UPC Roundup (1 week): first post-BSH decision on UK, Switzerland, Spain; Unitary Patent & urgency; all Chinese companies must give security; and more

1. First post-BSH Hausgeräte decision assumes long-arm jurisdiction over UK, Swiss, Spanish infringements: Paris LD

(link to LinkedIn post)

In the build-up to the European Court of Justice decision in BSH Hausgeraete v. Electrolux (February 25, 2025 ip fray article), the UPC already had some patent infringement claims pending that related to non-UPC-but-EPOrg member states. On Friday (March 21, 2025), the Paris Local Division (LD) threw out Mul-T-Lock’s preliminary objection to IMC Créations’ infringement claims relating to the UK, Switzerland and Spain. One of the two Mul-T-Lock defendants is based in France (making it the anchor defendant for this matter), and the other in Switzerland.

2. Urgency requirement for PIs based on grant of patent, not registration of unitary effect: Brussels LD

(link to LinkedIn post)

Depending on the division in which a patentee applies for provisional measures (i.e., a preliminary injunction (PI)), and subject to the complexity of a matter, it is advisable to file within either one month or, at most, two months of becoming aware of an actual or imminent infringement. If the patented invention was practiced already before the was granted, the date of grant is when the relevant period for the urgency determination begins.

In Barco v. Yealink, the Brussels LD denied a PI for lack of urgency because 2.5 months had passed since the date when the plaintiff should have acted, which was about a month after the patent-in-suit was granted. The patentee argued that it first had to await the registration of the patent’s unitary effect. That argument did not persuade the Brussels LD.

3. All Chinese litigants must provide collateral: Munich LD

(link to LinkedIn post)

Judge-rapporteur Tobias Pichlmaier held that companies based in countries that, in his opinion, fail to comply with the Hague Convention on service of process are inherently untrustworthy with respect to the enforceability of cost awards, so they must give security. In this JingAo Solar v. Chint New Energy case, that affects the plaintiff, but one of the defendants is also a Chinese entity.

4. Defendant questions compatibility of UPC Agreement with EU Treaty: Munich LD

(link to LinkedIn post)

Judge-rapporteur Dr. Daniel Voss (“Voß” in German) denied motions by which Roku challenged the UPC’s jurisdiction at the most fundamental level in its disputes with Access Advance licensors Dolby and Sun Patent Trust, but allowed an appeal, presumably in order to enable the Court of Appeal (CoA) to clarify this question soon (and for good).

Roku’s argument depends in part on the question of whether the EU Treaty (primary law) as opposed to only a regulation (secondary law) would have had to be changed to enable the UPC to make preliminary references to the ECJ. This leads to an interesting situation in which the UPC would have to deny Roku’s request for a preliminary reference if it agreed that it does not have the right to do so, but if it did so on that particular basis, it would essentially have to declare its own existence a breach of EU law. The UPC community appears rather relaxed about this, with some people suggesting between the lines that this may just be a delay game.

There would be a political will to modify the EU Treaty if a technicality made it inevitable, but in Ireland and possibly also other countries that would require a referendum.

5. One of the UPC’s earliest injunctions, 10x Genomics v. NanoString, could come back after EPO upholds patent: Munich LD

(link to detailed article)

The UPC has become, and is poised to remain, the world’s most important jurisdiction for patent PIs. But sometimes its judges are more conservative than the comparatively high grant rate of PI motions suggests. In 10x Genomics v. NanoString, the CoA overturned a PI because of doubts about the validity of the patent-in-suit. That prognosis turned out too pessmistic as the Opposition Division of the European Patent Office (EPO) actually upheld the patent in what counsel for 10x describes as “a slightly amended form.” Main proceedings are pending in the Munich LD, and will now be unstayed. The former PI that almost drove NanoString out of business could come back with a vengeance (as a permanent injunction).

6. Hand Held Products and Scandit settle: Dusseldorf LD & Munich LD

(link to LinkedIn post)

Withdrawals of complaints in the Munich and Dusseldorf LDs suggest that Hand Held Products and Scandit have reached a global settlement. A PI hearing would have taken place in Hamburg on Wednesday, but was canceled as a result of the settlement.

7. New cases

• Belkin and Philips sparred at the CoA earlier this week. A couple of cases have already come to judgment. Meanwhile, yet another Philips v. Belkin case has surfaced in the Munich LD. The patent-in-suit is EP2867997 (“Wireless inductive power transfer”). Panel: Presiding Judge Dr. Matthias Zigann, Judge Tobias Pichlmaier and Judge Edger Brinkman (The Hague, Netherlands). Counsel for Philips: Bardehle Pagenberg’s Dr. Tilman Mueller (“Müller” in German). Counsel of record for Belkin: DLA Piper’s Dr. Joschua Fiedler.
• Powermat Technologies v. Anker Technology is another new case in the Munich LD. Oddly, it is listed with a March 28, 2025 filing date, but more likely the filing was made on February 28 (link to LinkedIn post). The case management system apparently doesn’t perform plausibility checks. That feature may be found in the new one later this year.

8. Recent and upcoming hearings

Recent hearings:

• Tuesday, March 18, 2025: Belkin v. Philips (CoA, Rule 220.2 RoP appeal and Rule 237 RoP Philips v. Belkin cross-appeal)
• 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)
  • HanShow v. VusionGroup (CoA; Rule 221 RoP appeal)
• Friday, March 21, 2025: Kinexon Sports & Media GmbH v. Ballinno B.V. (CD Paris; revocation action)

Upcoming 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)
• Thursday, April 3, 2025: Aylo Premium v. DISH (revocation; CD Paris)
• Friday, April 4, 2025:
  • Hurom v. NUC Electronics (Paris LD)
  • Edwards v. Meril (announcement; Munich LD)
• Wednesday, April 9, 2025: Boehringer v. Zentiva (Lisbon LD; preliminary injunction hearing)

10. Around the UPC

• Meet a famous UPC user: Donald J. Trump Jr. (March 20, 2025 ip fray article). The businessman and elder son of the President of the United States
• On June 5, 2025, the Munich LD (which gets about one third of all UPC cases) will celebrate the second anniversary of its June 1, 2023 opening (link to LinkedIn post). We understand that it is next to impossible to get access, but ip fray will try to pick up some interesting statements.