UPC Roundup (1 week): no second revocation counterclaim by same party against same patent; generally uneventful period

1. No second bite at the apple: Munich LD throws out Ericsson’s revocation counterclaim against Lenovo/Motorola Mobility patent because of previous revocation counterclaim

Motorola Mobility (a wholly-owned Lenovo subsidiary) had to bring a follow-on suit in order to pursue injunctive relief against Ericsson over a SEP (LinkedIn post by ip fray). The reason for this is Lenovo’s own gamesmanship: it first filed a damages-only complaint with a view to maneuvering in other jurisdictions where it didn’t want to be seen, at a time when certain procedural decisions were about to be made there, as pursuing injunctive relief over standard-essential patents (SEPs). When the foreign proceedings had progressed enough that Lenovo wanted to amend its complaint, the UPC’s Munich Local Division (LD) denied leave (August 6, 2024 ip fray article).

The only procedural option was then for Lenovo to file separate complaints for injunctive relief over the same two SEPs, starting all over though obviously the court will have the benefit of already being familiar with the technical aspects of those patents by the time it adjudicates the injunction requests (if it does’t consolidate both complaints for trial purposes anyway, given that damages are less urgent than injunctions).

Ericsson then brought a revocation counterclaim in the injunction-related proceedings after already having done so in the related damages case. Lenovo’s Motorola Mobility objected. Ericsson argued that the UPC’s Rules of Procedure don’t have scope for a preliminary objection to a revocation counterclaim, but Judge-rapporteur Tobias Pichlmaier disagreed. He interprets the statutory language broadly enough for this possibility. As for the argument that the applicable rules mention revocation counterclaims in two different divisions, he makes an argumentum a fortiori that the avoidance of duplicative proceedings is even more warranted when there are two cases in the same division. On balance, he then sustains Lenovo’s objection and deems Ericsson’s revocation counterclaim inadmissible (PDF).

That decision could be appealed, initially to the panel and then possibly to the Court of Appeal (CoA).

It is unclear whether Ericsson’s second revocation counterclaim raises (in whole or in part) new arguments. At any rate, it was Lenovo’s Motorola Mobility that took the extraordinary step of a second complaint asserting the same patent (while seeking a different remedy). It made its bed and should lie in it. That means it should have to live with a second revocation counterclaim, even more so if that one raises new invalidity arguments.

2. Additional pleadings allowed to respond to new arguments in what would normally have been final written pleadings: Paris LD

In HUROM v. NUK & Warmcook, the Paris LD allows two more founds of short pleadings and on a tight timeline (PDF). HUROM asked for an opportunity to comment on new arguments raised by the defendants at the rejoinder stage. The fact that new arguments were raised appears clear and even undisputed to the court. But the court also wants to ensure that the defending party will always be the last one to file a written pleading. That applies to revocation counterclaims, just that the patent owner is the defending party with respect to such counterclaims.

3. Caseload update

(link to LinkedIn post)

In January 2025, 12 infringement actions (one third of them outside of Germany, which is a relatively high percentage by UPC standards) and 5 applications for provisional measures (PI motions) were filed with the UPC across all divisions.

4. New cases

• The biggest news in terms of new UPC filings this week was InterDigital’s announcement of a multi-jurisdictional enforcement campaign against Disney, which also includes filings in the UPC’s Dusseldorf and Mannheim LDs (February 3, 2025 ip fray article).
• Advanced Brain Monitoring v. Philips (The Hague LD) (link to LInkedIn post)

5. Recent and upcoming hearings

Recent hearings:

No hearings during the first week of February according to the hearing calendar on the UPC website.

Upcoming 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)
  • 10x Genomics, Inc. and President and Fellows of Harvard College vs. Vizgen, Inc. (CoA, Rule 220.1 RoP appeal)
  • 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)
• 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)

6. Developments around the UPC

• The UPC needs to figure out how to respond to British judicial imperialism in the form of interim licenses being granted to any Tom, Dick and Harry, potentially even over non-SEPs provided that they are routinely licensed together with SEPs (February 4, 2025 ip fray article).
• The Dusseldorf LD has a new (additional) judge as Judge Jule Schumacher, who will continue to spend part of her time sitting on the Dusseldorf Higher Regional Court, was sworn in on Monday (February 3, 2025 UPC news item).
• The Munich LD has recently had two groups of visitors from Japan:
  • On February 6, 2025, a delegation from the Japan External Trade Organization (JETRO) visited (UPC news item). The group was led by Mr. Akira Yoshimori, Principal Director of IP and Representative of the Japan Patent Office (JPO) in Europe, and included mostly JPO officials, but also Mr. Taku Ishihara, Assistant Judge, Tokyo District Court and Family Court.
  • Previously, the German-Japanese Jurists’ Association (Deutsch-Japanische Juristenvereinigung, DJJV) visited (February 3, 2025 UPC news item). The DJJV’s president is Presiding Judge Dr. Oliver Schoen (“Schön” in German) of the Munich I Regional Court’s Seventh Civil Chamber.
  • While there are fewer patent infringement cases in Japan than in the UPC or in Germany, there is presently a case that has many gamers and the games industry concerned: Nintendo v. Pocketpair. Nintendo regards Pokémon as key franchise, but Pocketpair’s Palworld became an overnight success last year and has already become a major franchise, a joint venture with Sony for cross-media projects included. For now, the dispute is limited to a single case (over three patents) in the Tokyo District Court, and given that Nintendo’s patents-in-suit don’t make what would be viewed in Europe as a technical contribution to the state of the art, Nintendo may not even want to try its luck in the UPC or any other European court. We cover that case mostly on games fray (where the latest part of an article series appeared on February 6, 2025). Given that the audience over there is not familiar with IP terminology (unlike the IP-savvy audience of this website), we have created a small “IP Lingo” dictionary.