In this edition of our Unified Patent Court (UPC) update, we report on the latest developments from the Court, including clarification of the rules around opt-outs, stay of infringement proceedings when there are parallel opposition proceedings at the European Patent Office (EPO), and an attempted (failed) use of a Gillette defence.
Latest statistics
October appears to have been a relatively quiet month, with the UPC's most recent caseload update confirming only 35 new cases during that period. The Munich Local Division continues as the leading venue for infringement actions (74), with the Paris Central Division receiving the most revocation actions (39). Ljubljana remains the only division to yet receive a case.
Some 52% of cases have now adopted English as the language of proceedings, with 42% adopting German, 3% adopting French and 2% adopting Italian (with 1% each for Danish and Dutch).
The Unitary Patent dashboard indicates that, as at 20 November 2024, just over 24,000 Unitary Patents have been registered. Siemens and Johnson & Johnson are neck and neck as the top applicants for unitary patents, each having filed over 100 more requests than the next closest applicant (Samsung).
Recent cases
Withdrawal of Opt-outs - AIM Sport Development AG v Supponor OY, UPC_COA_489/2023
During a transitional period (initially of seven years), holders of standard European patents can opt those patents out of the jurisdiction of the UPC. Many such patent owners lodged opt-outs in relation to their patents, particularly in the three-month sunrise period before the UPC opened on 1 June 2023. Whilst an opt-out can be withdrawn, allowing the owner of the patent to then commence proceedings in the UPC, this option is removed where "an action has already been brought before a national court" (Article 83(4) UPC Agreement). Filing an opt-out therefore brings a risk of being 'pinned' outside the UPC jurisdiction, if a patent challenger brings revocation or non-infringement proceedings against the European patent at a national level.
In this case, AIM had filed an opt-out from the UPC on 12 May 2023 (during the sunrise period), which it then sought to withdraw on 5 July 2023. On the same day, it lodged an infringement action before the Helsinki Local Division, as well as a request for provisional measures, against Supponor.
The Helsinki Local Division rejected AIM's applications on the basis that its opt-out was not valid, as there were pending proceedings relating to the patent before the German national courts, which had begun in 2020. The Court concluded that it was irrelevant that the national litigation had been filed before the UPC entered into force.
The Court of Appeal has now overturned this decision. It concluded that the meaning of the phrase "unless an action has already been brought before a national court" referred to an action brought before a national court during the transitional regime. Accordingly, a withdrawal of an opt-out will only be prevented where national proceedings against the relevant patent are commenced after 1 June 2023. Proceedings brought in a national court before that date will not prevent an opt-out being withdrawn.
Stay of proceedings, Meril Life Sciences PVT Ltd. Et al v. Edwards Lifesciences, UPC_CoA_511/2024
Pursuant to Article 33(10) of the UPC Agreement, the Court may stay its proceedings if a rapid decision may be expected from the EPO. In October 2023, Edwards brought an infringement action at the Nordic-Baltic Regional Division against Meril. In March 2024, Meril filed an opposition against the patent at the EPO which subsequently issued a preliminary non-binding opinion stating that the grounds for opposition prejudiced the maintenance of the patent in its granted form. The EPO has accelerated the opposition proceedings and has scheduled an oral hearing for 17 January 2025. The UPC proceedings are scheduled for 16 January 2025.
Meril requested a stay of the UPC proceedings pending the EPO's decision. As discussed in our September update, the Nordic Baltic Regional Division rejected the stay request, concluding that it was "obvious" that a final decision from the EPO could not be expected rapidly (given proceedings only began in March 2024 and there was a likelihood of appeal).
On appeal, the Court of Appeal has highlighted that conflicts between parallel infringement and opposition proceedings should be avoided. The rules provide that a stay may be granted where a decision from the EPO's opposition division is to be expected rapidly, which will apply even if it is likely that such a decision will be appealed. Whether or not the Court grants a stay will depend on the balance of the parties' interests and the specific circumstances of the case, which will include the stage of the opposition proceedings and infringement proceedings, and the likelihood that the patent will be revoked in the opposition proceedings.
The Court of Appeal concluded it was clear that the requirement for a rapid decision by the EPO was met (given it is common practice for the EPO to deliver its decision orally at the hearing, due to take place one day after the scheduled oral hearing for the UPC proceedings). However, it referred the case back to the Court of First Instance for further consideration of the stay request, emphasising that there may be alternative ways to avoid conflicting decisions without ordering a stay at this stage.
Urgency of applications for provisional measures - Telefonaktiebolaget LM Ericsson v AsusTek Computer Inc, Arvato Netherlands B.V., Digital River Ireland Ltd, UPC_CFI_317/2024, ACT_ 35572/2024
The Lisbon Local Division has handed down its first substantive decision and, in refusing Ericsson's application for a preliminary injunction against AsusTek, Arvato and Digital River, has provided guidance regarding the requirement for urgency, which forms one of the considerations taken into account when considering whether to grant provisional relief.
Ericsson had lodged its application for provisional measures six weeks after conducting a test purchase. However, the Defendants argued that there had been an unreasonable delay in Ericsson lodging the application and consequently a lack of urgency.
The Court pointed out that the relevant duration was the period after Ericsson had become aware of the allegedly infringing product, but Ericsson had not made it clear when this was. There were indications to suggest that the relevant knowledge had existed at least seven months before the test purchase (not least because Ericsson filed an action against Lenovo in October 2023 in the USA concerning the same allegedly infringing product).
Accordingly, Ericsson had failed to provide sufficient information to convince the Court of the urgency of its application, and the Court refused the application.
In the same decision, the Court also held that owning an internet domain constituted infringement if infringing products are offered and/or sold through that domain.
Non-availability of Gillette defence – SodaStream industries Ltd v Aarke AB, UPC_CFI_373/2023
In this case, the Düsseldorf Local Division found in favour of Sodastream in infringement proceedings against Aarke based on a patent for a device for carbonating a liquid, and Aarke's "Aarke Carbonator Pro" line of products.
Aarke did not file a counterclaim for revocation but instead sought to rely on a Gillette defence. This concept stems from a UK case. Its effect is that where, on construing the claim, the alleged infringing acts were disclosed in the prior art, there should be a defence to infringement.
The Court agreed with Sodastream's argument that a Gillette defence was not in line with the UPCA and should therefore not be admissible. There were other means – i.e., a revocation action or EPO opposition proceedings – that could be brought to assert that a patent is invalid.
The Court held the patent to be infringed and granted an injunction in the seven UPCA member states in which the patent is in force.
No liability for managing directors as 'intermediaries' - Koninklijke Philips N.V. v Belkin GmbH, UPC_CoA_549/2024
In our October update, we reported that the Munich Local Division had held managing directors of an infringing company to be 'intermediaries' whose services were being used by a third party (i.e., the company of which they were a managing director) to infringe a patent (under the second sentence of Article 63(1) UPCA).
The Court of Appeal has overturned this finding, highlighting that a company cannot be a third party if it is being represented by the director. The Court held that merely holding the position of managing director is therefore not sufficient to trigger liability as an intermediary. It did, however, leave open the question as to whether the managing director might be liable for patent infringement on the basis of other factors.
Munich Division finds against Meril heart valve – Edwards Lifesciences Corporation v. Meril Life Sciences Pvt Ltd., Meril GmbH, UPC_CFI_15/2023
In significant proceedings between Edwards Lifesciences and Meril Life Science, the Munich Local Division has found that Meril infringed Edwards' patent relating to a prosthetic heart valve and catheter, and has granted an injunction across all UPC territories that were contracting member states at the time the case began. Meril has indicated that it will appeal the decision. The validity of the patent had previously been upheld by the Paris Central Division (as discussed in our July update).