This article sums up ip fray‘s LinkedIn commentary on several recent Unified Patent Court (UPC) rulings and developments since the previous roundup (August 6, 2024 ip fray article) except for those that have already been discussed in dedicated articles. Regardless of the summer vacation season, the UPC stays active and productive.
1. Ireland not UPC territory until ratification of UPCA, though EU law provides opening with respect to local defendants
One of the issues in the UPC part of the Abbott v. SiBionics dispute was whether a UPC injunction could have effect with respect to Ireland, a countrary whose government signed the UPC Agreement (UPCA), but which is not actually a UPC contracting state until the UPCA has also been ratified through a refenderum (June 25, 2024 ip fray article).
What happened in a preliminary injunction (PI) proceeding in the Hague was unusual: there were two parallel cases, and in the one in which SiBio disputed jurisdiction for Ireland, plaintiff Abbott dropped the country from the list, but in another case, SiBio disputed only that there was an actual controversy left to adjudicate and apparently didn’t dispute jurisdiction concerning Ireland. The court then granted an injunction covering that country, too.
The Court of Appeal’s (CoA) second panel (Presiding Judge Rian Kalden, Judge Ingeborg Simonsson, Judge Patricia Rombach) considered that part of the decision manifestly erroneous and, therefore, stayed enforcement with respect to Ireland.
There are two defendants. One is based outside the EU and with respect to that one it does appear to be a clear case. The other, however, is a Dutch company. The CoA was aware of the fact that EU law may in fact give the UPC jurisdiction over “UPCland”-based companies with respect to any other country in which a patent granted by the European Patent Office (EPO) is valid (May 31, 2024 ip fray article). No such argument was raised here, however.
Some practitioners have asked themselves whether the CoA’s firm position that Ireland is not a contracting state until it has ratified the UPCA could also affect the ability of lawyers and patent attorneys with an Irish license to represent clients before the UPC. Many UK patent attorneys have obtained one, for example.
It would certainly be difficult now to argue that Ireland is already a contracting state for the purposes of the UPCA: the CoA has made it clear that it is not. But representation is different from jurisdiction. Arguably, any professional based in the EU who meets the formal requirements for UPC representation is a beneficiary of EU free movement rules.
Ireland should, of course, ratify the UPCA sooner rather than later, but apparently the country’s government was concerned that the referendum could yield a negative result, not for any UPC-specific reasons but due to other political circumstances.
2. High hurdle for appellate rehearing
In the United States, those losing an appeal or part thereof frequently petition the court for a rehearing, hoping above all for a rehearing en banc (larger panel). The process there is that at least one judge has to ask for a vote among all judges of the court, and then the question will be voted on. Rehearings are rare.
In the UPC, the process and the criteria are different. The judges involved in the original decision don’t have a say on whether there will be a rehearing. That’s why in a 10x Genomics v. NanoString case, the President of the Court, Judge Dr. Klaus Grabinski, whose panel (the first panel) had made the decision in question, referred the matter to the second panel.
Unless there’s a major irregularity such as a criminal act, the UPC won’t grant a rehearing. The argument in this case was about whether judges relied on their own technical knowledge, but the CoA’s second panel felt that the petition blew things out of proportion.
3. Upper and lower bounds for disclosure concerning related cases
In an Ericsson v. ASUSTeK PI matter, the UPC’s Lisbon Local Division clarified that disclosures of related cases by an applicant for provisional measures (PI movant) must also include non-UPC and non-EPO proceedings, but listing the cases is sufficient and pleadings from those parallel matters need not be provided.
4. Judicial wiggle room for deadlines in post-stay proceedings
The Nordic-Baltic Regional Division resumed proceedings in Edwards Lifesciences v. Meryl Lifesciences after a patent was upheld by the EPO in an amended form, and held that the Rules of Procedure do not dictate any particular timelines, which is why the court opted for a six-week response deadline. One party wanted it to be only four weeks and the other wanted at least two months.
5. Revocation proceedings continue in parallel to (non-)infringement appeal
Ballinno tried to obtain a preliminary injunction against European soccer body UEFA and its technology supplier Kinexon just in time for the EURO 2024 tournament, but the Hamburg LD denied it. Meanwhile, Kinexon started to challenge the patent in the Paris CD, while Ballinno appealed its loss on the infringement side. Ballinno made some sort of commitment to drop the case if the CoA affirmed the denial of the PI, and wanted the revocation proceedings stayed on that basis, but that was unavailing and the Paris CD declined to stay its proceedings. The UPC generally places great emphasis on its timelines.
6. Service-of-process decisions by the CoA
In Alexion v. Amgen, President Dr. Grabinski (filling in for the judge-rapporteur) held that the sole medium for electronic service of UPC documents is his court’s case management system (CMS). There may be other forms of service in the event of CMS issues, but the email system used by German lawyers to communicate with their courts (“beA”) is definitely ineligible for UPC purposes (link to LinkedIn post).
The CoA’s second panel held in some cases, to each of which Xiaomi is a defendant, that service on non-EU-based defendants must at least be attempted under the Hague Convention before alternative service (such as by serving documents on EU-based companies from the same corporate group) is permissible (link to LinkedIn post).
7. Language-of-proceedings decisions
The President of the Court of First Instance, Judge Florence Butin, agreed that English was the appropriate language of proceedings in a Maxeon v. Aiko et al. case where the defendants wanted it, the plaintiff uses English for internal communications, English is the language that is used more than any other in the industry in question, and where the plaintiff’s argument that German is spoken in small parts of the countries in which some defendant entities are located (Belgium, Italy) and widely understood in another such country (the Netherlands) didn’t even matter. There was a potential procedural issue because the motion to change the language was filed in English, but translations were provided and, in any event, the Registry did not reject those pleadings (link to LinkedIn post).
In Qufora v. Manfred Sauer, the latter wanted to avoid translation costs to English, but the Munich LD’s second panel denied a motion to waive those requirements, one key reason being that one of the members of the panel for that case, Judge Petri Rinkinen from Finland, does not speak German (link to LinkedIn post).
Apple is appealing the denial of a switch of the language of proceedings from German to English (June 26, 2024 ip fray article), but the CoA decided to cut briefing short and to proceed to a hearing rather quickly. Apple filed another appellate pleading, but it was stricken because it came two days after the end of the written procedure (link to LinkedIn post).
8. CoA decisions regarding Rule 9.1 and Rule 361
In Aylo v. DISH Network, Standing Judge Ingeborg Simonsson held that Rule 9.1 does not give the parties the right to file a motion (in this case, one to bring further argument), but they can file further pleadings only if the court grants a reasoned request.
In Suinno v. Microsoft, Standing Judge Patricia Rombach held that a party can appeal an order denying the request to reject an action as manifestly bound to fail according to Rule 361 RoP, but as it is an appeal of a case management order, one has to request a panel review first.
9. 1,760 pages of pleadings in HP v. LAMA
Judge-rapporteur Camille Lignières (Paris LD) decided to strike non-(in)validity-related argument from the pleadings at a stage where that was the only issue to be addressed. She noted the court already had received, 1,760 pages of pleadings in that case. The case is about third-party ink cartridges.
10. Access-to-documents decisions
On the Munich CD’s behalf, Judge-rapporteur András Kupecz granted a third party (a law firm) access to the pleadings of a closed case (Astellas v. Healios et al.; the parties had settled), but granted a request to redact out certain competitively sensitive information (link to LinkedIn post).
In a Valeo v. Magna PI proceeding, the Dusseldorf LD’s Presiding Judge Ronny Thomas denied a motion to lift a protective order. He was not persuaded that the information in question had been disclosed in another court proceeding (link to LinkedIn post).
In Agfa v. Gucci (Hamburg LD), Judge-rapporteur Dr. Stefan Schilling granted a protective order with respect to certain company-internal information (link to LinkedIn post).
In 10x Genomics v. Curio (Dusseldorf LD), Presiding Judge (acting as judge-rapporteur) Ronny Thomas stated that a large number of recipients of confidential information may be necessary for a party’s lawyers to do their job, but there must be accountability in terms of a list of names and clear responsibilities (link to LinkedIn post).
11. New cases
A mechanical case over an expired patent: City Glass & Glazing v. Maars (link to LinkedIn post)
A new PI request for a “cabinet levelling apparatus”: Häfele v. Kunststoff KG Nehl (link to LinkedIn post)
Network security: Centripetal v. Keysight (link to LinkedIn post)
Protective gear: Dainese v. Omnia Retail et al. (link to LinkedIn post)
Further escalation of Qualcomm v. Transsion, Atlas Global v. TP-Link and GSK v. Pfizer (link to LinkedIn post)
New gene data patent case: GXD-Bio v. Myriad Genetics (link to LinkedIn post)
More clarity regarding scope of Valeo v. Magna dispute (link to LinkedIn post)
12. New structure: search results list for decisions and orders
The UPC has improved the format of the list of search results for decisions and orders. Some practitioners, however, still believe it’s too difficult to infer from the list the relevance of a given decision.