This is a summary of developments in and around the Unified Patent Court (UPC) that have happened or become known since the previous UPC Roundup (December 15, 2024 ip fray article). Most roundups sum up what was previously reported (at least on our LinkedIn page), but this present one contains a few items on top. Due to the Holiday Season, it may take a couple of weeks until the next UPC Roundup. Please note that you can conveniently access a reversely chronological list of all UPC Roundups via the menu at the top of the home page.
1. Nordic-Baltic RD holds first full trial including full day of expert testimony
(Iink to one of ip fray‘s most popular LinkedIn posts to date)
On Wednesday (December 18), the UPC’s Nordic-Baltic Regional Division (RD) heard expert testimony in Stockholm, Sweden, in one of various Abbott v. Dexcom cases, and on Thursday (December 19) the case was argued against the backdrop of what the (expert) witnesses had said.
In U.S., UK, Swedish or Portuguese courts, it would be anything but uncommon that experts are examined by one side and fully cross-examined by the other. For the UPC, however, it was a first. There could be cases where plaintiffs believe an extensive expert hearing with cross-examination will assist the UPC in reaching the right decision. Then the Nordic-Baltic RD could be an interesting venue to consider.
2. Enforcement-related disputes
2.1 Electronic delivery of accounting information must be specifically requested, and contempt sanctions can come down even after starting to comply: Munich LD
(not previously reported by ip fray)
On Tuesday (December 17, 2024), the Munich LD entered a contempt order in Philips v. Belkin (a SEP injunction (September 13, 2024 ip fray article) in a case where there was no FRAND defense) (PDF (in German)).
In an effort to comply with its obligation to provide an accounting that would enable Philips to computate damages claim, Belkin provided to Philips 16 boxes with photocopies of invoices:
Philips took issue with the substance of the information provided, but also with the form: electronic delivery would have been preferred.
The Munich LD disagreed with Philips on form, providing the important guidance that plaintiffs who want such information in an electronic form must make that request early on. Unless the court specifically orders a delivery format, the defendant can make its election, and the plaintiff cannot demand electronic delivery only because the defendant already has all the data in a digital form.
This is debatable. Different legal systems have reasonableness requirements for how a debtor discharges an obligation.
But Philips largely prevailed on substance. The Munich LD deemed Belkin out of compliance with respect to what information it provided and when.
As for timing, Belkin was deemed to have failed to comply until November 12, 2024, the day after Philips brought its contempt motion. But the enforceable court order had already been served on the parties on September 13, 2024, giving the defendant three weeks to provide certain information. A request for a suspension was rejected by the CoA on October 30. The Munich LD exceptionally gives the defendant the benefit of the doubt, given that this is the first such situation to occur in the UPC’s history, and accepts that defendants awaited the CoA decision on their motion for a stay. But the Munich LD holds that, during the time that it takes the CoA to work on its decision, the defendant should have continued to make preparations for the provision of the information at issue so as to be able to comply instantly upon the CoA’s decision to deny a stay.
The accounting that Belkin provided was furthermore deemed incomplete as, contrary to what the court order required, no information was provided on the price at which the infringing goods were purchased.
For a variety of considerations, the Munich LD decided to decide rather leniently, but imposed different fines for two periods:
- a daily fine of €500 for non-compliance between October 31, 2024 (the day after the CoA denied a stay) and November 25, 2024 for having provided the information too late and in an incomplete state, and
- a greater daily fine of €1500 for the period from November 25 (when Belkins was alerted to what information was missing from what it had provided on November 12) to December 17 (decision date).
The sum of the two components is €46,000. Belkin may appeal this contempt order.
Panel: Presiding Judge Dr. Matthias Zigann, Judge-rapporteur Tobias Pichlmaier, Judge Edger Brinkman (The Hague, Netherlands) and Technically Qualified Judge Dr. Anders Hansson (Stockholm).
Counsel for plaintiff Philips: Bardehle Pagenberg’s Dr. Tilman Mueller (not to be confused with Professor Dr. Tilman Mueller-Stoy; the former is based in Hamburg and also frequently active on behalf of licensors of the Access Advance patent pool, while the latter is from Munich), Dr. Tobias Wuttke, Emely Rath, and Anita Peter; Eisenfuehr Speiser’s Dr. Désirée Heintz and Dr. Christoph Fehn; and Philips in-house counsel Arie Tol and Edwin Montie.
Counsel for the defendants: DLA Piper’s Dr. Philipp Cepl, Dr. Constanze Krenz, Dr. Benedikt Hammerschmid and Dr. Carl Prior.
2.2 Only CoA can grant stay: Paris LD
In HP v. LAMA, the defendant had a couple of post-judgment requests. One was related to a confidentiality club and not controversial. The other, however, was a request for an enforcement stay, and the Paris LD clarified that only the CoA has the authority to grant such relief.
3. Huawei v. Netgear (Munich LD): first SEP injunction over FRAND defense where it commercially matters
At first sight, one might think “it’s only the UPC’s third standard-essential patent (SEP) injunction.” But the first one did not involve a FRAND (fair, reasonable and non-discriminatory licensing defense), and the second one did, but the parties had practically already settled, which means there will not be an appeal there.
We have discussed the dispute (which is not limited to the UPC) in four recent articles, every single one of which contains information or analysis that is also relevant to the UPC case:
- rapid report on decision (December 18, 2024 ip fray article);
- high-level summary of FRAND and exhaustion reasoning (December 18, 2024 ip fray article); here it is worth adding that the rejection of Netgear’s revocation counterclaim (a success for Braun-Dullaeus Pannen Emmerling‘s patent attorneys) was based not only on the current UPC validity standard, but the decision explains that the outcome would have been just the same under the problem-solution approach;
- further reflections on patent exhaustion being unlikely to help Netgear (and report on Munich I Regional Court trial) (December 19, 2024 ip fray article); and
- Huawei’s allegations of Netgear having “stonewalled” and “ghosted” them in a U.S. court filing (December 21, 2024 ip fray article).
Unless Netgear settles now (after years of alleged hold-out), that dispute will make more news in the weeks and months, though probably not years, to come.
4. Historic first: Mannheim PI
About a week after the December 12 preliminary injunction (PI) (called “provisional measures” in the UPC) hearing, the Mannheim LD handed down its decision and granted the application.
The case is about an anti-head-lice spray, the parties being G. Pohl-Boskamp GmbH & C. KG v. pharma-aktiva GmbH, ALDI SÜD Dienstleistungs-SE & Co. oHG, ALDI Nord Deutschland Stiftung & Co. KG, ALDI SE & Co. KG and Hofer Kommanditgesellschaft. The ALDI and Hofer entities are retail chains.
It was the first PI hearing in Mannheim in a long time, not limited to the (young) UPC LD but also including the Mannheim Regional Court. For many years, Dusseldorf and Munich were the PI hotspots among German national courts. This was either the first Mannheim patent PI in many years or even the first ever.
Some of the court’s holdings make the decision even more interesting. For example, the Mannheim LD considered the fast-approaching expiration of the patent-in-suit (only 1.5 years left) to weigh in favor of injunctive relief, while U.S. courts would be inclined to view it just the other way.
5. Roche fends off revocation claim on merits, not based on standstill agreement: CD Paris
Roche and Tandem are embroiled in litigation over diabetes care-related patents. Roche showed to the Paris seat of the UPC’s Central Division (CD) a standstill agreement, but the court did not dismiss the case for lack of jurisdiction. It looked at the revocation claims on the merits and held that one claim element was not disclosed by any of the prior art references.
6. Liability of corporate officers to be addressed on merits, no basis for early dismissal: Hamburg LD
(not previously reported by ip fray)
In a decision rendered on Wednesday (December 18, 2024) (PDF), the Hamburg LD denied a preliminary objection in Visibly v. easee with respect to corporate officer defendants. Such defendants may be liable, though only in special circumstances as the Court of Appeal (CoA) clarified when staying the enforcement of a Philips v. Belkin injunction with respect to such defendants (item 2 of ip fray‘s November 2, 2024 UPC Roundup). For the Hamburg LD, Judge-rapporteur Dr. Stefan Schilling stressed that director and officer liability is a merits-related question and cannot give rise to a dismissal for lack of jurisdiction or competence.
The plaintiff is represented by Peterreins Schley’s Dr. Marc Grunwald, and the defendants by Taylor Wessing’s Dr. Wim Maas.
7. Extreme urgency required for suspensive effect: CoA
(not previously reported by ip fray)
On Tuesday (December 17, 2024), the CoA rejected an emergency motion for a suspension concerning a Dusseldorf LD decision on security for litigation costs (PDF). In his capacity as Standing Judge, Judge Emmanuel Gougé threw out defendant Curio’s application for a suspension under Rule 223 of the UPC’s Rules of Procedure (RoP) regarding security to be provided to plaintiff 10x Genomics. Judge Gougé did not even see a need to have 10x respond.
What Judge Gougé considered lacking and wanting was Curio’s focus on the order being allegedly manifestly wrong, which is also a criterion, but not a substitute for a case of extreme urgency. The order does not say so, but in the end this here is just about a rather limited impact on Curio’s liquidity.
Counsel for 10x Genomics: Bardehle Pagenberg’s Professor Dr. Tilman Mueller-Stoy (“Müller-Stoy” in German) and Dr. Axel Berger.
Counsel for Curio: Carpmaels & Ransford’s Cameron Marshall and Agathe Michel-de Cazotte.
8. Release of security denied on merits: CD Munich
(not previously reported by ip fray)
NanoString asked the Munich seat of the CD for release of security it had to provide to the formal patentee named President and Fellows of Harvard College in its dispute with 10x Genomics. NanoString raised various arguments, among them the fact that the CD indeed decided the merits of the case in NanoString’s favor and that it now had a new corporate parent that was solvent.
The motion was deemed admissible, but denied on the merits (PDF). If there had been a final and non-appealable decision in the applicant’s favor, it would have been a simple case, but this validity dispute is not over yet. If NanoString itself (not just a corporate parent) had become cash-rich, that could also have resulted in a release of the security provided.
Panel: Presiding Judge Ulrike Voss (“Voß” in German), Judge-rapporteur András Kupecz and Technically Qualified Judge Eric Enderlin.
Counsel for revocation claimant NanoString: Bird & Bird’s Dr. Daniela Kinkeldey.
Counsel for the patentee: Bardehle Pagenberg’s Dr. Axel Berger.
9. Munich LD grants both parties’ request to add Romania, allows plaintiff to amend information request so as to include electronic delivery, and wants to know prioritization of auxiliary requests
(not previously reported by ip fray)
In an Edwards v. Meril case, the Munich LD entered a pretrial order with a view to the February 11, 2025 hearing (PDF).
The non-controversial part was that both the plaintiff and the defendant (with respect to its revocation counterclaim) wanted to add Romania, which acceded to the UPC as of September 1, 2024. The same division already granted a request by both parties to include Romania in another case (item 1 of ip fray‘s December 15, 2024 UPC Roundup).
Another easy part was that the court wants the patentee to resolve some ambiguity about the order in which its auxiliary requests to amend the patent should be processed. Once the court has granted such a request, it will be over.
Then there was also a request by the plaintiff to amend the prayers for relief with respect to the accounting sought from the defendants. In light of what was already discussed in item 2.1 above, the plaintiff wanted to specifically ask for the information to be provided electronically. The Munich LD allows the request for now and will decide on its merits later.
The decision was made by Presiding Judge Dr. Matthias Zigann in his role as Judge-rapporteur. He notes that he discussed the items with the other panel members, but for practical reasons (in light of the Holiday Season) decided alone.
Counsel for Edwards Lifesciences: Bird & Bird’s Boris Kreye, Elsa Tzschoppe and Ioana Hategan; Powell Gilbert’s Bryce Matthewson; and Thum & Partner’s Bernhard Thum and Dr. Jonas Weickert.
Counsel for Meril Life Sciences: Hogan Lovells’s Dr. Andreas von Falck, Dr. Lukas Wollenschlaeger and Dr. Felipe Zilly.
10. Access to case record by third party defending elsewhere against patent-in-suit: Munich LD
(not previously reported by ip fray)
In a Phoenix Contact v. Industria Lombarda Materiale Elettrico (I.L.M.E.) case, third party Harting (which was the defendant to the famous Munich PI case that reached the European Court of Justice, and where Phoenix was the plaintiff) asked for access to the record for two reasons:
- Harting is defending against a German utility model derived from the same patent application. That case is pending with a German national court as no other court would have jurisdiction over that type of intellectual property right.
- Harting is challenging the patent-in-suit in a European Patent Office (EPO) opposition proceeding.
The first argument was rejected, but the second one succeeded.
The decision was made by Presiding Judge Ulrike Voss in her capacity as judge-rapporteur.
Counsel for third-party applicant Harting: Eisenfuehr Speiser’s Soenke Scheltz (the first name is “Sönke” in German).
Counsel for plaintiff Phoenix: CBH’s Hannes Jacobsen.
Counsel for defendant ILME (which did not exercise its right to respond): Dr. Henrik Timmann.
11. Newly discovered cases
- It is known that some unnamed Via LA licensors are suing Microsoft over HEVC (H265) video codec patents (December 20, 2024 ip fray article). It is unclear whether those cases were filed in German national court and/or the UPC, but the latter would make a lot of sense.
The following two cases have not previously been reported by ip fray:
- Emboline v. AorticLab (Munich LD)
- Patent-in-suit: EP2129425 (“embolic protection device”)
- Panel: Presiding Judge Dr. Matthias Zigann, Judge Tobias Pichlmaier and Judge Petri Rinkinen (Helsinki, Finland).
- Counsel for plaintiff: Vossius & Brinkhof Patent Litigators’ Dr. Thure Schubert.
- Counsel for defendant: Andre Roland’s Philippe Grosfillier.
- Fapa Vital v. Valentis Baltic (UAB) PI motion (Nordic-Baltic RD)
- Patent-in-suit: EP1978949 (“combination preparation for improving sperm quality”)
- Panel: Judge Kai Härmand (Talinn, Estonia), Judge Marije Knijff (The Hague, Netherlands) and (typically the Presiding Judge) Stefan Johansson.
- Counsel for plaintiff: Schoenherr’s Michael Woller (from Vienna, Austria).
- Counsel for defendant: not known for now.
12. Recent and upcoming hearings
Recent hearings:
- Monday, December 16: Total Semiconductor, LLC v. Texas Instruments EMEA Sales GmbH et al. (CoA, Rule 220.2 RoP)
- Tuesday, December 17:
- canceled: C-Kore Systems v. Novawell (Paris LD)
- may have gone into a second day: Fujifilm v. Kodak (Dusseldorf LD)
- Wednesday, December 18, and Thursday, December 19: Abbott v. Dexcom (Nordic-Baltic RD) (as discussed in item 1 above)
Upcoming hearings:
- Tuesday, January 7, 2025: Sumi Agro v. Syngenta (CoA, RoP 220.1)
- Thursday, January 9, 2025: Scandit v. Hand Held (CoA, RoP 220.1)
- Wednesday, January 15, 2025: Daedalus Prime v. Xiaomi (CoA, RoP 220.2)