The Unified Patent Court’s First Year

Thank you for joining us for “The Unified Patent Court’s First Year,” where our panelists from Germany, France, Ireland, the UK and the US gave their national perspectives on how the UPC is shaping up. Among the many topics discussed were some of the key decisions from the UPC in its first year, which shed light on the direction this important new court will be taking. Brief summaries and links to the opinions of these are below.

1. Seoul Semiconductor et al. v. expert e-Commerce GmbH et al., Dusseldorf Local Division UPC (Oct. 10, 2024)
2. Koninklijke Philips N.V. v. Belkin GmbH et al., UPC, Munich Local Division (Sept. 13, 2024)
3. Syngenta Ltd v. Sumi Agro Ltd. et al., UPC, Munich Local Division (Aug. 27, 2024)
4. Aylo Premium Ltd., et al. v. Dish Technologies, et. al., UPC Court of Appeals (Sept. 3, 2024)
5. Edwards Lifesciences Corp. v. Meril Italy srl, UPC Central Division, Paris (Nov. 13, 2023)
6. NanoString Technologies, Inc., et al. v. 10x Genomics, Inc., et al., Court of Appeals UPC (Feb. 26, 2024)
7. Curio Biosciences Inc. v. 10x Genomics, Inc., UPC Court of Appeal (April 17, 2024)
8. Novawell v. C-Kore Systems Ltd., UPC Paris Local Division (March 1, 2024)
9. Volkswagen AG v. Network System Technologies LLC, UPC Court of Appeal (Sept 17, 2024)

Section1
Seoul Semiconductor et al. v. expert e-Commerce GmbH et al., Dusseldorf Local Division UPC (Oct. 10, 2024)
In Seoul Semiconductor, the Dusseldorf Local Division of the UPC entered a permanent injunction against electronics distributor expert e-Commerce, enjoining the distribution of mobile phones.  The patent at issue is directed to a light-emitting diode (LED) structure that is included as a component in mobile phones.  The Dusseldorf Local Division overruled the defendant’s objections that the LED structures were a “minimal fraction of cell phones,” and imposed not only a permanent injunction, but also ordered the recall and destruction of cell phones that were still in the distribution channel.

Section2
Koninklijke Philips N.V. v. Belkin GmbH et al., UPC, Munich Local Division (Sept. 13, 2024)
Philips previously sued Belkin for infringement in the Dusseldor Regional Court, and lost.  Belkin previously brought an unsuccessful nullity action against the patent in the German Federal Patent Court, and is in the process of appealing that ruling to the German Federal Court of Justice.   The UPC declined to stay its own proceedings while the Germany nullity dispute is appealed.  Instead, the UPC found that the patent is infringed by Belkin, and imposed a permanent injunction.  The UPC carved out Germany from the scope of the injunction, because the German national court had already found the patent not infringed.   This case highlights that the UPC may diverge from national rulings, and may still enforce a patent even though a national court had previously found it not infringed.

Syngenta Ltd v. Sumi Agro Ltd. et al., UPC, Munich Local Division (Aug. 27, 2024)
The Munich Local Division imposed a preliminary injunction against defendant Sumi Agro, enjoining defendant from manufacturing, offering, placing on the market, using, or importing its herbicidal composition, finding that it was more likely than not that the defendant’s herbicide composition infringed the patent in suit.  Regarding validity, the court noted the defendant’s burden to prove invalidity, and that in the context of streamlined preliminary injunction proceedings, the defendant should limit its invalidity arguments to three.  The court disagreed with defendants’ arguments.  The court cautioned that an unreasonable delay in moving for provisional relief would be fatal to the applicant’s claim, and stated that no more than a two-month delay would be reasonable in moving for a preliminary injunction, which was satisfied by the applicants.  The court noted the commercial harm caused to Syngenta, in that the parties’ herbicides are in direct competition, and that the infringing herbicide is cheaper, thus undercutting the patent owner’s market share. The court did not impose security on plaintiff in the case of harm caused by an erroneous preliminary injunction.  

Aylo Premium Ltd., et al. v. Dish Technologies, et. al., UPC Court of Appeals (Sept. 3, 2024)
The UPC Court of Appeals rejected the appeal of accused infringer Aylo, which offers video streaming services.  Dish Technologies sued Aylo for patent infringement in the Mannheim Local Division.  Aylo objected that it has no physical presence in Germany, with its servers and personnel elsewhere.  Aylo also objected to the UPC action, because the day before Dish Technologies sued in the UPC, it had sued Aylo on a related patent in the German national court system.  The Court of Appeals rejected both arguments.  Because Aylo’s offerings could be downloaded in Germany, that was sufficient for jurisdiction.  And the multiplicity of lawsuits was not a valid objection.  This ruling from the Court of Appeals appears to give a green light to parallel litigation in the UPC and in Europe’s national court systems.

Edwards Lifesciences Corp. v. Meril Italy srl, UPC Central Division, Paris (Nov. 13, 2023)
After Edwards Lifesciences sued the Indian and German subsidiaries of Meril for patent infringement in the Munich Local Division, Meril created a new Italian subsidiary.  That Italian subsidiary filed a revocation action in the Paris Central Division.   Edwards objected, saying that the revocation claim needed to be filed as a counterclaim in the Munich Local Division.  The Paris Central Division overruled the objected, saying that Meril’s Italian subsidiary was an independent legal entity, and since it was not included in the Munich case, it was free to file the revocation action in the Paris Central Division.  This maneuver opens up a defensive strategy for defendants to effectively bifurcate proceedings and to have invalidity tried through the Central Division, which may be advantageous.  Subsequently, however, the Central Division upheld amended claims as being patentable, in a victory for Edwards Lifesciences.  

NanoString Technologies, Inc., et al. v. 10x Genomics, Inc., et al., Court of Appeals UPC (Feb. 26, 2024)
The Court of Appeals of the UPC revoked the preliminary injunction that had been awarded to 10x Genomics by the Munich Local Division, in what was one of the UPC’s first substantive rulings.  The Court of Appeals recognized the plaintiff’s burden to prove that it is at least more likely than not that the patent is infringed, and the defendant’s burden to show that the patent is invalid.  The Court of Appeals re-assessed the prior art and determined that it was more likely than not that the subject matter of the claims will prove to be obvious.  The Court of Appeals did recognize the standing of Harvard University, as a non-practicing entity, to seek preliminary injunctive relief.  

Curio Biosciences Inc. v. 10x Genomics, Inc., UPC Court of Appeal (April 17, 2024)
In this suit between two US companies, the Dusseldorf Local Division had ordered that the language of the proceedings would be German.  Curio, a smaller company, successfully appealed to establish English as the language of the proceedings.  The Court of Appeals noted that English is the language of the patent, and the evidence of infringement is overwhelmingly in English, and that the burden of conducting the proceedings in German was disproportionately upon Curio, as a smaller company.  The Court of Appeal noted that if the balancing of interests is equal, nonetheless the position of the defendant should be the deciding factor.  Among the practical consequences of this, the plaintiff’s motion for a preliminary injunction was slowed down by this fight over language, which was resolved in defendant’s favor.

Novawell v. C-Kore Systems Ltd., UPC Paris Local Division (March 1, 2024)
Patentee C-Kore obtained an ex parte order for a “saisie” (i.e., evidentiary seizure), which was performed at the premises of defendant Novawell in France.  Novawell challenged the legality of the saisie proceedings, arguing that C-Kore has misrepresented facts in its ex parte application, including as to the urgency of the saisie.  However, the court noted that if Novawell had been informed in advance of the saisie, it could have made certain computer data unavailable or moved its product to another location.  The court reviewed the requirement of the saisie, including the presence of a court-appointed expert and a bailiff, to ensure the integrity of the proceedings, and overruled Novawell’s objections.

Volkswagen AG v. Network System Technologies LLC, UPC Court of Appeal (Sept 17, 2024)
Sued by a US-based non-practicing entity, Volkswagen moved to have the Munich Local Division impose security for legal costs and other expense, which the Munich Local Division denied.  The Court of Appeals overruled the lower court’s decision, noting that the question is whether the financial position of the plaintiff gives rise to a legitimate and real concern that a possible order for costs (i.e., the “loser pays” obligation) may not be recoverable.  Reasoning that if NST were to lose its case, the Court of Appeals noted that the value of its portfolio might plummet, making cost recovery impossible.  The Court of Appeals rejected NST’s arguments that imposing a security for costs would unreasonably deny it access to justice.   The amount of costs imposed was EUR 100,000.  Accordingly, plaintiffs (particularly non-practicing entities) should be expected to post security at the outset of a case; however, the amount of the security might not be excessive.

Event Speakers and Moderators:

Wayne Stacy
Executive Director
Berkeley Center For Law & Technology

Steve Carlson
Partner
Robins Kaplan LLP
             
Alexander Harguth
Partner
Preu Bohlig

Konstantin Schallmoser
Partner
Preu Bohlig

Rajvinder Jagdev
Partner
Powell Gilbert

Marc Lauzeral
Counsel
Schertenleib

Yasmine Azzaoui
Associate
Schertenleib

Bethan Hopewell
Partner
Powell Gilbert

Camille Lignieres
Legally Qualified Judge, Paris Local Division
Unified Patent Court

Rebecca Charnas Grant
Head of Patent Litigation, Associate General Counsel
Genentech

Ali Alemozafar
Partner
Wilson Sonsini Goodrich & Rosati

Michael Schwartz
Senior Vice President, IP Litigation
Adeia

Yuan Hao
Co-Director, Berkeley Asia IP and Competition Law Center and Senior Fellow
Berkeley Law

Ariel Reich
Senior Counsel
HP, Inc.

Li Zhu
Partner
Robins Kaplan LLP