Latest substantive UPC decisions

• The court confirmed that, due to the front-loaded nature of UPC proceedings, failure by the parties  to set out their full case as early as possible could lead to the exclusion of the arguments.
• One of Juul's European Patents relating to a vaporisation device was revoked it its entirety for added matter (EP 115) and another was maintained as granted (EP 911). Both patents had been revoked by the EPO Opposition Division.
• The added matter approach taken with respect to EP 155 was similar to the approach deployed by the EPO Opposition Division. There was an omission in the original claim, which resulted in a new combination of features. An amendment is seen as adding subject-matter that extends beyond the content of the application as filed and is not permitted if the overall change in the content of the application (whether an addition, alteration or removal) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented in the application, even when taking into account information implicit to the skilled person.
• In assessing inventive step with respect to EP 991, the Paris CD stated that "an invention shall be considered as involving an inventive step if, having regard to any element that forms part of the state of the art, it is not obvious to a person skilled in the art" (emphasis in original). It added that limiting the evaluation of inventive step to certain elements of the prior art, e.g. a document perceived to be "the closest prior art", involved the risk of introducing subjective elements into the assessment. However, for reasons of procedural efficiency it may be justified in reducing the evaluation of other elements of the prior art to a minimum. The Paris CD noted that what is to be evaluated in the inventive step assessment is "an activity". An activity can be motivated by an underlying problem. The court stated that it is then decisive "whether what is claimed as an invention did or did not follow from the prior art in such a way that the skilled person would have found it in his attempt to solve the underlying problem on the basis of its knowledge and skills, for example by obvious modifications of what was already known".

• Oerlikon owns the patent at issue relating to a false twist texturing machine and alleged that Bhagat had infringed it by the promotion and public offering of its texturing machine that was exhibited at a trade fair.
• Bhagat did not contest the validity of the patent or the alleged infringement of the patent by its machine exhibited at the trade fair. Accordingly, as a result of Rule 171.2 RoP, the infringement had to be held to be proved.
• The Milan LD granted a permanent injunction against Bhagat because the risk of repetition of the promotion and advertising of its infringing machine was "persistent" and the threat of sale was also imminent. The court was persuaded to grant the order on the basis that the evidence would no longer be available following the end of the trade fair.
• Instead of denying infringement or challenging the validity of the patent, Bhagat requested that the court stay the proceedings under Rule 295(m) RoP (discretion to stay proceedings where proper justice requires it) pending the outcome of ongoing parallel proceedings involving Oerlikon and a separate defendant, Himson Engineering, who had challenged the patent's validity. The Milan LD declined to stay the proceedings as Bhagat had conceded validity of the patent and had not supported the revocation counterclaim in the other action.
• Bhagat denied causing any damage to Oerlikon and requested costs – typically paid by the unsuccessful party under Article 69 UPCA – be reduced, emphasising its pre-trial cooperation and settlement efforts. As a result of these equitable reasons, the court decided that the costs should split 20% to be paid by Oerlikon and 80% to be paid by Bhagat.

This analysis is based on a machine translation of a decision not available in English.

• Aarke was found to have infringed SodaStream's patent relating to a device for carbonating liquids. The validity of the patent was not in dispute, although Aarke did attempt to rely on a Gillette defence to infringement (in short, that the alleged infringing act was actually disclosed in a prior art document).
• The Düsseldorf LD confirmed that the claim is the decisive basis for determining the patent scope but it should always be interpreted in the context of the description and the drawings. On this basis, the court rejected a literal reading to narrow the claim scope based on a preferred embodiment.
• The court stated that prior art should only be considered in relation to claim construction to the extent it is referenced in the patent. If the patent distinguishes itself from the prior art in a particular way, an interpretation negating that must be avoided. In this case, the court took into account the distinction from the prior art in detail and, as such, there was no room for the Gillette defence to be used in the way in which the defendant had tried.
• SodaStream's request for publication of the decision pursuant to Article 80 UPCA (publication in the public media) was rejected by the court on the basis that the injunction and damages awarded were a sufficient remedy. The court found that it was not apparent that the patent infringement had caused any lasting uncertainty among consumers that publication in the public media would need to remove.

• Valeo made an application for provisional measures, seeking an preliminary injunction against Magna with respect to its alleged infringement of a European Patent concerning electric machinery.
• The Düsseldorf LD granted a preliminary injunction against Magna, but still allowed Magna to meet existing customer obligations to BMW with respect to five particular machinery models. The court, therefore, included third party interests in its assessment of the balance of interests in the grant of the preliminary injunction.
• This decision illustrates the UPC's willingness to carry out a fairly substantial examination of validity in preliminary injunction proceedings when assessing if it is more likely than not that the patent is valid. In assessing whether the patent in suit is more likely than not to be invalid, the court held that the high revocation rates of patents in general challenged by opposition or revocation proceedings was irrelevant.

• This decision concerned a preliminary objection in which the Nordic-Baltic RD assessed the interaction between the UPC and the Belgian court in a case concerning alleged infringement of a European Patent relating to clothing construction.
• Sioen made a preliminary objection concerning the UPC's jurisdiction because of ongoing proceedings relating to a request for a declaration of non-infringement in Belgium. Texport later initiated infringement proceedings in the Nordic-Baltic RD. Subsequently, Sieon also started a revocation action in the Belgian courts. The Belgian court has declared, in a non-final decision, that it has jurisdiction with respect to the Belgian part of the patent but not with respect to other states where the patent is in force.
• The Nordic-Baltic RD held that according to Article 71c(2) of the recast Brussels Regulation, Articles 29 to 32 (the lis pendens rules) apply during the UPC transitional period. However, Articles 29 and 31 are only applicable if the two proceedings involve the same parties or their interests are so closely related that a judgment delivered against one of them would have the force of res judicata as against the other. In this case, the parties were not the same and nor were their interests indissociable. The court also considered Article 30 (concerning the discretion of courts other than that first seised to stay proceedings in related actions).
• The UPC opted not to stay its proceedings pending resolution of the national proceedings in Belgium as: (i) the subject-matter of the UPC proceedings differed in encompassing infringing acts in Latvia and in Portugal; and (ii) the oral hearing at the UPC was scheduled for February 2025, which was earlier than the oral hearing at the Belgian court scheduled for June 2025. The fact that Sioen initiated revocation proceedings in Belgium after Texport started infringement proceedings in the UPC was not in itself a reason to the stay the proceedings. In addition, the UPC had no information on the alleged grounds for revocation so could not assess the likelihood of success.

• Harvard's patent was revoked in its entirety. The patent as granted was revoked for lack of novelty and auxiliary request 1 was rejected for lack of inventive step over the same piece of prior art.
• There was a disagreement between the parties as to whether the skilled biological scientist would be familiar with both in vitro and in situ techniques for the detection of biomolecules. The court considered that no distinction was made in the disclosure of the patent and so the skilled person should have experience of both.
• The assessment of novelty requires the determination of the whole content of the prior publication, which must "directly and unambiguously" disclose the claim with all the features.
• The court assessed inventive step as whether it would be "obvious for the skilled person to, starting from a realistic prior art disclosure, in view of the underlying problem, arrive at the claimed solution" (without a reference to the EPO's problem-solution approach).
• In general, the Munich CD stated that a claimed solution is obvious if, starting from the prior art, the skilled person would have been motivated to consider the claimed solution and to implement it as a next step in developing the prior art. It may be relevant whether the skilled person would have expected any particular difficulties in taking any next step(s) and, depending on the facts of the case, it may be allowed to combine prior art disclosures. A technical effect or advantage achieved by the claimed subject matter compared to the prior art may indicate an inventive step. However, a feature selected in an arbitrary way out of several options cannot in general contribute to inventive step. The court emphasised that hindsight should be avoided.
• Harvard had made a preliminary objection regarding the jurisdiction of the UPC to hear the proceedings. The preliminary objection was later withdrawn and the parties agreed to submit to the jurisdiction of the court. However, the Munich CD held that the court must examine its international jurisdiction of its own motion when required under EU law as per the recast Brussels Regulation. The Munich CD held that it had international jurisdiction and that it would not stay proceedings due to German national revocation proceedings. Articles 29 and 31 of the recast Brussels Regulation did not apply as the parties to the proceedings before the UPC were different to those before the German court. The court declined to stay proceedings under Article 30 of the recast Brussels Regulation on the basis of a number of factors, including:
  
  • the parties had requested that the UPC issue a decision, including for the German part of the patent;
  • the CD proceedings were more advanced than those at the German appeal court; and
  • the Dutch and French parts of the patent were still in force and would have to be considered by the UPC regardless of the German proceedings.

• This was the first decision concerning a preliminary injunction application issued by the Lisbon LD. However, the application for provisional measures was ultimately rejected.
• Ericsson was found not to have acted with sufficient urgency in initiating the preliminary injunction proceedings. The court emphasised that the onus is on the claimant to establish that it has not delayed proceedings unnecessarily. When the applicant is silent about the date it became aware of the infringement and the court has no way of ascertaining it, the court may solely rely on the date of the alleged infringement when assessing unreasonable delay. This emphasises that the claimant must explicitly show urgency.
• The requirements for granting preliminary injunctions (validity of the patent, actual or imminent infringement, urgency and balance of interests) are cumulative, which allows the court not to address them all if one aspect is not satisfied. However, such an assessment may not always be possible at an early stage of the proceedings so the court may exercise discretion in assessing the other requirements presented by the parties.
• Ericsson failed to refute the defendants' argument that it would have known of the alleged infringement before its test purchase of the infringing products in May 2024, either after the launch of the products in 2019 and 2021 (which was publicised widely online) or as a result of concurrent proceedings between Ericsson and Lenovo in the US relating to the accused modules in October 2023 or separate ongoing SEP licensing negotiations between the parties to this action.
• Despite its finding on lack of urgency, the court still considered the issues of validity and infringement, finding the patent to be prima facie more likely to be valid and infringed than not.
• For the purposes of Article 25(a) UPCA, merely owning and operating an internet domain constitutes infringement if the infringing products are offered and/or sold on that domain.

• The Munich LD handed down a default decision against Arcora, which was found to have infringed i-mop's combined mopping and vacuuming cleaning device.
• The court has the discretion to grant a default judgment under Article 37(1) UPCA and Rule 355.1 RoP, provided that four conditions are met. Firstly, the claimant has requested the default judgment. Secondly, the defendant has failed to perform an action required of them within the specified period and the RoP provide for the issuance of a default judgment if the deadline is missed. Thirdly, the period for responding to the claim or counterclaim has expired and the claim or counterclaim was served in a way that allowed the defendant sufficient time to defend itself. Fourthly, there must be a substantive justification:  that is, the facts presented by the claimant and the procedural behaviour of the defendant do not mitigate against issuing the default judgment.
• In this case, all four conditions were met. This case underscores the need for the claimant to put forth a substantive justification for the default judgment. Here, after a substantive review of the merits of i-mop's case, the Munich LD found that i-mop had demonstrated that Arcora's embodiment made direct use of the technical teaching of its patent without i-mop's consent. Furthermore, no procedural behaviour of Arcora pointed against issuing the default judgment.

• These decisions related to joint infringement actions brought by Seoul Viosys in relation to two of its patents concerning light emitting diodes and revocation counterclaims brought by the second defendant.
• The Düsseldorf LD found that the fact that the invalidity counterclaim was only expressly raised by the second defendant and not by the first defendant did not affect the admissibility of the claim. The court did not decide to separate the proceedings against each defendant in this case but, if it had done so, the first defendant would not have been able to rely on the lack of validity arguments in its proceedings. However, because the proceedings were kept together, if the patent was declared invalid due to the claim of one defendant, then the infringement claim as a whole as against both defendants would lack its basis.
• EP 320 was held to be invalid due to added subject matter, while EP 698 was held to be valid and infringed.
• In relation to EP 698, the Düsseldorf LD assessed inventive step on a more patentee-friendly basis compared to the EPO, taking the view that the next step for the skilled person from the prior art would take them outside of the scope of the claim and as such the claim was inventive. The court found in relation to a first prior art document that “the skilled person has no reason to look for a solution to reduce possible tension between the two layers and possibly to provide a further (stress-relieving) layer for this purpose. For the design of the metal barrier layer with palladium, he already has a material at his disposal in which such tensions do not occur in the first place”
• As for EP 320, the Düsseldorf LD also appeared to depart from the EPO approach on added matter. It took a less literal approach that lent on the description of the patent to interpret the test (the granted claim must be directly and unambiguously derivable from the original application) in a more patentee-friendly way.

This analysis is based on a machine translation of a decision not available in English.

• This was an appeal by Audi relating to a decision from the Munich LD on Audi's separate preliminary objection (that the court lacked jurisdiction over damages in the UK and Northern Ireland and that the opt-out had not been validly withdrawn) and anapplication under Rule 361 RoP (summary judgment where the action is manifestly bound to fail – Audi argued NST lacked standing to sue and its statement of claim lacked sufficient substantiation). The Munich LD rejected the preliminary objections in part (leaving the issue of the UK and Northern Ireland damages to the main proceedings) but the Rule 361 request was rejected in full.
• The Court of Appeal rejected Audi's appeal against the Munich LD's decision on its preliminary objections. The Court of Appeal held that the Munich LD was entitled to leave the UK and Northern Ireland preliminary objection point to be decided in the main proceedings (Rule 20.2 RoP) and Audi did not provide reasons why, in deciding as it did, the Munich LD overstepped the boundaries of its discretion. As for the opt-outs, the court concluded that these had been validly withdrawn.
• Audi's appeal relating to its Rule 361 RoP requests failed too. Both of Audi's grounds of appeal here essentially boiled down to its contention that NST's statement of claim had not been sufficiently argued or substantiated. The Court of Appeal expressly said: "[e]ven though the UPC procedure is a front-loaded system, it is not required that the claimant envisage every possible line of defence and include all arguments, facts and evidence in, and submits it with, the statement of claim and that nothing could ever be added thereafter…". NST's approach of including one detailed claim chart and infringement report, while claiming infringement by a number of other embodiments, did not result in the claims relating to the other embodiments manifestly lacking any foundation in law and therefore the matter did not fall within the scope of Rule 361 RoP.

• Mala is the proprietor of a European Patent that only had effect in Germany. Nokia previously filed a revocation action against Mala in the German Federal Patent Court, which was dismissed and the patent was held to be valid. A day after receiving the German court's decision, Nokia filed a revocation action in the Paris CD and later also appealed the German national decision. Mala lodged a preliminary objection in the UPC revocation action, primarily requesting that the court decline jurisdiction for the revocation action and dismiss it as inadmissible or, alternatively, stay the proceedings until the final decision of the German court.
• The Paris CD rejected Mala's preliminary objection, finding that the scope and manner in which Articles 29 to 32 of the recast Brussels Regulation are determined by Articles 71a to 71d of the recast Brussels Regulation. It decided that on a literal application of Article 71c(2), Articles 29 to 32 do not apply because the German proceedings were brought before the beginning of the transitional period of the UPCA (Article 83).
• Mala appealed and the Court of Appeal set aside the first instance decision, granting Mala's request to stay the proceedings but still rejecting its main request to decline jurisdiction.
• The Court of Appeal decided that Article 71(c)(2) of the recast Brussels Regulation must be interpreted as meaning the lis pendens rules in Articles 29 to 32 apply where proceedings are pending before the UPC and a national court, even if the national proceedings were started before the transitional period began.
• The Court of Appeal held that Article 29 and Article 31 did not apply in this case as, following settled CJEU case law, the requirements of those provisions were not met, as the German and UPC cases involve different Nokia entities whose interests are not indissociable. However, Article 30 did apply, meaning it was at the discretion of the court to stay the UPC proceedings because there was a related action pending in a national court. The court considered that the parties in both actions were closely related, that the causes of action were almost identical and that the German proceedings were at an advanced stage.

• When considering an application for security for costs, the court must consider whether the financial position gives rise to a "legitimate and real concern" that the costs order may not be recoverable or enforceable.
• The burden of proof as to why the security is appropriate is on the defendant making the request. The claimant must then challenge the reasons and facts and argue why a security order would interfere with its right to an effective remedy.
• The relative financial position of the claimant in comparison to the defendant is not a criterion under Rule 158 RoP. This is especially the case where the limited level of funding provided to a special purpose patent enforcement entity is a deliberate business decision.
• The Court of Appeal held that the Court of First Instance has a margin of discretion when deciding on security for costs requests and therefore the review on appeal is limited. Nevertheless, the Munich LD's decision was set aside as it could not have reasonably come to the decision on the facts of the case. NST was ordered to provide adequate security for costs to Audi. The Munich LD had imposed too high a standard of proof on Audi by requiring it to provide "precise evidence" that NST is or would be insolvent by the time of a costs decision. On the basis of the evidence Audi provided, the Court of Appeal held that there was a "legitimate and real concern" that a possible costs order may not be recoverable.

• ITCiCo's patent was revoked for lack of inventive step in a decision by default.
• Under Rule 335 RoP, a decision may be given by default against a defendant where: (i) a request is submitted by the claimant; (ii) the defendant fails to take a step within the time limits in the RoP (or set by the court), or a party that is duly summoned by the court fails to appear at an oral hearing, or the time limit for the defence to the claim to be filed has elapsed and therefore it was established that the claim was served in sufficient time for the defendant to put in a defence; and (iii) the facts put forward by the claimant justify the remedy sought and the procedural conduct of the defendant does not preclude giving the decision.
• In this case, the grounds of invalidity raised by BMW were held to be "well founded" and a decision by default was awarded. In considering the decision, the Paris CD reminded that it is one of the aims of the UPCA and the legal framework of the UPC to provide expeditious decisions and that defendants are provided with appropriate tools to provide a justification for the default and to appeal the decision where it is unfavourable.

• Tandem filed a revocation action and sought a declaration of non-infringement in the Paris CD, relating to a patent held by Roche in the field of insulin infusion therapy. In response, Roche filed an infringement claim in the Hamburg LD.
• If invalidity proceedings between the same parties and relating to the same patent are already pending before the CD, it is at the discretion of the LD or RD before which the infringement proceedings are instituted whether to proceed in accordance with Article 33(3) UPCA and pursuant to Article 33(5) UPCA. In making its decision, the division responsible for the infringement actions should take into account how far the validity action has progressed in the CD (Rule 75.4 RoP).
• Rule 37.4 RoP states that infringement proceedings shall be stayed if there is a "high likelihood" that the patent will be invalidated by the final decision in the invalidity proceedings. Under Rule 295(m) RoP, the court may stay the proceedings if the proper administration of justice requires it.
• In this instance, Tandem's request to stay the infringement action was dismissed as Roche's interest in continuing the proceedings outweighed Tandem's interest in a stay.

• Meril's request to expedite appeals relating to the first instance finding (that Edwards' European Patent for a prosthetic heart valve was valid) was rejected.
• When considering an expedition request, the court must balance the interests of both parties while ensuring that the principles of due process are adequately taken into account.
• The possibility that the Munich LD might grant an injunction on the basis of a patent that has been upheld by the Court of First Instance but may subsequently be revoked by the Court of Appeal is not sufficient to justify expediting an appeal. The Court of First Instance has various means at its disposal to mitigate the risk of granting an injunction or the harm caused by an injunction in situations where the validity of the patent is subject to appeals.

• Novartis and Genentech's application for provisional measures (preliminary injunction) was rejected by the Düsseldorf LD.
• Novartis and Genentech were the proprietors of an EP and they alleged (imminent) infringement by the defendants. The defendants are all part of the Celltrion group, the parent company of which is involved in parallel UPC litigation. The parent company has developed a biosimilar and the defendant group companies have a manufacturing and distribution network.
• In the case of multiple defendants, where one of the defendants has its residence within the territory of the LD seized, Article 33(1)(b) UPCA must be applied, regardless of whether the other defendants are located outside of that territory or inside or outside the EU. The requirements that must be met for the court to have competence are therefore that the multiple defendants have a commercial relationship and the action relates to the same alleged infringement.
• There was competence here as Novartis and Genentech sufficiently stated that i) one of the defendants was domiciled in Germany; ii) all the defendants had a commercial relationship and iii) the application concerned the same alleged infringing acts.
• The court disagreed with the defendants that different national approaches should be applied to assess the "threat of imminent infringement" during the UPC's transitional period: it is the for the UPC to determine, on the basis of the UPCA, what requirements must be met in order for an infringement to exist.
• The court concluded that there was not yet sufficient evidence that the alleged infringement was imminent. Imminent infringement involves "certain circumstances" which suggest that although the infringement has not yet occurred, "the potential infringer has already set the stage for it to occur". This is assessed on a case by case basis. The court did not find that the defendants had already completed all the pre-launch preparations. Although the first defendant had obtained a marketing authorisation and there was some promotion of this, the advertising materials did not include a specific timeline, there was no information on any price negotiations or reimbursement applications by the defendants, and samples were not presented to customers.

• Advanced Bionics' preliminary request to refer the infringement action to the Paris CD to be heard alongside the revocation action was rejected by the court.
• A connected joinder pursuant to Rule 340 RoP cannot result in the referral of an action to another division of the Court of First Instance beyond what is provided for in Article 33 UPCA (that is, an infringement action cannot be referred from an LD to the CD without the agreement of the parties involved).

• Aylo's preliminary objection that the infringement action be dismissed for lack of jurisdiction of the Mannheim LD was rejected by the Court of Appeal.
• The action related to a streaming service. It was found by the Court of Appeal that Article 7(2) in conjunction with Article 71b(1) of the recast Brussels Regulation must be interpreted as meaning that the UPC has international jurisdiction in respect of an infringement action where the European Patent relied on by the claimant has effect in at least one UPC contracting member state and the alleged damage may occur in that particular state. Where damage is allegedly caused via the internet, the likelihood of damage may arise from the possibility of acquiring products and/or using services from the website that is accessible in the UPC contracting member state where the European Patent has effect.
• The harmful event put forward by DISH and Sling in their statement of claim was that, through its websites, Aylo offers and supplies video files and media players to end-users in, inter alia, Germany, which, when operating on the end-user stations, perform the method claimed in the patent in suit.
• This was sufficient to establish the jurisdiction of the UPC pursuant to Article 7(2) in conjunction with Article 71b(1) of the recast Brussels Regulation, since (as was not disputed) the patent at issue has effect in, inter alia, Germany, and Aylo's websites are accessible in, inter alia, Germany.