This is another relatively short roundup, summarizing developments in and around the Unified Patent Court (UPC) since our January 26, 2025 UPC Roundup. It covers the worst week for UPC plaintiffs in a long time, with no win but multiple losses, though one of those losses involved a holding on long-arm jurisdiction that many practitioners welcomed. At any rate, the UPC remains an attractive venue, apart from statistical outliers like this one.
1. Long-arm jurisdiction: Dusseldorf LD
The biggest UPC news this week came from a Fujifilm v. Kodak case in which the Dusseldorf Local Division (LD) deemed the patent-in-suit invalid. If the plaintiff had prevailed on the technical merits, an injunction would have issued with respect to not only several UPC contracting states but also the UK part of the patent-in-suit, based on the defendant entities being based in UPCland.
Whatever applies to the UK here would also apply to other non-EU member states in which an EPO-granted patent is registered, which could be Switzerland or Turkey, to name but two examples.
The decision made it clear that the UPC does not have jurisdiction over a revocation (counter)claim regarding the UK part of a patent, and no such (counter)claim was at issue in Fujifilm v. Kodak. The patentee, however, did not make an argument as to why the outcome in the relevant UPC contracting states should not apply to the UK part for the purposes of deciding whether there was an infringement of a valid patent. Theoretically, such an argument could be made if differences between the jurisdictions suggested a different outcome (which appears to be more of a theoretical possibility).
A stay over a validity determination in the UK is possible, but no such action was pending here.
The Mannheim LD, however, just reiterated on Thursday (January 30) (PDF) its intent to await guidance from the European Court of Justice (ECJ) in BSH Hausgeraete v. Electrolux:
No final decision has been delivered in Case C-339/22 (BSH Hausgeräte) by the ECJ to date. In case no such guidance is available concerning a fundamental question of European Law until the oral hearing takes place, the panel is inclined to deal with the questions concerned in a separate proceeding after the separation of cases and stay such separate proceeding until a decision has been delivered by the ECJ.
2. Invalidity killed another two cases (for now) — in one case, it was the EPO
2.1 Mannheim LD revokes patent on comminuting wood
Rematec lost a case against Europe Forestry for lack of an inventive step.
2.2 Rien ne va plus (for now) in casino games lawsuit after EPO opposition ruling
In November 2024 we reported on Playtech v. Games Global, a dispute over live casino games (LinkedIn post). Now Keltie LLP’s Joeri Beetz has drawn our attention to the latest development in that dispute (LinkedIn post):
After a hearing on January 8, 2025, the EPO’s Opposition Division revoked the patent. Meanwhile, the written decision has been published, and the patentee appealed instantly, but short of a successful appeal, the related UPC case, which is pending in the Nordic-Baltic Regional Division (RD), is a dead lawsuit walking.
What was interesting to watch is that the EPO accelerated the proceedings in order to deliver a decision in time before a UPC infringement ruling. The relationship between the two institutions is complex and multifaceted. The UPC sometimes stays its infringement lawsuits over EPO opposition proceedings. An EPO decision upholding a patent is not binding on the UPC, which may still revoke it, but if one of the two declares a patent invalid, the decision is (after all appeals have been exhausted) final.
3. Simultaneous translation to Japanese only at requesting party’s expense: Mannheim LD
The Mannheim LD has made the latest decision of many in which UPC divisions held that a party requesting translations to a language that is not an official language of the UPC can get those translations, but at its own expense. Fujifilm wanted a simultaneous translation to Japanese of its upcoming hearing against Kodak (PDF).
4. Institute of Professional Representatives before the European Patent Office denied access to case file
Associations representing IP professionals can’t influence UPC decisions through amicus curiae briefs (see item 1.1 of our previous UPC Roundup), said the Court of Appeal (CoA). According to the Paris seat of the Central Division (CD), they also lack an interest in the facts in a given case that would warrant access to the record. The Institute of Professional Representatives before the European Patent Office “argue[d] that they are the professional body of all European Patent Attorneys and [sought to justify] the request with the interest on the question of the status of inhouse European Patent Attorneys before the Unified Patent Court and their representation rights, which has been the subject of some of the orders issued in the proceedings.” But the CD said no (PDF). This is the same dispute in which the CoA declined to take two other professional associations’ amicus brief into consideration.
5. New case: mRNA patent wars reach UPC
Promosome is suing BioNTech and Pfizer in the Munich LD over EP2401365 (“Reengineering mRNA primary structure for enhanced protein production”).
6. UPC news
6.1 New legally qualified judge appointed: Dusseldorf LD
On Friday (January 31, 2025), the UPC announced that Judge Jule Schumacher will take an oath on Monday (February 3, 2025) and join the Dusseldorf LD. Judge Schumacher’s appointment is initially part-time. She will continue to serve on the Dusseldorf Higher Regional Court.
This looks like a harbinger of a second Dusseldorf LD panel. It is a popular UPC venue. It would take only one other judicial appointment to put in place a second panel. The first panel consists of regular members Presiding Judge Ronny Thomas and Judge Dr. Bérénice Thom.
What we are witnessing here is some “cannibalization” between the national courts in Dusseldorf and the UPC LD in the same town. The appeals court already reduced its capacity for patent cases when Presiding Judge Ulrike Voss (“Voß” in German) joined the UPC, and now Judge Schumacher is apparently transitioning to the UPC, starting in a part-time role.
6.2 PMAC Expert Committee meetings
We interviewed the Director of the UPC’s Patent Mediation and Arbitration Center (PMAC), Mr. Aleš Zalar, last year (October 18, 2024 ip fray article). The PMAC recently put an Expert Committee in place (November 27, 2024 UPC news item). Now the UPC has reported on the first Expert Committee meeting, which was held in mid December, and announced the next one for April (January 28, 2025 UPC news item).
7. Recent and upcoming hearings
Recent 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)
Upcoming hearings:
- 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)
- Thursday, February 20, 2025: Stäubli Tec-Systems GmbH v. Respondents (Coa, Rule 220.1 RoP appeal)