This is an update on what has happened in the Unified Patent Court (UPC) in the fortnight since the last such roundup (November 2, 2024 ip fray article). It is fair to say that the number of newsworthy events during the first half of November was relatively low, but the significance of some of them easily makes up for the low quantity.
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1. New injunctions: Milan, Paris, Munich
1.1 Edwards v. Meril (Munich LD)
This action was filed on the first day on which the UPC accepted filings, but the Munich Local Division (LD) deemed it prudent to await the outcome of a consolidated revocation action before the Paris seat of the Central Division (CD). The patent has been found infringed in the form in which it was upheld. The decision dismissed various jurisdictional arguments as well as a request to await further information from the European Commission (EC) concerning an antitrust investigation, with respect to which the court had already asked the EC for an update (but there was none). Apart from a narrow carve-out, Meril’s public interest-based proportionality defense failed. Meril had previously been unsuccessful with a petition for a compulsory license in Germany.
1.2 HP v. Lama (Paris LD)
In an effort to shut down the importation of certain third-party ink cartridges for its printers into France, HP asserted two patents against French distributor Lama. One of the patents was revoked as the result of a counterclaim, but the other was deemed infringed. Lama raised an antitrust defense, which the Paris LD held the UPC may entertain, but deemed meritless for lack of a “serious” definition of the relevant antitrust market.
1.3 Oerlikon v. Bhagat Textile Engineers (Milan LD)
Oerlikon successfully asserted a False Twist Texturing Machine patent against Bhagat in the Milan LD. There are no particular holdings of transcendental importance in that decision.
2. Ephemeral case: PI request withdrawn after one day (Munich LD)
Philips asserted a smart tooth brush patent against China’s Yunding in the Munich LD, and the very next day it withraw the application for provisional measures (PI motion). The filing may have had the desired effect without needing further judicial guidance. The second panel’s Presiding Judge Ulrike Voss (“Voß” in German) analogously applied Rule 370(9)(b)(i) for the partial reimbursement of court fees. That statute doesn’t literally address PI motions (it relates only to main proceedings), but there is no statute governing that scenario, an omission that the court cured through analogous application of the closest statute.
3. Correction of “obvious slip” in PI
Another oversight that the UPC had to fix was the omission of one particular BMW model from a list of models with respect to which automotive supplier Magna is still allowed to fulfill existing orders despite a PI that the Dusseldorf LD had granted one of its main rivals, Valeo.
4.-Withdrawal of opt-out enables UPC infringement litigation if filings in national courts were made only before June 1, 2023: CoA, second panel
The UPC’s Court of Appeal’s (CoA) second panel overruled the Helsinki LD with respect to the effect of a withdrawal of an opt-out. There is no uncertainty with respect to situations in which an opt-out is withdrawn after a case was filed in national court during the UPC’s transitional period, which started on June 1, 2023: in that case, the opt-out won’t open the door to UPC infringement filings over that patent during the transitional period. At first sight, one would be led to consider it a contra legem interpretation, given that the literal meaning of the relevant statute in the UPC Agreement as well as the relevant rules in the Rules of Procedure would suggest that the same applies to cases filed prior to the transitional period, but the CoA’s second panel held otherwise. It declined to refer the question to the full CoA.
5. Vaporization device patent upheld: CD Paris
Juul Labs defended a patent that was under attack from NJOY. The Paris seat of the CD based its decision on the inventive step on an “objective approach” to the question of whether there is an inventive step,” asking itself whether the prior art specifically suggested a solution comparable to the patented invention.
6. Information may get unredacted if it becomes accessible through other channels: Munich LD
Mathys & Squire wanted access to unredacted versions of the pleadings in Astellas Pharma v. Healios, and the Munich LD’s second panel granted the request in light of the fact that the previously-redacted information had become available through other channels, at least to the petitioner in question.
7. XPENG statement suggests alleged infringements of ArcelorMittal patent mistakenly happened despite efforts to avoid them
XPENG became the first Chinese automaker to get sued in the UPC (November 1, 2024 ip fray article). In response to that lawsuit, it issued a public statement. Apparently XPENG sought to avoid an infringement of the relevant patent, but some mistakes were made and they say they are in touch with ArcelorMittal to address the problem.
8. New filings
8.1 PI motion
Mann+Hummel is seeking provisional measures against Sotras in the Munich LD over a “cup-shaped housing and device for the separation of liquid from air” (link to LinkedIn post).
8.2 New infringement complaints
- Decathlon v. Lidl (Mannheim LD) (link to LinkedIn post)
- BSN medical v. Advancis Medical (Munich LD) (link to LinkedIn post)
- Meister v. Janser (Hamburg LD) (link to LinkedIn post)
9. Recent and upcoming hearings
Recent hearings:
- Monday, November 4: appeals of decisions in Alexion v. Amgen and Alexion v. Samsung Bioepis (CoA)
- Wednesday, November 6: Tandem v. Roche (revocation) (Paris seat of CD)
- Monday, November 11: Meril v. Edwards (procedural appeal) (CoA)
- Wednesday, November 13: [a Polish farmer] v. Amycel (revocation) (Milan seat of CD)
- Thursday, November 14:
- Häfele SE & Co KG v. Kunststoff KG Nehl & Co (provisional measures) (Munich LD)
- Aarke AB v. SodaStream Industries Ltd. (CoA) (canceled)
- Friday, November 15: Abbott v. Dexcom (Paris LD)
Upcoming 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)
- 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)
10. Case load
As ip fray discussed on November 5, the Munich LD is still the most popular UPC venue, but Dusseldorf is catching up and during the second twelve-month period of the UPC’s operation, The Hague LD is growing fastest.
Lawyers are calling for more full-time jobs for UPC judges, particularly in Munich (link to LinkedIn post) in order to ensure the court’s ability to keep the time lines that clearly attract litigants (see, e.g., this November 7, 2024 ip fray article). To some extent, parties control their destiny: venue diversity is desirable, and the three injunctions discussed in the first section of this present article came down in three different venues (in as many countries).