This is a summary of developments in the Unified Patent Court (UPC) in a rather eventful week since the last UPC Roundup (November 16, 2024 ip fray article). A couple of smaller items included herein were not previously discussed in an ip fray article or LinkedIn post.
1. Key appellate clarifications
1.1 New arguments on appeal; statutory basis for stay at stage of written procedure; appealability of EPO opposition ruling not dispositive
In its decision on an appeal brought by Meril against Edwards, the UPC’s Court of Appeal (CoA) has clarified multiple questions that relate to more or less frequently reoccurring scenarios:
- New purely legal arguments raised on appeal do not fall under a discretionary rule applying to new facts or requests.
- If a stay of an infringement case is sought at the written stage, Rule 295(a) RoP in conjunction with Art. 33(10) UPCA is the applicable statute.
- A key criterion for a stay is merely that an EPO opposition decision is expected in the very near term; it does not have to be a final one.
The decision also notes that conflicts between EPO opposition decisions and UPC infringement judgments are irreconcilable while those between EPO opposition decisions and UPC revocation judgments are not.
1.2 Equivalence argument not necessarily too late when replying to statement of defense
The CoA leaves it to the Court of First Instance whether a plaintiff may make equivalence-based infringement arguments in reply to a statement of defense in a given case.
The CoA does not address the substantive standard for infringement by equivalence in that decision.
2. First FRAND injunction (Mannheim LD), procedural background and further debate
On Friday, the UPC’s Mannheim Local Division (LD) entered, in Panasonic v. OPPO, the first-ever UPC FRAND injunction (November 22, 2024 ip fray article). The case had philosophically been settled, but by the relevant time, the settlement had not been finalized (November 23, 2024 ip fray article).
There has been further discussion on LinkedIn and in direct communications of the sequence of events that led to the decision. One controversial question is whether anything can be concluded from, or whether one may engage in speculation based on, the fact that Judge Edger Brinkman signed two days after the three German judges on the panel:
- Nowhere did ip fray say or suggest that the delay in signing was conclusive evidence of anything. Therefore, the only question is whether one may speculate.
- ip fray has heard that Judge Brinkman was on vacation that week, which could serve as a sufficient explanation.
- But ip fray also heard that Judge Brinkman was the only member of the panel to raise at least some critical questions concerning the FRAND compliance of Panasonic’s royalty demand (such as how to unpack certain rates in the face of discounts). Furthermore, he has a certain track record in adjudicating standard-essential patent (SEP) cases in his domestic jurisdiction. And well-informed sources say that he would like to engage in FRAND rate-setting. Another UPC judge from his country, Presiding Judge Rian Kalden of the CoA’s second panel, is also known to be in favor of FRAND determinations by the UPC.
- Bench reading is inherently speculative, and trying to find indications of anything in delays of actions by courts or judges is admittedly even more speculative. It is simply a question on which different people will take different positions. There is always the problem that delays can have court-internal reasons. The fact that speculation is at high risk of trying to infer something when there is nothing does not make it impermissible, however. For example, a weather forecast for a date that is one or two months off is also of very limited reliability compared to one for the next day, but such forecasts are offered nonetheless.
It is not merely speculative but, in fact, an alternative-universe thought experiment to ask, as ip fray did on LinkedIn, what the proposed EU SEP Regulation would have changed about that UPC Mannheim LD case. The short version is that the same outcome would presumably have been reached later and with limited additional effort required to explain why a single randomly-appointed person’s opinion is not reliable (and, even under that proposed regulation, not binding).
4. Ex parte seizures (Milan LD)
The Milan LD granted Pirelli seizures of allegedly infringing products (motorcycle tires) at a major motorcycle trade fair in its city. Pirelli was faced with the choice of either seeking a general prohibition (sales ban etc.) at the same time, in which case the defendants would have been heard prior to a decision, or contenting itself with just the seizures, which were obviously the most urgent item at that point.
5. Divergent views on whether patent claims can be amended in preliminary injunction proceedings
The Milan LD has denied a preliminary injunction because it deemed the patent-in-suit likely to be invalid as granted and held that patentees cannot amend their patents-in-suit, be it through unconditional amendments or auxiliary requests, in a provisional measures (preliminary injunction) proceeding. But this is yet to be clarified by the CoA.
6. Dusseldorf LD denies Magna motions to “rectify” Valeo injunctions
Based on a CoA order, it looked like Magna had a pretty good oversight argument to add another BMW model to a list of cars with respect to which the fulfillment of existing orders would still have been allowed, despite two UPC injunctions that Magna had won. But the Dusseldorf LD explains in a thoughtful order why there is, in its view, no basis for rectification.
7. Symmetrical scheduling: Dusseldorf LD
After Abbott got a deadline extension for a pleading with Dexcom’s consent, the Dusseldorf LD’s Presiding Judge Ronny Thomas, in his capacity as judge-rapporteur, thought it fair to grant Dexcom the same despite Abbott withholding its consent.
8. Presentation of allegedly infringing product as evidence allowed: Munich LD
Judge-rapporteur Tobias Pichlmaier decided in Collomix v. Lidl (PDF (in German)) that the plaintiff was allowed to deliver to the court and add to the evidentiary record a unit of an accused embodiment despite the fact that it could also have done so earlier. The decision explains that there is nothing in the UPC’s governing statutes that precludes, after the filing of the complaint, the presentation of evidence for the allegations raised in the complaint itself. Moreover, the fact that something is delivered to the court does not necessarily mean that the court will ultimately admit and rely on such evidence.
9. New UPC cases
- Adeia v. Disney (November 22, 2024 ip fray article)
- Playtech v. Games Global (LinkedIn post)
- Raccords et Plastiques Nicoll v. First Corporation et al. over EP3272938 (“gutter, gutter assembly and assembly method”) (Paris LD; plaintiff represented by August Debouzy’s Grégoire Desrousseaux)
10. Recent and upcoming hearings
Recent hearings:
- Tuesday, November 19 as well as (a different case number) Thursday, November 21: NJOY Netherlands B.V. v. Juul Labs International, Inc. (revocation) (Paris seat of CD)
Upcoming hearings:
- Tuesday, November 26: Ortovox Sportartikel GmbH v. Mammut Sports Group AG & Mammut Sports Group GmbH (main proceedings; this is the dispute that led to the first affirmance of a PI by the CoA)
- Wednesday, November 27: two related appeals involving Abbott and SiBio (Rule 220.1 RoP)
- Thursday, November 28: Hybridgenerator ApS v. HGSystem ApS et al. (evidence preservation; Copenhagen LD)
- Tuesday, December 3: SWARCO FUTURIT Verkehrssignalsysteme Ges.m.b.H. v. STRABAG Infrastructure & Safety Solutions GmbH (Vienna LD)