Latest substantive UPC decisions

• Teleflex brought an application for provisional measures (preliminary injunction) alleging infringement of its patent that protected clay-based hemostatic agents and devices incorporating such agents for the delivery to bleeding wounds. The invention was used to form clots in the case of bleeding.
• The Hamburg LD explained that the burden of proof for establishing patent infringement lies with the applicant. This burden is only reversed once the applicant has provided reasonable indications that an infringement has occurred. In applications for provisional measures, the court said that the burden of proof must not be set too high due to limited evidence, but not too low such that defendants are harmed by provisional measures being incorrectly granted.
• Teleflex had submitted an expert report and experimental data to demonstrate infringement. Speed Care had also submitted its own expert reports to refute the evidence and made a number of criticisms of Teleflex's evidence. The court decided that the evidence convincingly explained why Teleflex was wrong. The court stated that Teleflex had not demonstrated with the necessary certainty that the attacked embodiment contained a binder, and the reversal of the burden of proof did not apply.
• The court decided that Teleflex had not demonstrated with a sufficient degree of certainty that there was an infringement of the patent. As such, there was no need for the court to discuss validity of the patent and the other requirements for ordering a preliminary injunction. The preliminary injunction was refused.

• Lionra issued an infringement claim against Cisco in relation to its patent concerning fast packet processing in a wireless network. Cisco counterclaimed for invalidity.
• The Hamburg LD upheld the validity of the patent but found that Cisco's products did not infringe the patent claims as interpreted.
• In interpreting the claims, the court followed the approach of the Court of Appeal in Nanostring v 10x Genomics. That is, the patent claim is the decisive basis for determining the scope of protection of a European Patent; however, the interpretation does not depend solely on its exact wording. The description, drawings and explicit disclosures in the description should always be considered as explanatory aids.
• Lionra was ordered to bear 40% of the costs and Cisco had to bear 60%.

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

• In the underlying proceedings, Aylo brought a revocation action against DISH in the Paris CD and DISH brought a parallel infringement action against Aylo with respect to the German part of the patent in suit before the German Regional Court Munich I. There were also parallel infringement proceedings in the UPC's Mannheim LD.
• Aylo made a request for security for legal costs pursuant to Rule 158 RoP. The parties submitted observations and an interim conference was held. The judge-rapporteur referred the decision to the panel.
• The Mannheim LD had ordered DISH to provide security for costs in the parallel infringement proceedings, and there was a concern that DISH may become insolvent (which DISH disputed).
• The Paris CD rejected Aylo's application. In particular it noted that, while it is open for claimants to bring applications for security for costs, the burden of proof on them will be high in doing so, as they are also the party who commenced the underlying proceedings. On the facts, the court found that Aylo did not sufficiently meet this burden.

• Imbox made an application to preserve evidence (saisie) and to inspect the defendants' premises, and requested that this order be granted without notifying the defendants. Instead, the court used its discretion under Rule 194.1 RoP and informed the defendants and invited them to make an objection to the application. The defendants objected to the application, requesting it be dismissed.
• Later, Imbox withdrew its application based on the defendants' statement on the functionality of the attacked embodiment. The defendants did not object to the withdrawal but maintained their requests for confidentiality and compensation for legal costs and other expenses.
• Imbox agreed not to share the confidential information that arose from these proceedings with any third parties. Since Imbox withdrew its application after being convinced that the defendants did not infringe its patent, it was the unsuccessful party and therefore had to pay the defendants' reasonable and proportionate legal costs and other expenses up to the ceiling set by the Administrative Committee (Article 69 UPCA and Rule 152.2 RoP).
• The Nordic-Baltic RD found that the ceiling on costs serves as a joint ceiling for all defendants' representation costs and awarded an amount that reflected that the proceedings were not overly complex and that the application was withdrawn at an early stage. Nonetheless, it held that the defendants had had a need to defend themselves in these proceedings because it could have resulted in an order forcing them to provide a competitor with confidential information.

• Abbott made an application for provisional measures against Sibio, alleging infringement of a patent relating to an on-body device for sensing glucose levels in vivo. The application was denied at first instance by The Hague LD holding that the patent would more likely than not be held invalid due to an unallowable intermediate generalisation.
• Claim 1 of the patent was amended by Abbott during prosecution to include features from an exemplary embodiment of the invention in the description. At first instance, the Hague LD decided that omission of a feature from the description that specified the presence of an "elastomeric sealing member" in the device resulted in added matter. The Court of Appeal disagreed and overturned the decision.
• When deciding whether there is added matter, the Court of Appeal explained that the court must "first ascertain what the skilled person would derive directly and unambiguously using his common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed, whereby implicitly disclosed subject-matter, i.e. matter that is a clear and unambiguous consequence of what is explicitly mentioned, shall also be considered as part of its content. Where, as here, the patent is a divisional application, this requirement applies to each earlier application." This test applied by the UPC is very similar to the EPO's gold standard test, but with arguably a greater emphasis on implicit disclosure.
• When applying this standard, the Court of Appeal decided that it was not more likely than not that the patent contained added matter and therefore it was not more likely than not that the patent would be held invalid in the main proceedings. The Court of Appeal noted that although several embodiments in the application made use of elastomeric or elastic materials for sealing, the original application also generally disclosed other ways to achieve sealing.
• When deciding whether it amounted to an intermediate generalisation, the court decided that the skilled person would understand that the exact method of sealing did not contribute to, and was not relevant to, the technical teaching of the invention as disclosed in the original application. The skilled person would understand that the object of the invention was to provide an on body device that was part of an applicator system, configured to handle insertion of an in vivo analyte monitoring system, that  is easy-to-use, reliable and minimises both user inconvenience and pain. Therefore, the omission of an elastomeric sealing member did not amount to an unallowable intermediate generalisation.

• The underlying claim was an infringement action brought by Daedalus against Xiaomi and MediaTek, alleging that they had infringed its patent by offering and selling smartphones that contain certain types of processors made by MediaTek.
• Xiaomi filed a statement of defence and lodged an application requesting that access to certain highlighted passages in its defence and written witness statement submitted with it be restricted because it disclosed information about the architecture of MediaTek's processors.
• The judge-rapporteur of the Hamburg LD granted provisional protection for the confidential information and restricted Daedalus' access to the relevant passages to its UPC legal representatives. Daedalus subsequently requested that its managing director and two US attorney be granted access to the confidential information. The judge-rapporteur extended access to the managing director but not the US attorneys. Daedalus sought a procedural review of the order, which was rejected by the panel of the Hamburg LD. Following this, Daedalus appealed to the Court of Appeal, requesting that its two US attorneys be granted access.
• The Court of Appeal held that access should not be restricted unnecessarily and shall include, at least, one natural person from each party and the respective lawyers (Rule 262A.6 RoP). Whether a particular person is granted full access depends on the role of that person in the proceedings, the relevance of the confidential information to the performance of that role and the trustworthiness of the person.
• It is not required that they are employee of a party or a representative within the meaning of Article 48 UPCA. Therefore, the fact that the US attorneys were not employees of Daedalus or UPC representatives did not preclude them from having full access to the confidential information. Full access was granted.
• The Hamburg LD had assumed that Daedalus was seeking access for its US attorneys to enable them to use the information in parallel US proceedings but that was not the case. Daedalus' US attorneys were involved in these proceedings before the UPC by providing technical input. Although they were also involved in the parallel US proceedings, the confidentiality regime imposed by the Hamburg LD meant that persons granted access to the confidential information could only use it for the purposes of the UPC litigation. On appeal, Daedalus expressly confirmed that its US attorneys would only use the confidential information for the UPC proceedings. The Court of Appeal said that the US attorneys were trustworthy as they were bound by strict ethical rules of professional conduct for lawyers.

• The first respondent was a member of the public, as well as a board member and investor in SWAT Medical (the second respondent). The first respondent applied (later amending to include the second respondent) to the Paris CD under Rule 262.1(b) RoP to be given access to all pleadings and any evidence lodged in the revocation action between Meril v Edwards Lifesciences. The first respondent is a European patent attorney and a representative before the UPC and represented himself in the application.
• The Paris CD had granted both respondents access, but permission to appeal was granted and the effects of the order were suspended until the end of the appeal proceedings.
• Meril Italy appealed, arguing that self-representation is not valid under Article 48(1) & (2) UPCA. The representative must be a third party, different to the party to the proceedings. It maintained that a board member cannot be independent as a representative.
• The Court of Appeal ordered that each respondent must instruct an authorised representative (Rule 8.1 RoP). Lawyers and European Patent Attorneys are not exempted from the duty to be represented if they are parties in cases before the UPC. Additionally, following the Court of Appeal's decision in Suinno v Microsoft, a corporate representative of a party who has extensive administrative and financial powers within that party by virtue of holding a high-level management or administrative position cannot act as their UPC representative, regardless of whether the corporate representative is a legal or natural person (Article 48(1) or (2) UPCA). In this case, the first representative was not allowed to represent the second representative.
• The court held that representation was a point of admissibility involving public policy considerations (due process) which the court could examine at any time and of its own motion.

• Suinno is the proprietor of a patent relating to a method and means for browsing by walking. It filed an infringement claim against Microsoft at the Paris CD. Suinno also filed an application under Article 53 and Article 262A UPCA and Rule 262 RoP requesting that certain documents be kept confidential from both the public and Microsoft.
• The Paris CD panel declared Suinno's application under Article 262A UPCA inadmissible and ordered the documents to be disclosed to certain identified persons and granted leave to appeal. The Paris CD's reasoning was that Suinno's representative, who was also its managing director and main shareholder, had extensive administrative and financial powers within the body he represented and therefore he could not be considered independent for the purposes of valid representation before the UPC.
• Suinno appealed but this was rejected by the Court of Appeal, who agreed that Suinno had not been validly represented by a representative under the meaning of Article 48(1), (2) and (5) UPCA. Representation must be by lawyers authorised to practice before a court of a contracting member state or by an EU patent attorney. If the party is a natural person, they cannot represent themselves, regardless of whether they are qualified to act as a UPC representative in accordance with Article 48(1) and (2) UPCA.
• It also follows that someone who holds a high-level management or administrative position or who holds a significant amount of shares in a legal person may not serve as its representative before the UPC. This is because representatives enjoy rights and immunities necessary for independent exercise of their duties, including the privilege from disclosure in proceedings before the UPC in respect of communications between a representative and the party or any other person under Article 48(5) UPCA and the RoP.
• However, the mere fact that a qualified representative under Article 48(1) or (2) UPCA is employed by the party they represent does not undermine the duties of the representative. A representative who is employed by the party they act for must act towards the court as an independent counsellor by serving the interests of their client in an unbiased manner in accordance with the Code of Conduct for Representatives.

• Rematec is the proprietor of patent relating to a mill for use in forestry. It claimed that Europe Forestry infringed its patent with its own grinder. Europe Forestry submitted an invalidity counterclaim.
• The Mannheim LD held that Rematec's patent was invalid for lack of novelty and lack of inventive step over the prior art. The prior art described a mill that included all of the elements claimed in the patent, including a rotor with multiple grinding elements, a grinding chamber with feed and discharge opening, and the specific arrangement of such openings. To the extent these features were not explicitly disclosed in the prior art, the court found that they would be obvious to a person skilled in the art.
• As the patent was declared invalid, the court did not asses the infringement claim.

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

• The Düsseldorf LD revoked Fujifilm's patent relating to lithographic printing plates for insufficiency.
• When considering claim construction, the court confirmed that it is governed by Article 69 EPC in conjunction with Article 24(1)(c) UPCA. The same approach to claim construction is taken when assessing infringement and validity. Article 69 EPC and its Protocol establish a primacy of the claims, which must also be applied when a narrowing claim interpretation is offered by one of the parties.
• As a general rule, if a patentee wishes to narrow the scope of a claim this should be on the basis of the wording of the claim and not on something appearing only in the description. This is because the patentee has the possibility of restricting the scope of the patent by a claim amendment. A narrower interpretation of the claims that deviates from the broader general understanding of the terms used in the claim by the skilled person can only be permitted if there are convincing reasons based on the individual case.
• The normal rule is that the terms used in the claim are given their broadest technically sensible meaning. Therefore the description cannot be relied on to exclude subject-matter that the broadest technically sensible meaning of the words would include. In this case, a narrowing interpretation of the claims based on the description or drawings was not permitted. In considering sufficiency, the court held that the patent did not disclose the claimed invention in a manner sufficiently clear and complete to allow it to be carried out by the skilled person over the entire claimed range. Specifically, the patent failed to sufficiently disclose embodiments where the polymerization initiator comprised only an electron-donating initiator or only an electron-accepting initiator. The patent failed to sufficiently disclose embodiments where the HOMO (Highest Occupied Molecular Orbital) difference was calculated with an electron-accepting initiator instead of an electron donating-initiator. Further, the claimed HOMO difference was anticipated by various pieces of prior art.
• An application to amend the patent and the infringement action were both dismissed.
• This decision was prior to the CJEU's decision in BSH v Electrolux, but the Düsseldorf LD still confirmed that it had jurisdiction to hear an infringement action concerning the UK designation of a European Patent, even though the UK is not a contracting member state of the UPC, because the defendant was domiciled in a Contracting Member State (here, Germany). In this case, revocation of the patent was only sought in the UPC contracting member states in which it was in force (Germany) and therefore no issues with respect to revocation of the UK designation arose.

• NJOY's revocation action concerning VMR's patent relating to electronic cigarettes was dismissed by the Paris CD. VMR's patent was maintained as granted.
• NJOY challenged the patent on the basis of lack of inventive step. In an assessment of inventive step, the Paris CD held that the court must first determine one or more realistic starting points in the state of the art that would be of interest to a person skilled in the art who, at the priority date, was seeking to develop a product or process similar to the patent. To be considered a realistic starting point, a document must disclose the main relevant features as disclosed in the challenged patent or address the same or similar underlying problem.
• Due to the frontloaded nature of UPC proceedings, in revocation actions the claimant is required to specify in detail the grounds of invalidity that allegedly affect the patent, as well as the prior art documents relied on to support any allegation of lack of novelty or lack of inventive step. As such, a claimant cannot introduce new grounds of invalidity or new documents considered novelty destroying or affecting inventive step in subsequent written statements. This would constitute an amendment of the case falling within the scope of Rule 263 RoP, which is only permitted by the court upon a specific request that demonstrates that the requirements of the rule have been met.

• Amazon made an application requesting that certain passages relating to its appeal be designated as restricted to a certain group of people. The Court of Appeal rejected the application because the information intended to be protected was already covered by a confidentiality order from the Munich LD.
• In accordance with the case law of the Court of Appeal, an order from the Court of First Instance that has not been challenged on appeal and that restricts access to certain information or evidence to specific persons remains in effect after the conclusion of the proceedings and thus also extends to any appeal proceedings (unless otherwise specified in the order).
• In a further procedural order, the Court of Appeal ordered that the relevant information classified as confidential must be treated as confidential by anyone who becomes aware of it during the proceedings. The Court stated that the information  may not be used or disclosed outside of the proceedings unless the knowledge was itself obtained outside of the proceedings. Furthermore, the obligation of confidentiality would continue to apply after the conclusion of the court proceedings, unless the information became otherwise known or readily accessible to persons who typically have access to such information. In the case of any breach of the confidentiality obligation, the court may impose a recurring penalty payment of up to €250,000 for each contravention.

• NJOY brought an action for revocation against Juul Labs before the Paris CD. The patent in question, EP 921, concerned a 'Vaporization Device System' for creating inhalable aerosol devices using a heater and a mouthpiece connected to a fluid storage compartment.
• The Paris CD revoked Juul Labs' patent on the basis of added matter. Specifically, it held that the patent added matter compared with the application as filed in relation to the attachment of the heater and mouthpiece to the fluid storage compartment.
• The court did not admit late-filed auxiliary requests, as well as another late submission from the defendant, due to the front-loaded nature of the UPC proceedings and the lack of a good reason for their late introduction.

• The claimant, a Belgian orthodontist, is the holder of patent relating to a device for treating nighttime breathing problems. The claimant claimed that the defendants infringed its patent by the development and sale of the attacked embodiment (known as the NOA).
• The defendants rejected the infringement claims, denying both literal infringement and infringement by equivalence. As a secondary and additional defence, they also put forward a Gillette defence. Lastly, the defendants also requested that the previously granted saisie (evidence preservation order) be lifted and the seized products be returned.
• The Brussels LD dismissed the claimant's infringement claim, both on basis of literal infringement and infringement by equivalence.
• In assessing infringement by equivalence, the Brussels LD followed the principles set out by The Hague LD in Plant-e v Arkyne but questioned whether the test used by The Hague LD was the "function-way-result" or the "insubstantial differences" test. As such, the Brussels LD first applied the "function-way-result" test. It concluded that the parts of the NOA device that corresponded to the device as shown in the patent were found to have the function of closing the mouth in a completely different way to the function set out in the patent. Therefore, there was no infringement by equivalence. For completeness the Brussels LD also applied the "insubstantial differences" test and concluded that it did not lead to a different result.
• In view of the court's finding of non-infringement it did not assess the defendants' Gillette defence, but it did lift the previously granted saisie order.

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

• Before the entry into force of the UPCA, Fives brought an action against (among others) REEL before the Düsseldorf Regional Court (Germany), for infringement of the German part of EP 740. The patent concerned a compact service module for installations for the electrolytic production of aluminium. On 9 August 2022, the Düsseldorf Regional Court issued a judgment where it established that REEL was liable to compensate Fives for all damage that it had suffered and would suffer as a result of acts of patent infringement. This judgment was not appealed.
• Fives subsequently brought an action before the Hamburg LD, requesting determination of damages under Article 32(1)(f) and Article 68(1) UPCA, and Part 1, Chapter 4 of the RoP to compensate it for the damages it had suffered due to REEL's patent infringing offers in Germany in accordance with the judgment of the Düsseldorf Regional Court.
• REEL lodged a preliminary objection, maintaining that the Hamburg LD did not have jurisdiction to make the damages determination pursuant to Article 32(1) UPCA. The Hamburg LD upheld REEL's preliminary objection, holding that the UPC did not have jurisdiction for actions for the determination of damages on the basis of patent infringement proceedings that had become final before a national court. Fives appealed the decision.
• The Court of Appeal disagreed with the Hamburg LD, holding that the UPC's competence included dealing with separate actions for the determination of damages after a national court had established the existence of an infringement of a European Patent and an obligation principle for the infringer to pay damages.
• REEL had pointed to the potential adverse consequences related to forum shopping by moving from one set of legal provisions to another (German national law to the UPCA). The Court of Appeal described these arguments as "not entirely without merit" but said that they must be rejected as the concept of different applicable laws being applied by the national courts and the UPC was already envisaged by the transitional regime.

• Swarco brought an infringement claim against STRABAG in relation to its patent concerning colour-mixing collective optics for outdoor image display panels. STRABAG (and the intervener Chainzone, being  the manufacturer of LED display panels containing collective optics) did not file a revocation counterclaim but did raise an invalidity objection.
• Strabag and Chainzones' invalidity objection was not substantively considered by the Vienna LD as no counterclaim for revocation had been filed. The court was clear that under Rule 25 RoP a defence must include a counterclaim for revocation against the patent proprietor in accordance with Rule 42 RoP if it is alleged that the patent is invalid.
• The Vienna LD upheld the infringement claim and issued various orders, including cessation of infringement, destruction of infringing products, and compensation for damages.
• Publication of the decision determining infringement in the public media is discretionary under Article 80 UPCA. In order for publication to be permitted, the claimant's interest in publication must outweigh any adverse consequences for the defendant. When exercising its discretion, the court must take into account the purpose of Article 80 UPCA, which is to deter future infringers and raise public awareness. In this case, Swarco did not submit any reasons and there were no apparent reasons that would make publication in the media necessary. The remedial measures awarded against Strabag under Article 64(2) UPCA were deemed to be sufficient.

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

• Ortovox brought a claim against the defendants for infringement of its patent protecting an avalanche victim search device with a transmission unit, reception unit, and a control unit for a speaker.
• The defendants brought a counterclaim for invalidity. They also maintained that they did not infringe the patent because their allegedly infringing device first required certain functions to be activated by the user to meet all the claim features. The Düsseldorf LD found that an alleged infringer must be held accountable for the behaviour of their purchasers if they instruct them to perform the activation steps or if they knowingly exploit such purchaser-side activation, knowing that it will take place.
• The court found the patent valid and infringed. An injunction was granted and an order for destruction was made on the basis of Article 25(a) UPCA (in conjunction with Article 64(2)(e) and 64(4) UPCA). The Düsseldorf LD stated that destruction is intended to prevent the entry or re-entry of the products into the market.
• The possibility of a software deactivation of the specific function necessary for the implementation of the teaching of the patent can only be considered instead of destruction if it ensures that the attacked embodiment could not be put into an infringing state again. In this case, the defendants were not able to present such a deactivation solution to the court. They even noted that the voice function could be activated in a patent-free foreign country for devices sold in jurisdictions in which the patent is in force.

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

• NanoString sought to dismiss 10x Genomics' request to amend its patent. Or, alternatively, it sought to limit the number of auxiliary requests made by 10x Genomics as 55 auxiliary requests had been filed within its application to amend its patent.
• The judge-rapporteur initially ordered 10x Genomics to reduce the number of auxiliary requests to a one-digit number. However, the panel modified that order on the basis that the reasonable number of auxiliary requests depends on the complexity of the case: in particular, the number of grounds of invalidity raised, the importance of the patent in issue and the interrelationship with other proceedings.
• Parallel invalidity proceedings were before the EPO and the parties had agreed to stay the UPC proceedings pending the decision of the Opposition Division, which the judge-rapporteur agreed to.  However, the panel noted that the stay of the UPC proceedings could only mean that the decision of the Opposition Division should be taken note of in the UPC proceedings, otherwise they could have continued independently. As such, the panel agreed that it should be possible for 10x Genomics to adjust its auxiliary requests according to the Opposition Division decision. It was given 20 days from the Opposition Division decision within which to do this.