17 December 2024,
Local Division Milan, Oerlikon v Himson
Result of the interim conference
Background
On 14 June 2023, at the request of Oerlikon, the LD Milan issued an ex parte order to preserve evidence (a saisie) during the ITMA exhibition. On the same day, Oerlikon started infringement proceedings.
On 19 December 2023, Himson filed its defence and a counterclaim for revocation, arguing that the patent was invalid because of added matter, lack of novelty and inventive step.
On 20 February 2024, Oerlikon replied in the infringement action and answered in the revocation action, filing 7 auxiliary requests.
On 6 May 2024, Oerlikon was granted access to the results of the saisie.
A further 8th auxiliary request to amend the patent was refused. At the request of the Court, the first three auxiliary requests were withdrawn.
Interim conference
- The Judge-Rapporteur (“JR”) inquired about the possibility of a settlement.
- The patent was granted in German, whereas the proceedings are in Italian. Parties agreed about certain translation mistakes of German to Italian.
- The JR considers that both infringement and revocation only concern claim 1 of the patent, and that the general reference in the written submissions to “patent infringement” provides insufficient ground for a different interpretation.
- At the request of the Court, Himson stated to be prepared to limit its inventive step attacks to a reasonable number.
- Later filed prior art will only be taken into consideration as far as relevant with respect to auxiliary requests.
- Non-contested statements (with respect to the videos found during the saisie) are considered as established between the parties in view of R. 171.2 RoP.
- As the parties do not want a court expert, no expert will be nominated.
- The experts of the parties are allowed to intervene during the oral hearing.
- The request with respect to information about the source and distribution of the machines and the realized turnover can also be lodged during the damage proceedings. This is in this case the better order, as there is no evidence of sales or distribution in any of the countries where the patent is valid.
- The request for an interim award for damages is refused, as there is no evidence produced with respect to the damage.
Order
- Both parties must send to the Court a summary of the case of not more than 7,500 words (without new facts or evidence) before 31 March 2024.
- The hearing will take place on 11 June 2025.
Comment
- The first thing to note is that the LD Milan will not render a judgement within 14 months after the Statement of Claim (in what looks like a pretty normal case). The case will take more than two years.
- The JR follows Art. 52.2 UPCA and R. 104(a) RoP, and explores the possibility of a settlement. I have the impression that this has not happened during other interim procedures, despite the clear Rule (R. 104(a) RoP). That rule is not so much the result of the drafting committee thinking that such Rule would be very useful, but because Art. 52.2 UPCA required it.
- The decision during the interim conference (and the remarks in a footnote about the frontloaded character of the proceedings) all seem very balanced and reasonable.
- For someone not familiar with the national Italian practice, the question of the Court whether the parties wanted a court-appointed expert seems somewhat strange. The parties stated that this was not necessary, as there is also a Technical Judge on the panel. I think such a court-appointed expert should only be appointed in exceptional situations.
- There was a discussion about the Italian translation of two claim features of the patent which was granted in German. This raises the question what happens if in countries that require a translation of the patent(’s claims), the translation has a more limited meaning than the original, and the national patent act states that the scope of the claim is determined by this limited meaning of the translation. In my opinion, the UPC should then for that country apply the more limited meaning of the claim. Of course, the UPC should first try to be rather liberal with the translation and try to read the translation as expressing the same as the language of the patent, but I have come across a case in which that was not possible! The Unitary Patent cannot cause such a situation!
17 December 2024,
Central Division Munich, Nanostring v Havard
No release of security (in this case)
Background
On 30 October 2023, the Central Division ordered the claimant Nanostring to provide security for costs. Nanostring wants the security order lifted because:
a) it belongs to another (solvable) company;
b) it won the preliminary injunction (“PI”) proceedings on appeal;
c) in the present case, the patent was revoked.
Decision
- R.158 RoP does not contain a specific provision to release the security, but the Court has the power to do so on the basis of R. 352.2 RoP (either directly or by way of analogy).
- The request is rejected because what matters is the financial situation of Nanostring itself, and not of the new group (cf. the Court of Appeal in Aarke v Sodastream).
- The fact that the patent was revoked in first instance is not relevant, as there is still the possibility of an appeal.
Comment
- That a request for release should be possible is a no-brainer. The Central Division Munich gives moreover a very thorough and convincing motivation for the no-brainer!
- The decision on the merits is also straightforward, after the decisions of the Court of Appeal on the subject.
17 December 2024,
Court of Appeal, Curio v 10x Genomics
Suspensive effect
Background
On 3 December 2024, the LD Düsseldorf ordered Curio to provide security for costs of € 200.000 within 4 weeks.
On 16 December 2024, Curio filed an appeal, and separately applications for suspensive effect and for a decision on this application by the standing judge in view of the extreme urgency. Curio argued that the order was manifestly wrong.
Court of Appeal
- The application for suspensive effect dismissed.
- The standing judge can dismiss the application without a hearing.
- In cases of extreme urgency, the applicant may apply to the standing judge, but an order for suspensive effect will only be given under exceptional circumstances, especially if it concerns an order as meant in R. 220.2 RoP for which you need leave for appeal.
- Extreme urgency was not established, as the argument of Curio is that the order is manifestly wrong. However, extreme urgency and manifestly wrong are separate and distinct criteria.
- Whether or not the order is manifestly wrong will be decided at the end of the appeal proceedings.
- In addition, the Court does not consider the circumstances of the present case to be of such an exceptional nature that the interests of Curio outweigh the interests of 10x Genomics and the principles of due process.
Comment
- Lessons for representatives!
- Do not bother the standing judge if your request for suspensions is not truly urgent (and I would add: really urgent in the sense that if the decision is not immediately suspended, the consequences are truly serious; for instance a preliminary injunction of which the execution leads to very serious consequences).
- If you think a decision is manifestly wrong, then that (of course) does not necessarily mean that a suspension of the decision is extremely urgent.
- It seems to me that it is difficult to argue that your request is extremely urgent if you need (as in this case) 13 days yourself to file your request. The standing judge decided within a day!
- As Curio now wanted the standing judge to decide, they got a quick decision: no suspensive effect.
- If there is indeed extreme urgency, it is wise to ask (certainly as an alternative) for a suspension until the Court decides on the request for suspensive effect.
- In this case (assuming the order is manifestly wrong), it would have been better to the Court of Appeal for suspensive effect ask or two days after receipt of the order, convincingly arguing that the decision was manifestly wrong and pointing to the four weeks term for complying with the order.
- Anyway, you wonder if this is not much ado about nothing. Curio, a US biotech company, decided to litigate in the UPC. You may assume that they were warned by their representatives about the possibility that they would have to provide security for costs (different from US litigation where (in normal cases) parties have to bear their own costs). The amount (200k) does seem unexpectedly high.
18 December 2024,
Local Division Munich, Philips v Belkin
Forfeiture of penalty sums
Background
The Local Division granted an injunction against Belkin and ordered to give information about the origin of the infringing products etc. Philips subsequently executed the judgment. Belkin asked the Court of Appeal for suspensive effect of its appeal, and wrote Philips that if this would be refused, they would comply with the judgment within a week.
On 30 October 2024, the Court of Appeal refused to grant suspensive effect.
On 11 November 2024 (more than a week later), Philips asked the Court to fix penalty sums.
On 12 November 2024 Belkin delivered 16 boxes with invoices and 1 box with a printed table (see photo in the decision!).
On 25 November 2024, Philips stated that the information was incomplete.
Decision
- The fact that the information is not delivered in an electronic way does not mean that you do not comply with the judgment.
- The fact that Belkin asked the Court of Appeal for suspensive effect did not entitle Belkin to not respect the term for performing under the judgment.
- The information is incomplete.
- Belkin forfeited € 46.000 in penalty sums.
Comment
- If you do not want to have your whole office full with boxes, then be smart and ask for information in electronic form!
- If you lose proceedings, make sure your client starts immediately doing what is necessary to comply with the judgment (and if clients are not able to meet certain demands within a certain period demanded in the Statement of Claim, make sure to specifically point that out in your Statement of Defence (apart from any other points why these demands for information are excessive etc.).
18 December 2024,
Local Division Munich, Huawei v Netgear
SEP case decision
Decision of the Court
- The opt-in (i.e. withdrawal of the opt-out) is valid. You do not necessarily have to use the template provided for an opt-in, but only the correct workflow.
- The patent (EP 3 611 989) is valid and infringed.
- The Court cites Art. 29 UPCA and states: “The effects of exhaustion initially extend to device claims. However, according to the wording (“acts relating to a product protected by the patent”) the effects of exhaustion also extend to process claims relating to the handling of a product protected by the patent.”
- According to the Court, the exhaustion applies to products which are the direct result of a patented process (which is of course correct), but also to a process claim for which that product is used and to products in which the product covered by the consent has been incorporated (at least if the incorporation is covered by the consent). According to the Court, exceptions exist in cases where the proprietor expressly reserved the right to use this process.
- The burden of proof that a product has been put on the market with the consent of the patentee in the EU is on the alleged infringer and has to be proven with respect to each individual product. The burden of proof that there is (nevertheless) a legitimate reason to oppose further distribution of the product is on the patentee.
- If the exhaustion defence is raised with respect to all attacked embodiments, the defence has to be dealt with during the proceedings. In other cases, it depends on the circumstances whether the defence should be dealt with in the proceedings or in the context of enforcement.
- The Court rules that as far as the use of Qualcomm modems is concerned, during a certain period (January 1, 2020 – December 31, 2024) the patent rights are exhausted.
FRAND
8. The Court sees no reason to ask questions to the CJEU, also not after the amicus curiae letter of the European Commission to the Munich Court of Appeal dated 15 April 2024. The case can be decided following the guidelines of the CJEU in Huawei v ZTE. In doing so, the (non-binding) opinion of the European Commission can be taken into account.
9. The Court stresses that under the case law of the CJEU, the patentee retains its right to an injunction, and enforcing that right is as such not an abuse of a dominant position, also not if the patent holder has a dominant position.
10. Only under exceptional circumstances would seeking an injunction be an abuse of a dominant position. The Court states that this is not the case here, as a dominant position of the SEP holder has not been proven by the defendant and there is no abuse in this case.
11. The SEP holder has also given an undertaking to the standard setting body (IEEE) to grant FRAND licenses (but has not undertaken – as defendant argues – not to seek injunctions). According to New York law governing this undertaking, the SEP holder has also not violated its obligations under this undertaking by seeking an injunction.
12. According to the established case law, the first step in Huawei/ZTE is informing the implementer of the infringement. Sending a claim chart is sufficient for that purpose. What has happened in relation to other SEPs of the patentee in other proceedings is irrelevant.
13. The implementer has to indicate to be willing to take a license. This must not be just paying lip-service but should be aimed at concluding a FRAND license. All circumstances should be taken into consideration (also during the negotiations) in order to establish whether there is genuine willingness. Different from what the EU Commission argues, not only the first reaction of the implementer is relevant, but also his behavior thereafter.
14. Thereafter, both SEP holders and implementer must behave “in accordance with commercial practice” and work in good faith to reach a FRAND license.
15. This means that both parties have to provide each other with sufficient information during the negotiation process. The implementer must provide the SEP holder with sufficient information about its use of the SEP to allow the SEP holder to tailor the conditions to the specific case of the implementer. The SEP holder must indicate the license fee and the way in which it is calculated and must explain why the offer is FRAND. The implementer cannot demand more disclosures from the SEP holder than he himself is prepared to disclose.
Offer by the SEP holder
16. Following the request by the implementer, the SEP holder has to submit a written license offer on FRAND terms and provide the information indicated above (i.e. the license fee and the way in which it is calculated, as wells as an explanation why he thinks that his offer is FRAND).
17. If there have been several offers, the last offer still open for acceptance must be checked for FRAND conformity (and not the first, as the EU Commission suggests). An abuse of dominance does not yet lie in the submission of a non-FRAND compliant initial offer. Only if the patent proprietor “is not prepared to back down [from unreasonable license terms] even at the end of the negotiations” there is abusive conduct.
18. If pool licenses and bilateral licenses are available, a SEP holder is only required to show one route to a FRAND license. This route can therefore be satisfied by offering a pool license.
19. The implementer has to provide (without delaying tactics) a counteroffer which corresponds to FRAND conditions, provide security and give information about its use. The security should be at least at the level of the counteroffer.
20. If the counteroffer of the implementer is not FRAND or no security is provided, it is not so important anymore whether or not the offer of the SEP holder is FRAND. In such a case, the examination of the offer by the SEP holder may be “completely omitted or is at best cursory”. This is justified because the infringer has always the option to file a claim for the grant of a license (either in a separate action or by way of a counterclaim in the UPC infringement action).
21. The security must be accompanied by a commitment to pay the secured amount to the SEP holder in order to avoid that later (after the offer of the SEP holder was considered FRAND) the implementer chooses not to accept it and the SEP holder would be left with only a damage claim for one country (or here, the UPC area).
Result in the case
22. The defendants did not establish the existence of a dominant position, showed insufficient willingness to conclude a FRAND license, delayed negotiations and did not provide security or sufficient information after their counteroffer was rejected.
In addition, the defendants raised no argument why the Sisvel patent pool license was not FRAND and did not provide a counteroffer to this license offer.
The injunction was granted.
Comment
- If you do not use a template but file in the correct workflow, the filing is valid. This is a practical interpretation of R. 4.1 RoP avoiding serious consequences by not using a template.
- The Court considers at the request of the parties that everything which was considered secret during the proceedings (R. 262.A RoP) is also considered confidential under
R. 262.2 RoP, and therefore will not be published until a member of the public asks for review of the confidentiality decision. This is in my view a practical application of R. 262.2 RoP. So, when lodging a R. 262.A RoP request a party is wise to also indicate that it also wants protection under R. 262.2 RoP. - According to the Court, if a product has been put on the market by the patentee or with its consent, then not only the rights with respect to that product are exhausted but also the (process) claims relating to the use of that product.
I have some doubts whether one can read this in Art. 29 UPCA. If a product claim and a process claim are in the same patent and cover the same invention, one could argue that if you have used your exclusive right once, the rights under that patent are exhausted with respect to both claims (product and process). It is certainly not so, however, that in case of a sale of a product covered by the patent, all the process claims in which this product is used (also those pertaining to a different invention) are exhausted. There may be an implied license by selling such product, but that depends very much on the circumstances. - The SEP regime formulated by the LD Munich generally corresponds to that of the LD Mannheim in Panasonic v OPPO of 22 November 2024, emphasizing the need for negotiations in good faith aimed at concluding a FRAND license. The formalistic approach by the EU Commission is in my view correctly rejected by both courts. Where the LD Munich seems to differ from the LD Mannheim is the possibility to only assess the (non-)FRANDness of the implementer’s counteroffer without examining the SEP holder’s offer. The assessment should not be (too) one-sided and should at least include an assessment (if argued by the implementer) whether the offer and subsequent behavior by the SEP holder is such that constructive negotiations are in fact blocked.
- I agree that in the present case the pool license offer was held to be sufficient for the SEP holder to comply with his FRAND obligations, but there may be circumstances in which the implementer has a valid reason to only be interested in concluding a bilateral agreement (e.g. because he already has a license from others in the pool). In that case, an assessment of the FRANDness of the bilateral license offer would be needed.
- In order to avoid delay tactics while continuing the infringement, it seems not enough to me that the implementer pays as security a license fee in accordance with his counteroffer, in particular if that amount is unrealistically low.
- The Court indicates that in the UPC, it is possible to ask the Court by way of a counterclaim to grant a FRAND license based on the undertaking of the SEP holder to the standard setting organization or because of the fact that not granting such a license would be an abuse of a dominant position. In addition, one could think of a declaratory action by which the implementer asks the UPC to establish that he is entitled to a license for certain SEP’s on certain conditions (or alternatively, on conditions to be set by the Court in good justice).
18 December 2024,
Central Division Paris, Tandem Diabetes v Roche Diabetes
Judgment in main revocation proceedings in 1 year and 2 weeks!
Background
- The claimant argues that EP 2 196 231 is invalid because of added subject-matter, lack of novelty and lack of inventive step.
- The defendant argued that the action is inadmissible because of a standstill agreement.
- The defendant filed 26 auxiliary requests.
- During the interim conference the JR decided:
a. later filed prior art was not admissible;
b. further auxiliary requests were not admissible;
c. later filed Grounds for Revocation with respect to the dependent claims were also not admissible. - Both parties filed for review by the panel. The panel decided to deal with the review during oral argument.
Decision
- A standstill agreement cannot prevent the filing of an invalidity action (which is in the public interest), but may give a claim for breach of contract.
- Regarding the late-filed invalidity grounds and prior art documents, the court refers to the frontloaded character of UPC proceedings and endorses the decision of the JR.
- The patent is directed to a system for ambulatory drug infusion.
- There is no intermediate generalisation and therefore no added matter.
- The patent is novel.
- Apart from the question about motivation to combine the prior art documents cited by the claimant, the combination is missing one of the features of the claim.
- The revocation action is dismissed.
Comment
- The decision seems well-reasoned and not surprising.
- I am somewhat surprised that the review of the JR’s decision takes place together with the final decision. The JR’s decision is taken when the interim phase has not been closed. The idea of the review by the panel was that this would go rather quickly during the same interim proceedings. How the CD deals with it in this case, causes parties to be in the dark about the result of the interim phase during the oral argument. Still, having a decision by the JR potentially followed by a review by the panel, is a very practical way to deal with these requests. It avoids extra work of the panel (which as far as I have seen almost always agrees with the JR) and it avoids (separate) appeals to the Court of Appeal. Finally, if the party who loses the request for review wins the case, then an appeal becomes mute and if the party who loses the case on the merits appeals, there is the possibility of a (conditional) cross appeal.
18 December 2024,
Local Division Hamburg, Yves Prevo v Visibly
Jurisdiction issue
Background
Visibly has started infringement proceedings against Easee B.V. (1), Mr Yves Prvo (2) and Easee Holding B.V. (3) (the “parent company”).
Preliminary Objection
Defendants 2 and 3 filed a preliminary objection, alleging that the claims against defendants 2 and 3 are not based on patent infringement but on tort. The UPC is not competent for such actions (see Art. 32 UPCA).
As the defendants are not residing in Germany, the competence of the local division in Hamburg cannot be based on Art. 33(1)(b) UPCA.
Decision
The LD Hamburg is competent to hear the case. Whether or not defendants 2 and 3 can be held liable if the Court finds infringement (by defendant 1) is a question of the merits of the case.
The court has jurisdiction on Art. 7(2) jo. Art. 71b(1) of the Brussels Regulation, because the infringement or harmful event (also) takes place in Germany.
Comment
- I think this is a correct decision. The infringement allegedly (also) takes place in Germany and the parent company’s and directors’ (alleged) actions result in (or support/cause etc.) said infringement and therefore (allegedly) cause damage in Germany. So, they can also be sued on the basis of Art. 7(2) Brussels Regulation.
- The fact that the LD Hamburg has jurisdiction does of course not mean that a managing director or parent company can be injuncted simply because they are the managing director or the parent company!
- If the Court is competent on the basis of Art. 7(2) Brussels Regulation, it can grant injunctions for the whole UPC area where the EP has been validated. In this case, the entire UPC area, as the patent is a Unitary Patent. As the patent is granted before the ratification of Romania, one should separately mention Romania in the Statement of claim (if the EP is validated for that country).
- I think that the UPC is competent to also hear tort actions based on facilitating, inducing or provoking patent infringement.
- You wonder why the LD Hamburg was chosen. If the three defendants had been sued before the LD The Hague, there would have been no discussion about jurisdiction and the claimant could have relied on the rather liberal Dutch case law with respect to tortious behaviour of the parent company and the managing director. It would also have avoided complicated questions of private international law about which law the LD Hamburg should apply as to the actions of the managing director and the parent company.
19 December 2024,
Local Division Paris, Lama France v Hewlett Packard (HP)
Execution of a decision
Background
HP executes a decision of 13 December 2024.
Lama asks the Court:
a) to suspend the execution during the appeal proceedings;
b) in the alternative, to form a confidentiality club for giving the information ordered under IV of the judgment in the sense that only the representatives should receive that information;
c) in the further alternative, to order HP to give a guarantee of 2 million euro.
Decision
- Re a): only the Court of Appeal can grant suspensive effect.
- Re b): HP does not object against a confidentiality club with also one person of HP. The Court refers to the same club as already was put in place during the litigation.
- Re c): as HP is willing to accept a confidentiality club, Lama is sufficiently protected. Moreover, Lama did not ask for such guarantee after HP had formulated its demand.
Comment
A logical decision. HP has behaved very reasonable. Lama made the mistake not to raise these points (confidentiality club, guarantee) earlier during proceedings and therefore should not be able to do so in the execution phase. This is again a good lesson for representatives and certainly for French representatives, as a “juge d’execution” does not exist in the UPC.
20 December 2024,
Local Division Munich, Phoenix v ILME
Request for access to UPC submissions for opposition proceedings
Background
The patentee has also sued Harting in the national court on the basis of a utility model (which also was the basis for the European patent been invoked in these UPC proceedings).
On 11 July 2024, Harting filed an opposition against the European patent. Defendant 2 in the UPC proceedings has joined Harting in those opposition proceedings.
The request
Harting asks for the written submissions and evidence filed by the parties in the UPC proceedings.
Decision
The Court refers to the Court of Appeal in Ocado v X of 10 April 2024 (UPC_CoA_404/2023) and grants the request.
Comment
A textbook example in which a party is entitled to this information, even during the ongoing proceedings, as it has a clear and direct interest.
20 December 2024,
Local Division Mannheim, Pohl-Boskamp v Pharma-Aktiva
PI granted
The decision of the Local Division:
- The cease and desist declaration provided by the defendant is insufficient to avoid a PI, as it is restricted to actual products but not in general to not infringing the patent.
- The claimant is as a patentee entitled to invoke the patent. The claimant has produced evidence of the (technical) infringement and the defendant has not denied infringement.
- An injunction will not be granted if it is probable (“überwiegend wahrscheinlich”) that the patent is invalid. The burden of proof is on the alleged infringer.
- The Court leaves undecided if waiting for over a month with PI proceedings after becoming aware of the infringement means that the case is not urgent. The court considers in this case that the one-month period starts running after obtaining laboratory results confirming infringement, and that the case was brought within a month thereafter.
- The Court weights the interests of the parties and decides that the interests of the claimant outweigh the interests of the defendant. The Court grants the PI.
Comment
- In my opinion a well-reasoned decision.
- I do not understand why the defendant did not give a normal cease and desist declaration and avoid the PI, as it appeared obvious from the fact that they wanted to give a restricted cease and desist declaration that there was an infringement (as also confirmed by the decision itself).
20 December 2024, Edwards v Meril
Local Division Munich, Edwards v Meril
Result of the interim conference
Background
27 December 2023: Statement of Claim.
17 October 2024: The claimant requests to amend its claim in order to include Romania and requests that defendants are ordered to provide relevant invoices for the claim for information.
4 November 2024: The defendants ask to dismiss the claimant’s request for amendment.
12 December 2024: The defendants ask to change their claim for revocation so to include Romania.
Interim conference 19 December 2024
Order after interim conference of the JR.
- Romania is added to the claimant’s claim and the defendants’ counterclaim.
- The request to change the claim regarding provision of information adds some details but is not a request to amend the claim (R. 263 RoP). It has to be assessed under R. 13 RoP (“frontloaded’). It is allowed, because it has been requested well in advance, so defendants have time to respond.
- The defendants must clarify their auxiliary requests. They should make clear exactly what they want. They cannot leave it to the Court to pick one.
- Invitation of parties’ experts or to appoint a court expert is not necessary.
- The hearing will take place on 11 February 2024.
Comments
- A balanced, reasonable application of ‘frontloaded’: small changes or additions to the claim are allowed if timely communicated to the other party.
- You have to decide what your auxiliary request is and cannot ask the Court to make a choice about different possibilities.
- It seems more appropriate to have the parties’ experts attending the hearing. The LD should not give the impression that it has already decided the case before the oral hearing.
- The JR remarks that he has consulted the panel before giving the Order. That is a very good way of saying that it does not make sense to ask for a review by the panel (which almost never makes sense and in my view that possibility should be removed from the Rules of Procedure).
- The case started in December 2023 and the oral hearing takes place in February 2025. That is not within 1 year as contemplated by the Rules of Procedure. Parties should realise that they can only expect a Local Division to be able to have a hearing within one year if the workload is more spread over the different Local Divisions.
I wish all readers a Merry Christmas!
– All comments above are Prof. Hoyng‘s personal opinions –
📩 Want to stay updated? To receive our weekly overview directly in your inbox, subscribe here.