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 in a Unified Patent Court (UPC) case.
Content
The case is intertwined with multiple other proceedings, including a parallel preliminary injunction case at the Court of Appeal of the UPC and a revocation action at the German Federal Patent Court and the German Federal Court of Justice. The decision from the Court of Appeal influenced the current case because it compelled the patent holder to file a new auxiliary request after the closure of the written proceedings. The patent holder argued that the crucial interpretation by the UPC Court of Appeal was unexpected and warranted a response within the ongoing proceedings at the Central Division Munich. However, the Division did not admit this auxiliary request and found that the revocation claimant had presented this interpretation in their statement of claim, meaning the patent holder should have addressed it earlier in the process.
Another interesting aspect of the decision is the Division’s stance on international jurisdiction, which it examined of its own motion. Notably, the Division rejected the notion that failing to file a preliminary objection within the time limit set by Rule 19 of the Rules of Procedure of the UPC automatically grants competence to the court. Instead, the court must independently verify its international jurisdiction as mandated by the Brussels I recast regulation.
The Central Division also chose not to stay the proceedings despite the parallel German revocation case. A key consideration was that the German case would not affect the patent's validity in the territories of the other EPC member states where the patent was also validated. Additionally, the idea of staying the proceedings solely in Germany was dismissed as it would not simplify or expedite the UPC proceedings. During the oral proceedings, both parties expressed a desire to continue with the UPC revocation case.
Key Takeaways
The UPC Central Division Munich must take a proactive approach in verifying its jurisdiction and cannot solely rely on party submissions.
Parallel national proceedings do not automatically influence or delay the progress of UPC cases unless there is a direct and significant impact.
The decision highlights again the front-loaded nature of UPC proceedings. Filing an auxiliary request after closure of the written proceedings was – in this case - too late.
