Welcome to our latest update on developments at the Unified Patent Court (UPC). In this edition, we report on a number of developments in relation to preliminary injunctions, as well as the Court's first decisions in the context of standard essential patents and FRAND.
Latest statistics
With the UPC's most recent caseload update confirming that the court has now received 500 cases, September itself was a quieter month, with only 27 new cases. The Munich Local Division continues to receive the most infringement actions (70), with the Paris Central Division having received the most revocation actions (37). English now appears firmly to be the most popular language of proceedings: some 54% of cases have adopted English, with 42% adopting German (and 2% each for French and Italian).
The Unitary Patent dashboard indicates that, as at 18 October 2024, some 20,214 Unitary Patents had been registered. Johnson & Johnson now leads the way as applicant for Unitary Patents, closely followed by Siemens.
Recent cases
UPC upholds ex parte preliminary injunction: Ortovox Sportartikel GmbH v Mammut Sports Group AG, UPC_CoA_182/2024,
In a UPC first, the Court of Appeal has upheld a without notice preliminary injunction issued by the Düsseldorf Local Division. In December 2023, Ortovox was granted a provisional injunction (on an ex parte basis) against Mammut's avalanche victim search device ("Barryvox S2"), having become aware that the product had been exhibited at a Munich trade fair. Mammut requested a review of the decision. After hearing the parties and considering the facts, the Local Division ruled that the preliminary injunction was justified. Mammut appealed, arguing that the Local Division did not sufficiently consider the technical embodiment, nor its novelty and inventive step arguments.
The Court of Appeal upheld the preliminary injunction, finding that validity of the patent was overwhelmingly probable, and confirming that the Barryvox2 embodiment made use of the teaching of the patent.
Unfortunately, the Court of Appeal did not however deal with arguments relating to whether it is legitimate to review the file wrapper when interpreting the claims (the Düsseldorf Local Division has said, including in this case, that statements made by the patentee during the prosecution process should not be taken into account, but the Munich Local Division has adopted the alternative approach).
Whilst Mammut argued there was a public interest in allowing its device to stay on the market (i.e., preventing deaths from avalanches), the Court of Appeal noted that there were other devices on the market capable of achieving the same goal. The main action now continues.
UPC issues first decision relating to a SEP: Koninklijke Philips N.V. v Belkin, UPC_CFI_390/2023
In its decision of 13 September 2024, the Munich Local Division issued the UPC's first injunction relating to a standard essential patent (SEP). The SEP, owned by Philips, relates to a power transmitter. The proceedings named three Belkin group companies (Belkin GmbH, Belkin International, Inc. and Belkin Limited), as well as three individuals (managing directors or directors of the corporate defendants) as defendants.
Philips had, before the UPC began operating, brought infringement proceedings against Belkin in the German national Court; Belkin had also commenced revocation proceedings in the German court. The German national Court found the patent not to be infringed (the revocation proceedings were also dismissed, but remain subject to appeal).
The UPC however found the patent to be both valid and infringed, and granted Philips an injunction in a number of EU countries (FRAND issues were not before the Court). This difference in outcome came about as a result of claim interpretation, with the UPC applying its approach as set out in Nanostring. The defendants from the German national proceedings (Belkin GmbH and Belkin Limited) were excluded from the effect of the UPC injunction in Germany, applying the concept of res judicata.
The Munich Local Division did not stay the UPC proceedings as Belkin requested, despite the fact that an appeal may be filed against the validity decision before the German court. The outcome of that appeal was not one that was 'expected to be given rapidly' given that no appeal had yet been filed; further the UPC proceedings were in respect of all UPC contracting states, as opposed to the national proceedings.
Whilst the individual defendants were held to not be 'infringers' (and were therefore not liable for damages), they were made subject to the injunction by virtue of being 'intermediaries' whose services are being used by a third party to infringe a patent (Article 63 UPCA). This broad interpretation of directors as intermediaries is worth noting. The effect is that those directors could therefore be liable for recurring penalty payments (€100,000 for each day of breach) as a result of any non-compliance with the injunction.
Court of Appeal refuses disclosure of licence agreements in SEP proceedings due to stage of proceedings: Guangdong OPPO Mobile Telecommunications Corp. Ltd v Panasonic Holdings Corporation, UPC_CoA_298/2024, UPC_CoA/299/2024, UPC_CoA_300/2024
A further SEP related decision was issued on 24 September 2024. In the main proceedings, Panasonic has sued OPPO and OROPE for infringement of three patents, which Panasonic has declared to be SEPs. OPPO and OROPE allege that Panasonic's licence offer is not FRAND.
OPPO has filed a FRAND defence and has requested that Panasonic be ordered to provide evidence pursuant to Rule 190 of the Rules of Procedure, to demonstrate that its counteroffer licence agreement is FRAND. The requested evidence broadly relates to information about comparable licence agreements (both from Panasonic and from OPPO itself).
The Mannheim Local Division rejected the request in May 2024, and OPPO appealed. The Court of Appeal has agreed with the Local Division that it was unnecessary to provide such evidence when no decision had yet been made on the parties' fundamental willingness to license. The Court stated that a balance must be struck between the defendant's interest in obtaining evidence to support its FRAND defence, and the claimant's interest in protecting confidential information. This did not however preclude the Court ordering the parties at a later stage in the proceedings to produce such evidence.
The Court also noted that, before OPPO would be permitted to file their own licence agreements, they would need to obtain permission from their own contracting parties.
Stay of UPC proceedings pending national proceedings: Mala Technologies Ltd. v Nokia Technology GmbH, UPC_CoA_227/2024
Mala is the proprietor of EP 2 044 709 B1, which has effect only in Germany. Nokia Solutions and Networks GmbH & Co. KG ('Nokia Solutions') filed a revocation action against the German designation with the German Federal Patent Court, which dismissed the revocation and upheld the patent in its entirety.
A different Nokia company (Nokia Technology GmbH) subsequently filed a revocation action at the Paris Central Division of the UPC (which would only affect Germany, as the other parts of the European patent have now expired). Shortly thereafter Nokia Solutions filed an appeal against the German Federal Patent Court's decision. Mala filed a preliminary objection requesting that the Paris Central Division decline jurisdiction and reject the revocation action as inadmissible, or stay the proceedings until a final decision had been reached by the German Federal Patent Court.
The Paris Central Division rejected the preliminary objection, finding that it was competent and that there was no legal basis for staying the UPC revocation proceedings pending the proceedings before the German Federal Patent Court – the German Federal Patent Court was not expected to deliver a decision rapidly.
Mala appealed and the Court of Appeal partially overturned the Paris Central Division's decision. The Court of Appeal agreed that the Central Division was competent, but held that the UPC proceedings must be stayed until the German Federal Patent Court has concluded the revocation action against the same patent.
The Central Division had ruled that UPC proceedings should only be suspended when national proceedings were initiated during the transitional period (i.e., after the start of the UPC). However, the Court of Appeal held that the relevant provision (Article 71c(2) of the Brussels Re-cast Regulation) should be interpreted as meaning that UPC proceedings should be suspended when there are national proceedings relating to the patent ongoing during the transitional period, even if those national proceedings were initiated prior to the transitional period.
First preliminary injunction on the basis of indirect infringement: Hand Held Products, Inc. v Scandit AG, ORD_46277/2024
In August 2024, the Munich Local Division granted the UPC's first ever preliminary injunction based on indirect infringement.
Hand Held Products, Inc alleged that Scandit AG's Data Capture Software Development Kit enabled users to create software that was protected by its patent (for barcode scanning technology) and applied for a preliminary injunction.
Scandit argued that its development kit did not directly implement the patented features, and pointed out that the development kit required customisation by users to potentially infringe (so that any infringement would therefore be a result of their customers customising the development kit).
The Court held that there was no direct infringement, but that indirect infringement was likely because the development kit provided users with essential tools which they could use to develop software that was capable of infringing the patent.
The Court determined that it would not be sufficient to simply warn customers of the potential for infringement because of the difficulty of controlling how they would actually use the development kit. It therefore granted a full injunction against the kit – noting that it would be possible for Scandit to remove the infringing functionality and keep selling the kit.
Preliminary injunction granted due to risk of a first infringement in UPC: Syngenta Limited v Sumi Agro Limited, UPC_CFI_201/2024
Syngenta Limited ('Syngenta') applied for provisional measures against Sumi Agro Limited ('Sumi') on the basis of its patent EP 2 152 073 B1, directed to herbicide compositions. Sumi manufactures and sells the herbicide 'Kagura', which competes with Syngenta's product 'Elumis'.
After becoming aware of Kagura on sale outside the UPC territory (in Czechia), Syngenta obtained a sample and sent it for testing. Sumi then began to market Kagura inside the UPC territory (in Germany). Within one and a half months of becoming aware Kagura was being advertised in a UPC territory, Syngenta filed an application for provisional measures. The Court confirmed its previous guidance that applicants should bring an application for an inter partes preliminary injunction within two months, but noted that there was a disparity between Local Divisions on this issue (the Düsseldorf Local Division has suggested one month as an appropriate time frame).
Sumi argued there was no infringement in the relevant UPC territories, because it had marketed two different versions of the product; one in 2023 outside the UPC territory, and a second in 2024 both inside and outside the UPC territory. Sumi claimed that the 2024 product did not include a component necessary to establish infringement.
Syngenta contested the existence of two versions of Kagura; it had purchased Kagura in Czechia when it was not yet sold in the UPC territory. Syngenta argued there was only one registration of the product, which implied its formulation could not have been changed without affecting its registration, and that therefore testing the formulation of the product sold in Czechia was suitable.
Syngenta argued that, even if there were two products, the non-UPC territory product posed at least a risk of first infringement within the UPC since it was reasonable to assume that the product sold in Czechia was also to be sold in the UPC territory given that the formulation could not be changed without affecting its registration.
The Court agreed that a first risk of infringement within the UPC territory had been created by the sale of Kagura outside the UPC territory. It moreover noted that the advertisement of Kagura within the UPC had created a risk of infringement as the advertising did not refer to a second '2024' product. The Court noted that Sumi had not eliminated the risk of first infringement in Czechia, which it could have done by submitting a cease-and-desist declaration.
Court of Appeal grants change in language of proceedings: Apple Retail Germany B.V. & Co. KG, v Ona Patents SL, UPC_CoA_354/2024 and Google Commerce Limited & anr v Ona Patents SL, UPC_CoA_349/2024
In our earlier issue, we covered the Düsseldorf Local Division's decision in Ona Patents SL v Apple Retail Germany B.V. & Co. KG, in which Apple unsuccessfully made an application to change the language of the proceedings against it from German to English.
The Court of Appeal has overturned that decision for the following reasons. The language of the patent and underlying technology was English. Whilst Ona's registered office was in Spain, the majority of the defendants were not based in Germany, with Apple's internal company language being English (whilst its in-house lawyer was German speaking, its technical experts are all based in the US). There was therefore a clear disadvantage for Apple if the language of the proceedings was different from its company language. However, Ona faced no such burden as no translations would be required if the language of the proceedings were English, given its Managing Director (the only individual from Ona involved in the proceedings) was proficient in both. Accordingly, fairness required that English be the language of the proceedings, the disparity in size between the parties being irrelevant.
Separately, the Court of Appeal allowed Google's appeal in proceedings also brought against it by Ona to change the language in that case from German to English.