In-depth reporting and analytical commentary on intellectual property disputes and debates. No legal advice.

UPC Roundup (4 weeks): appellate decisions, final judgments, settlements, anti-antisuit injunctions, case management and more

Florian Mueller

This summary of developments in and around the Unified Patent Court (UPC) covers an unusually long period as there were relatively few interesting decisions toward the end of last year and earlier this month. Our previous UPC Roundup was published shortly before the holidays (December 22, 2024 ip fray article). We will now get back into a normally weekly rhythm.

1. Appellate case law

1.1 Landmark ruling on damages in two respects: separate damages claims after national merits ruling, and damages periods extending into pre-UPC era

(link to detailed article)

In Fives v. REEL, the Court of Appeal (CoA) has resolved two important questions:

  • After a merits decision by a national court in a contracting state of the UPC, damages can be sought in the UPC. The national judgment will be recognized unless an objection under Art. 45 Brussels Ia Regulation succeeds.
  • Damages claims in the UPC can go back to the pre-UPC era, but on the UPC’s start date (June 1, 2023) the patent-in-suit must have been in force.

1.2 High hurdle for correction of allegedly obvious error in claim language

(link to detailed article)

In Alexion v. Amgen and Alexion v. Samsung Bioepis, the CoA threw out both appeals (of orders that denied preliminary injunctions) over validity doubts. Alexion argued that an obvious error in the claim language should be corrected, but in the CoA’s opinion failed to meet the hurdle for that.

1.3 Various CoA decisions of lesser significance

  • Insulet v. EOflow: the denial of consolidation (here, of proceedings in the Milan LD and the Milan seat of the CD) is moot if the PI was denied anyway, nor is there an interest in the appeal because of the main proceedings, given that a new decision on consolidation will have to be made and the facts could be different for a potential consolidation of main proceedings (PDF).
  • Total Semiconductor v. Texas Instruments: an order on security is a case management order, which can be reviewed by a panel sua sponte or at the request of a party, but only the panel is competent to decide on leave to appeal (PDF).
  • Abbott v. Powell Gilbert: a member of the general public can request access to the case file after a decision or order even if the proceedings are not finished yet, such as because of an appeal or because it is only a preliminary-injunction proceeding (PDF).
  • Daedalus Prime v. Xiaomi (PDF): the fact that a relevant document was already presented by Xiaomi does not deprive MediaTek of its legal interest in the outcome (PDF).
  • Suinno v. Microsoft:
    • A plaintiff can always reduce the amount of the damages it is seeking, which is separate from the question of the cost implications this may have (PDF).
    • Settlement offer remains confidential (PDF).
  • Avago (Broadcom) v. Tesla: withdrawal of a complaint is possible on appeal, and the patentee’s requests to amend the patent are then abandoned (PDF).
  • Insulet v. Menarini: a technical issue with the case management system (CMS) that makes it impossible to upload a document results in an automatic extension until the date when such upload is possible again (PDF).
  • Syngenta v. Sumi Agro: here, the CoA did not require translation of a particular exhibit (PDF).

2. Final (though appealable) judgments

  • SWARCO Futurit v. STRABAG: the Vienna Local Division (LD) has decided its first case (previously there was only a PI request), and the outcome is an injunction (January 16, 2025 ip fray article).
  • NJOY v. Juul Labs: there are two vaping-related disputes before the UPC, and the challenged patents often vaporize (Paris seat of Central Division (CD)) (LinkedIn post).
  • Advanced Bionis v. MED-EL: the CD (Paris) upheld the challenged patent based on an auxiliary request and decided to resolve the case in a sequence that obviated the need to decide on the admissibility of lower-priority auxiliary requests (PDF).
  • Default judgments:
    • BMW v. ITCiCo (CD Paris): default (for which there was no convincing excuse) resulted in the potentially irreversible destruction of the challenged patent (LinkedIn post).
    • air up group v. Alyun Yanwu (Munich LD): default resulted, after a warning to the defendant, in a permanent injunction (PDF).

3. Anti-antisuit injunctions (AASIs)

In December, either panel of the Munich LD granted one AASI:

4. Case management decisions

  • 10x Genomics v. NanoString (Munich LD): A large number of auxiliary requests may be reasonably admissible, particularly if there are many invalidity contentions (LinkedIn post).
  • Nera Innovations v. Xiaomi (Hamburg LD): A preliminary objection failed to do away with a conditional amendment of the patent-in-suit (on which the panel will have to decide at trial time or in the final judgment) (PDF).
  • Daedalus Prime v. Xiaomi (Hamburg LD): A revocation counterclaim will be consolidated with revocation actions pending in CD Paris, and for now there is no decision on whether to stay the infringement proceedings pending the outcome of the revocation matter (PDF).
  • Dainese v. Alpinestars (Milan LD): Here the court decided to set a rather relaxed schedule for its own proceedings, as opposed to a formal stay, in order to see what outcome an appeal within the European Patent Office (EPO) will have (PDF).
  • Snowpixie v. Golf Tech Golfartikel Vertriebs GmbH (Munich LD): A request for an extension of time because of temporary health issues and because of other urgent matters was granted in principle, but the moving party was ordered to make a more specific showing (PDF).
  • Sanofi v. Accord, Sanofi v. STADA, Sanofi v. Reddy, Sanofi v. Zentiva (all Munich LD): certain changes to the plaintiffs or their names had to be made following a corporate restructuring, and the court allowed them. In one set of cases, the patent-in-suit was assigned to another company within the Sanofi group (PDF), and in another set of cases the plaintiff had merged with another company within the group (PDF).

5. Language regime: (potential) landmark decision in ParTec v. Nvidia and other rulings

  • ParTec v. Nvidia: If upheld on appeal this could become the most important decision to date in which the plaintiff’s choice of language survived a motion by the defendant to switch to the language of the patent that is at the same time the language of the defendant’s corporate group and the primary language in the relevant field of technology (January 17, 2025 ip fray article).
  • Arcelor v. XPENG: The Court of First Instance addressed the question of how to deal with a preliminary objection to the language of the statement of complaint (i.e., complaint) (PDF).
  • Syngenta v. Sumi Agro: see Section 1 above (CoA)

6. Security for litigation costs

6.1 Ona Patents cases against Apple and Google: €500K each

The Dusseldorf LD has ordered Ona Patents, a licensing firm from Spain, to provide security to the amount of €500K (only about half of what was sought, but despite Ona Patents arguing that it should not have to provide collateral) to Google (PDF) as well as to Apple (PDF). The UPC now generally requires small non-practicing entities to give security. Ona Patents, by virtue of being based in the EU, would not have to do that in German national court.

6.2 Suinno v. Microsoft

The CD Paris declined to reduce the security amount after the amount of the damages claim was lowered. The decision (PDF) notes that if a litigant does not refer to the correct statutory basis, but the facts and the legal arguments presented are clearly relevant to another statute, the court will apply the correct statute.

In the related revocation matter, the CD Paris held (PDF) the following:

“Where the Court has already ordered a party to provide security for the legal costs and other expenses incurred or to be incurred by the opposing party, a subsequent request by this latter party for an additional security (compared to that already granted) shall be considered as request to modify the security already granted by increasing its amount.”

7. Fee-shifting and costs

  • In HP v. LAMA (Paris LD), an injunction issued over one patent but the defendant prevailed on the other (November 13, 2024 ip fray article). HP asked the court to raise the amount of the fees to be reimbursed. Given that either party owes the other the same amount, there should not be an issue, but LAMA argued that the amount sought by HP of close to €200K was too much for a small and medium-sized enterprise (SME) to bear. The court awarded €112K for legal fees and €7.5K for court fees (PDF).
  • Meril v. SWAT (CD Paris): no reimbursement of costs in connection with someone’s request for access to the case file (PDF).
  • Insulet v. EOflow:
    • Milan LD: a party cannot seek a cost award from the judge-rapporteur if the allocation of costs has not previously been decided by the panel (PDF).
    • Milan CD: fee-shifting is available after defeating a request for intervention (PDF).

8. Confidentiality and general public’s access to documents

  • Sanofi v. Accord, Sanofi v. STADA, Sanofi v. Reddy, Sanofi v. Zentiva (all Munich LD) (PDF): confidential witness statement provided only to an exhaustive list of counsel.
  • NanoString v. Harvard (CD Munich): Berggren firm (as a member of the general public) gets access to documents (PDF).
  • Maxeon v. Aiko et al. (Dusseldorf LD): trade secrets are protected (PDF).
  • Suinno v. Microsoft: for CoA decision on confidentiality of settlement offer see Section 1.3 above.

9. Plenty of settlements

10. Bench and bar news

11. New cases

  • December 2024 UPC filings (our commentary)
  • ZTE v. Samsung (Mannheim LD): Samsung brought a pre-emptive strike type of action in the High Court of Justice for England & Wales last year. A little later, it unsurprsingly became known that ZTE had filed patent infringement actions against Samsung in multiple fora. The first one of ZTE’s UPC filings against Samsung to become publicly discoverable is also the first Vintage Year 2025 UPC case to show up in the publicly accessible part of the case registry (LinkedIn post).
  • Ericsson v. ASUSTeK (Lisbon LD): Ericsson is asserting in a full-blown main proceeding a patent over which the court denied a PI but on a basis that makes a different outcome on the merits fairly possible (October 15, 2024 ip fray article).
  • Hologic v. Siemens Healthcare (Dusseldorf LD)
  • Brita SE v. Wessper Sp. z o.o. (Dusseldorf LD)
  • Insulet v. Menarini (Milan LD)
  • Morello Forni v. Gastroteam Abbe (Milan LD)
  • Wonderland Nurserygoods v. Cybex (Dusseldorf LD)
  • Corning v. HiSense, TCL, LG (Mannheim LD)
  • American Wave Machines v. White Water Era (Dusseldorf LD)
  • KNAPP Smart Solutions v. Becton Dickinson Rowa (Munich LD)

12. Recent and upcoming hearings

Recent hearings:

  • Tuesday, January 7, 2025: Sumi Agro v. Syngenta (CoA, RoP 220.1)
  • Thursday, January 9, 2025: Scandit v. Hand Held (CoA, RoP 220.1)
  • Wednesday, January 15, 2025: Daedalus Prime v. Xiaomi (CoA, RoP 220.2)
  • Thursday, January 16, 2025: Edwards v. Meril (Nordic-Baltic Regional Division (RD))
  • Friday, January 17, 2025: Tridonic v. CUPOWER (Dusseldorf LD)

Upcoming hearings:

  • Thursday, January 23, 2025: Biolitec Holding GmbH & Co. KG v. Light Guide Optics Germany GmbH, S.I.A. LIGHTGUIDE International (CoA; Rule 220.1 appeal)
  • Tuesday, January 28, 2025: Hurom Co v. NUC Electronics Europe GmbH, WARMCOOK (Mannheim LD)
  • Wednesday, January 29, 2025:
    • Suinno Mobile & AI Technologies Licensing Oy v. Microsoft Corporation (CoA, Rule 220.2 appeal)
    • Teleflex Life Sciences II LLC v. Speed Care Mineral GmbH (Hamburg LD)
  • Thursday, February 11, 2025: TEXPORT Handelsgesellschaft mbH v. Sioen NV (Nordic-Baltic RD)