This is a summary of developments in and around the Unified Patent Court (UPC) in the week since our February 22, 2025 UPC Roundup. An uneventful week at the UPC itself, with far more excitement sparked by a European Court of Justice (ECJ) decision that enables the UPC to order remedies in European Patent Convention (EPC) contracting states beyond UPCland, subject to the defendant’s domicile.
1. BSH Hausgeräte v. Electrolux: UPC community sees major opportunity
On Tuesday (February 25, 2025), we immediately reported on the ECJ’s BSH Hausgeräte v. Electrolux decision and subsequently compiled a wide spectrum of opinions on the decision and its impact.
At an abstract level, it is reminiscent of the ECJ’s Bosman ruling that profoundly changed professional soccer, such as by allowing more foreign players to be on the field at the same time (LinkedIn post).
There is no question that the UPC can now order remedies with respect to all EPC contracting states in which a patent granted by the European patent Office (EPO) is valid, provided that the defendant or at least an anchor defendant (LinkedIn post) is domiciled in UPCland. What remains to be seen is how the UPC will interpret its statute when patents that were not granted by the EPO, such as U.S. patents, are asserted with reference to BSH Hausgeräte.
Inteo’s Kristof Neefs argues that BSH Hausgeräte is another reason to consider opt-outs of patents from the UPC system during the transitional period, given that such opt-outs can be withdrawn as needed while the need to challenge the validity of a patent-in-suit in numerous countries has major cost implications (LinkedIn post).
Presumably, the UPC will now receive a number of motions to add some non-UPCland countries to the territorial scope of pending complaints. It is possible that UPC panels will take a permissive approach, given that BSH Hausgeräte is a game changer of enormous proportions. There could also be some restrictive decisions that fault plaintiffs for not having thrown in those jurisdictions sooner.
2. Untimely addition of the Netherlands: Munich LD
The Netherlands is a UPCland country and, therefore, not a BSH Hausgeräte issue. What happened in Esko Graphics Imaging v. XSYS (Munich Local Division (LD)) is that the Dutch part of the patent-in-suit was temporarily not in force because of the renewal fee not having been paid, but was reinstated. The second panel’s Presiding Judge (and here, judge-rapporteur) Ulrike Voss (“Voß” in German) denied the motion (PDF). The request to add the Netherlands to the list of countries came about ten weeks after the decision by the Dutch patent office to reinstate the Dutch part of the patent-in-suit.
3. No further briefing on Chinese revocation decision: Dusseldorf LD
European company Grundfos is suing China’s Hefei Xinhu Canned Motor Pump Co. Ltd. in the Dusseldorf LD. The Chinese eqivalent of the patent-in-suit has (somewhat) recently been revoked by China’s National Intellectual Property Administration (CNIPA). On that basis, the defendant filed a motion (with a six-week delay and with only a promise to furnish a translation of the Chinese decision at a later point) to allow further briefing by both parties on the bearing of that decision on the UPC case. That would have forced a postponement of the hearing date (March 27, 2025). The court denied this request as (at minimum) untimely and also doubted the relevance of a decision on a foreign member of the patent family on the actual patent-in-suit in the UPC.
4. Cost reimbursement of only 40% where complex cases settled at late stage: Munich LD
Panasonic’s standard-essential patent (SEP) cases against OPPO and Xiaomi raised complex FRAND (fair, reasonable and non-discriminatory) licensing questions. They settled after a Mannheim trial (which was practically called off for Xiaomi due to a UK ruling, but still happened with respect to OPPO). There were also several cases in Munich. The first panel has affirmed the different judge-rapporteurs’ decisions to reimburse only 40% (not 60%) of the court fees in light of the workload causes by those cases and the late stage at which they were settled.
5. New judges
5.1 New Dutch judge for Paris seat of Central Division: Judge Marjolein Visser
Further to a November 2024 decision, Judge Marjolein Visser from the Netherlands is joining the Paris seat of the UPC’s Central Division (CD). She will take the oath on Tuesday (March 4, 2025).
5.2 First discoverable assignment for Judge Jule Schumacher: InterDigital v. Disney, Dusseldorf LD
Last month, InterDigital announced a multi-jurisdictional SEP enforcement campaign against The Walt Disney Company and some of its subsidiaries (February 3, 2025 ip fray article). One of the related UPC cases has now shown up in the public case registry and involves a former Thomson patent, EP2449782 (“Methods and apparatus for signaling intra prediction for large blocks for video encoders and decoders”). The Dusseldorf LD’s panel for this case consists of Presiding Judge Ronny Thomas, recently appointed Judge Jule Schumacher (her first discoverable UPC case) and Judge Mojca Mlakar (Ljubljana, Slovenia).
InterDigital is represented by Arnold Ruess’s Dr. Arno Risse (“Riße” in German).
6. New cases
In addition to the InterDigital v. Disney case discussed in section 5.2 above, two other recent filings have come to light:
- Heraeus Quarzglas v. J-plasma (Munich LD) (LinkedIn post)
- Syntorr v. Arthrex (Munich LD): two patents-in-suit from the same family (EP3835470 and EP2670898 (“Variable denier yarn and suture”)); panel: Presiding Judge Dr. Matthias Zigann, Judge Tobias Pichlmaier, Judge Kai Härmand (Talinn, Estonia); counsel for plaintiff: McDermott Will & Emery’s Professor Henrik Holzapfel; counsel for defendants: Noerr’s Dr. Ralph Nack
7. Recent and upcoming hearings
Recent hearings:
- Monday, February 24, 2025: Ballinno B.V. v. Kinexon Sports & Media GmbH, Union des Associations Européennes de Football (UEFA) and Kinexon GmbH (Court of Appeal (CoA), Rule 220.1 RoP appeal)
- Tuesday, February 25, 2025: Sanofi Biotechnologies SAS a.o. v. Amgen Inc. a.o. (Dusseldorf LD)
Upcoming hearings:
- Monday, March 10, 2025: Insulet Corporation v. EOFlow Co., Ltd and Insulet Corporation v. A. Menarini Diagnostics s.r.l (CoA; Rule 220.1 RoP appeal)
- Thursday, March 13, 2025: Seoul Viosys Co., Ltd v. Laser Components SAS (intervening party: Photon Wave Co.,Ltd.) (Paris LD)
- Wednesday, March 19, 2025: Hand Held Products, Inc. v. Scandit AG (Hamburg LD; application for provisional measures)
- Thursday, March 20, 2025: Bekaert Binjiang Steel Cord Co. & Ltd. v. Siltronic AG & Hinterberger GmbH & Co. KG (Dusseldorf LD; application for an order for inspection)
- Friday, March 21, 2025: Kinexon Sports & Media GmbH v. Ballinno B.V. (CD Paris; revocation action)
- Tuesday, March 25, 2025:
- Xiaomi v. Daedalus Prime (revocation; CD Paris)
- Viking Arm AS v. Stanley Black & Decker Sweden AB, Stanley Black & Decker Inc., Stanley Black & Decker Deutschland GmbH (Nordic-Baltic RD)
- Wednesday, March 26, 2025: Amazon v. Nokia (CoA, Rule 220.1 RoP appeal)
- Thursday, March 27, 2025:
- Lindal Dispenser GmbH v. Rocep-Lusol Holdings Limited (revocation; CD Paris)
- Grundfos Holding A/S v. Hefei Xinhu Canned Motor Pump Co., Ltd. (Dusseldorf LD)
8. Upcoming conference panel
ip fray is the official media partner of only two events during the first half of 2025 (and none planned for the second half so far): the Via LA Business Summit in Shanghai (February 28, 2025 ip fray article) and the IP/LF Dealmakers Forums Europe dual event in London in late June. For the latter, the conference agenda has now been published (February 26, 2025 ip fray article), and there will be a panel on Unlocking Financial Opportunity at the UPC at the IP Dealmakers Forum Europe 2025. The roster of speakers is to be determined.