The epi (which is the professional body representing European Patent Attorneys) provides a podcast series on UPC Case Law. Episode 1 relates to provisional measures. This is one of the many great resources for those who want to stay updated on UPC developments.
Soccer-related UPC proceedings
With the European soccer championship about to start in June, it is interesting to note that an application for provisional measures pursuant to R. 206 UPCA was lodged recently based on EP 1 944 067. The patent relates to a technique of detecting an offside situation in a soccer match.
The Union des Associations Européennes de Football (UEFA) is one of the co-defendants.
The matter is pending under the official case number ACT_16267/2024.
UPC infringement action before CD
An infringement action was lodged against Microsoft Corporation before the Central Division (CD) of the UPC. The matter is pending under case number ACT_18406/2024.
This appears to be the first infringement action lodged with the CD.
By way of background, Art. 33(1) UPCA establishes two possible venues for bringing an infringement action against a defendant that has its principal place of business outside the territory of the Contracting Member States: The infringement action against such a defendenat can be brought, at claimant’s choice, before (i) the local division or the regisional division of a state where the alleged infringement has occurred, or (ii) the CD. Thus, for defendants for which there is no venue in accordance with Art. 33(1)(b) UPCA, Art. 33(1) UPCA establishes an alternative venue (the CD) before which the action can be brought.
Claim construction at the UPC
In decision UPC_CFI_292/2023, the Local Division (LD) Munich of 20/12/2023, the UPC rejected a request for a preliminary injunction. According to the first headnote of the decision, claim amendments made during prosecution can aid the claim construction . In the decided case, the LD Munich was of the opinion that a claim amendment introduced during prosecution defined an original claim feature in greater specificity and, thus, had to be construed more narrowly than suggested by claimant.
In an article published on LinkedIn, a fellow German patent attorney remarked that he considers the first headnote of this decision to represent a significant change as compared to the national German claim construction practice. I don’t think that the decision of the LD Munich is a significant departure from German national practice. While German courts have traditionally not relied on file history estoppel, several decisions handed down by the German Federal Supreme Court (BGH) in recent years – such as BGH decision of 14/06/2016 – X ZR 29/15 – Pemetrexed and BGH decision of 10/05/2011 – X ZR 16/09 – Okklusionsvorrichtung (“occlusion device”) – held that claim amendments made during prosecution can be a useful tool for claim construction. The decision by the LD Munich appears to be in line with this German national case law (which in itself represents a shift towards the national practice of other EPC contracting states that apply the principles of file history estoppel).
UPC trends
Juve Patent has published an interesting article (“Is the UPC trending towards bifurcation, but with a twist?”), which discusses initial trends of how the UPC deals with infringement actions and counterclaims for revocation
UPC time considerations
The UPC has been in operation for 100 days. One of the interesting questions in the early case law relates to whether the time of day is to be taken into consideration when determining which of several events happened first. In a webinar, the colleagues of Hoffmann Eitle have provided insights on such a situation, in which a revocation action (with the central division) and an infringement action (with a local division) were filed on the same day but with a time delay of 19 minutes between them. In the proceedings dealing with the admissibility of the revocation action, the Court had to consider whether time of day is to be taken into consideration for determining which action was filed first (with the deciding decision apparently being of the opinion that time of day matters is relevant when determining which action was filed first, in the interest of legal certainty).
This rationale is interesting in consideration of the fact that (i) in many other jurisdictions, it is only the date that matters (and some Courts, such as the German Federal Patent Court, do not appear to be set up for determining at which time of day an action is received when filed in paper form); (ii) may stakeholders are inclined to adopt a “first to act” strategy (in particular if they believe a local division to be more patentee-friendly than the central division, as also discussed in Hoffmann Eitle’s webinar today), with the time of day being potentially decisive for who was first to act; and (iii) the “smallest unit of time” for determining which event happened first (time of day or date only) can be relevant for scenarios other than infringement / revocation actions, such as determining whether an opt out or UPC revocation was effective earlier (relevant for the admissibility of a UPC revocation action).
UPC developments
For those of you who are interested in UPC-related news, both the Kluwer Patent Blog and JUVE Patent provide updates on recent developments.
Acting UPC law firms
Last week, I attended a very informative seminar on UPC proceedings hosted by one of the major German mixed patent law firms. The presenters emphasized that they are not only registered UPC representatives (of which there are many), but also acting UPC representatives in the sense that they are presently engaged in proceedings before the UPC. As of today, only few registered UPC representatives are already engaged in ongoing UPC proceedings.
Out of curiosity, I checked the names of the law firms acting for plaintiffs in infringement actions before the UPC, as of today (July 10, 2023). I limited my review to the main actions (of which I can access a total of 16 in the register as of today). Here is my count (please let me know if I have inadvertently missed out on your firm, in which case I will update). The list is sorted by number of main actions. For firms having filed an equal number of main actions, the firms are listed alphabetically.
Bardehle: 4 main actions
Arnold Ruess, Bird & Bird, Bonelli Erede, Clifford Chance, eip, Finnegan, Gleiss Große, Grünecker, Gulliksson, Roschier, Sandart, Wildanger: 1 main action each
Number of UPC proceedings
The UPC has opened its doors for field operation more than two weeks ago. When checking the UPC public proceedings register in the CMS, I can see 12 proceedings (three revocation actions and nine infringement actions). The nine infringement actions include three infringement actions in Munich, two in Dusseldorf, two in Hamburg. This suggests that either the CMS electronic register is not fully operational or the case numbers are much lower than the 100 cases expected to be filed within the first week according to the (optimistic) ipwatchdog blog of 31.5.2023 entitled “Countdown to the Unified Patent Court, Part V, Five Predictions for the UPC on Day One.”
UPC isolated revocation action
When testing some of the functionalities provided by the UPC CMS search tools, I came to realize that an isolated revocation action (i.e., a revocation action that is not a revocation counterclaim in an infringement action) has been lodged with the UPC central division in Munich on June 2, 2023, i.e., the second day of field operation. The patent is a bundle patent (i.e., no unitary effect, as it has been granted prior to June 1, 2023).
The value in dispute is 100 Mio. EUR. A lawsuit between the same parties regarding a U.S. patent family members of the patent now challenged before the UPC was recently decided by the U.S. Supreme Court in Amgen vs. Sanofi. The U.S. case dealt with the interesting question of enabling disclosure over the full claim scope or, stated differently, the degree to which independent claims may be generalized as compared to the specific embodiments (which were considered to be disclosed in an enabling manner in the U.S. case).
This is a worthy start for the UPC system, which clearly attracts interesting cases.
It is a bit unfortunate that, notwithstanding all efforts to set up a modern, all electronic system, the revocation action appears to have been filed in paper form pursuant to R. 4.2 UPC (UPC CMS not working properly).