Germany’s patent firms lead claimant actions at the UPC

In the initial start-up phase, many parties have already filed extensive lawsuits at the UPC, with many individual cases. These cases span a plethora of different industries and technical fields – the speculation that some sectors would not use the UPC in the beginning seems to be unfounded. This is good news for the new court, because pharmaceutical companies – which were previously said to be sceptical of the UPC – have already submitted some commercially important patents to the new court.

According to JUVE Patent research, just over 60 individual cases are pending before the UPC as of early October. Unfortunately, it is not possible to gain a complete picture using the publicly available data. JUVE Patent has tried to fill in the gaps by inquiring with representatives, but it is possible that some of the individual suits filed are not included in our listing. According to JUVE Patent’s information, representatives have not yet been named in at least eight cases.

Law firm with the most UPC cases

According to JUVE Patent research, there are not yet many law firms representing more than one claimant among the UPC lawsuits filed so far. The frontrunners are Bird & Bird and Bardehle Pagenberg. Bird & Bird is leading the Edwards Lifesciences, NanoString, Dexcom and Nestlé cases. Bardehle Pagenberg is suing on behalf of 10x Genomics, Philips and Amgen.

Simmons & Simmons and Finnegan Henderson each represent two different companies. The latter is representing plastics specialist KraussMaffei Extrusion in an infringement suit against Troester. Finnegan also filed a PI for SES-imagotag, a specialist in electronic price tags, against competitor Hanshow. Hanshow has enlisted the help of a team of patent attorneys and lawyers from Dompatent and lawyers from Taylor Wessing for the proceedings. The company chose this combination in 2022 for inspection proceedings before Düsseldorf Regional Court. Advisors from Dompatent include Alexander von Kirschbaum, Alexander Schuld, WanZe Zhang, Ziduan Fang and Andreas Gagidis, and from Taylor Wessing Roland Küppers, Alexander Rubusch and Eugen Reismann. In the meantime, Hanshow has filed a nullity case against SES-imagotag’s patent at the central division in Paris, with Alexander Schuld and Ziduan Fang from Dompatent.

Simmons & Simmons filed a PI during a trade fair and an infringement suit for Oerlikon Textil, as well as an infringement suit for Dutch company Plant-e. The latter was the first to file a suit at The Hague local division – so far the only UPC case in the Netherlands. Lead counsel is Oscar Lamme.

According to JUVE Patent information, some defence counsel are not yet known. However, it is clear that Hogan Lovells has landed the most cases on the defence side so far, representing seven companies in different proceedings. Most of the representatives listed in the register are partners from the German practice. Overall, it is noticeable that lawyers admitted to the bar in Germany are in the majority among the representatives at the UPC.

First SEP lawsuits

Among the first cases, one of the most extensive is the dispute over SEPs between Panasonic, Oppo and Xiaomi. Panasonic has filed seven infringement claims against various subsidiaries of Oppo and Xiaomi.

Düsseldorf IP boutique Kather Augenstein, representing Panasonic, is thus the first law firm to demonstrate its experience with SEP patents at the UPC. Although partners Christof Augenstein, Miriam Kiefer and Christopher Weber have a long-standing client relationship with Panasonic, this is the first time the firm has filed a lawsuit for the company. Panasonic is not limiting its action to the UPC, but has also filed national lawsuits in Germany, the UK and China.

Oppo is relying on a total of three law firms for its defence. The company instructed the teams around Tobias Hessel of Clifford Chance, Andreas Kramer of Vossius and Rien Broekstra of Brinkhof. Xiaomi trusts its regular advisors from Hogan Lovells, including Steffen Steininger, Henrik Lehment and Benjamin Schröer, as well as a Freshfields Bruckhaus Deringer team around Wolrad Prinz zu Waldeck und Pyrmont, Kilian Seidel and Corin Gittinger.

Pharma industry not so reluctant

Prior to the launch of the UPC, many held the pharmaceutical industry to be highly circumspect in considering whether to opt out patents. Thus the first rulings will attract all the more attention.

Munich UPC local division

In fact, the UPC’s first oral hearing was for a pharmaceutical case, namely 10x Genomics v. NanoString. The Munich local division has already handed down two decisions: In one case the judges granted 10x Genomics a PI, and in the other case the judges did not grant a PI. The lawyers and patent attorneys at Bardehle Pagenberg can thus claim the first PI win after oral proceedings. The team comprising Tilman Müller-Stoy, Tobias Wuttke and Axel Berger represented 10x Genomics. NanoString relied on its regular advisors around Oliver Jüngst and Daniela Kinkeldey from Bird & Bird. In addition, three infringement lawsuits and one revocation lawsuit are pending at the UPC.

Prosthetic valve dispute ramps up

For many years, Edwards Lifesciences and Meril Life Sciences have been locked in intense patent litigation in numerous countries. Edwards Lifesciences has now taken advantage of the launch of the UPC to directly file PI and infringement actions for patents protecting prosthetic valve crimping devices. The company filed the suits at the Munich local division and the Nordic-Baltic regional division. Both parties are relying on their regular counsel. Edwards Lifesciences retained a team from Bird & Bird led by Boris Kreye and Elsa Tzschoppe for most cases, but instructed Magnus Dahlman from Advokatbyrån Gulliksson for the suit at the Nordic-Baltic regional division.

Meanwhile, Meril enlisted the team led by Andreas von Falck of Hogan Lovells for the case at the Nordic-Baltic division. The company also initiated a revocation action at the central division in Paris. For this, the company retained Emmanuel Larere of Gide in Paris with whom it also cooperates in national French proceedings.

The global dispute between Amgen, Regeneron and Sanofi has now reached the Munich local division. The battle concerns a patent for cholesterol-lowering medication under the brand name Repatha. The parties are relying on the same representatives as in the national German proceedings, with Bardehle Pagenberg and the patent attorney firm df-mp representing Amgen. The latter firm has extensive experience in patent proceedings. Hoffmann Eitle, ZSP and Carpmaels & Ransford represent Sanofi.

Carpmaels thus has a London-based patent attorney, Daniel Wise, present in one of the first proceedings. Niels Hölder of Hoffmann Eitle is leading the proceedings.

Vapes subject to revocation action

Most recently, extensive litigation has begun in the e-cigarette industry. Henrik Holzapfel of McDermott filed nine revocation actions for NJOY Netherlands against two competitors at the central division in Paris.

Thum IP represents the two defendants, Juul Labs and its subsidiary VMR Products. Bernhard Thum already represents Juul in the opposition proceedings at the EPO. Parallel national proceedings are not pending in Europe, but Juul Labs had already filed several patent infringement proceedings against NJOY in the US in June.

High-stakes electronics case

Technology cases with high economic relevance include the three infringement suits filed by Philips against Belkin at the local division in Munich. These concern patents for inductive power transfer systems. Philip’s three patents asserted against Belkin are relevant to the Qi standard.

Philips has retained a team led by Tilman Müller from Bardehle Pagenberg. He already worked for Philips before moving to Bardehle in spring 2023. Belkin is relying on Markus Gampp from DLA Piper. The US computer accessories manufacturer has already instructed the firm for the parallel national proceedings against Philips.