Panel preview: The judges behind the UPC’s first major hearing

Tomorrow, US-based biotechnology company 10x Genomics is seeking a PI against NanoString’s CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents for RNA detection, over EP 4 108 782 B1. The PI was one of the first ever filed at the UPC (case ID: ACT_459746/2023 UPC_CFI_2/2023). On 19 September, the same court will hear another PI against NanoString.

UPC Local Division Munich ©Unified Patent Court

According to information from the Unified Patent Court, its local division in Munich is currently the most popular of all UPC courts. Of the current 52 cases active at the UPC, 18 are pending in Munich.

This number includes 14 infringement and three preliminary injunction proceedings. Thus, the UPC – and in particular its Munich local division – is certain to receive a great deal of public attention in this first major showdown in its young history.

United they stand

Now, ahead of the hearing, all eyes are on its panel of judges. Matthias Zigann, who made a name for himself as presiding judge at the Munich Regional Court, is in the hotseat. Together with Tobias Pichlmaier, who is also on tomorrow’s panel, he built Munich’s regional court into a leading venue for global SEP claims.

Former Dutch lawyer and patent attorney András Kupecz will be present as a foreign judge.

As it stands, between them the trio currently have the most cases of all UPC judges. According to data from the UPC case search tool, and from JUVE Patent information, the Dutch judge is just behind Zigann and Pichlmaier as being assigned the third-highest number of UPC cases. While Zigann and Pichlmaier have 18 cases apiece, Kupecz has 14 cases.

French biotechnologist and patent attorney Eric Enderlin completes the panel as its technically qualified judge. Below, JUVE Patent takes a brief look at the judges set to preside over one of the UPC’s first oral hearings.

Matthias Zigann: A reputation to uphold

Matthias Zigann

German judge Matthias Zigann never made a secret of the fact that he wanted to join the UPC. In the years leading up to its launch, Zigann campaigned for the new court at international conferences.

Bolstered by his good knowledge of English, the patent community considered him among the most international of the German patent judges. His appointment to the Munich local division by the Administrative Committee in October 2022 was therefore unsurprising.

Over the past five years, the Bavarian native has shown that he does not lack for self-confidence. Under his and Pichlmaier’s leadership, the Munich Regional Court became one of the busiest courts for mobile phone lawsuits in the world. Indeed, Zigann and Pichlmaier have long been at the helm of two of the Munich court’s three patent chambers.

Now both judges have a very good reputation for mobile phone proceedings concerning SEP and FRAND issues. Internationally, Zigann became one of the best-known patent judges, with disputes between Nokia and Daimler in the ‘connected car wars’ a contributing factor.

Numerous AASI injunctions against anti-suit injunctions from the US and China also bolstered his visibility; Zigann became famous for the AAAASI decision in the dispute between InterDigital and Xiaomi. The market viewed this decision as an antidote to Chinese courts; it prohibited SEP holders such as InterDigital not only from filing global lawsuits based on SEPs, but also prevented them taking action against the anti-suit injunction in other countries.

Thus, Zigann, who now spends half his time as presiding judge of a senate at the Munich Higher Regional Court, and the other half at the UPC, is considered patent-holder friendly. Many experts drew this conclusion from his strict stance against ASIs from China, which did not benefit implementers such as Oppo and Xiaomi.

It remains to be seen whether Zigann’s approach will also be advantageous to 10x Genomics. Life science companies rarely filed patent suits at the Munich Regional Court during Zigann’s time. In this respect, tomorrow’s dispute is an opportunity for Munich, as well as for Zigann, to become distinguished in this important segment.

Tobias Pichlmaier: Bringing a mixture of expertise

Tobias Pichlmaier

That the UPC’s Munich local division appealed to its second permanent judge, Tobias Pichlmaier, is no coincidence. As well as Zigann, Pichlmaier too was primarily involved with SEP cases during his time as presiding judge of the 21st Civil Chamber at the Munich Regional Court.

Furthermore, it was his chamber that ordered the first AASI against an anti-suit injunction from the US, in a patent dispute between Nokia and Continental – one of Daimler’s many co-litigants in the connected car wars. Presumably closely coordinated with the other chambers of the Munich Regional Court, patent owners in Munich have since requested these AASIs hundreds of times.

A turning point in Pichlmaier’s career, however, was a hotly debated referral to the CJEU in the dispute between industrial connector manufacturers Phoenix Contact and Harting.

In 2022, the CJEU ruled that German courts may grant a preliminary injunction in infringement cases, even if the opposition or nullity proceedings have not yet proven a patent-in-suit. The Düsseldorf Regional Court in particular had long taken a different approach.

As a result of the ruling, the German courts changed their practice in granting preliminary injunctions. Pichlmaier faced much resistance from the patent community after the referral and some of the criticism, although always purely professional, was harsh.

According to reports, it also contributed to Pichlmaier temporarily turning his back on patent law in 2022. He instead took over a chamber specialising in antitrust law at the Munich Regional Court.

Pichlmaier still holds this position today. Since June, however, he has divided his time between antitrust law at the regional court and patent law at the UPC. Some patent experts see his appointment as UPC judge as a late satisfaction. Others speculate it was a calculated move. After all, many experts had expected SEP holders to make a run on the Munich local division.

Nevertheless, the combination of antitrust and patent expertise on the bench is highly welcome, and Pichlmaier’s first UPC case being a dispute on the threshold between biotech and medical devices is probably more of a coincidence. As with Zigann, Pichlmaier’s previous experience in life sciences cases is not as extensive as that of, for example, the Düsseldorf patent judges. But, with parties already filing six lawsuits related to pharmaceuticals, biotechnology and medical devices, the Munich local division clearly remains attractive for the life sciences sector.

András Kupecz: The flying Dutchman

András Kupecz

Dutch judge András Kupecz is currently the most active non-German judge at the UPC. He is sitting on 14 cases at the UPC’s Munich central division branch, and at the two local chambers in Munich and Düsseldorf.

Among this number are infringement actions at the Munich local division including 10x Genomics against NanoString, and Panasonic against Oppo and Xiaomi – which involves six infringement claims at the Munich local division – as well as ongoing claims at the central division.

Here, Sanofi-Aventis is battling Amgen, while Astellas has filed two revocation claims against patents owned by Healios/Osaka University. Kupecz has also overseen a recent preliminary objection, filed by Amgen against Sanofi, regarding the admissibility of infringement proceedings filed in hard copy directly to the UPC’s registry in Luxembourg.

This sheer number of complex proceedings is somewhat of a baptism of fire for the former Dutch lawyer and patent attorney, whose career as a patent judge has kicked off with arguably the biggest gig in Europe. But the decision to leave private practice perhaps for good was clearly not a difficult one.

Having joined the partnership at Pinsent Masons in Amsterdam in October 2021, amid the firm’s drive to grow its Dutch presence, just over a year later the UPC announced Kupecz’s new role as a technical judge focusing on biotechnology.

While initially holding this alongside his partner position, Kupecz resigned from Pinsent Masons relatively shortly thereafter. In May, he confirmed to JUVE Patent that he intended to fully focus his energies on the judicial role from the court’s 1 June launch.

However, Kupecz then moved from his position as a UPC technical judge to become a legally qualified UPC judge. The move came among a spate of resignations among other former technical judges – among whom was Grégoire Desrousseaux, dual-qualified litigation partner at leading French firm August Debouzy. Furthermore, perhaps somewhat unusually, the Dutch national is working exclusively across the UPC’s chambers in Germany.

In the European patent market and among its patent lawyers, Kupecz is highly regarded as a skilled individual with strong technical knowledge. Prior to joining Pinsent Masons in 2021, he had founded and run his own firm since 2013. Here he nurtured a particular penchant for life sciences. Before this, Kupecz had spent four years at Simmons & Simmons, with whom he retained a strong connection: for example, he worked alongside the firm as counsel on various litigation projects in the life science sector, such as for Samsung BioEpis.

With regard to his judicial role, so far, it seems, so good. According to JUVE Patent sources, Kupecz has generally impressed observers with his straightforward, diligent attitude to the few UPC cases he has overseen. While Kupecz is the new kid on the judicial block, the Dutch national also has the advantage that the UPC itself is an entirely new system. In this instance, he also has an advantage given his more extensive experience in life sciences cases than Zigann or Pichlmaier – each judge can learn from the other.

Eric Enderlin: The power of biotech

As a technically qualified judge, Eric Enderlin completes the panel of legally qualified judges. Last October, the French national was one of the eight patent attorneys with a background in biotechnology which the UPC appointed as a TQJ in this technical field.

Enderlin speaks French, English and German, which naturally qualifies him for proceedings at one of the German local divisions. He is a partner in the global IP law firm, Novagraaf. In addition, Enderlin is qualified as a French and European patent attorney. In this role he advises clients from the healthcare and cosmetics sectors, particularly in the fields of chemistry, pharmacy and biotechnology. He is also active in artificial intelligence applied to healthcare patents and leads Novagraaf’s chemistry and life sciences department in France.

Thus, in Enderlin and Kupecz, the panel in the dispute between 10x Genomics and NanoString has two biotech experts. JUVE Patent has no information on the national patent cases in which Enderlin was most recently active. (Co-author: Amy Sandys)