EU IP-PorTal

A Swedish court has cross border jurisdiction over a Swedish domiciled defendant regarding infringement of national parts of a European patent, including infringement in non-EU member states as the United Kingdom and Turky. That is the lesson learned from the long awaited judgement of the CJEU of 25 February 2025 in BSH Hausgeräte v Electrolux: https://lnkd.in/eN9rPHfa. The judgement by the grand chamber of the EU Court of Justice learns that a validity defence, which triggers the exclusive jurisdiction of national counrts under Article 24(4) of the Brussels 1 bis Regulation, does not mean that the infringement court loses its jurisdiction, even though the courts of other Member States have exclusive jurisdiction to rule on that validity in their respective country.  If the infringement court takes the view that there is a reasonable, non-negligible possibility of that patent being declared invalid by the court of that other Member State that has jurisdiction , it may , where appropriate, stay the proceedings regarding those countries. That is basically by analogy the result known from the Solvay-judgment of 12 July 2012: https://lnkd.in/efDR7s3j It was further underscored that Article 24(4) of the Brussels 1 bis Regulation does not apply to a court of a Third State and, consequently, does not confer any jurisdiction, whether exclusive or otherwise, on such a court as regards the assessment of the validity of a patent granted or validated by that State. If a court of a Member State is seised, on the basis of Article 4(1) of that regulation, of an action alleging infringement of a patent granted or validated in a third State in which the question of the validity of that patent is raised, as a defence, that court has jurisdiction, pursuant to Article 4(1), to rule on that defence [inter partes], its decision in that regard not being such as to affect the existence or content of that patent in that third State or to cause the national register of that State to be amended. The whole judgement, including the two opinions by Advocate General Emiliou, can be found here: https://lnkd.in/eCG-qu5b #upc, #upcnugget

Lessons regarding auxiliary requests can be found in the decision of 17 January 2025 of the UPC Paris Central Division in NJOY Netherlands v Juul Labs in which the patent was revoked because of added matter: https://lnkd.in/eRQMUeC9 One auxiliary request was rejected as late filled because it addressed an “clarity argument” that could not have come as a surprise to Defendant because it was successful in a corresponding decision on a similar patent of November last year but has also already been raised in the Reply to Defence to Revocation. An auxiliary request 2c – containing 12 conditional requests - was allowed by discretion of the Court (R. 9.2 RoP) because it followed up on an order of the Court of 25 June 2024 in which the Defendant was given the option (“may identify”) to narrow down the set of auxiliary requests already on file. In addition, a request to review 65 auxiliary requests was rejected “as unreasonable in number in the circumstances of the case” It was indicated that the twelve conditional auxiliary requests are considered to be the upper limit of what can be considered reasonable. A final auxiliary request 2d was declared unallowable because it wa unclear and not supported by any arguments from the defendants. Defendant did not file any particular claim-sets that would indicate to the Court, which combinations of claims Defendant would want the Court to examine under request (2) d. in which order. For UPC case law on auxiliary requests (R. 30 RoP): https://lnkd.in/d95Ug9EJ # upc, # upcnugget

The fact that a voice control feature needs to be activated does not mean that the product claim is not directly infringed. That was held by the UPC Düsseldorf Division in its decision in proceedings on the merits of 14 January 2025 in Ortovox v Mammut regarding a rescue device for avalanche victims: https://lnkd.in/eeJMjT9F   The decision is in line with an earlier ex parte injunction by the same Court of 11 December 2023: https://lnkd.in/ejDpNi6V that was maintained by that Court at 9 April 2024 and confirmed by the Court of Appeal on 25 September 2024   With regard to destruction, the Court held that it has to reliably prevent the entry or re-entry of the products into the market. A software-based deactivation of the infringing feature therefore only speaks against a destruction if it is ensured that the infringing devices could not be converted back into a patent-infringing state when such a solution was used and then placed on the market. The Court did not order publication of the decision  and held that as a rule, publication is only to be considered if the plaintiff's protection is not already guaranteed by other measures.   For more case law on direct infringement (article 25 UPCA): https://lnkd.in/eFwq9pHC   #upc #upcnugget

The UPC is competent to hear a (cross border) claim for damages following a pre-UPCA infringement judgement by a national German court. That was held by the UPC Court of Appeal in its order of 16 January 2025 in Fives v Reel, setting aside the different previous finding by the Hamburg Local Division of 17 November 2023: https://lnkd.in/edp3Eb-h After an infringement judgement by the national Düsseldorf Regional Court of 9 August 2022, Fives brought a damages action before the UPC seeking in the amount of € 6,5 million. The Hamburg UPC Local Division declined jurisdiction holding that the UPC does not have jurisdiction for actions for determination of damages on the basis of patent infringement proceedings that have become final before a national court. In appeal it was essentially held that the wording of Article 32(1)(a) UPCA was inconclusive, while the rationale behind Article 32(1)(f) UPCA speaks in favour of jurisdiction of the UPC for separate damages actions, when the infringement has been established by a national court. It was noted that the Brussels Regulation was not relevant to the question.   The Court of Appeal stressed that the UPCA has its own damages provsions in article 68 UPCA and thus provides a “complete set of substantive rules applicable insofar as the European patents of the Contracting Member States are concerned.” They are subject to uniform substantive law and procedural rules (as opposed to different national rules per member state). It was furthermore underscored that the Rules of Procedure also envision a scenario for adjudication in a scenario, where the existence of an infringement will not have to be assessed in law and in fact by the Court, and that there does not seem to be a reason to treat the situation in the present case differently. For case law on UPC competence (Article 32 UPCA): https://lnkd.in/ezUaitiD #upc, #upcnugget

Withdrawal is the name of the game at the UPC in January 2025 with 22 decisions dealing with withdrawals of infringement actions, counterclaims for revocation or for a FRAND-license offer and an application for access to pleadings and evidence. All cases, except one, concern matters in which a settlement was reached, including that the parties bear their own costs. That triggers the issue whether a formal decision on costs – following the agreement – is nevertheless required (LD Munich) https://lnkd.in/g9DgeK_M or there is no need for such a decision: https://lnkd.in/g5EVEcEp The decision that lacked a settlement was about the withdrawal of an application for access and ruled that no costs are due for such requests (RD Nordic Baltic). For case law on withdrawal (R. 265 RoP): https://lnkd.in/eTTegvd8 #upc, #upcnugget

Intervention by Mediatek allowed in appeal proceedings between Daedalus and Xiaomi. Thus held the UPC Cpourt of Appeal in its order of 8 January 2025: https://lnkd.in/esBMRBbk   It was found that MediaTek had a direct and present interest in the result of the appeal proceedings, as the confidential information at issue in the appeal proceedings concerns information relating to the architecture of MediaTek’s processors.  Daedalus’ submission that its US attorneys already have access to the confidential information in the context of parallel proceedings in the US does not alter the assessment. This submission may be relevant to the decision on the appeal but does not mean that there is no legal interest for MediaTek to intervene in the appeal proceedings.   Application to intervene was held admissible, although not made before the closure of the written procedure. The Court of Appeal noted that MediaTek had declared that it does not intend to file a statement of intervention but only wishes to be allowed to participate in the oral hearing to support Xiaomi. Allowing the intervention will therefore not result in any delay of the appeal proceedings.   For more UPC case law on intervention: https://lnkd.in/eDwfeGQx   #upc, #upcnugget

Milestone of 500 published UPC judgements reached After a little more than 1,5 year since the start of the Unified Patent Court, more than 500 UPC orders and decisions have been published on IP-Portal  with summaries and hyperlinks in the IPPT-pdf-format (https://lnkd.in/eeaPpufC) and listed under the relevant articles of the UPC Agreement (https://lnkd.in/eF8wR_6S), the rules of the Rules of Procedure (https://lnkd.in/ezpm3evY) and by month/year (https://lnkd.in/e2UvuCaN)   And it is getting more and more interesting with more judgements dealing with substantive patent law issues coming out of the UPC every week. We cannot wait to reach the next milestone in the next few months. From 300 to 500 judgements took less than six months ! At IP-PorTal you can also find an additional 900 other IP judgements, including almost all IP case law of the CJEU and decisions by the  Enlarged Board of Appeal of the European Patent Office (https://www.ippt.eu/court) #upc, #upcnugget

Template decision on revocation action by UPC Paris Central division in Advanced Bionics v Med-El of 26 December 2024 in which the patent was maintained in amended form in accordance with an auxiliary request: https://lnkd.in/eZMXgTGr The decision provides a nice overview of relevant procedural issues, such as late filed evidence, admissibility of additional requests to amend the patent, the inventor not being able to be heard as an impartial expert and last but not least that parties have to submit copies of patents and prior art documents relied on in their pleadings. In addition, a good overview on who the skilled person can be, what is common general knowledge (and who has to prove it), added matter, insufficient disclosure and inventive step. A perfect template decision if one is to prepare for a revocation matter before the UPC. For UPC case law on Inventive step (Article 56 EPC): https://lnkd.in/guSaiw9n # upc, #upcnugget

A defendant in infringement proceedings can be ordered to provide security for legal costs and other expenses of the plaintiff. That was held by the UPC Düsseldorf Division in its order of 3 December 2024 in 10X Genomics v Curio Bioscience in which the defendant was ordered to provide security for an amount of € 200.000: https://lnkd.in/e2Gvycwk. An application to the UPC Court of Appeal for suspensive effect was rejected by the standing judge in an order of 17 December 2024 because there was no extreme urgency: https://lnkd.in/eVbqNU8A   The Düsseldorf panel based its reasoning on the language or R. 158 of the Rules of Procedures which provides that “a party” may be ordered to provide security. However, Article 69 UPCA only provides that the applicant may be ordered to provide adequate security but does not mention the defendant. The Local Division saw no conflict because Article 69 does not exclude imposing a security on a defendant. Suspensive effect of the appeal was rejected because the standing judge saw no extreme urgency and held that the finding of the Local Division was not manifestly wrong and the issue as to what the correct interpretation of these provision is something to be decided in the appeal itself. For UPC case law on security for costs (R. 158 RoP): https://lnkd.in/e26c_jSm #upc, #upcnugget

Application for confidentiality granted for “Confidential Global Licence & Art 79 UPCA Settlement offer to Microsoft” under R. 262 RoP (to the public) instead of R. 262A RoP (intra parties). That was the ruling of the standing judge of the UPC Court of Appeal in Microsoft v Suinno of 23 December 2024: https://lnkd.in/eMFv_vr5 The standing judge argued that this document that has been submitted as an exhibit in appeal was – in its original version –obviously known by Suinno and its representative and, as a result, does not require a restriction of access to specific persons pursuant to R 262A RoP. Instead, considering the confidential nature of some information contained therein, its original confidential version shall be treated as confidential and shall not be available to the public. The change of the applicable legal provision was apparently done ex officio since the application seemed based on R. 262A RoP only   For UPC case law on confidentiality towards the public (R. 262 RoP): https://lnkd.in/eauiabvz   #upc, #upcnugget