This is a summary of developments in and around the Unified Patent Court (UPC) in the week since our March 22, 2025 UPC Roundup. No major decision came down this week, but some of the orders address issues that will resurface in other UPC cases.
1. Court of Appeal decisions
1.1 Jurisdiction over pre-UPC-era infringing acts to be addressed soon
In Phoenix Contact v. ILME, Judge-rapporteur Emmanuel Gougé granted only a three-day extension for the responsive appellate brief. Three weeks had been requested. But with a view to the continuing main proceedings, the Court of Appeal (CoA) would like to provide clarity sooner rather than later on the question of jurisdiction over pre-UPC-era (before June 1, 2023) infringing acts.
1.2 Patentees get away without fee-shifting because revocation grounds were not previously communicated and patent was abandoned
In a dispute between Stäubli and two individuals who sought royalties over a patent they jointly own, Stäubli already said prior to commencement of litigation that it deemed the patent invalid. But when it filed a revocation claim in the UPC, its invalidity contentions were not found in any pre-litigation communications. The patentees abandoned the patent eight days after what would normally be the deadline for a response to a revocation claim, but still within the three-month deadline the Paris seat of the Central Division (CD) had granted them. The CoA’s second panel deemed this timely and declined to award costs.
1.3 Amazon not allowed to file additional appellate pleading as it would have caused delay
In a discovery dispute with Nokia over standard-essential patent (SEP) license agreemens, Amazon sought leave for an appellate reply brief, but the schedule was tight and the CoA would have had to either disadvantage Nokia (by not letting them file a sur-reply) or postpone the hearing. The first panel wasn’t going to have any of that and denied Amazon’s motion, noting that Amazon can still raise those additional arguments at the hearing.
2. Discovery
2.1 Contingent requests for information allowed: Mannheim LD
The Mannheim Local Division (LD) had to decide on a discovery motion by DISH and Sling. The movants made their request (targeting third party Cloudfare) contingent upon whether the information is outcome-determinative at all in the sense of being necessary to prove the alleged infringement. Judge-rapporteur Dirk Boettcher (“Böttcher”) in German denied the motion to the extent that he would have had to make a pretrial ruling involving merits-related questions on which he could not decide in a fashion that would be binding on the panel anyway. But he saw the point is not burdening a third party with a request for information that may turn out unnecessary. Therefore, and despite the UPC usually being very much commited to its timelines, he made the case management decision to deal with the contingent discovery request only after the hearing, which may require an additional hearing.
2.2 Inspection and measurements at trade fair booth: Dusseldorf LD
The Dusseldorf LD allowed OTEC Präzisionstechnik GmbH to inspect accused DLyte (GPAINNOVA) products at the Interdentalschau 2025 trade fair in nearby Cologne, and to perform certain measurements in order to gather evidence of plausible infringements. The devices in question are both expensive (€30K to €50K a piece) and difficult to obtain.
3. New case
Earlier this year, SWARCO Futurit won the first injunction to be granted by the Vienna LD (January 16, 2025 ip fray article). In that case, the defendant was Austrian construction giant STRABAG. The same patent, which reads on certain traffic signals, is now being asserted in the Munich LD against a different defendant, Yunex.
4. Recent and upcoming hearings
Recent hearings:
- 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)
Upcoming 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)
- 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 6, 2025: Motorola Mobility LLC v. Telefonaktiebolaget LM Ericsson, Ericsson GmbH (Munich LD)
5. Around the UPC: Unitary Patent growing quickly in popularity
The 2024 stats released by the European Patent Office (EPO) show that more and more patentees are seeking unitary effect for their patents. A 53% growth rate over the previous year exceeded the EPO’s expectations. The UPC has exclusive jurisdiction over Unitary Patents, so the more popular that instrument is, the more cases the UPC will get when actual enforcement happens or when revocation claims are brought.