In our first Unified Patent Court update of 2025, there are a number of very interesting developments to report on including confirmation that it will assert long arm jurisdiction over the UK, as well as its first assessments of infringement by equivalence and on FRAND disputes.
Latest statistics
We start with the latest statistics, with the UPC's most recent case load update (to the end of January 2025) confirming that the Court has now reached the 700 cases milestone since its opening on 1 June 2023. This comprises 251 infringement actions and counterclaims (with the majority still being filed in Munich), 259 counterclaims for revocation (noting that, until a few months ago, each defendant in an infringement action had to file an individual counterclaim), 69 applications for provisional measures, and 55 standalone revocation actions, the majority of which have been filed in the Paris Central Division.
Some 54% of cases have adopted English as the language of proceedings, with 39% adopting German, 3% adopting French and 2% adopting Italian (with 1% each for Danish and Dutch).
The Unitary Patent dashboard indicates, as of 5 February 2025, 2,398 Unitary Patents have been registered. Siemens is currently the top applicant for unitary patents.
Recent cases
UPC's 'long arm jurisdiction' over infringement in the UK – Fujifilm Corporation v Kodak Holding GmbH and ors, UPC_CFI_355/2023
One of several hotly debated issues in the run up to the UPC regime commencing was the extent to which the UPC would consider itself to have jurisdiction to deal with acts of infringement in the UK. The Düsseldorf Local Division has now confirmed (subject to any appeal) that such jurisdiction does exist where a defendant is domiciled in a Contracting Member State (here, the three defendant companies are domiciled in Germany), albeit the Court did not need to determine the issue finally in this case, as it found that the German part of the patent was invalid (and therefore proceeded on the basis that the UK part was likewise invalid). It will be interesting to see what might happen on any appeal and also what might happen in a scenario where there are parallel UK revocation proceedings, or the UPC concludes it can determine that a patent is valid in both the relevant UPC state, and the UK.
Fujifilm has brought infringement proceedings against Kodak in the UPC in relation to patent EP 3594009, which is in force in Germany and the UK. Kodak counterclaimed for revocation in the UPC (there are no proceedings in the UK). Kodak objected to the UPC having jurisdiction in respect of alleged acts of infringement in the UK, given that the UK is not a Contracting Member State under the UPC Agreement, and also by reference to the Brussels Ibis Regulation.
The UPC concluded that it did have such jurisdiction. However, as it had found Fujifilm's patent invalid, this meant that the infringement action had no basis as far as Germany was concerned. In relation to the UK part of the patent, it was of course not covered by the revocation counterclaim and no revocation action had yet been filed in the UK. The Court determined that the grounds for invalidity set out in relation to the German part of the patent would also apply to the UK part (in the absence of any argument from Fujifilm as to a different assessment applying in the UK), which meant that the infringement action was also not successful in relation to the UK part of the patent. Meanwhile, there was no need for a stay of the proceedings pending a decision on validity of the UK part, as there were no revocation proceedings before the UK court.
Infringement by equivalence - Plant-e Knowledge B.V. v Arkyne Technologies S.L., UPC_CFI_239/2023
In November 2024, the Hague Local Division handed down the UPC's first decision assessing infringement by equivalence in an action brought by Plant-e against Arkyne Technologies. Having determined that the product in question (a biofuel cell) fell outside the literal meaning of the claims of the patent (EP 2137782), the Court considered whether it might infringe under the doctrine of equivalence, a concept which does not appear in the UPC Agreement or Rules of Procedure, but which is provided for in the Protocol on the Interpretation of Article 69 of the European Patent Convention. Lacking any guidance therefore from the UPC Agreement as to the test that might be applied, the Court set out the following four questions, based on case law on infringement by equivalence from various national jurisdictions:
- Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
- Fair protection for patentee: is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?
- Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
- Novelty and inventiveness: is the allegedly infringing product novel and inventive over the prior art?
The Hague Local Division considered that the answer to each of these questions was "yes", and so the patent was found to have been infringed by way of equivalence. We expect that the Court of Appeal will ultimately be called upon to consider these questions, and variations are likely to arise in the meantime as between different jurisdictions.
Court of Appeal confirms UPC can award damages based on a national court's infringement finding – Fives ECL ,SAS v REEL GmbH, UPC_CoA_30/2024
In this case, Fives had brought an action against REEL before the Düsseldorf Regional Court for infringement of the German part of EP 1740740, concerning a patent for a compact service module for installations for electrolytic production of aluminium. In August 2022, that Court issued a finding of infringement, and ordered REEL to compensate Fives for the damage it had suffered.
After the UPC opened in Summer 2023, Fives brought proceedings against REEL in the Hamburg Local Division requesting determination of the damages suffered as a result of REEL's infringing offers in Germany, in accordance with the Düsseldorf Regional Court's 2022 decision. The sum sought was 6.5 million Euros, plus interest. The Court of Appeal, overturning the Hamburg Local Division's decision, confirmed that the UPC's jurisdiction does extend to a separate action for damages after a court of a Contracting Member State has found infringement and an obligation for the infringer to pay damages. The Court also concluded that the UPC has jurisdiction to decide on acts of infringement committed before the UPC Agreement entered into force on 1 June 2023, provided that the European patent has not lapsed at that date.
While the Court of Appeal recognised that this outcome may lead to potential forum shopping between national courts and the UPC, the possibility of different outcomes had been accepted by the framers of the regime in implementing a transitional period during which actions may still be brought before national courts.
UPC's first FRAND decision – Panasonic Holdings Corporation v Guangdong OPPO Mobile Telecommunications Corp Ltd & OROPE Germany GmbH, UPC_CFI_210/2023
In November 2024, the Mannheim Local Division issued a decision providing comprehensive guidance on FRAND (fair, reasonable and non-discriminatory) issues and licensing obligations, within the framework provided by the Court of Justice of the European Union (CJEU) in its Huawei v ZTE decision (with the Court refusing to make a reference to the CJEU for further consideration).
Panasonic sued Oppo for infringement of EP 2568724, which Panasonic had declared to be a standard essential patent (SEP) relating to 4G standards. Oppo alleged that Panasonic's licence agreement was not FRAND and brought a FRAND counterclaim with the aim of concluding a FRAND licence agreement.
Having found the patent valid and infringed, the Court considered the position relating to the parties' respective positions during the FRAND negotiation process. While Panasonic's conduct was found to be FRAND (for example, the Court rejected the European Commission's argument that there must be a formal reference to the infringement analysis in the notification letter), the Court concluded that Oppo's conduct had not been. In particular, Oppo had not negotiated in good faith, had delayed negotiations, and had not provided sufficient information about its products. In particular, its counteroffer comprised a lump sum based on third party economic data (rather than its own sales figures) and so was not FRAND. Accordingly, the Court granted Panasonic's claim for damages, together with an injunction preventing Oppo from selling its 4G-enabled smartphones and smartwatches in Europe.
The parties have since settled their dispute on a global basis.
Court grants Huawei injunction covering seven Contracting Member States – Huawei v Netgear, UPC_CFI_9/2023
Court grants anti-anti-suit injunction ex parte – Huawei v Netgear, UPC_CFI_791/2024
Meanwhile, in December 2024, the Munich Local Division granted Huawei an injunction against Netgear relating to infringement of its standard essential patent for the Wi-Fi 6 standard, covering seven Contracting Member States. The Court rejected Netgear's FRAND defence as it had not signalled a sufficient willingness to negotiate, had delayed the negotiations and, after its counteroffer was rejected, did not provide security or sufficient information. It had also not provided any substantive argument as to why the licences offered by Huawei were not FRAND.
The Munich Local Division has also ordered what is believed to be its first anti-anti-suit injunction against Netgear (made ex parte), prohibiting Netgear from bringing an anti-suit injunction or anti-enforcement application in the US District Court of California, as well as other measures directed against UPC proceedings taking place.
In January 2025, it was announced that Netgear had taken a Wi-Fi 6 pool licence from Sisvel, thereby resolving all Wi-Fi related litigation between Netgear and Huawei.
This revocation action concerns a patent (EP 4074373) for a cochlear implant system. Advanced Bionics had filed a revocation action at the UPC Central Division, on the grounds of added subject matter, insufficiency of disclosure and lack of inventive step. The proprietor, MED-EL, separately filed infringement proceedings in the Mannheim Local Division and Advanced Bionics counterclaimed for revocation. The actions were subsequently consolidated before the Central Division.
One of the key issues for consideration was whether the inventor of the patent at suit could be heard in person as a witness or expert in the case. The Court concluded that they could not, because they may have a direct interest in the outcome and would not meet the requirements for impartiality, objectivity and independence.
The Court went on to dismiss Advanced Bionics' insufficiency and added matter attacks. In relation to the inventive step attack, the Court referred to the UK Patents Court decision between the parties, which was upheld on appeal, where the UK Court had found the equivalent EP (UK) patent invalid on the basis that it was obvious over a piece of prior art "Zimmerling". That decision had accepted Advanced Bionics' evidence and reasoning from its expert. The UPC disagreed, finding the patent was not obvious, accepting that in doing so it "deviates from the reasoning and reaches a different conclusion than the High Court of England and Wales in its Judgment of the High Court of England & Wales, [2022] EWHC 1345 (Pat), … which attached great significance to the expert statement". In particular, being an inventor of over 100 patents for medical devices covering a variety of aspects of cochlear implants did not, in the UPC's view, meet the profile of the hypothetical skilled person, with no inventive imagination and skills, no ability for creative thinking and "a captive of established preferences in the relevant field".
UPC grants public access to pleadings and evidence following preliminary measures decision – Abbott Diabetes Care Inc. v Sibio Technology and Umedwings Netherlands, UPC_CoA_480/2024 and 481/2024
We have commented in previous editions on applications by non-parties to written pleadings and evidence, and in particular, the Court of Appeal's decision in Ocado v Autostore, which weighed the interests of a member of the public in being granted access against the interests set out in Article 45 of the UPC Agreement, including protection of confidential information and personal data, and the general interest of justice and public order (including protection of the integrity of proceedings).
In this case, UK law firm Powell Gilbert, had applied to The Hague Local Division for access to written pleadings and evidence following the Court's decision on an application for preliminary measures. While access was granted, Abbott appealed on the basis that the law firm had not provided a reasoned request in the form of a "concrete and verifiable" reason in its application, its stated explanation being "to have a better understanding of the decision rendered". Further, Abbott argued that the application was premature, given that the proceedings for a preliminary injunction were ongoing and subject to a pending appeal.
The Court reiterated that a member of the public generally has an interest that written pleadings and evidence are made available, and this usually arises after a decision has been rendered. In the case of decisions that are the subject of an appeal "it would be artificial to shield the Court of Appeal and the parties from a discussion that also concerns the contents of the file of the [Court of First Instance]". Accordingly, there was generally no reason to protect the integrity of first instance proceedings, including where the order concerned an application for provisional measures. The Court therefore concluded that there was a suitable reasoned request for access to be granted.