamburg LD)
• Friday, February 14, 2025: Barco N.V. (1st claimant) v. Yealink (Xiamen) Network Technology Co., Ltd. (1st defendant); Yealink (Europe) Network Technology B.V. (2nd defendant) (PI hearing) (Brussels LD)