UPC Milan divisions reject Insulet’s PI applications

Insulet has already seen success in this litigation series against competitor Medtrum at the Regional and Higher Regional Courts Düsseldorf, as well as in damages proceedings. However, the company has now suffered a setback. The local division Milan has rejected Insulet’s PI action against Menarini (case ID: ACT_40442/2024, UPC_CFI_400/2024).

Similarly, the central division Milan rejected Insulet’s application for provisional measures against Eoflow under RoP 206 (case ID: ACT_39640/2024, UPC_CFI_380/2024). Both Milan divisions had doubts about the patent’s validity. Insulet now has two weeks to decide whether to appeal to the Court of Appeal. Alternatively or additionally, Insulet could also initiate proceedings on the merits.

The company has filed suits over infringement of EP4 201 327, which protects insulin patch pumps. The European patent has unitary effect which can only be asserted before the UPC.

Following successes at Düsseldorf Regional Court against the two competitors in the spring, neither company may sell their products in Germany. Now Insulet is attempting to drive the two companies out of other markets by means of the UPC lawsuit.

Interestingly, both Milan decisions made the assessment that a patent cannot be enforced to a limited extent in PI proceedings. This is in contrast to main proceedings, in which the patent owner could proceed on the basis of a restricted patent. This is particularly relevant if there are concerns regarding a patent’s validity, as in the present case.

German-Italian teams

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.

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 panel at the central division featured Anna-Lena Klein and technically qualified judge Uwe Schwengelbeck. Andrea Postiglione presided.

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.