BARDEHLE PAGENBERG’s Post

#UPCdatabase #decisionoftheweek LD Hamburg, 4 June 2024, Procedural Order of the Court of First Instance, UPC_CFI_54/2023 #hamburglocaldivision #localdivision #ordertoproduceevidence #patentproprietor #rule190rop #rule85rop #standingtosue ! Key takeaways: In relation to the proprietor of a European patent there is a rebuttable presumption pursuant to R. 5(a) and (c) that the person shown in the patent register is the actual proprietor of the patent:✓ Nevertheless, the person shown in the register can be ordered to produce evidence according to R. 190 RoP in order ...

How do you appeal a PTAB decision if you lost an IPR and the patent owner previously sued you for infringement but dismissed the case with prejudice? The Federal Circuit's recent decision in Platinum Optics v. Viavi Solutions shows that you need more than a statutory right to appeal - you also need constitutional standing. The Federal Circuit found that neither prior lawsuits nor vague plans for new products were enough to establish constitutional standing. Takeaway: If you want to challenge a patent's validity at the PTAB and preserve your right to appeal, take some steps during the IPR to show that you have a current or imminent risk of infringement. https://lnkd.in/eeTxMKhn

You might have seen my post in March after my first UPC hearing, defending against a preliminary injunction. Today I did my second. Same local division, with two of the same judges, but this time I was for the applicant, seeking a PI against Celltrion’s biosimilar to XOLAIR. Presiding judge Thomas again opened with a detailed introduction to the points of interest to the court, and they boiled down to (i) are the claims novel over an Art.54(3) citation (ii) are the claims entitled to priority (iii) is the infringement imminent? On various points, such as added matter and jurisdiction, he was very clear that no submissions were needed as the defendant was unlikely to succeed (while leaving them free to present on these points it desired – and they did). There was also a mild rebuke to the defendant for raising detailed new arguments in their rejoinder (“in the future we expect…”). Unlike my first experience, timing was more controlled, and we weren’t expected to go straight into our submissions. The timetable was: 30 minute break; 90 minutes each, with the applicant (my side) going first; then another break; then 45 minutes each. The initial break was key as it let us organise ourselves properly – then back in and I launched into the first two points, with Dr. Frank-Erich Hufnagel completing the third. We finished with about 20 minutes to spare, and the defendant similarly. Then we had 45 minutes to prepare for round two. The presiding judge re-started things with specific questions about imminence (“why do you need a PI *now*?”) and so Frank-Erich took the lead, then I did a short rebuttal on novelty and priority (we went over by a minute, but were forgiven). The defendant then spoke, making significant new commercial concessions. They raised new added matter points at the end but, after a query from us, the judges were happy that they didn’t need to hear a reply. The court has been on summer break since 15th July, but interrupted this for us. The interruption is brief, though, and judicial holidays mean that a decision will not be ready until 6th September. How did things compare to my first hearing? - The structured timetable made things much easier. - The judges had more questions. They were mainly about imminence, but it was good to react to questions on novelty from the judge-rapporteur. - I was much more relaxed, particularly after the presiding judge was kind enough to say “welcome back” at the start. I even managed to make the judges smile twice – first when asking the UPC not to follow German outlier practice on selection inventions but to “come back into the tent” with the rest of Europe and the EPO; second with an analogy about a chicken incubating an egg. - It was too hot. I’m due to do a CIPA webinar on “Experience from a live UPC case” on 7th August, so please join that if you want to hear more or ask any questions:

#UPCdatabase #decisionoftheweek Court of Appeal, November 21, 2024, Order, UPC_CoA_456/2024 https://lnkd.in/dF8ZiMRA ❕Key takeaways: Not every new argument constitutes an “amendment of a case” requiring a party to apply for leave under R. 263 RoP. A case is amended when the nature or scope of the dispute changes. For example, in an infringement case, this occurs if the plaintiff invokes a different patent or objects to a different product. #luxembourgcourtofappeal #amendmentofcase #newarguments #r263rop

ℹ️ 𝗕𝗥𝗘𝗔𝗞𝗜𝗡𝗚 𝗡𝗘𝗪𝗦 Phantastic news from a usually well-informed source: In a pioneering move to offer more flexibility in court proceedings, the Swiss Federal Patent Court is about to implement a ‘Silent Argument’ option, complemented by a fee reduction incentive. This initiative allows litigants to present their cases without verbal communication, relying solely on gestures, expressions, and props. 👉 Read more about this new option here: https://lnkd.in/dbQTrkcS 📩 Sign-up for updates on 🇨🇭 patent litigation matters directly in your mailbox: https://lnkd.in/eWj4F_YU -

The Unified Patent Court, a single patent court for EU Member States, has published the first statistics on its case load since its establishment in 2023. Read Jones Day's analysis of the UPC's statistics, including a breakdown of cases by jurisdiction. #UPC #UnitaryPatent #patentlaw #patentlitigation #intellectualproperty https://ow.ly/Xn6c50Rjt1S

For those wondering how collateral estoppel applies in MDLs - or just trying to remember what collateral estoppel is - check out this article that Chantale Fiebig and I wrote. https://lnkd.in/ewJMiFxk

This week saw the UPC issue two decisions about its own jurisdiction. Where a defendant wants to challenge the jurisdiction or competence of the UPC to hear a dispute, they must file a preliminary objection within one month of the start of proceedings. But of course the UPC wants to hear substantive cases. So, persuading a division of the UPC that they should not hear a case due to a jurisdictional point is something of a hard sell. In the first case considered in our UPC Weekly blog this week, the Paris Central Division said that it is OK to file UPC revocation proceedings where there are ongoing national revocation proceedings that pre-date 1 June 2023, the opening of the UPC. The court also emphasised that the UPC procedure time limits are strict, denying requests for a stay of proceedings or an extension of time to file the defence to the revocation action. We wonder whether this case will lead to a reference to the CJEU on the jurisdiction point. In the second case, the Paris Central Division decided that a standstill agreement between the parties could not fundamentally change the jurisdiction of the UPC to hear a case. However, the court left open the question of whether the defendant could argue about the admissibility of the case. #UPCWeekly #MewburnUPCUpdate #MewburnUPC #UPC #UnifiedPatentCourt #litigation #preliminaryobjection #jurisdiction #UPCnugget

#UPCdatabase #decisionoftheweek Court of Appeal, November 12, 2024, order concerning the jurisdiction of the Unified Patent Court (Art. 83 UPCA), UPC_CoA_489/2023, UPC_CoA_500/2023 ❕ Key takeaways: If a patent has been opted out of the jurisdiction of the UPC, this opt-out can only be validly withdrawn, if no action according to Art. 32 UPCA concerning the relevant patent has commenced at a national court since June 1, 2023: The term “action” in Art. 83 UPCA refers not only to infringement and revocation actions, but to all actions mentioned in Art. 32 UPCA over which the UPC has jurisdiction. https://lnkd.in/eCwhWEsr #luxembourgcourtofappeal #art83upca #optout #transitionalperiod #withdrawal

#IPReport #PatentLaw This Valentine’s Day, the Higher Regional Court of Karlsruhe had a gift for lovers of national infringement proceedings. But fans of the UPC also got something: proof that the UPC is not only unified, but also unique. This IP Report by Dr. Tobias Wuttke and Paul Lepschy discusses the applicability of the UPCA in national infringement proceedings, the relevance and scope of Art. 83 UPCA, and jurisdictional issues. 💡Learn more: https://lnkd.in/dzwf_4Kk 📥Download the German version: https://lnkd.in/d6P4jbfH #IntellectualProperty #UPCA #CaseLaw