This is a summary of developments in and around the Unified Patent Court (UPC) in the week since our February 8, 2025 UPC Roundup.
1. Jurisdiction
1.1 Long-arm jurisdiction over Spanish part of European patent: Helsinki LD
This is yet another case in which the UPC’s jurisdiction over the infringement of a European patent (in the sense of an EPO-granted bundle patent) in a non-UPC country comes up. Previously, such questions related to Ireland (signatory state, but hasn’t ratified yet) and the UK (can’t even join the UPC without rejoining the EU). For example, the Dusseldorf Local Division (LD) assumed long-arm jurisdiction over the UK part of a European patent (January 28, 2025 ip fray article).
The Helsinki LD has now assumed jurisdiction over the Spanish part of a Europan patent (comparable situation to Ireland, not to the UK). As always, it depends on whether the defendant is based in UPCland.
Later this month, on February 25, the European Court of Justice (ECJ) will announce its decision in BSH Hausgeräte v. Electrolux, which could also have implications for the UPC’s long-arm jurisdiction (May 31, 2024 ip fray article).
1.2 Jurisdiction over main proceedings while PI decision is being appealed: Munich LD
In Biolitec v. Light Guide, the Dusseldorf LD denied provisional measures (i.e., a preliminary injunction (PI)). Not only did the patent holder appeal the PI denial but it also started the main proceedings. For the latter, it chose the Munich LD.
Judge-rapporteur Tobias Pichlmaier held that the Munich LD had jurisdiction because the main proceedings would only have had to be brought in the same LD as the PI motion while the case was pending in the Court of First Instance (CFI), which is not the case during an appeal.
It remains to be seen whether this reasoning will stand. There is the possibility of a matter being remanded by the CoA to the CFI, which is rather hypothetical in a PI context but not impossible.
The other question was whether the infringement complaint can be served on the counsel the defendant appointed for the PI proceeding. Here the court’s answer is no, it is not a given that the same counsel is authorized to accept service concerning the main proceedings, but the problem was solved by the defendant’s lawyers agreeing to consider the date on which they accessed the case management system (CMS) record to be the date of service.
2. Representation
2.1 Principal owner and corporate officer of plaintiff not allowed to represent party: CoA
The representation of a small non-practicing entity by a Finnish patent attorney who (at least in no small part) owns and runs the company has previously been the subject of court orders. For example, the Paris seat of the Central Division (CD) held last summer that disloyalty of counsel is none of the other party’s business (July 2, 2024 ip fray article).
The CoA’s first panel has now decided that this patent attorney was too much of a corporate decision maker to be considered a sufficiently independent representative. That does not mean that in-house counsel could never represent a party, but not in a case like this.
2.2 CoA’s second panel combined Suinno with Ocado to apply it to public-access cases
In Ocado it was decided that a member of the general public seeking access to the docket of a case must be represented by a UPC representative. The CoA’s second panel saw the first panel’s Suinno decision and combined it, sua sponte, with Ocado in connection with third-party access to a Meril v. Edwards docket. As a result, even if a UPC representative seeks merely access to a third-party case file, independent representation is required.
2.3 U.S. patent attorneys trustworthy: CoA
The CoA’s first panel has held in a Daedalus Prime v. Xiaomi case that U.S. patent attorneys are also trustworthy with respect to access to confidential information as they are subject to professional secrecy rules.
3. Standard-essential patents (SEPs)
3.1 Gradually less redacted Panasonic v. OPPO judgment: Mannheim LD
The Mannheim LD’s Panasonic v. OPPO judgment was the first UPC decision that addressed a FRAND (fair, reasonable and non-discriminatory licensing) defense. It came out despite the case having been practically settled. A slightly less redacted version has become available now.
3.2 Samsung files antitrust action in Germany as another means of avoiding UPC jurisdiction
In December, Samsung brought an antitrust case in a German national court, in addition to a FRAND action in the High Court of Justice for England & Wales (EWHC). That dispute also involves some UPC cases. Apparently Samsung hopes to obtain a decision by the Frankfurt Regional Court that will dissuade the UPC and other courts from granting injunctions over ZTE’s infringement claims, but a first PI has already come down in Brazil.
3.3 Proposed EU SEP Regulation withdrawn
The UPC is one of the institutional winners of the European Commission decision to abandon the legislative process concerning the EU SEP Regulation.
4. Symmetrical schedules for pleadings: Milan LD
In Dainese v. Alpinestars et al., the Milan LD has clarified that any pleading deadlines must be symmetrical (PDF). With a view to a parallel opposition proceeding in the EPO, Dainese requested an extension of time for lodging the defense to the counterclaim for revocation and the reply to the statement of defense (with respect to two of the defendants). Contrary to what the two relevant defendants wanted, the Milan LD made it clear that “[t]he position of the party attacking the patent shall be protected in the proceedings to the same extent as that of the party defending the patent.”
5. Settlement: 10x Genomics v. Vizgen
During the first third of a 10x Genomics v. Vizgen trial in the United States District Court for the District of Delaware, the parties settled this dispute. The cancelation of a UPC hearing in this dispute also became discoverable.
6. UPC’s first annual report
The UPC has released its first annual report (PDF). It’s an informative, nicely designed document if you find the time. What practitioners will like to hear is that the new CMS is mentioned as a priority item for 2025. One can also find summaries of various rulings in that document.
7. New cases
Due to technical issues temporarily affecting the case registry, the below information should not be relied upon.
New application for provisional measures:
- Boehringer v. Zentiva over EP1830843 (“Indolidone derivatives for the treatment or prevention of fibrotic diseases”) (Lisbon LD)
- Tiru v. Valinea over EP3178578 (“Waste incineration plant and process”) (Paris LD)
New infringement lawsuits:
- SwipBox Development ApS v. Qlocx Parcel Lockers AB over EP4074225 (“Parcel locker and a method for operating the parcel locker”) (probably Copenhagen LD, otherwise Nordic-Baltic Regional Division)
- Dolby v. Epson over EP3605543 (“Method for detecting an attack by a bundle of electrically charged particles on an integrated circuit and corresponding integrated circuit”) (Hamburg LD); interestingly, Dolby is mostly seen enforcing audio/video patents, but this is about integrated circuits used in printers
- Messerle v. Sabert over EP3705415 (“Packaging, in particular for food products”) (Vienna LD); plaintiff’s counsel previously defended in that same LD against a coffee machine patent, though Torggler Hofmann patent attorneys have also brought offensive cases, just in other divisions so far
- KPN v. OPPO over EP2337403 (“Telecommunications network and method for time-based network access”) (The Hague LD); this is further escalation in a dispute that started last year (see item 10 of our September 27, 2024 UPC Roundup)
8. Recent and upcoming hearings
Recent hearings:
- Tuesday, February 11, 2025:
- Edwards Lifesciences Corporation v. Meril GmbH, Meril Life Sciences Pvt. Ltd. and Meril Italy S.r.l. (Munich LD)
- Fujifilm Co. v. Kodak GmbH et. al. (Mannheim LD; to continue the next day)
- 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)
- Fujifilm Co. v. Kodak GmbH et. al. (Mannheim LD; to continue the next day; this means the Mannheim LD will hear those two parties for four days in a row as another case is scheduled for the 11th and the 12th)
- 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)
Upcoming hearings:
- Thursday, February 20, 2025: Stäubli Tec-Systems GmbH v. Respondents (Coa, Rule 220.1 RoP appeal)
- Monday, February 24, 2025: Ballinno B.V. v. Kinexon Sports & Media GmbH, Union des Associations Européennes de Football (UEFA) and Kinexon GmbH (CoA, Rule 220.1 RoP appeal)
- Tuesday, February 25, 2025: Sanofi Biotechnologies SAS a.o. v. Amgen Inc. a.o. (Dusseldorf LD)
- Wednesday, March 12, 2025: Motorola Mobility LLC v. Telefonaktiebolaget LM Ericsson, Ericsson GmbH (Munich LD) (see item 1 above; this is a damages-only case)
- Thursday, March 13, 2025: Seoul Viosys Co., Ltd v. Laser Components SAS (intervening party: Photon Wave Co.,Ltd.) (Paris LD)
- 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)