Predominantly German teams in Insulet hearings at Milan UPC divisions

What role does the locality of the individual divisions play in UPC proceedings? This is an interesting question that lawyers, especially in Italy, are grappling with in the Unified Patent Court’s second year of existence.

A common fear expressed by lawyers in Milan is that, when it comes to cases that are already running nationally in other countries, clients may decide against hiring additional local counsel.

Insulet’s lawsuits against two competitors, Menarini and Eoflow, are a case in point. The hearings concern insulin patch pumps. Insulet has already had success in this litigation series against competitor Medtrum at the Regional and Higher Regional Courts Düsseldorf, as well as in damages proceedings.

Insulet sees national success

On 27 February 2023, Düsseldorf Regional Court granted Insulet a preliminary injunction against Menarini. Then, on 15 April 2024, the company obtained a default judgment against competitor Eoflow at Düsseldorf Regional Court. As a result, neither Eoflow nor Menarini may sell their products on the German market.

Now, Insulet also wants to keep these two competitors out of other markets. The company has thus filed suits over infringement of EP4 201 327, a European patent with unitary effect which can only be asserted before the UPC.

Mixed Munich-Milan team for Menarini

Today, the local division Milan will hear Insulet’s PI action against Menarini (case ID: ACT_40442/2024, UPC_CFI_400/2024). A team from the mixed law firm Peterreins Schley headed by Marc Grunwald leads for Insulet. The team also comprises Frank Peterreins, Felix Glöckler, Simon Reuter, Constanze Wedding, and Maximilian Gross.

Menarini Diagnostics is relying on a team that also includes local Italian lawyers. The company has retained a Bird & Bird team that includes patent attorney Claus Becker and associate Jonathan Hechler, with Munich partner Christopher Maierhöfer at the helm. The Milanese team members are Giovanni Galimberti, Edoardo Barbera, and associates Evelina Marchesoni and Andrea Vantini.

The local division judges are presiding judge Pierluigi Perrotti, Alima Zana, Anna-Lena Klein and technically qualified judge Uwe Schwengelbeck. They will have to assess the sufficient degree of certainty regarding RoP 211.2, the necessity of provisional measures RoP 206.2(c) and the balancing of interests RoP 211.3.

Hoyng ROKH for Eoflow

Tomorrow, the central division Milan will hear Insulet’s application for provisional measures against Eoflow under RoP 206 (case ID: ACT_39640/2024, UPC_CFI_380/2024).

Hoyng ROKH Monegier is representing Eoflow with Mirko Weinert, Martin Köhler, Joscha Torweihe, and Elisa In den Birken from Düsseldorf. The team also includes patent attorney Christopher Pierce and patent attorney trainee Bumjoon Jang from Amsterdam, as well as Mar Conde from Madrid.

The Hoyng ROKH lawyers will be present in court on Tuesday as co-counsel, while the Bird & Bird team for Menarini will also participate in Wednesday’s hearing.

Two of the judges from Tuesday’s hearing will be on the bench in the Eoflow case: Anna-Lena Klein and technically qualified judge Uwe Schwengelbeck. Andrea Postiglione will preside.

The two defendants filed a connection joinder under R. 340 and an intervention under R. 313. However, the court dismissed all applications. An appeal regarding the connection joinder is still pending before the Court of Appeal in Luxembourg. The infringement, the validity and the balancing of interests will be important in the PI proceedings.

Parallel UK proceedings

There are also proceedings pending in the UK against Menarini and Eoflow based on EP 1 874 390 B1. Simmon & Simmons is representing Insulet in these proceedings. Menarini relies extensively on Bird & Bird. Eleanor Root and Henry Elliott are leading the UK proceedings for Menarini.