This Unified Patent Court (UPC) Roundup covers the period since the last UPC Roundup (October 18, 2024 ip fray article).
From now on, these roundups also list – for the purpose of comprehensive coverage – developments during the relevant period that gave rise to ip fray articles (as opposed to merely LinkedIn posts).
1. Panasonic’s disputes with Xiaomi and OPPO practically settled; Munich LD would have looked at UK FRAND determination with interest
(link to October 25, 2024 ip fray article)
There was a flurry of FRAND news on Friday as ip fray first found out about a UK court filing indicating a settlement between Panasonic and Xiaomi, and then again was first to spot a settlement between Panasonic and OPPO.
Thankfully, the UPC’s communications department still provided ip fray with information on a case management decision. The Munich Local Division (LD) would in fact have taken judicial notice of a UK FRAND determination.
2. Application for provisional measures (PI motion) can be withdrawn between hearing and written decision, but plaintiff has to bear costs including protective writ
Plaintiff Tiroler Rohre withdrew an application for provisional measures (i.e., a motion for a preliminary injunction (PI)) more than a month after the PI hearing at which the court denied to enter the PI, yet prior to a written decision. Defendants (from the Swedish Steel group, or SSAB) still wanted the written ruling, but the court disagreed. However, the plaintiff is deemed the losing party and must pay for everything, even including a protective writ.
3. Adult content subscription may be reasonably necessary to obtain evidence
(link to October 21, 2024 ip fray article)
This discovery order by the Mannheim LD in Sling TV & DISH v. Aylo & Brockwell addresses some interesting evidentiary disputes. It is most directly relevant to other patent infringement disputes over video streaming services, but similar issues may arise in other contexts as well.
4. U.S. pleadings disregarded despite potential self-contradiction on claim construction
The Court of Appeal’s (CoA) second panel affirmed a decision in SharkNinja’s appeal of Dyson’s PI and will disregard pleadings from a parallel U.S. litigation that were presented late in the game and allegedly contradict a party’s claim construction arguments in the UPC. The CoA will form its position based on the evidence and arguments before it. It was the submitting party’s problem that it took quite long before UPC counsel became aware of the related U.S. filings.
5. Restrictive stipulation on U.S. protective order with explicit reference to UPC deemed binding, even more so when moving party uses same law firm in both jurisdictions
Vizgen is defending against lawsuits by 10x Genomics in the U.S. (District of Delaware) as well as in the UPC’s Hamburg LD, and is using Quinn Emanuel in both jurisdictions. The Hamburg LD imposed a confidentiality regime that is more restrictive than the UPC’s standard protective order (for instance, by not allowing a single natural person to access certain information) and also more restrictive than the UPC’s protective order governing a similar document (a license agreement) presented by the other party. But the U.S. stipulation clearly referenced the UPC proceedings and was, therefore, deemed binding.
6. Order of limited amount of translations of submissions made prior to stipulated language switch
In Visibly v. easee, the parties quickly agreed to switch the language of their proceedings in the Hamburg LD from German to English, the language of the patent-in-suit. But there was a minor dispute over whether the complaint and some of its exhibits had to be translated. The President of the Court of First Instance (CFI), Judge Florence Butin, determined that the requests for approximately 100 pages of translations was reasonable, at least in the circumstances of that case.
7. New cases
- Malikie v. Nintendo (two cases filed in the UPC’s Hamburg LD about a week after a U.S. complaint): October 22, 2024 ip fray article
- Quantificare v. Canfield: link to October 22, 2024 LinkedIn post
8. Patent Mediation and Arbitration Centre: exclusive interview reveals some of Director Zalar’s plans
(link to October 18, 2024 ip fray article)
ip fray had the opportunity to interview Director Aleš Zalar, a former government minister and judge, on his plans for the Patent Mediation and Arbitration Center (PMAC) with its two seats in Ljubljana, Slovenia and Lisbon, Portugal.
9. Incoming EU internal market commissioner speaks out strongly in favor of more countries joining the UPC
(link to October 25, 2024 ip fray article)
The EU commissioner-designate for the internal market (plus other fields of responsibility), Stéphane Séjourné, answered the European Parliament’s written questions ahead of a confirmation hearing and made an unequivocal commitment to the Unitary Patent System, specifically also mentioning one of its two pillars, the UPC.
10. UPC judges met in Vienna for annual training
ip fray shared the UPC’s LinkedIn post on a meeting of 170 judges and staff in Vienna in September for an annual training session. They reviewed the first 15 months of the UPC’s operation and talked about what to do going forward.
11. President Dr. Grabinski to speak on Qualcomm-sponsored Euractiv panel on SEPs
On December 4, Brussels-based website Euractiv will hold a hybrid (in-person plus video access) event to discuss standard-essential patent (SEP) policy. The President of the CoA, Judge Dr. Klaus Grabinski, will be among the speakers. The event is sponsored by Qualcomm.
12. Indirectly related but relevant: European Court of Justice clarifies standard for denial of preliminary reference
There have already been several instances in which litigants asked the UPC to make a reference for a preliminary ruling to the European Court of Justice (ECJ), but in vain. In a new decision, the ECJ has clarified that the hurdle is quite high for a court of last instance of an EU member state (which also applies to a multi-member-state court like the UPC) to deny a request for a preliminary reference.
13. Poll: readers prefer fairly frequent commentary on UPC decisions
95 votes are a sufficient number to be reasonably representative (thanks to those who participated). However, it is likely that those who are most eager to receive highly frequent updates are overrepresented among those who elected to answer. That hypothesis is supported by the fact that a weekly summary was more popular among those who responded toward the end of the survey period.
That said, ip fray will do its best to meet different types of demand for UPC-related reporting and commentary. There will be a way of getting ad hoc information, and there will be summaries along the lines of this present roundup.