Meissner Bolte

UPC Blog

The UPC Blog: Stay up to date with the latest developments in the field of patents and the Unified Patent Court (UPC). 

Every Tuesday, we present insights, analyses and our conclusions around recent case law and other developments of the UPC.

Timan Pfrang
Tilman Pfrang, LL.M.
Patent Attorney, Dipl.-Phys.

16th of July

Bifurcation at the Unified Patent Court: Mannheim refers the Revocation Counterclaim to the Central Division

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.

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9th of July

The Paris Local Division – Infringement, Validity, Scope of Revocation Counterclaim

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.

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2nd of July

The Hague Division of the Unified Patent Court Emphasizes EPO's "Gold Standard" in Added Matter Decision and Finds (Unallowable) Intermediate Generalizations

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.

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25th of June

Report from the 1st case of the Central Division Paris - Insights from the main hearing in an isolated revocation proceedings

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!

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18th of June

UPC Court of Appeal Allows Request for Additional Written Pleadings

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.

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11th of June

Unified Patent Court Clarifies Opt-Out Criteria

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. 

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4th of June

UPC Court of Appeal Decides Against Staying Revocation Proceedings in Light of Pending EPO Opposition

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 it own proceedings in light of parallel EPO proceedings.

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28th of May

Local Division Mannheim separates proceedings in a multi-party patent dispute

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.

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21st of May

Clarifying the Boundaries of Patent Claims Interpretation: A Closer Look at UPC Court of Appeal’s Latest Decision

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)

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14th of May

The Central Division (Paris Seat) on the competence of the UPC – Yes we are competent!

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.

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7th of May

Insights from the UPC Court of Appeal – A Firsthand Experience

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.

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30th of April

Hamburg Local Division Addresses Options for Service in Multinational Infringement Cases

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.

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23rd of April

Court of Appeal Rules on Language of Proceedings - Considering the challenges faced by small and medium-sized enterprises (SMEs)

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.

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16th of April

Court of Appeal Delivers Landmark Decision on UPC Document Transparency

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.

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9th of April

The Interim Hearing at the UPC: Insights from the Front Lines

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.

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2nd of April

Munich Central Division on late filing issues and cost assessment during the interim procedure

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.

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26th of March

Hamburg Local Division – No Full Panel Review Request for Decision of the Judge Rapporteur on the Competence of the UPC

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.

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19th of March

Central Division (Munich Section) Admits Reply to Rejoinder

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.

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12th of March

Local Division Munich – Case Management in practice

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.

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5th of March

Central Division Paris on Time Extension Requests – Upholding Stringency even in “Exceptional” Circumstances?

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.

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27th of February

Local Division Düsseldorf on Extension of Deadlines (II) – be aware: extensions are only to be granted in (very) exceptional cases

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. 

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20th of February

Local Division Düsseldorf on Extension of Deadlines (I)

– a reasonable approach for a case with a high number of international defendants

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.

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13th of February

The President of the Court of First Instance on Language of Proceedings -

Considering the challenges faced by small and medium-sized enterprises (SMEs)

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. 

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6th of February

The Standing Judge of the Court of Appeal on a Discretionary Review Request

– limits of the power of the Judge Rapporteur 

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.

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30th of January 2024

The Court of Appeal on Applications to Intervene

- does a “legal interest” provide a legal interest? 

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.

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23rd of January 2024

UPC Munich Local Division:

A flexible and practical way of dealing with an expansion of an infringement action to a second patent in case of a limitation proceedings at the EPO 

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. 

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16th of January 2024

About costs in Preliminary injunction proceedings – the UPC’s Local Division in Munich provides clarity

Good behavior shall pay off!

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

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9th of January 2024

Decoding a preliminary injunction order of the UPC’s Local Division in Munich: Jurisdiction, Claim Interpretation, and Implications

Is there a file wrapper estoppel at the UPC?

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2nd of January 2024

The UPC Local Division in Munich finds:

Ignoring a court order must hurt!

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. 

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19th of December 2023

Stay of proceedings at the UPC

 …. Should we wait for the EPO or not?

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.

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12th of December 2023

Paris Central Division

-    What is a party and when are two parties identical?

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. 

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5th of December 2023

The Court of Appeal of the Unified Patent Court

… first decision, first conclusions!

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.

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28th of November 2023

The opt-out from the competence of the UPC (II)

… what is an action? 

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"?

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24th of November 2023

Let us opt-out because an opt-in is always possible!

…is it that convenient…?

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?

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