Every Tuesday, we present insights, analyses and our conclusions around recent case law and other developments of the UPC.
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.
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.
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.
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.
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!
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.
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.
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.
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.
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)
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.
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.
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.
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.
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.
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.
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.
26th of March
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.
19th of March
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.
12th of March
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.
5th of March
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.
27th of February
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.
20th of February
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.
13th of February
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.
6th of February
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.
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.
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.
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
9th of January 2024
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.
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.
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.
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.
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"?
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?