Every Tuesday, we present insights, analyses and our conclusions around recent case law and other developments of the UPC.
No. 52 - 19th of November 2024
On November 12, 2024, the Court of Appeal (CoA) of the Unified Patent Court (UPC) issued an order, clarifying the application of Article 83 of the UPC Agreement (UPCA). This order “re-opens” the door for European Patents which - according to the first instance - would have been permanently excluded from the competence of the UPC.
No. 51 - 12th of November 2024
On November 5, 2024, the Central Division of the Unified Patent Court in Paris delivered a decision on European Patent EP 3 498 115 B1, significantly impacting cases where the court finds no claim amendments to be allowable.
No. 50 - 5th of November 2024
In a recent ruling concerning the European Patent EP 1 793 917, the Local Division Düsseldorf elucidated key aspects of patent claim interpretation, addressing essential questions such as the influence of the description and drawing on claim interpretation and the relevance of prior art as mentioned in the patent.
No. 49 - 29th of October 2024
No. 48 - 22nd of October 2024
In a recent decision concerning a revocation action brought by NanoString Technologies Europe Limited against the President and Fellows of Harvard College, the Central Division Munich provided important guidance on several legal questions. This case is particularly notable for its discussion of the impact of parallel proceedings on a Unified Patent Court (UPC) case.
No. 47 - 16th of October 2024
In case UPC_CFI_363/2023, the Local Division Düsseldorf recently provided helpful clarification for multi-party litigation. The decision is dealing with a case in which a claimant chose to sue multiple defendants – alleged infringers - in a single suit. According to the LD Düsseldorf, each defendant maintains their independence in the proceedings, ensuring that actions by one do not prejudice others.
No. 46 - 8th of October 2024
In a recent order dated September 18, 2024, the Court of Appeal (CoA) of the Unified Patent Court issued some clarifications on procedural and jurisdictional issues concerning preliminary objections and Rule 361 of the Rules of Procedure (RoP), about an “action manifestly bound to fail”. This decision arose from a series of cases involving Network System Technologies LLC (NST) and Audi AG, where NST accused Audi of infringing upon multiple patents.
No. 45 - 1st of October 2024
In an order dated September 17, 2024, the Court of Appeal of the Unified Patent Court overturned a previous order from the Court of First Instance, addressing critical issues surrounding jurisdiction and lis pendens under the Brussels I recast Regulation. This decision, marked under reference numbers APL_26889/2024 and UPC_CoA_227/2024, provides insights into the interplay between national courts and the Unified Patent Court (UPC) during the transitional period stipulated by Article 83 UPCA. We previously discussed the first instance's order in a prior blog entry.
No. 44 - 24th of September 2024
In an order dated September 17, 2024, the Court of Appeal of the Unified Patent Court overturned a previous order from the Court of First Instance, addressing critical issues surrounding jurisdiction and lis pendens under the Brussels I recast Regulation. This decision, marked under reference numbers APL_26889/2024 and UPC_CoA_227/2024, provides insights into the interplay between national courts and the Unified Patent Court (UPC) during the transitional period stipulated by Article 83 UPCA. We previously discussed the first instance's order in a prior blog entry.
No. 43 - 17th of September 2024
In a recent ruling by the Unified Patent Court's Munich Local Division, the comprehensive examination of DexCom, Inc.'s patent EP 3 797 685 revealed significant insights into the judicial approach towards patent validity at the UPC. One of our previous blog entries detailed the court's deliberations on novelty and inventive step, highlighting the stringent requirements for describing technical effects in European patent law. After a second reading there is even more…
No. 42 - 10th of September 2024
In a slightly older decision of 16 July 2024, the Central Division in Munich delivered a ruling with high practical relevance for anyone participating at the Unified Patent Court (UPC) and the European Patent Office (EPO). It is not so much about introducing entirely new concepts, but rather, it brings together familiar concepts from various other jurisdictions into a “unified” decision by the UPC. This decision, without any exaggeration, is immensely useful on a daily basis when dealing with substantive issues at both the UPC and the EPO. It is highly recommended to read the headnotes of this case — ideally before beginning work on any UPC case involving claim interpretation or the assessment of inventive step. In other words, one should be familiar with these headnotes before tackling any case that implies going into the substantive details of a patent.
No. 41 - 3th of September 2024
On 1 September 2024, Romania became the 18th member state to join the Unified Patent Court (UPC), a significant boost for the Unified Patent Court. This move comes a bit more one year after the UPC began its operations, highlighting the success story of the UPC so far.
No. 40 - 28th of August 2024
On August 19, 2024, the Court of Appeal of the Unified Patent Court issued an order regarding an application for suspensive effect related to a patent dispute involving Sibio Technology Limited, Umedwings Netherlands B.V., and Abbott Diabetes Care Inc.
No. 39 - 20th of August 2024
On August 16, 2024, the Nordic-Baltic Regional Division of the Unified Patent Court (UPC) issued a procedural order in the patent infringement and revocation dispute between Edwards Lifesciences Corporation and various Meril Lifesciences entities. This development followed the closure of parallel opposition proceedings at the European Patent Office's Boards of Appeal (EPO TBA).
No. 38 - 13th of August
Concerning standard-essential patents (SEPs), the European Commission (EC) has recently submitted an amicus curiae brief in the ongoing legal battle between VoiceAge EVS and HMD. This brief, dated April 15, 2024, underscores a fundamental critique of German patent jurisprudence post-Sisvel vs. Haier, advocating for a stringent, sequential application of the negotiation steps outlined in the Huawei vs. ZTE decision by the European Court of Justice (ECJ).
No. 37 - 6th of August
In a decision dated July 31, 2024, the Unified Patent Court's Local Division in Munich addressed a case involving DexCom, Inc. and a series of defendants led by Abbott Laboratories. The case revolved around DexCom’s patent EP 3 797 685, concerning advanced communication protocols in analyte monitoring systems, crucial for managing diabetes.
No. 36 - 30th of July
Introduction
On 29 July 2024, the Unified Patent Court's Central Division in Paris issued a significant decision regarding the revocation action of European patent number EP 3 414 708, which pertains to technologies for cold chain monitoring of perishable goods. The action was initiated by Bitzer Electronics A/S against Carrier Corporation.
No. 35 - 23th of July
In a recent decision issued by the Central Division of the Unified Patent Court in Paris, the European patent (EP 3 646 825) was partially revoked.
No. 34 - 16th of July
The procedural option of bifurcation, which involves separating issues of patent infringement and validity into distinct proceedings, has always been a subject of considerable debate. A recent order from the Mannheim Local Division of the UPC in the case between MED-EL Elektromedizinische Geräte Gesellschaft m.b.H. and Advanced Bionics offers fresh insights into how bifurcation can be used and managed effectively within the UPC framework.
No. 33 - 9th of July
The present decision deals with DexCom's technology, which integrates multiple communication protocols to enhance the functionality of analyte monitoring systems used in diabetes management. Abbott entities launched a “multi-jurisdictional” legal challenge, questioning the novelty and inventiveness of the patent across several European countries.
No. 32 - 2nd of July
In a recent order from the Local Division of The Hague, the Unified Patent Court (UPC) applies the practice of the European Patent Office (EPO) regarding added matter. The court applied what is referred to as the "gold standard" for assessing added matter, which means that any amendments to a European patent application must be directly and unambiguously derivable from the application as filed, using only common general knowledge as of the filing date.
No. 31 - 25th of June
I am pleased to share reflections from our recent participation in our first main hearing before the Paris Seat of the Central Division, which I attended so far, along with my colleagues and fellow UPC representative, Jasper Werhahn and Niels Schuh. It was the hearing of the first case in Paris!
No. 30 - 18th of June
In an order dated 17 June 2024, the Unified Patent Court's Court of Appeal has granted Volkswagen AG the right to submit additional written pleadings in the ongoing appeal against Network System Technologies LLC (NST). This order shows the adaptability of the Court of Appeal when it comes to procedural rules.
No. 29 - 11th of June
In a recent order, the Court of Appeal of the Unified Patent Court (UPC_CoA_79/2024) has issued a definitive interpretation of Article 83(3) of the Unified Patent Court Agreement (UPCA), stipulating that a valid opt-out from the UPC requires the participation of all proprietors of all national parts of a European patent.
No. 28 - 4th of June
Background
In a recent decision issued by the Court of Appeal of the Unified Patent Court (UPC_CoA_22/2024), the Court examined the balance between procedural efficiency and the rights to a fair trial within the context of concurrent opposition at the EPO and revocation proceedings at the UPC. The ruling contains detailed guidance on the question under which circumstances the UPC may sty its own proceedings in light of parallel EPO proceedings.
No. 27 - 28th of May
In a recent decision issued on May 6, 2024, by the Local Division Mannheim of the Unified Patent Court (UPC), a significant procedural action was taken concerning the lawsuit filed by Panasonic Holdings Corporation against multiple Xiaomi entities over European Patent EP 3 096 315. The court's decision (ORD_25617/2024) to separate the proceedings concerning certain defendants underlines the complexities of multi-party litigation in patent disputes, particularly those involving international entities. Closely related to this decision is a Procedural order of the Hamburg Division of the UPC, as reported.
No. 26 - 21st of May
In its recent decision dated May 13, 2024, the Unified Patent Court of Appeal clarified some aspects of patent claim interpretation, particularly emphasizing the interpretation of claim features in the light of the claim as a whole. “Unfortunately”, the CoA refused to answer the question “whether the prosecution history can be taken into account when determining the scope of protection of a European patent” (as confirmed in a headnote by the first instance of the CoA case, the Local Division Munich; and as refuted in a Headnote of the Local Division Düsseldorf)
No. 25 - 14th of May
In a detailed ruling from May 2, 2024, the Central Division in Paris addressed a preliminary objection in a revocation action case. The case focused on jurisdictional complexities and procedural strategy.
No. 24 - 7th of May
Welcome to another edition of our UPC blog, where we look into the practical experiences and insights from the Unified Patent Court. Today, I am pleased to share reflections from our recent participation in the first oral proceedings before the Court of Appeal at the UPC, along with my esteemed colleague and fellow UPC representative, Niels Schuh.
No. 23 - 30th of April
The Unified Patent Court's Hamburg Local Division issued an interesting procedural order on April 18, 2024, concerning the service with regard to multiple defendants involving multinational entities. The decision, rooted in the legal framework governing international service, reinforces the adherence to established conventions and rules, even amidst the complex dynamics of multinational litigation.
No. 22 - 23rd of April
In a decision dated April 17, 2024, the Court of Appeal of the Unified Patent Court (UPC) issued a ruling that sets a significant precedent regarding the language of proceedings, particularly focusing on the fairness and practical implications of such decisions within the patent litigation environment. This decision, involving Curio Bioscience Inc. and 10x Genomics, Inc., revolved around a contested request to change the language of proceedings from German to English, shedding light on the balance of interests particularly favoring the defendant’s position when equally weighted against the claimant’s.
No. 21 - 16th of April
In a significant development for the Unified Patent Court (UPC), the Court of Appeal recently clarified the rules regarding public access to documents. The decision arose from an appeal brought by Ocado against a prior ruling which allowed public access to its statement of claim, albeit in a redacted form.
No. 20 - 9th of April
As we anticipate the main hearing set for the end of June, in this blog we would like to report on one of the first interim hearings at the Unified Patent Court (UPC), sharing our firsthand experiences and observations.
No. 19 - 2nd of April
Key Directives from the Interim Conference
During the interim conference, which took place via video conference, several decisions were made. A significant item was the court's handling of document D46, contested by the Defendant for being late-filed. However, after discussions, the Defendant withdrew its objection, and the document was admitted, setting a deadline for the Defendant’s response to the new invalidity arguments raised by the claimant based on D46.
No. 18 - 26th of March 2024
Overview of the Case
A recent ruling by the Hamburg Local Division centered around a request to review a decision of the Judge Rapporteur that granted the Defendant’s preliminary objection on the competence of the UPC (Rule 19 RoP). This lead to the plaintiff's request for a full panel review under Rules 331.1 and 333.4 of the Rules of Procedure.
No. 17 - 19th of March 2024
Key Procedural Developments
Judge Rapporteur Kupecz of the UPC’s Central Division in Munich, granted the claimants' application to admit a submission dated January 15, 2024, and its accompanying expert declarations into the proceedings. This decision was made despite the defendant's opposition, arguing that the claimants' request to submit further expert declarations should have been reserved for the interim conference and that admitting these documents would lead to an uncontrollable expansion of written evidence.
No. 16 - 12th of March 2024
Overview of Proceedings
This order follows an interim hearing conducted via video conference on January 22, 2024, reflecting the - apparently - already “established” practice to use modern technologies, at least for the interim conference.
No. 15 - 5th of March 2024
Case Overview
In a notable decision dated February 9, 2024, the Central Division in Paris addressed a patent owner's last-minute plea for an extension of the deadline to respond to a nullity action against European Patent EP 2 796 333. The request, filed on the final day of the initial deadline, January 25, 2024, cited multiple challenges, including the absence of attachments with the delivered nullity claim, CMS access issues verified on December 19, 2023, and the illness of the long-serving European Patent Attorney. Despite these claims, the request for an extension until February 29, 2024, was firmly rejected by the court.
No. 14 - 27th of February 2024
Case Overview
In a procedural ruling of the Local Division in Düsseldorf, the defendants sought a two-week extension for filing their counterclaim and response to the infringement action, citing difficulties in accessing the Court Management System (CMS). However, the Local Division, rejected this request.
No. 13 - 20th of February 2024
The Local Division in Düsseldorf issued a procedural order, regarding a patent infringement case involving European Patent EP 3 490 258 B1. The plaintiff is Dolby International AB, and the defendants include various subsidiaries of HP.
No. 12 - 13th of February 2024
Case Context
In an order dated January 16, 2024, the President of the Court of First Instance addressed an application for a change in the language of proceedings in a patent infringement case between Aarke AB and SodaStream Industries Ltd.
No. 11 - 6th of February 2024
In a recent case, the Unified Patent Court of Appeal addressed the admissibility of a request for discretionary review. The request was made by Netgear Inc. and its subsidiaries against Huawei Technologies Co. Ltd., challenging a procedural decision in their ongoing patent dispute concerning EP 3 611 989.
No. 10 - 30th of January 2024
In this case, the Court of Appeal had to deal with the admissibility of applications to intervene in an appeal. The appeal, initiated by Ocado Innovation Limited, challenges an order related to public access to the court register.
No. 9 - 23rd of January 2024
In a recent ruling by the Unified Patent Court's Local Division in Munich, the court addressed the admissibility of “changing” (actually: expanding) the claim of a UPC infringement action to include an additional patent after the conclusion of a limitation procedure at the EPO.
No. 8 - 16th of January 2024
A recent case before the Unified Patent Court's Local Division in Munich has unfolded, casting a spotlight on critical cost considerations in preliminary injunction proceedings. This case serves as a notable illustration of how the Rules governing cost allocation are to be applied in preliminary injunction proceedings, with a particular emphasis on evaluating the behavior of the involved parties in determining cost distribution
No. 7 - 9th of January 2024
No. 6 - 2nd of January 2024
A recent order of the Local Division in Munich concerns the imposition of fines under Article 82.4 UPCA. The Munich Division finds the fine request to be mostly successful, stating that the respondents violated the preliminary injunction orders of the local chamber issued on September 19, 2023.
No. 5 - 19th of December 2023
In a revocation case between ASTELLAS INSTITUTE FOR REGENERATIVE MEDICINE (revocation claimant) and the patent proprietors Healios K.K and Osaka University, the (revocation) defendants request a stay of proceedings until the conclusion of corresponding opposition proceedings at the European Patent Office (EPO). The Central Division in Munich rejects the request for stay of the proceedings.
No. 4 - 12th of December 2023
In a recent decision, the Paris Central Division addressed a preliminary objection related to the admissibility of an action for revocation. The involved parties in the revocation case (in relation to for EP 3 646 825) are Edwards Lifesciences Corporation from California, USA, as the Patent Owner, and Meril Italy srl from Milan, Italy, as the Claimant.
No. 3 - 5th of December 2023
The Court of Appeal of the Unified Patent Court (UPC) has recently issued its “inaugural” order, marking a significant milestone since the commencement of the UPC system on June 1, 2023. As anticipated for a newly established court, this initial appellate order addresses a procedural matter rather than the substantive merits of the case.
No. 2 - 28th of November 2023
Concerning the opt-out from the jurisdiction of the Unified Patent Court (UPC), it is clear that this choice becomes unavailable once an action has been brought before the UPC.
Article 83(3) UPCA reads:
"Unless an action has already been brought before the Court [i.e. the UPC], a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period [of seven years plus a potential maximum of further seven years] ... shall have the possibility to opt out from the exclusive competence[read competence without the misleading term "exclusive”] of the Court.” But, what is an "action"?
No. 1 - 24th of November 2023
Numerous European patent owners adopted a strategy of opting out their entire portfolios from the jurisdiction of the Unified Patent Court (UPC), referring to the flexibility of a subsequent "opt-in" at any time. Despite acknowledging theoretical pitfalls in this approach, some believed these concerns would be practically negligible. However, the recent development in the UPC's local division in Helsinki has challenged these assumptions. So what happened?
