This article sums up ip fray‘s LinkedIn commentary on several recent Unified Patent Court (UPC) rulings and developments. Regardless of the summer vacation season, the UPC continues to proliferate decisions and orders. The Dusseldorf Local Division (LD) is particularly on fire these days.
1. Dusseldorf LD: Novartis v. Celltrion raises standing issues of transcendental importance
One of the most stimulating aspects of the UPC is that it has to resolve certain fundamental questions of law that other jurisdictions have already had to answer before. On LinkedIn, ip fray gave three examples:
- prosecution history estoppel (which the CoA left for another day)
- non-obviousness standard (problem-solution approach or alternative)
- standard for SEP antitrust defenses/FRAND counterclaims (where the UPC has the opportunity to get right what some dogmatic radicals in Germany got disastrously wrong, causing actual harm to consumers and to the job market (August 5, 2024 ip fray article)
Last week’s Novartis & Genentech v. Celltrion preliminary injunction (PI) hearing in Dusseldorf over a biosimilar to the highly profitable Xolair antibody raised not only one but even two more issues of that kind:
- the legal standard for an imminent first infringement of a patent (in the interesting context of the suspected future infringer already having brought challenges to the patent-in-suit in multiple European jurisdictions, which does not mean that they would go ahead and launch without some momentum behind their patent invalidation effort, but creates a bit of an asymmetry with one party getting potential help from the courts while the other can merely try to defend its patent)
- the curability of a standing deficiency during the course of proceedings (here, in the form of what happened at a congress)
Further to that PI hearing, ip fray has done some research. It’s possible that the court will deny the PI motion on the basis that the patent-in-suit isn’t sufficiently likely to be valid. In that case, the overarching questions mentioned above might not have to be addressed at all.
The decision will come down in a month from now. For the time being, here’s ip fray‘s LInkedIn commentary.
2. Dusseldorf LD: No new round of briefing after second set of claim amendments didn’t change much
A four-judge panel affirmed Presiding Judge and judge-rapporteur’s Ronny Thomas’s decision in Seoulviosys v. expert e-Commerce GmbH to postpone a decision on the admissibility of a second set of auxiliary requests and not to start a formal briefing process on those proposed claim amendments.
Apparently, the changes are minimal. If the court had started a new round of briefing with two-month deadlines etc., there could have been considerably delay, jeopardizing the UPC’s schedule.
On a case-specific basis, this may indeed have been the most appropriate and pragmatic decision. With a view to the overarching question of a revocation (counter)claimant’s right to be heard, it nevertheless raises a concern. It would not appear unreasonable to allow full briefing of even minor changes to the claim language, given that the patentee always has the option to just stick to its previous (and fully-briefed) amendments.
The dilemma that the court faced here shows that the best solution might be some greater case management flexibility, such as by enabling the court to shorten time (e.g., three weeks instead of two months) in situations like that. In the U.S., judges would also have the ability to set page limits commensurate with the limited amount of further briefing that is warranted.
3. Dusseldorf LD: oversight in auxiliary request can be fixed
In Fujifilm v. Kodak, it’s easier to see why a second set of auxiliary requests had no implications on briefing: the plaintiff just removed a territorial limitation (to Germany) of its auxiliary requests. The plaintiff realized the mistake a month after bringing the original requests. The court allowed that correction and declined to give the defendant more time to respond.
4. Dusseldorf LD: non-EU-based subsidiary of large company doesn’t have to give security
The question of whether a non-EU-based defendant has to provide collateral for the costs of the dispute continues to be resolved by the UPC on a highly case-specific basis, as opposed to the bright-line rule that applies in, for instance, Germany.
In SodaStream v. Aarke, the plaintiff is a PepsiCo subsidiary. In the absence of a clear indication that SodaStream, in the event of losing the case, might simply disregard a cost order because it could not be enforced, Judge-rapporteur Dr. Bérénice Thom did not see why a subsidiary of a well-resourced group that also has significant assets in the EU should have to give security.
The enforceability of a cost order in a SodaStream case against other PepsiCo companies is simply presumed by the court. That could become a topic of discussion on appeal.
5. Paris LD: one discovery request gets curtailed, another is denied
HP is not just a defendant (presently also to certain SEP actions) but also enforces its own patents. In this case (HP v. LAMA France), HP wants to shut down the importation and sale of third-party ink cartridges. HP requested all sorts of data, which Presiding Judge and judge-rapporteur Camille Lignières considered over the top, but they will get information on imports of the accused cartridges from outside the EU.
The same judge, in Abbott v. Dexcom (link to LinkedIn post) denied a discovery request concerning the defendant’s distribution chain.
6. The Hague LD: extra time for production of information due to summer vacation season
(link to court order (PDF); no LinkedIn post about that one)
In Winnow v. Orbisk, Judge-rapporteur Edger Brinkman had given the defendant until August 20 to respond to a discovery request, and the Statement of Defense has a September 27 deadline. Orbisk would have liked to put both matters on the same deadline, also with a view to the summer vacation season.
Judge Brinkman didn’t want to go that far, particularly considering that the discovery request was already communicated on June 27, but beyond Winnow’s consent to a ten-calendar-day extension, he gave Orbisk an extra week, so the discovery request must be fulfilled by September 6: “The extra week is granted to give a few days extra after the summer holidays have ended.”
7. Vienna LD: intervenors, too, may have to give security for legal fees
In a recent interview with the Vienna LD’s Presiding Judge Dr. Walter Schober (July 20, 2024 ip fray article), the second dispute before that division (and the first main proceeding) was already mentioned. It’s SWARCO Futurit v. STRABAG and it relates to traffic-signal systems. The defendant’s Chinese supplier, Chainzone Technology, elected to intervene. The court held that Art. 69(4) UPCA refers only to the plaintiff in the security context, but Rule 158 RoP extends the circle of those potentially having to provide collateral to all parties, which also includes intervenors.
The notion that intervenors have all rights and obligations was also reinforced by a recent Dusseldorf LD order concerning a sealing request by an intervenor (LinkedIn post).
8. Mannheim LD: complaint is deemed served because Chinese authorities rejected politically incorrect location name
In official documents including court filings, Chinese authorities expect Hong Kong, if it is or appears to be treated at a level with sovereign states such as the People’s Republic of China, to be called “Hong Kong SAR, China,” with SAR meaning Special Administrative Region. That was not done in a Panasonic v. Xiaomi complaint and impeded service under the Hague Convention. The court even issued a press release dated August 1, 2024.
ip fray understands that there are situations in which alternative service of process, such as by simply publishing the fact that a complaint has been brought, may be appropriate, but believes that local laws should be complied with. There are sensitivities everywhere, including Germany itself. There was no sign of Chinese authoritites looking for a pretext to delay service of process, but they expected compliance with applicable rules.
9. New infringement actions discovered
- Munich LD: JingAo Solar v. AstroEnergy & Chint New Energy over a photovoltaics patent (LinkedIn post)
- Mannheim LD: bellissa HAAS v. Windhager over a bed-of-flowers enclosure with a lockable sheet metal strip (LinkedIn post)
10. UPC’s first 2025 hearing on public calendar
The UPC may already have scheduled more than one hearing for 2025, and one has shown up now on the public calendar:
On January 17, 2025, the Dusseldorf LD will hear Tridonic GmbH & Co KG v. CUPOWER Shenzhen Xiezhen Electronics Co., Ltd. (an infringement action with a revocation counterclaim).
Panel: Presiding Judge Ronny Thomas, Judge-rapporteur Dr. Bérénice Thom, Judge Peter Agergaard (Denmark) and Technically Qualified Judge Christoph Schober.
The plaintiff is represented by Mitscherlich’s Dr. Markus Boelling and the defendant by Wildanger’s Jan-Caspar Maiers.