This is a summary of developments in and around the Unified Patent Court (UPC) in the week since our April 26, 2025 UPC Roundup. More things happened than the week before.
1. CoA reverses denial of provisional measures (i.e., preliminary injunction) in Insulet v. EOFlow
U.S. company Insulet now has a 17-country preliminary injunction (PI) (officially called “provisional measures” in the UPC) in place against certain insulin pumps sold by its Korean competitor EOFlow. The Court of Appeal (CoA) reversed the assessment by the Milan seat of the Central Division (CD) that the patent-in-suit was likely invalid, and went on to resolve infringement and the balancing of interests (which didn’t have to be reached in the first instance) in the patentee’s favor.
The tipping point was a narrower claim construction. What happened in the CD Milan was that only the defendant had provided expert testimony related to the understanding of the notional skilled person. But the CoA held that claim construction is the court’s job. It also provided clarifications on various other questions, such as regarding the two types of knowledge the imaginary skilled person (which, as the decision clarifies, does not exist in the real world) is considered to possess and on the possibility of a full fee award if only a negligible part of the complaint failed. It also becomes ever clearer that only a cease-and-desist covenant involving contractual penalties will be a safe harbor for those held to infringe a patent, and a cease-and-desist commitment by a national distributor does not resolve the problem for the actual product maker, which could circumvent the enjoined distributor.
With a view to remedies at the PI stage, it is noteworthy that Insulet is now entitled to certain information regarding distribution channels. This is not the same as an accounting for the purposes of a damages calculation, which is an option only after a final judgment on the merits at the end of the main proceedings. It’s about stopping the infringement identified by the UPC.
2. Final first-instance judgments
2.1 Ballinno’s patent-in-suit against Kinexon and UEFA revoked: CD Paris
Last year, a Dutch firm that apparently owned nothing but one patent and had a registered capital of only one euro (May 16, 2024 ip fray article) sought a PI in the Hamburg Local Division (LD) just in time for the EURO 2024 soccer championship in Germany. The PI request failed (June 28, 2024 ip fray article). It had various shortcomings, one of which was the excessive delay between becoming aware of the alleged infringement and filing the PI request.
At some point, Ballinno said it was not even interested in pursuing its infringement appeal unless it could defend the patent against the revocation claim in the CD Paris.
The CD Paris has now held the patent invalid as granted, and the auxiliary request were thrown out because each was either inadmissible or unpatentable. The decision clarifies that embodiments described in the specification can be considered to fall within the claim scope, but the claims can’t be narrowed on that basis.
2.2 Neither infringement nor invalidation in Afga v. Gucci: Hamburg LD
Afga sued Gucci over a leather-printing technique. The Hamburg LD did not identify an infringement. It allowed Gucci to challenge, through its revocation counterclaim, more patent claims than the actually asserted ones, but its invalidity contentions at trial time were stricken and the patent was upheld. The ruling also clarifies that a patent serves as its own dictionary only to the extent that particular passages relate to the claim elements whose construction they are alleged to inform.
3. Claim amendments based on elements of other proposed amendments treated more permissively in terms of pleading standard: Hamburg LD
In Nera v. Xiaomi, the Hamburg LD denied a preliminary objection. Xiaomi criticized the fact that the licensing firm suing it elaborated on the patentability of certain claim amendments only in a second round of pleadings but did not do so in its initial response to the revocation counterclaim. The Hamburg LD, however, found no fault in this, given that the proposed amendments in question merely combine elements found in other amendments that were proposed in the response to the revocation counterclaim, and Nera actually discussed those other amendments in detail the first time around.
4. French idiosyncrasy concerning public announcements of infringement lawsuits: Lyon Commercial Court
Surprisingly, a French commercial court considered a run-of-the-mill announcement of a UPC action (Qiagen v. bioMérieux), along with a non-disparaging vow to protect IP, “denigration” and unfair competition, and ordered Qiagen (and authorized bioMérieux) to publish the ruling on its website.
5. Involvement of TQJ in PI proceedings: Dusseldorf LD
Technically Qualified Judges have previously been involved in UPC PI proceedings, such as 10x Genomics v. NanoString back in 2023. In Aesculap v. Shanghai International Holding, the fact that the main proceedings were already ongoing weighted in favor of involving the TQJ in the PI proceedings, too, in order to address deeply technical questions of validity and infringement.
6. CFI switches to English in InterDigital v. Disney
With InterDigital and the Walt Disney Corporation both being U.S. companies at the level of the ultimate corporate parent, the President of the Court of First Instance, Judge Florence Butin, granted a motion to switch to English (the language of the patent) as the language of proceedings.
7. New cases
- AdvanSix v. Azelis (The Hague LD) (link to LinkedIn post)
- Irdeto v. DJI & Solectric (Mannheim LD) (link to LinkedIn post)
8. Recent and upcoming hearings
There were no hearings this week.
Upcoming hearings:
- Wednesday, May 7, and Thursday, May 8, 2025:
- DISH Technologies L.L.C. and others v. AYLO PREMIUM LTD and others (Mannheim LD)
- Friday, May 9, 2025:
- Nanoval GmbH & Co. KG v. ALD Vacuum Technologies GmbH (Munich LD; evidence preservation)
- Monday, May 12, 2025:
- ILME GmbH Elektrotechnische Handelsgesellschaft, Industria Lombarda Materiale Elettrico I.L.M.E. S.p.A. v. PHOENIX CONTACT GmbH & Co. KG and XSYS Germany GmbH, XSYS Prepress N.V., XSYS Italia S.r.l. v. Esko-Graphics Imaging GmbH (CoA, two Rule 220.2 RoP appeals heard jointly)
- 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)
- Wednesday, May 14, 2025:
- Bruker Spatial Biology, Inc., Luxendo GmbH, Bruker Nederland B.V v. 10X Genomics, Inc., President and Fellows of Harvard College (CoA, Rule 220.2RoP appeal) (Bruker is the acquirer of NanoString’s assets)
- Steros GPA Innovative S. L. v. OTEC Präzisionsfinish GmbH (Hamburg LD)
- Tuesday, May 20, 2025:
- Headwater Research LLC v. Samsung Electronics GmbH (Munich LD)
- Thursday, May 22, 2025:
- Amgen, Inc. v. Sanofi-Aventis Deutschland GmbH, Sanofi-Aventis Groupe S.A. and Sanofi Winthrop Industrie S.A. and Amgen, Inc. v. Regeneron Pharmaceuticals Inc. (CoA, Rule 220.1(a) RoP appeals)
- Nera Innovations Ltd. v. Xiaomi Communications Co., Ltd. (Hamburg LD)
- Monday, June 2, 2025:
- Suinno Mobile & AI Technologies Licensing Oy v. Microsoft Corporation (CD Paris; infringement and revocation counterclaim)
- Tuesday, June 3, 2025:
- Manuela Hofmann v. Essetre Holding SpA (CD Paris; revocation)
- Wednesday, June 4, 2025:
- Sibio v. Abbott (CD Paris; revocation)
- Thursday, June 5, 2025:
- Philips v. Belkin and vice versa (CoA; Rule 220.1 RoP appeals)