UPC Roundup (1 week): concept of anchor defendant recognized; juicer patent invalidated; other decisions and various new cases

1. The Hague LD: Anchor defendant may expose foreign legal entities to liability due to BSH long-arm jurisdiction (Genevant & Arbutus v. Moderna)

(link to LinkedIn post)

This UPC action is part of a multi-jurisdictional enforcement campaign by Genevant and Arbutus against Moderna’s COVID vaccine that began in February 2022 with a complaint in the United States District Court for the District of Delaware (PDF). After well over three years, the U.S. case is at a stage where summary judgment and Daubert motions should be filed soon.

The most important term — “anchor defendant” — does not even occur in Judge Margot Kokke’s 12-page order (half of which is just the combined header of what are technically two cases over two patents) on preliminary objections raised by various Moderna entities (PDF). It makes the UPC’s new-found (thanks to the European Court of Justice (ECJ) decision in BSH Hausgeräte v. Electrolux: February 25, 2025 ip fray article) long-arm jurisdiction extend even further:

With the concept of an anchor defendant that is based in UPCland, the UPC can hold not only that anchor defendant liable for infringements it commits outside of UPCland, but also other legal entities in a corporate group that are not based in UPCland and commit infringing acts in non-UPCland countries. If it’s about infringing acts within UPCland, the location of the defendant is not an issue: if it comes to worst, one may have to sue in the Central Division (CD). But here it’s about a company outside of UPCland allegedly infringing outside of UPCland.

Theoretically, a patentee could even try in a German court , for example, Apple Inc. over a U.S. patent. Whether that would be admissible would have to be seen. What is always key to a litigation strategy involving an anchor defendant is that all defendants take part in what is materially the same infringement. For example, it is a “no go” to sue Apple Inc. over the alleged infringement of some U.S. patent in the U.S. unless there is a strong factual connection with the infringement over which a German Apple subsidiary is sued in Germany.

In this case, a Dutch Moderna entity (Moderna Netherlands B.V.) serves as the anchor defendant. It is indisputably under the jurisdiction of the UPC, and the Hague Local Division (LD) is the logical venue in which to sue it. But in the same UPC case, Genevant and Arbutus are suing various other Moderna entities, among them Moderna UK for infringements allegedly committed in Poland, Spain, Monaco, Norway, Greece, Hungary, Ireland, Iceland, Turkey and Switzerland/Liechtenstein. None of those countries is a UPC contracting member state, and several of them are not even EU member states, but they are European Patent Organization (EPOrg) member states.

There have previously been UPC orders mentioning the larger ones of those countries, but this is the first time for the principalities of Monaco and Liechtenstein to be mentioned. Either of those countries has a population size of only about 40,000. Monaco has its own Monaco Industrial Property Office (government agency website), just a seven-minute walk from ip fray‘s HQ. Liechtenstein does not operate its own patent register, but has a shared one with Switzerland. Many patentees do not elect to register their European patents in those small countries. Long-arm jurisdiction by the UPC and other national courts may actually increase the commercial value of patent registrations even in countries where the cost of patent enforcement would often be too high on its own.

Judge-rapporteur Kokke’s order throws out some of Moderna’s preliminary objections and leaves the whole long-arm question for the final judgment at the end of the main proceedings. This is a preliminary stage of proceeding, and Moderna UK may primarily just have denied infringement as opposed to focusing on jurisdiction in a strict sense. But the way the order references the applicable statutes shows that patentees making an anchor defendant argument in the Hague LD may indeed prevail on that basis, provided that all other requirements (ultimately also proof of actual infringement of a valid patent) are met.

2. CoA: adversary’s weak final condition must be pleaded in first-instance proceedings (Yellow Sphere Innovations v. Knaus Tabbert)

(link to LinkedIn post)

The Court of Appeal’s (CoA) second panel notes that security (for costs) is discretionary, not automatic, and clarifies that it’s too late to argue the adversary’s weak financial condition at the appellate stage. Such arguments must be raised in the Court of First Instance (CFI).

3. Paris LD: juicer patent invalidated, infringement not reached (Hurom v. NUC & Warmcook)

(link to LinkedIn post)

Hurom’s patent-in-suit against NUC and Warmcook was invalidated, but not on the basis of an intermediate generalization, with respect to which the Paris LD held that the features shown in an exemplary embodiment are not, without more, inextricably linked.

Long-arm jurisdiction over infringements in Poland would have been a possibility (had the patent not been invalidated), but only on the basis of proof of actual infringements, for which the Paris LD does not consider the existence of a website with Europe-wide reach sufficient evidence.

The court addressed the question of what territorial scope its decision should have only in this final judgment, not at the stage of a preliminary objection, holding in another headnote that the territorial scope of a decision is not a question of jurisdiction or competence that could be successfully raised in a preliminary objection under Rule 19 RoP.

4. Mannheim LD: panel upholds judge-rapporteur’s denial of leave for further pleading, holds that the court does not have to inform a party beforehand of deficiencies such as insufficient substantiation (Total Semiconductor v. Texas Instruments)

The plaintiff requested panel review of a decision by the judge-rapporteur to deny leave for an additional written submission. The panel affirmed (PDF).

The single most interesting passage is the one in which the panel says the court (in this case, a judge-rapporteur) has no duty to warn a party against a motion’s deficiencies:

Contrary to Claimant, the judge-rapporteur was not obliged to notify Claimant in advance that its request lacks the required formal level of substantiation. The Defendants had already criticized this formal deficiency. There is no obligation of the court to inform the Claimant beforehand that Defendants are right.

5. Nokia and SUNMI settle

(link to LinkedIn post)

Three months ago, we reported on Nokia’s anti-antisuit injunctions against Chinese payment terminal maker SUMMI (an Alibaba-Xiaomi joint venture) (February 20, 2025 ip fray article). The dispute has now been settled. Nokia previously had license agreements in place with all major Western point-of-sale (POS) vendors, and now there are deals with three Chinese POS vendors, one of whom is PAX Technology.

6. CoA: motion for enforcement stay regarding security thrown out without need to hear other party (JingAo v. Chint)

Plaintiff JingAo Solar successfully sought an order requiring the defending side, Chint New Energy (and five other entities), to provide security for costs amounting to €200K. Chint asked the CoA to suspend that order, but the CoA’s first panel rejected that motion as meritless without a need to let JingAo respond (PDF). Even though Chint rightly noted that the CoA would not decide on its appeal of the security order before it would have to provide the required collateral, that fact alone does not make the appeal devoid of purpose: security can always be released later. The security requirement is not considered an undue burden, and “[t]he mere fact that Chint will have to make arrangements with banks and its internal finance department is not sufficient, taking into account that a suspension of the impugned order may cause delays in the proceedings before the Munich Local Division.”

7. Dusseldorf LD: alleged difficulties in enforcing foreign judgments in U.S. require proof (Hologic v. Siemens Healthineers)

Siemens sought security from Hologic. Apparently it couldn’t make a strong case that Hologic was financially unstable, thus emphasized the alleged difficulties in enforcing a UPC cost award in the U.S., but without providing evidence based on U.S. statutory law and its practical application. Therefore, the Dusseldorf LD was unconvinced (PDF).

8. New cases

8.1 Infringement (main) proceedings

• HMD is facing a lawsuit by Navigate LLC (over a Dolby patent) in the Munich LD, and one by French telecommunications carrier Orange (over one of its own patents) in the Paris LD (May 22, 2025 ip fray article).
• Beiersdorf, the owner of the world-famous Nivea brand, is suing Laboratoire Native and and Laboratoires Lierac in the Hamburg LD (LinkedIn post). The law firms involved, Schulz-Süchting and Jeantet, are new to the UPC.
• Nokia’s enforcement campaign against Acer, ASUSTeK and Hisense became known about two months ago (April 1, 2025 ip fray article). Another UPC action that is part of that campaign has surfaced: in the Munich LD, Nokia is asserting EP2661892 (“Motion prediction in video coding”), a patent it previously asserted against Amazon (UPc case no.: ACT_584119/2023) and which is from the same family as one of the patents-in-suit in the United States International Trade Commission (USITC or just ITC) (April 11, 2025 ip fray article).

8.2 Revocation actions

• TCL is already defending itself against infringement litigation by Corning, and is challenging the latter’s EP3296274 (“Fining of boroalumino silicate glasses”) through a revocation action in CD Munich.
• Two new revocation actions have surfaced in CD Paris:
  • WhiteWater West Industries v. American Wave Machines over EP2728089 (“Sequenced chamber wave generator controller and method”)
  • Liao Hui v. Swarco Futurit over EP2643717 (“Color-mixing convergent optical system”), a patent over which Swarco won the first-ever injunction by the Vienna LD against a different party (January 16, 2025 ip fray article). It is unclear what interest Liao Hui has in this case, but this may be part of an effort to protect a customer from patent assertions by Swarco. If so, the potential beneficiary could be Yunex, which is presently being sued by Swarco in the UPC (item 3 of our March 29, 2025 UPC Roundup). It could also be that Liao Hui is a person, not a company. If so, this could be a Yunex executive or someone close to Yunex.

9. Recent and upcoming hearings

Recent hearings:

• Tuesday, May 20, 2025:
  • Headwater Research v. Samsung Electronics (Munich LD)
• Thursday, May 22, 2025:
  • Nera Innovations v. Xiaomi Communications (Hamburg LD)

Upcoming hearings:

• Monday, June 2, 2025:
  • Suinno Mobile & AI Technologies Licensing v. Microsoft (CD Paris; infringement and revocation counterclaim)
• Tuesday, June 3, 2025:
  • Maguin v. Tiru and Valinea Energie v. Tiru (CoA; Rule 220.1(c) RoP appeals)
  • Manuela Hofmann v. Essetre Holding (CD Paris; revocation)
• Wednesday, June 4, 2025:
  • Sibio v. Abbott (CD Paris; revocation)
  • Maschio Gaspardo v. Spiridonakis (CD Milan)
• Thursday, June 5, 2025:
  • Philips v. Belkin and vice versa (CoA; Rule 220.1 RoP appeals)
  • Progress Maschinen & Automation v. AWM & Schnell (Milan LD)
• Wednesday, June 11, 2025:
  • Sumi Agro v. Syngenta (CoA; Rule 220.2 RoP appeal)
  • Oerlikon Textile v. Himson Engineering (Milan LD)
• Thursday, June 12, 2025:
  • Roche Diabetes Care v. Tandem Diabetes Care & VitalAire (Hamburg LD)
• Monday, June 16, 2025:
  • NJOY v. Juul Labs (CoA; Rule 220.1(a) RoP appeal)
• Tuesday, June 17, 2025:
  • Headwater Research v. Samsung Electronics (Dusseldorf LD)
• Wednesday, June 18, 2025:
  • Qualcomm v. Network Systems Technologies (CoA; cross-appeals Rule 327 RoP)
  • Winnow Solutions v. Orbisk (The Hague LD)
• Friday, June 20, 2025:
  • N.J. Diffusion v. Gisela Mayer (Paris LD)

10. Around the court

• Mr Justice Richard Meade of the High Court of Justice for England & Wales noted that the UPC’s CoA arrived at the same claim construction of a patent asserted by Alexion against Amgen and Samsung Bioepis (May 21, 2025 ip fray article). The interinstitutional relationship between the UPC and the UK judiciary is interesting (as discussed in that article).
• Aylo is seeking revocation of a DISH patent in the UPC, and the Munich I Regional Court has now found that Aylo does not infringe the patent (LinkedIn post).
• The UPC’s Patent Mediation and Arbitration Centre (PMAC) wants to be fully operational by early 2026. It is now seeking feedback to draft mediation rules that also come with special provisions for standard-essential patent (SEP) conflicts involving FRAND (fair, reasonable and non-discriminatory) licensing questions. The deadline is July 21, 2025. Those interested in participating should reach out to the UPC by email (May 21, 2025 UPC news item).
• The UPC has appointed four new technically qualified judges: Mr Christian Daniel (Germany/Romania; physics); Ms. Dorothea Hofer (Germany; physics); Mr. Simon Stephan Michels (Germany; physics and mechanical engineering); and Mr. Lorenzo Parrini (Italy; physics and mechanical engineering) (May 22, 2025 UPC news item).
• About two weeks ago, Judge Florence Butin, the President of the UPC’s CFI, teamed up with her well-known Japanese colleague Judge Motoyuki Nakashima of the Tokyo District Court to deliver presentations at the WIPO Master Class on Intellectual Property Adjudication for Judges in Seoul, South Korea (UPC LinkedIn post). Judge Nakashima made an AI-related decision that was taken note of by patent professionals around the globe and is presiding over a litigation followed by ip fray (May 11, 2025 article) and (in more detail) games fray (May 11, 2025 article).