JUVE Patent
Legal news ticker in cooperation with GRUR
Legal news ticker in cooperation with GRUR
JUVE Patent and GRUR Patent bring you the latest news and developments concerning European and UPC patent law.
October 2024
Determination of FRAND licence conditions by the Unified Patent Court?
Matthias Leistner recently addressed the question in this journal of how the Unified Patent Court (UPC) should implement the decision of the Court of Justice of the European Union in the Huawei v ZTE case in patent infringement proceedings involving a FRAND defence (GRUR Patent 2024, 327). In this context, he takes the view that the UPC can and should – like the English courts – determine the terms of a FRAND licence agreement in the case of mutually "willing" parties who are neither able to agree on the terms of such an agreement nor willing to accept a binding provision and ist modalities by an arbitration tribunal. This article attempts to shed light on the conditions and limits of such a judicial FRAND determination. (Peter Meier-Beck, GRUR Patent 2024, page 411)
The Unified Patent Court: A Supranational Tribunal Embedded into a Complex System of Rules and Legal Cultures
This article analyses a recent order by the UPC (local division The Hague) in an action for provisional measures which raises a number of complex questions regarding the interpretation of the claimant’s requests, the concept of contracting member state to the UPCA, international jurisdiction under Article 31 UPCA, the territorial scope of decisions pursuant to Article 34 UPCA, cease-and-desist declarations, and the urgency of actions for provisional measures. To solve these issues the UPCA has to be interpreted in accordance with public international law and European law, taking into account the national practices of all contracting member states. (Simon Klopschinski, GRUR Patent 2024, page 395)
The Editors‘ Choice – UPC (CD Paris), decision v. 4.7.2024 – UPC_CFI_230/2023, GRUR-RS 2024, 16255
In an order from 2 May 2024 (UPC CFI 484/2023), the UPC central division in Paris declared Article 71c (2) of Regulation (EU) 1215/2012 to be inapplicable if the parallel national infringement action was filed before the UPCA came into force (1 June 2023). The author has already countered this view in GRUR Patent 2024, 291. In a comparable scenario (initiation of parallel infringement and invalidity proceedings before June 1, 2023), the Paris local division now follows the approach of the Paris central division and denies the requirements of Article 71c (2) of Regulation (EU) 1215/2012. The author explains why this is not correct. (Michael Nieder, GRUR Patent 2024, page 391)
The Boards of Appeal and the interpretation of the patent claim – plus decision T 439/22
The Boards of Appeal of the EPO have been in disagreement for some time about how the claim should be construed when examining patentability. Now a Board of Appeal has referred respective questions to the Enlarged Board of Appeal. This article presents the refferal decision. (Hermann Deichfuß, GRUR Patent 2024, page 385)
The novelty of an invention by reworking a prior publication in accordance with the “Organogelmaterial” decision
It is chemical or pharmaceutical inventions in particular that can be exposed to a special form of the novelty objection: Their subject matter is often already present “in cognito”, so to speak. I. e., the success and outcome of a specific chemical or pharmaceutical process – according to the invention – can occur, for instance, when a process is reworked that has been explained to aim for a completely different result or product. Yet, this issue of results being produced by happenstance requires further scrutiny. Despite the evident effect and outcome of a process, there may be an incongruence between the prior publication and the later invention that can be crucial when it comes to assessing the issue of novelty. The German Federal Court of Justice’s recent “Organogelmaterial” judgment provides an update on the court’s current doctrine. This article will provide an outline for the complex “rules of the game” under the court’s doctrine. (Jochem Gröning, GRUR Patent 2024, page 381)
Developments and findings of FRAND case law since the ECJ's Huawei/ZTE decision
The conditions under which licence offers correspond to the FRAND conditions have been a concern for patent litigation courts for some time and were marked by the now well-known Huawei/ZTE decision of the European Court of Justice. In this decision the CJEU created for the first time a concrete, binding framework for licence negotiations between SEP owners and technology users, where compliance or non-compliance is crucial for the injunction claim. After almost 10 years since the Huawei/ZTE decision, we are attempting to examine the general framework of the CJEU both with regard to its implementation by the German Supreme Court (so-called FRAND Objection I and II case law) as well as with regard to national and international development of (instance court) case law from a practitioner's perspective. (Cordula Schumacher/Clemens-August Heusch, GRUR Patent 2024, page 373)
In the new edition of the authors’ regular case law overview for GRUR Patent, they provide a succinct, yet detailed where necessary, insight in the UPC’s most recent verdicts. (Klaus Haft/Sabine Agé/Giulia-Isabella Otten, GRUR Patent 2024, page 358)
Anti-suit injunctions in the United States in the SEP and FRAND context: Recent developments and overview
This article discusses the concept of anti-suit injunctions (ASIs) and the use of ASIs in the context of standard essential patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) licensing disputes. First, we introduce anti-suit injunctions and outline the three-step test for assessing the propriety of an ASI in the United States, which includes satisfying two threshold requirements, applying the “Unterweser” factors, and assessing the injunction’s effect on international comity. Second, we discuss specific cases in which US courts addressed requests for anti-suit injunctions in the FRAND context and consider the factors these courts relied on to grant or deny anti-suit injunctions. Third, we summarise the recent February 2024 Ericsson v. Lenovo decision in the Eastern District of North Carolina. We consider the court’s reasoning for declining to issue an anti-suit injunction against Ericsson and how this decision fits in with previous US anti-suit injunction cases. Finally, we consider how the US approach to ASIs differs from approaches in China and Europe. (Anne-Raphaëlle Aubry/Tigran Guledjian/Eric Huang, GRUR Patent 2024, page 344)
Applicable law and gaps in unitary patent law - Part 3: External, internal and apparent gaps
This article is the last piece of a three-part analysis of the choice-of-law and gap-filling architecture under the system of the European unitary patent law. Considering the multi-level structure of the conglomerate consisting of international, European, and national legal norms, the challenge is not limited to choice-of-law but extends to gap-filling wherever the system of the European unitary patent law is devoid of substantive legal norms. Building on the previous analyses in the first and second part of this series (GRUR Patent 2024, 230, and GRUR Patent 2024, 282), this article will analyse and explain the methods of gap-filling and explain practical implications and rules for those parts of the European unitary patent system where a normative vacuum must be filled by recourse to national legal doctrine. (Tim W. Dornis, GRUR Patent 2024, page 338)
SEPs in the UPC system: How the UPC should implement Huawei/ZTE
This two-part article discusses how SEP disputes should be handled before the Unitary Patent Court. The first part (GRUR-Patent 2024, 272) has addressed the double nature of the Huawei/ZTE framework for the enforcement of SEPs: It explains how the obligations for the enforcement of SEPs, laid down in Huawei/ZTE, equally follow from EU competition law as well as from the FRAND undertakings in conjunction with the Union law principle of good faith. This second part will discuss how the UPC should treat cases where two generally willing licensees cannot reach agreement on FRAND terms and conditions. It will show how the UPC, based on the Huawei/ZTE case law and by way of an active case management, could stimulate arbitration settlements and, as an ultima ratio, engage in the setting of FRAND terms and conditions, thereby following the example of the English courts. (Matthias Leistner, GRUR Patent 2024, page 328)
R&D collaboration between companies and universities: an important part of Germany's innovative capacity
Germany is living off its reputation but no longer flourishing as a location for innovation – which at the same time puts a great deal of pressure on researchers at German companies, research institutions and universities. Despite a (once) promising R&D rate, the proportion of actual market relevant innovations and services from Germany is declining. The following article sheds light on Germany as a research location with its various players with specific focus on cooperation of companies and universities as well as research institutes. It concludes with a call for the legislator to strengthen Germany as a location for innovation in this specific field in the long term (Martina Eberle/Christian Czychowski, GRUR Patent 2024, page 316)
Defense in UPC revocation actions – Admissibility of subsequent requests for patent amendment
The effective defence of a patent against several invalidity attacks before the UPC is of utmost importance to patentees. Two recent decisions of the central division address the situation of a revocation action before the central division and parallel counterclaims for revocation before a local division. The decisions deal with the conditions under which the defendant can file subsequent amendments to patent claims. They also provide insights on procedural issues relating to the filing of such requests and the applicable rules and standards for assessing their admissibility, as well as the conditions for referring procedural questions to the Court of Appeal. (Dirk Schüßler-Langenheine/Thorsten Bausch/Katrin Winkelmann, GRUR Patent 2024, page 310)
The Editors' Choice - UPC (Court of Appeal) order of 26.2.2024 335/2023
The rules of the EPGVerfO (see R. 211.2) provide that the court may require the applicant of an application for interim measures to provide all reasonably available evidence in order to be able to convince the court with a “sufficient degree of certainty” that the applicant is entitled to initiate proceedings, the patent is valid and its rights are being violated or are at risk of being violated (see Art. 47 UPCA). But how can the “sufficient degree of certainty” be determined in more detail? This “The Editors’ Choice” addresses this question in light of the UPC Court of Appeal’s order in NanoString Technologies et al./10x Genomics et al. (detection procedure). (Winfried Tilmann, GRUR Patent 2024, page 297)
The Editors’ Choice – UPC (LD Munich), Order of 02.02.2024 – UPC_CFI_14/2024
This “The Editors’ Choice” deals with and sheds light on the UPC Munich local division’s application of the rules on optional bifurcation of the infringement proceedings and the counterclaim for revocation according to Art. 33(3) UPCA. In the given case a central revocation action concerning the same patent was pending at the UPC central division as well as opposition proceedings before the EPO. (Stephan Dorn, GRUR Patent 2024, page 295)
Concurrent lis pendens - order of Paris central division 2 May 2024 – UPC CFI 484/2023
The UPC central division in Paris considers Art. 71c para. 2 Regulation (EU) 1215/2012 to be inapplicable if the parallel pending national proceedings were initiated before the UPCA came into force (1 June 2023). The article shows the consequences of this view, argues in favour of the applicability of the conflict rules in Art. 71c para. 2, 29 et seq. Regulation (EU) 1215/2012 also in such a case and explains the procedural implications of this. (Michael Nieder, GRUR Patent 2024, page 291)
Applicable law and gaps in unitary patent law - Part 2: Referral structures in the multi-level system
This article is the second part of a three-part analysis of the choice-of-law and gap-filling architecture under the system of the European unitary patent law. Considering the multi-level structure of the conglomerate consisting of international, European, and national legal norms, choice-of-law proves to be a particularly vexing challenge. Building on the previous analysis of the status of an incomplete unification of the patent rights and titles and of the conditions of rights enforcement under the European unitary patent law in the first part of this series (GRUR Patent 2024, 230), this article will take a closer look at choice-of-law under the reign of Regulation (EU) No 1257/2012, Regulation (EU) No 1260/2012, the UPCA, and the Rome II Regulation. In the third and final part of this series (in the next issue), we will address questions of substantive law and choice-of-law gap-filling under the European unitary patent system. (Tim W. Dornis, GRUR Patent 2024, page 282)
SEPs in the UPC System: The Issue of Market Dominance after Huawei/ZTE
This two-part article discusses how SEP disputes should be handled before the Unified Patent Court. The first part addresses the double nature of the Huawei/ZTE framework for the enforcement of SEPs: It explains how the obligations for the enforcement of SEPs, laid down in Huawei/ZTE, equally follow from EU competition law as well as from the FRAND undertakings in conjunction with the Union law principle of good faith. The second part (to be published in GRUR-Patent 8/2024) will discuss how the UPC should treat cases, where two generally willing licensees cannot reach agreement on FRAND terms and conditions. It will show ways how the UPC, based on the Huawei/ZTE case law, by way of an active case management could stimulate arbitration settlements and, as an ultima ratio, engage in the setting of FRAND terms and conditions thereby following the example of the English courts. (Martin Drews/Volkmar Henke, GRUR Patent 2024, page 272)
UPC Digest, Issue 1: The UPC’s time period regime and its established legal practice so far
In each issue of our quarterly UPC Digest, we throw a spotlight on a specific topic in the UPC’s case law. To start the series, we firstly discuss the subject of time periods, which at first glance may not be the Mont Ventoux of patent infringement and validity proceedings before the UPC, but it still presents a number of obstacles on the way there. Even the start of a time period is not always clear-cut, and one question that arises in a variety of situations is whether there is justification for extending or shortening a period. As yet, of course, there is no established, let alone harmonised, handling of these aspects by the various divisions of the court. This article aims to provide a commentary overview of the problems addressed in UPC practice so far and of the approaches towards solving them, to shed light on some remaining unresolved issues and thus to provide practitioners with an initial guide. (Martin Drews/Volkmar Henke, GRUR Patent 2024, page 266)
The Editors’ Choice – UPC (Local Division Düsseldorf) GRUR-RS 2024, 7098, and UPC (Local Division Mannheim), UPC_CFI_359/2023 (21.3.2024)
In our category “The Editors’ Choice” we present current verdicts or orders that have special importance and are of interest for the patent community. We provide for a concise analysis by experts in the field and an abridged version of the court’s grounds with the most relevant parts. The two decisions of the Local Divisions Düsseldorf and Mannheim concern several aspects of confidentiality orders according to Rule 262A RoP. Interestingly, the Local Divisions have aligned their orders with the aim to harmonise the legal issues concerned. The orders shed light on the general legal standard for measures under 262A RoP and provide further indication for the scope of such orders. (Sebastian Dworschak/Lina Marie Schauer, GRUR Patent 2024, page 253)
The Editors‘ Choice – UPC (Court of Appeal) GRUR-RS 2024, 6739
In our category “The Editors’ Choice” we present current verdicts or orders that have special importance and are of interest for the patent community. We provide for a concise analysis by experts in the field and an abridged version of the court’s grounds with the most relevant parts. This UPC CoA decision deals with two issues regarding the UPC proceedings. The first issue concerns a primarily procedural question, namely the composition of the panel at the CoA. The decision discussed here was rendered by the panel of legal judges without involving technical judges. In the view of the Court the issues at stake were of a purely legal nature and therefore did not require the expertise of a technical judge. Secondly, the decision provides guidelines with regard to the access of the public to the register of the Court and to the written pleadings and evidence submitted during the proceedings to the court file. (Jochen Bühling, GRUR Patent 2024, page 246)
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