UPC Roundup (1 week): another significant injunction, adoption of problem-solution approach in Munich, high-profile settlements, and more

1. Fujifilm v. Kodak injunction: Mannheim LD

(link to detailed article)

The Mannheim LD adjudicated two Fujifilm v. Kodak cases, granting a permanent injunction in one of them and revoking a patent in another.

The judgment that led to an injunction has various aspects of transcendental relevance:

• The UK part of the patent-in-suit will be adjudicated in a follow-up decision after further briefing on the implications of the European Court of Justice (ECJ) decision in BSH Hausgeräte v. Electrolux. That one could become the first UPC injunction covering the UK.
• The panel held that it had no jurisdiction over the national parts of the relevant European bundle patent that lapses prior to the UPC start date (June 1, 2023).
• It also discusses the pleading standard and applicable German law for the prior use defense.

2. Munich LD holdings on problem-solution approach and flexibility for patentees amending complaints and patent claims

2.1 Edwards v. Meril: problem-solution approach officially adopted

(link to detailed article)

In the judgment that led to its second Edwards v. Meril injunction, the Munich LD held that the problem-solution approach (PSA) is the official test now for determining the presence of an inventive step.

Previously, various UPC decisions discussed invalidity contentions under the PSA, typically because the parties briefed them accordingly, but left open the question of whether the PSA should be the UPC’s inventive-step standard. The Munich LD says that in order to align UPC and European Patent Office (EPO) case law, that’s the way it should be. Of course, this will ultimately have to be decided by the Court of Appeal (CoA).

The decision discusses different invalidity contentions, in each case identifying the logical starting point and then looking for a teaching, suggestion or motivation that would led a person skilled in the art to combine one prior art reference with another.

In a given case, parties may disagree on the applicability of the PSA if one side believes it is more likely to prevail under an alternative standard, such as the one applied by the German courts. But by and large, practitioners appear to welcome this development.

2.2 JingAo v. Chint & Astronergy: flexibility for patentees to amend patents beyond mere response to invalidity contentions, and to add accused products

(link to LinkedIn post)

In this solar energy case, the defendants objected to proposed amendments to the patent claims that went beyond what was strictly required to address their invalidity contentions. They also didn’t want the plaintiff to add an accused product to the list.

The Munich LD held that patentees seeking to defend their patents may also make amendments, such as in the form of auxiliary requests, that go beyond what is necessitated by the invalidity contentions at hand. And in this particular case the court also allowed the addition of an accused product because the patentee should have enough time to properly analyze it and develop its infringement argument.

3. Mannheim LD case management holdings

3.1 Fingon v. Samsung: validity of withdrawal of opt-out and jurisdiction over pre-UPC-start infringing acts to be addressed on the merits, not at preliminary objection stage

(link to LinkedIn post)

Samsung hoped to get a case thrown out at an early stage in which a non-practicing entity was allegedly not the lawful owner when it withdrew the opt-out. Furthermore, Samsung argued that the UPC had no jurisdiction over infringing acts that occurred prior to its June 1, 2023 start date (which may already have to be considered a settled question by now). The judge-rapporteur decided that these questions would be addressed later, but the case would go forward for now.

3.2 Corning v. TCL & Hisense: no stay pending service of process in China

(link to LinkedIn post)

Corning brought separate complaints against European and Chinese entities in its dfisputes with TCL and Hisense. The judge-rapporteur held that this was a legitimate choice and declined to stay the proceedings against the European entities until the Chinese ones would be served.

4. Three high-profile settlements: Nokia-Amazon, Ericsson-Lenovo and GSK-Pfizer

Three major multijurisdictional disputes with UPC parts settled last week: Nokia and Amazon (March 31, 2025 ip fray article), Ericsson and Lenovo (April 3, 2025 ip fray article), and GlaxoSmithKline (GSK) and Pfizer (April 4, 2025 ip fray article).

There have also been orders that indicated settlements in some lower-profile matters.

5. New cases

• Nokia has immediately put its freed-up litigation resources to another use, suing Acer, ASUS and Hisense (April 1, 2025 ip fray article).
• Hypotherm v. Tec.mo (Milan LD) (LinkedIn post)
• Handtmann v. VEMAG (Munich LD) (LinkedIn post)
• Genevant & Arbutus v. Moderna (The Hague LD) (LinkedIn post; it was known that something had been filed, and a UPC case has now surfaced)
• Two new applications for provisional measures (motions for preliminary injunction) in the Dusseldorf LD (LinkedIn post):
  • DDP v. Greenchemicals
  • Aesculap v. Shanghai International Holding
• Two new applications for provisional measures in Hamburg LD and Milan LD (LinkedIn post):
  • Edwards v. ValueMed
  • Steros GPAINNOVA v. OTEC

6. Recent and upcoming hearings

Recent hearings:

• Thursday, April 3, 2025: Aylo Premium v. DISH (revocation; CD Paris)
• Friday, April 4, 2025:
  • Hurom v. NUC Electronics & Warmcook (Paris LD)
  • Edwards v. Meril (announcement; Munich LD)

Upcoming 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)
• 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)

7. Around the UPC: March stats

(link to LinkedIn post)

The UPC received 19 new infringement complaints in March, the same number as in February. That is a pretty good number. But 11 of those cases were filed in the Munich LD, which may be an outlier (normally that division gets one third, not two thirds, of all new filings) and would not be sustainable going forward.

There were also four new applications for provisional measures (2 in the Dusseldorf LD, 1 in the Hamburg LD and 1 in the Milan LD).