VOSSIUS & BRINKHOF UPC LITIGATORS

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝑨𝒃𝒃𝒐𝒕𝒕 𝒗. 𝑺𝒊𝒃𝒊𝒐𝒏𝒊𝒄𝒔: 𝐂𝐨𝐀 𝐨𝐯𝐞𝐫𝐭𝐮𝐫𝐧𝐬 𝐝𝐞𝐜𝐢𝐬𝐢𝐨𝐧 𝐋𝐃 𝐓𝐡𝐞 𝐇𝐚𝐠𝐮𝐞 𝐚𝐧𝐝 𝐠𝐫𝐚𝐧𝐭𝐬 𝐏𝐈 In a PI decision [https://shorturl.at/pyESg] between Abbott (appellant) and Sibionics (respondents), the CoA overturns a PI decision of LD The Hague and rules that, on the balance of probabilities, it is more likely than not that Abbott’s patent is valid and infringed. The LD had rejected the PI on the basis that the patent likely contained added-matter. The CoA grants a general injunction. It does not take the opportunity to decide on a cross-border claim extending to Ireland. The CoA decision contains useful guidance on several issues:   -         Claim interpretation means-plus-function features: the CoA assesses, in line with the EPO, that as a general principle of interpretation, means-plus-function features must be understood as any feature suitable for carrying out the function. An exception concerns the situation where the function is carried out by a computer or similar apparatus. -         Added-matter: the CoA applies the gold standard and concludes that the LD was wrong to find that claim 1 contains added matter. -         Required contents grounds of appeal: aside from added-matter, which was the basis for rejection of its PI request by the LD, Abbott did not explicitly refer to its other arguments as a basis for the appeal. The CoA assesses that a general reference by Abbott to its submissions made at the first instance is sufficient if and to the extent that the impugned decision does not address these arguments. -         Urgency: the relevant test used by the CoA is whether the patentee “behaved in such a negligent and hesitant manner in lodging the Application that, from an objective perspective, it must be concluded that it was not interested in promptly enforcing its patent.” -         General injunction claim: Abbott’s request for a general injunction without restricting it to specific infringing products is sufficiently clear, and not too broad. The need for a limitation of the issued injunction to the specific infringing products cannot be inferred from Art. 62(1) UPCA, according to the CoA. -         Potential provisional measures: the CoA rejects Sibionics’ argument that the UPC can only issue preliminary measures that are explicitly stated in Art. 62 UPCA and R.211.1 RoP. In the opinion of the CoA, Art. 67 UPCA (order to communicate information) applies to provisional measures as well.   The CoA left the question open whether an injunction covering Ireland could be granted. Abbott only tried to extend its claim to also cover Ireland on appeal. The CoA disregards this request for being late filed as it could have already been made at the first instance.   ---   For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu   #upc #news #unifiedpatentcourt #iplaw VOSSIUS Brinkhof  

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐂𝐨𝐀 𝐫𝐮𝐥𝐞𝐬 𝐨𝐧 𝐝𝐮𝐭𝐲 𝐭𝐨 𝐛𝐞 𝐫𝐞𝐩𝐫𝐞𝐬𝐞𝐧𝐭𝐞𝐝 On 11 February, the first panel of the CoA ruled in a dispute [https://shorturl.at/f22Qb] between Suinno (appellant) and Microsoft (respondent) on the question whether a corporate representative of a legal person or any other natural person who has extensive administrative and financial powers within the legal person, may serve as a representative of that legal person, regardless of whether said person is qualified to act as a UPC representative in accordance with Art. 48(1) or (2) UPCA. The CoA assesses that such a person affiliated with the legal person may not act as the UPC representative of that legal person. In short, the CoA assesses: -         If the party is a natural person, the representation requirement under Art. 48(1) and (2) UPCA implies that this person is not entitled to represent him or herself, regardless of whether the person is qualified to act as a UPC representative in accordance with Art. 48(1) or (2) UPCA. If the party is a legal person, the same principle applies. -         This interpretation of “represented” aligns with the interpretation of Art. 19(3) of the Statute of the CJEU. -         Suinno’s argument that this interpretation “destroys access to justice” and violates the principle of equality of arms must be rejected. To the extent that the requirement of representation constitutes a restriction to access to justice, such restriction is justified by an objective of general interest. On a similar note, and one day after the Suinno order, the second panel of the CoA [https://shorturl.at/DGCYv] ruled that lawyers and European patent attorneys have to be represented if they themselves are parties in cases before the UPC. This case concerns a request for access to documents ex R.262(1) RoP. For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu #upc #news #unifiedpatentcourt #iplaw VOSSIUS Brinkhof

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐋𝐃 𝐌𝐮𝐧𝐢𝐜𝐡 𝐡𝐨𝐥𝐝𝐬 𝐜𝐨𝐮𝐫𝐭 𝐟𝐞𝐞𝐬 𝐚𝐫𝐞 𝐝𝐮𝐞 𝐟𝐨𝐫 𝐅𝐑𝐀𝐍𝐃 𝐜𝐨𝐮𝐧𝐭𝐞𝐫𝐜𝐥𝐚𝐢𝐦 NEC Corporation (claimant) filed an infringement action against several TCL entities (defendants) at the LD Munich [https://shorturl.at/zrcNu]. Defendant 1 filed a counterclaim for a FRAND-license offer and paid EUR 15.000,- in court fees. A settlement was subsequently reached. In its request to withdraw of the counterclaim for a FRAND-license offer, defendant 1’s primarily requests a full refund of the paid court fees for the FRAND counterclaim, arguing that the payment was made voluntarily. The LD Munich disagrees.   Referring to Art. 70 UPCA, the LD considers that the UPC is not based on the principle of free proceedings. Therefore, it considers an analogous application of R 370 RoP, which deals with court fees, to be appropriate. The LD orders the reimbursement of 60% of the court fees (EUR 9.000,-) for the counterclaim for a FRAND-license offer (cf. Defendant 1’s alternative request). For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu #upc #news #unifiedpatentcourt #iplaw VOSSIUS Brinkhof

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐔𝐏𝐂 𝐚𝐜𝐜𝐞𝐩𝐭𝐬 𝐣𝐮𝐫𝐢𝐬𝐝𝐢𝐜𝐭𝐢𝐨𝐧 𝐨𝐯𝐞𝐫 𝐢𝐧𝐟𝐫𝐢𝐧𝐠𝐞𝐦𝐞𝐧𝐭 𝐔𝐊 𝐩𝐚𝐫𝐭 𝐨𝐟 𝐄𝐏 On 22 January 2025, the LD Mannheim postponed its UK injunction ruling, awaiting the ECJ’s decision in BSH Hausgeräte v. Electrolux [https://shorturl.at/WFAdF]. Today the LD Düsseldorf [https://shorturl.at/LFZi5] held that the UPC has jurisdiction over UK EP infringement in the FUJIFILM v. Kodak case.   𝐉𝐮𝐫𝐢𝐬𝐝𝐢𝐜𝐭𝐢𝐨𝐧 The UPC has jurisdiction to hear infringement actions concerning the UK part of an EP, even if the defendant (domiciled in a Contracting Member State, here Germany) files a counterclaim for revocation of the German part of the same patent. The LD Düsseldorf deemed the pending BSH Hausgeräte v. Electrolux case non-decisive, though the ECJ’s ruling could still impact the UPC’s competence in non-EU territories.   Citing Article 4(1) of the Brussels Ibis Regulation, the court confirmed defendants domiciled in a Member State can be sued there, including at the UPC. It noted that under the ECJ’s case law (e.g., GAT v. LUK), the UPC has jurisdiction over infringement actions, even if a counterclaim for revocation is filed covering other parts of the patent. Art. 71b Brussels Ibis Regulation aligns UPC jurisdiction with the regulation, extending to infringement actions across all states where the patent is in force. The court clarified that UPC’s decisions can extend beyond Contracting Member States, if the conditions of the Regulation are met. The infringement claim was dismissed as the patent in suit was considered invalid. 𝐂𝐥𝐚𝐢𝐦 𝐢𝐧𝐭𝐞𝐫𝐩𝐫𝐞𝐭𝐚𝐭𝐢𝐨𝐧 The terms used in a claim should be given their broadest technically sensible meaning in the context of the claim. Article 69 EPC and its Protocol do not justify narrowing claim interpretation to exclude what is literally covered by the claim’s language. A narrower interpretation is only permissible if there are convincing, case-specific reasons.   𝐃𝐢𝐬𝐜𝐥𝐨𝐬𝐮𝐫𝐞 Implicit disclosure refers to features that are the clear, immediate, and unambiguous consequences of explicit prior art teachings. A feature is implicitly disclosed if a skilled person would objectively consider it necessarily implied or if it inevitably results from following the prior art. Whether a skilled person’s attention is drawn to the feature is irrelevant, as long as it objectively and inevitably exists.   𝐀𝐫𝐭𝐢𝐜𝐥𝐞 𝟏𝟐𝟑(𝟐) 𝐄𝐏𝐂 To comply with Article 123(2) EPC, the subject-matter of an amended claim must be directly and unambiguously taught to the skilled person in the original application. The teaching must be clear, specific, and recognizable as an individual embodiment, either explicitly or implicitly, without requiring deduction. The disclosure must be beyond doubt and not merely probable. For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu #upc #news #unifiedpatentcourt #iplaw VOSSIUS Brinkhof

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐂𝐨𝐀 𝐫𝐮𝐥𝐢𝐧𝐠 𝐨𝐧 𝐥𝐢𝐧𝐠𝐮𝐢𝐬𝐭𝐢𝐜 𝐞𝐫𝐫𝐨𝐫 𝐢𝐧 𝐩𝐚𝐭𝐞𝐧𝐭 𝐜𝐥𝐚𝐢𝐦 The Court of Appeal rendered two virtually identical decisions on appeals by Alexion in proceedings against Samsung Bioepis (respondent) [https://shorturl.at/7MdNB] and Amgen (respondents) [https://shorturl.at/q5177], respectively. Alexion, a global pharmaceutical company, markets Soliris, a drug for rare diseases, with eculizumab as its active ingredient. Alexion had sought provisional measures against Samsung and Amgen at the LD Hamburg, which were rejected. The CoA now rejects Alexion’s appeal against these decisions. The dispute revolves around a linguistic error in Alexion’s patent claim, which contained an incorrect sequence of eculizumab. 𝐂𝐥𝐚𝐢𝐦 𝐢𝐧𝐭𝐞𝐫𝐩𝐫𝐞𝐭𝐚𝐭𝐢𝐨𝐧  The CoA reiterates that the patent claim is the decisive basis for determining the scope of protection of a European patent and the description and drawings must always be used as explanatory aids for the interpretation. A linguistic error, a spelling mistake or any other inaccuracy in a patent claim can only be corrected by way of interpretation of the patent claim if the existence of an error and the precise way to correct it are sufficiently certain to the average skilled person on the basis of the patent claim, taking into account the description and the drawings and using common general knowledge. The CoA notes that this is a rather strict standard since an error as such already implies some legal certainty for third parties.   In this case, the CoA assesses that the existence of an error and the way to correct it are not sufficiently certain to the average skilled person. In this regard, the CoA concurs with the assessment on the TBA that the average skilled person would not be prima facie alerted that there is an error and prompted to analyse the claimed sequence. Even if the skilled person would do so, the skilled person would not have immediately recognised the error. In addition, Alexion’s own statements during the examination proceedings, and the TBA’s endorsement thereof, can be seen as indicative of the view of the skilled person at the filing date. The skilled person would also not be made aware of the error by consulting the CAS database, because this contained an incorrect sequence for eculizumab at the time. As for the question regarding correction of the error, the CoA leaves open whether the average skilled person can be expected to consult catalogues and databases to check how a perceived error should be corrected.   Thus, the CoA concludes that it is more likely than not that the patent is insufficiently disclosed (Art. 83 EPC). --- For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu #upc #news #unifiedpatentcourt #iplaw VOSSIUS Brinkhof

JUVE Patent has recently published their “Top 10 patent cases of the year 2024” including two high-profile litigation cases with involvement from VOSSIUS & BRINKHOF: ▪️ Historic FRAND ruling despite settlement in Panasonic vs Oppo (representation of OPPO) ▪️ Bayer’s rollercoaster defense of Xarelto (representation of Sandoz)   Read the full article here: https://lnkd.in/einw4Xpw   #JUVEPatent #PatentLaw #IntellectualProperty Brinkhof VOSSIUS

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐔𝐏𝐂 𝐨𝐫𝐝𝐞𝐫𝐬 𝐚𝐧𝐭𝐢-𝐚𝐧𝐭𝐢-𝐬𝐮𝐢𝐭 𝐢𝐧𝐣𝐮𝐧𝐜𝐭𝐢𝐨𝐧 𝐚𝐠𝐚𝐢𝐧𝐬𝐭 𝐍𝐞𝐭𝐠𝐞𝐚𝐫 In ex parte preliminary injunction proceedings [https://shorturl.at/Nhexs], the LD Munich orders an anti-anti-suit injunction against Netgear upon an application by Huawei.   𝐁𝐚𝐜𝐤𝐠𝐫𝐨𝐮𝐧𝐝 Huawei has filed various patent infringement proceedings against Netgear, including before the UPC. Netgear subsequently filed an antitrust action against Huawei in the US. In connection with these US proceedings, on 4 December, 2024, Netgear requested an anti-suit injunction (“ASI”). This ASI would seek to enjoin Huawei from starting or continuing proceedings based on its standard essential patents before the competent local divisions of the UPC, within the scope of the UPCA. In response, on 9 December, 2024, Huawei requested the LD Munich to issue an ex parte anti-anti-suit injunction (“AASI”).   𝐉𝐮𝐫𝐢𝐬𝐝𝐢𝐜𝐭𝐢𝐨𝐧 The LD Munich assesses that the UPC is competent to hear Huawei’s claims. The UPC is competent to issue interim measures, including both AASIs and Anti-Enforcement Injunctions ("AEIs"), based on Article 32(1)(a) and (c) of the UPCA. The LD assesses that “infringement” in Article 32(1)(a), which creates exclusive jurisdiction for “actions for actual or threatened infringement of patent”, should be interpreted to cover also a situation of interference with the property right of the patentee by prohibiting the assertion of its right. The LD Munich further rules that it has territorial jurisdiction because Netgear’s ASI would also prohibit Huawei from (further) asserting its SEPs in the LD Munich (Article 33(1)(a) UPCA).   𝐑𝐞𝐚𝐬𝐨𝐧𝐢𝐧𝐠 On the merits, the LD assesses:  • It is predominantly probably ("überwiegend wahrscheinlich") that Huawei is entitled to initiate proceedings at the UPC and that its patents are being infringed. The LD inter alia refers to Art. 47 EU Charter of Fundamental Rights, the right to an effective remedy before a tribunal. • Huawei’s application was filed without undue delay and is objectively urgent. Huawei cannot await the UPC merits decision, because it is likely the US court will decide before such a decision. • In this case an ex parte order is warranted because it is likely that Netgear will immediately apply for further interim measures in the US when it becomes aware of Huawei’s application, thereby rendering it moot.       𝐎𝐫𝐝𝐞𝐫 The LD prohibits the defendants from continuing with the ASI proceedings before the US District Court and from applying other equivalent measures. Netgear was ordered to withdraw its ASI within 24 hours, under the threat of a penalty of up to EUR 250,000 for each day of non-compliance. ---   For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu #upc #news #unifiedpatentcourt #iplaw VOSSIUS Brinkhof

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐋𝐃 𝐌𝐮𝐧𝐢𝐜𝐡 𝐢𝐦𝐩𝐨𝐬𝐞𝐬 𝐢𝐧𝐣𝐮𝐧𝐜𝐭𝐢𝐨𝐧 𝐚𝐠𝐚𝐢𝐧𝐬𝐭 𝐍𝐞𝐭𝐠𝐞𝐚𝐫 𝐟𝐨𝐫 𝐢𝐧𝐟𝐫𝐢𝐧𝐠𝐞𝐦𝐞𝐧𝐭 𝐨𝐟 𝐒𝐄𝐏 In a merits decision [https://shorturl.at/BZ2y3] between Huawei (claimant) and several Netgear entities (defendants), the LD Munich issued an injunction regarding Netgear’s Wi-Fi routers. This order is the UPC’s third ruling on SEP’s and a second ruling on FRAND (𝑠𝑒𝑒 𝑡ℎ𝑒 𝑓𝑖𝑟𝑠𝑡: 𝐿𝐷 𝑀𝑎𝑛𝑛ℎ𝑒𝑖𝑚 𝑃𝑎𝑛𝑎𝑠𝑜𝑛𝑖𝑐 𝑣. 𝑂𝑃𝑃𝑂 [https://shorturl.at/uI07d]).   𝐄𝐱𝐡𝐚𝐮𝐬𝐭𝐢𝐨𝐧 Wi-Fi routers with a Qualcomm modem placed on the EU market for the first time in a certain time period are excluded from the awarded relief due to exhaustion (Art. 29 UPCA). The LD assesses that the question of the existence of consent is governed by the law applicable to the agreement. The legal consequences of the consent are however to be determined by the law of the country of protection (in this case, Art. 29 UPCA).    𝐅𝐑𝐀𝐍𝐃 As for the interpretation of the Huawei/ZTE legal framework, the LD Munich largely follows the framework described by the LD Mannheim in its Oppo v. Panasonic decision. Regarding the FRAND offer to be made by the SEP-holder, the LD adds that in the event several different offers are open for acceptance (e.g. both a pool and bilateral offer), only one of these has to be FRAND compliant. In this case, the LD assesses that the defendants have not demonstrated that the SEP holder holds a dominant position. This means that no FRAND defense can be raised. With respect to the infringement, Netgear argued that the patent concerned a non-mandatory part of the IEEE standard. Referring to Art. 48(6) UPCA and R.284 RoP, the LD states that it can be assumed that the defendants’ representatives have not misrepresented facts here. Therefore, the LD assumes that the use of the patent is indeed not-mandatory under the IEEE standard. The fact that the defendants argued that the patent is non-essential (not infringed) and in the alternative that it essential, but in that case the FRAND defense should succeed, does not make this any different according to the LD. For context: the defendants’ argument of non-essentiality was not decided on as the claimant also submitted test data proving infringement.     Somewhat superfluously the LD assesses that the defendants’ FRAND defense also would have failed on the merits on all accounts: they did not sufficiently indicate to be willing to take a license upon a sufficient infringement notice, delayed the negotiations, failed to provide security and sufficient information on acts of use and have not shown that the pool license offered was not FRAND. Finally, the defendants’ contractual defense based on the IEEE Bylaws 2007 is rejected for similar reasons as the FRAND defense. --- For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu #upc #news #unifiedpatentcourt #iplaw  VOSSIUS Brinkhof

✨ VOSSIUS & BRINKHOF UPC LITIGATORS wishes all clients and colleagues a Happy Holiday Season and a New Year filled with health, happiness and success! www.vossiusbrinkhof.eu #SeasonsGreetings #HappyHolidays #HappyNewYear Brinkhof VOSSIUS

💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐂𝐨𝐀 𝐨𝐯𝐞𝐫𝐭𝐮𝐫𝐧𝐬 𝐩𝐫𝐞𝐥𝐢𝐦𝐢𝐧𝐚𝐫𝐲 𝐢𝐧𝐣𝐮𝐧𝐜𝐭𝐢𝐨𝐧 𝐚𝐠𝐚𝐢𝐧𝐬𝐭 𝐒𝐡𝐚𝐫𝐤𝐍𝐢𝐧𝐣𝐚 In an order of the CoA (ORD_62483/2024, https://shorturl.at/7M2Qf) between SharkNinja (appellants) and Dyson (respondent), the CoA overturns the preliminary injunction granted at Dyson’s request against SharkNinja by the LD of Munich on 21 May 2024 (https://shorturl.at/7uirM). The LD had ruled that the contested features were literally infringed. The CoA ruled that Dyson did not prove with sufficient probability that SharkNinja was infringing the contested patent.   𝐌𝐨𝐫𝐞 𝐥𝐢𝐤𝐞𝐥𝐲 𝐭𝐡𝐚𝐧 𝐧𝐨𝐭 When the Court considers an application for provisional measures under R.211.2 RoP and Art. 62(4) UPCA, it must be more likely than not that the applicant is entitled to initiate proceedings and that the patent is infringed. A sufficient degree of certainty is lacking if the Court considers it on the balance of probabilities to be more likely than not that the patent is not valid. If the Court believes it is more likely that the patent is invalid, it will not grant provisional measures.   𝐏𝐞𝐫𝐬𝐨𝐧 𝐬𝐤𝐢𝐥𝐥𝐞𝐝 𝐢𝐧 𝐭𝐡𝐞 𝐚𝐫𝐭 The CoA is of the opinion that the person skilled in the art was rightly determined in first instance. This person is a qualified engineer with several years of practical experience in the development and construction of household vacuum cleaners. This has not been contested by the parties. Based on the evidence of witness statements, the CoA is convinced "with sufficient degree of certainty that, as of the priority date, the skilled person would understand feature 1.3 requiring that the airflow entering the housing is manipulated to flow tangentially around the circumference of the inner wall of that space, thereby forming a helical airflow, the purpose of which is to generate centrifugal forces, forcing the debris away, allowing them to settle in a collection region."   𝐄𝐯𝐢𝐝𝐞𝐧𝐜𝐞 This case depends on the evaluation of the evidence provided by the patentee, which will ultimately determine the outcome. When examining the videos, the CoA looked for evidence of a centrifugal force acting on the particles. Dyson submitted video footage showing (i) sugar particles, (ii) light brown particles and (iii) a fibre all entering and moving within the transparent plastic cylinder housing of the contested embodiments. The Court observed a predominantly vertical movement, rather than one suggesting centrifugal force.   After reviewing the videos, the CoA ruled that Dyson did not prove with sufficient probability that SharkNinja was infringing feature 1.3 (cyclonic separating apparatus). The CoA lifts the preliminary injunction imposed against SharkNinja. Dyson should bear SharkNinja’s costs for the proceedings in both instances.   ---   For more information about the UPC and our UPC Cooperation, please visit our website: www.vossiusbrinkhof.eu   #upc #news #unifiedpatentcourt #iplaw VOSSIUS Brinkhof