This is a summary of developments in and around the Unified Patent Court (UPC) in the week since our May 4, 2025 UPC Roundup. Only a few noteworthy things happened.
1. Permanent injunction in Grundfos v. Canned Motor Pump; licensing talks don’t matter, lack of inventive step must be pleaded early: Dusseldorf LD
In Grundfos v. Canned Motor Pump, the Dusseldorf Local Division (LD) clarified (as did the Hamburg LD shortly before) that any invalidity contentions concerning a lack of inventive step must be pleaded early. It’s not enough for the prior art references to be in the case: obviousness must be argued. Also, licensing talks didn’t weigh against the permanent injunction that came down in this case, given that patents are an absolute property right and a patentee is free to seek injunctions in the absence of a voluntary license agreement.
2. No provisional measures (PI) in Boehringer v. Zentiva for lack of proof of imminent infringement: Lisbon LD
Boehringer formally lost because regulatory approval of a drug does not mean that it will be put on the market prior to expiration of a particular patent. But practically it is now much riskier for Zentiva to release the product prior to patent expiration. An ex parte preliminary injunction (PI) would now be much easier for Boehringer to obtain than before these proceedings that may have been a deliberate long shot from the get-go.
3. Milan LD costs decisions
3.1 Ericsson v. Digital River: defendant’s insolvency
The court made a merciful decision, holding that Digital River’s insolvency is no one’s fault and does not go to the merits of the case. At least Ericsson won’t have to bear Digital River’s costs. Apparently Ericsson just wanted to avoid any procedural delay as a result of Digital River’s crisis and let that particular defendant off the hook in order to continue with full speed as far as the other two defendants (ASUSTeK and Arvato) are concerned.
3.2 Oerlikon v. Bhagat: standard for exceptionally high fee award
In a headnote, the Milan LD clarified that the UPC’s standard amounts for fee shifting apply. Only in exceptional circumstances, such as in cases of extraordinary complexity (many patents etc.) is it possible to go above them (PDF (in Italian)).
4. New cases
Dusseldorf LD:
- Papst Licensing v. Intel (for lack of being able to designate Malta as a contracting state at the relevant time, the patent was later denied unitary effect; through a linkedIn comment on our page, df-mp patent attorney Edward Tomlinson drew our attention to that unusual scenario)
- Husqvarna v. Positec
Munich LD:
- Nanoval v. ALD Vacuum Technologies
5. Recent and upcoming hearings
Recent hearings:
- Wednesday, May 7, and Thursday, May 8, 2025:
- DISH Technologies L.L.C. and others v. AYLO PREMIUM LTD and others (Mannheim LD)
- Friday, May 9, 2025:
- Nanoval GmbH & Co. KG v. ALD Vacuum Technologies GmbH (Munich LD; evidence preservation)
Upcoming hearings:
- Monday, May 12, 2025:
- ILME GmbH Elektrotechnische Handelsgesellschaft, Industria Lombarda Materiale Elettrico I.L.M.E. S.p.A. v. PHOENIX CONTACT GmbH & Co. KG and XSYS Germany GmbH, XSYS Prepress N.V., XSYS Italia S.r.l. v. Esko-Graphics Imaging GmbH (CoA, two Rule 220.2 RoP appeals heard jointly)
- Tuesday, May 13, 2025:
- Tiroler Rohre GmbH v. SSAB Swedish Steel GmbH and SSAB Europe Oy (Munich LD)
- 10x Genomics v. Curio Bioscience (Dusseldorf LD)
- EOflow v. Insulet (interim hearing in revocation action; Central Division (CD) Milan)
- Wednesday, May 14, 2025:
- Bruker Spatial Biology, Inc., Luxendo GmbH, Bruker Nederland B.V v. 10X Genomics, Inc., President and Fellows of Harvard College (CoA, Rule 220.2RoP appeal) (Bruker is the acquirer of NanoString’s assets)
- Steros GPA Innovative S. L. v. OTEC Präzisionsfinish GmbH (Hamburg LD)
- Tuesday, May 20, 2025:
- Headwater Research LLC v. Samsung Electronics GmbH (Munich LD)
- Thursday, May 22, 2025:
- Nera Innovations Ltd. v. Xiaomi Communications Co., Ltd. (Hamburg LD)
- Monday, June 2, 2025:
- Suinno Mobile & AI Technologies Licensing Oy v. Microsoft Corporation (CD Paris; infringement and revocation counterclaim)
- Tuesday, June 3, 2025:
- Manuela Hofmann v. Essetre Holding SpA (CD Paris; revocation)
- Wednesday, June 4, 2025:
- Sibio v. Abbott (CD Paris; revocation)
- Thursday, June 5, 2025:
- Philips v. Belkin and vice versa (CoA; Rule 220.1 RoP appeals)
6. Around the court
We discussed the end-of-April case load update in a LinkedIn post. There are signs of steady and sustainable growth.