JUVE Patent

Milan central division commences work

Today the UPC announced the central division in Milan will be launched on 27 June. Judge Andrea Postiglione, who will head the central division in Milan, took the oath of office last Friday. Postiglione is Deputy Advocate General at the Supreme Court of Cassation in Rome. Back in May the UPC announced he had been appointed as one of the division's three judges, together with Anna-Lena Klein from Germany and Marije Knijff from the Netherlands. Klein is currently a judge at the Munich Regional Court, while Knijff is a judge at the District Court of The Hague. Both will take their oath of office in Milan on 1 July. The central division in Milan will take over the areas originally intended for London as the third seat of the UPC central division before the UK withdrew from the UPC project. The Milan central division will have competence to hear proceedings concerning ‘human necessities’, including pharmaceuticals and medical devices, although SPC-related cases will remain with Paris.

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Surprising change of judge at the UPC Court of Appeal

French judge Françoise Barutel is retiring from the UPC. Her successor at the Court of Appeal will be Paris lawyer Emmanuel Gougé. The change comes as a surprise, one year after the UPC took up its work. Barutel is currently still a member of the first panel and was involved in the Court of Appeal's first substantial decision, which overturned a PI against NanoString in the dispute with 10X Genomics in February. Barutel will continue her work at the Court of Appeal until 8 September. One day later, Emmanuel Gougé will take over her duties. He is a partner at the international law firm Pinsent Masons and a well-known patent litigator in France. According to the UPC's announcement he will not continue to work as a lawyer in private practice. Nevertheless, Gougé will be the only UPC judge at the Court of Appeal who was previously a lawyer rather than a full-time judge at a national court. In its announcement, the UPC cites ‘personal reasons’ on the part of Barutel for her surprising leave.

First UPC hearing on the merits in Paris

Today the Paris local division will hold its first hearing on the merits. It concerns the infringement dispute between medical device company Dexcom and Abbott over EP 3 435 866 (case ID: ACT_546446/2023, UPC_CFI_230/2023). The presiding judge is Camille Lignières. The legally qualified judges are Carine Gillet and Rute Lopes, while the technically qualified judge is Alain Dumont. Bird & Bird partner Anne-Charlotte Le Bihan leads the team representing claimant Dexcom. Bird & Bird is also leading the parallel national lawsuits. Recently, the UK High Court declared two patents of both parties invalid. Abbott France relies on François Pochart's Paris practice of August Debouzy. For its subsidiaries and other companies challenged in national courts, Abbott has instructed Taylor Wessing teams. These include Gisbert Hohagen, Dietrich Kamlah and Christian Lederer from Germany, Christian Dekoninck from Brussels, Thomas Adocker from Vienna, Wim Maas from Amsterdam and Eelco Bergsma from Eindhoven.

UPC expands territorial reach with Romania

The UPC welcomes the first new country after the court was launched last June. As several law firms unanimously report, Romania has completed the ratification of the UPC Agreement. It must now deposit the instruments of ratification with the Council of the European Union. According to Article 89(2) of the UPC Agreement, Romania will become a contracting member state on the first day of the fourth month after the instrument of ratification is deposited. If Romania does this by the end of May, it could become the court's 18th member state in September. Germany was the last of the UPC signatory states to complete ratification in February 2023, thus triggering the start of the UPC. Cyprus, the Czech Republic, Greece, Hungary, Slovakia and Ireland are further signatory states that have not yet ratified the UPC Agreement. The Irish government recently postponed the necessary referendum planned for 7 June. The scope of injunctions that the UPC can issue will thus grow even greater with Romania as the 18th state. Up to now the country's courts have not had a high profile in terms of patent law.

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UPC appoints three judges to Milan central division

The UPC Administrative Committee has announced the appointment of three judges to the forthcoming Milan central division. The names of the judges, or the presiding judge, have not yet been revealed, however. According to the website, the recruitment process took place early this year, with a shortlist of candidates following in April. The Milan central division is due to open in late June 2024 and will have competence to hear proceedings concerning ‘human necessities’, including pharmaceuticals and medical devices, although Paris will retain competence for SPC proceedings. The city gained the third seat of the central division following the departure of the UK from the UPC project. The UPC and the Italian Ministry of Foreign Affairs finally signed a formal agreement pertaining to the third seat of the UPC Central Division in Milan in January 2024.

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New judges appointed to Munich and Mannheim local divisions

The Unified Patent Court has announced the appointment of additional legally qualified judges in Germany. Daniel Voß and Dirk Böttcher are to join the judges' panels in the Munich and Mannheim local divisions respectively. Furthermore, presiding judge of the Munich central division Ulrike Voß will also bolster the local division in Munich. Daniel Voß is presiding judge of the Düsseldorf Patent Chamber 4b, whereas Dirk Böttcher is presiding judge of the 14th Civil Chamber at Mannheim Regional Court. Ulrike Voß is presiding judge of the 15th Civil Senate at Düsseldorf Higher Regional Court and presiding judge of the Munich central division. The appointments are in response to the increasing workload and are the first in a series of planned measures to increase capacities across various divisions.

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UPC appeal clarifies factors behind choice of proceeding language

On 17 April, the UPC Court of Appeal issued its first decision on a request under Article 49(5) UPCA, which allows a party to request a change in the language of proceedings. In an order issued in the ongoing case between Curio Bioscience and 10x Genomics, which are currently battling at the Düsseldorf local division, the court of appeal declared that it would take into account ‘all relevant circumstances’ when dealing with a request to change the language of proceedings, with the ‘position of the defendant [the] decisive factor’ if the interests between parties are balanced (case no: UPC_CoA_101/2024/ACT_5164/2024). Initially, the president of the court of first instance Florence Butin had rejected this after Curio Bioscience applied for a change of language of the proceedings from German to English earlier in the year. Its arguments are based on the company operating mostly in English and being disadvantaged by having to prepare proceedings in German, while operating with a much smaller workforce than its competitor. UK-based firm Carpmaels & Ransford represent Curio Bioscience, while Bardehle Pagenberg act for 10x Genomics.

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Munich local division to get second judges' panel in June

According to well-informed sources, the local division in Munich is to receive a second panel. However, the UPC did not confirm this when asked by JUVE Patent. The second panel will reportedly be set up on 1 June 2024 - the UPC's first birthday - and is said to be the UPC's response to the large number of cases filed in Munich in its first year of existence. Official UPC statistics from the end of March show the local division counted 43 infringment and 12 PI proceedings, plus 64 counterclaims for revocation. This is more than any other court in the UPC system. Furthermore, the panel headed by presiding judges Matthias Zigann and Tobias Pichlmaier is currently dealing with a large number of procedural applications and orders. The addition of a second panel would involve the appointment of a second presiding judge, as well as two new judges from Germany. It seems there have not yet been any final decisions on these matters. Moreover, sources have informed JUVE Patent that UPC officials are also considering strengthening the Court of Appeal and the Paris central division. The former has seen a high volume of proceedings in German, and with only two German-speaking judges, Klaus Grabinski and Patricia Rombach, it is thought the panel at the Court of Appeal may require reinforcement.

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Season of main hearings kicks off at the UPC

Last Tuesday, the Munich local division heard an infringement action for the first time. The case brought by KraussMaffei Extrusion against Troester GmbH is thus the first ever in which the UPC has heard a main action for patent infringement. In the first ten months, the various UPC court divisions had only heard PI cases and procedural orders. KraussMaffei Extrusion had sued Troester in July 2023 with the support of Finnegan Henderson at the UPC for infringement of EP 3 221 117 (case ID: ACT_528357/2023). Both companies compete in the market for the production of tyre treads. The early hearing date came about because Troester, with the support of law firm Wildanger Kehrwald and the patent attorney firm IN-PAT from Hanover, had waived a counterclaim for revocation and instead relied on ongoing appeal proceedings against the patent at the EPO. The EPO Boards of Appeal will not decide on Troester's appeal until the end of July. Only after this will the Munich local division announce its judgment in the infringement case. As can be seen from the UPC's calendar, the court will hear three further infringement actions before the summer holidays: Munich local division - Philips vs Belkin over Wifi technology (14 May), Düsseldorf local division - Kaldewei vs Bette over bathroom equipment (16 May) and Paris local division - Abbott vs Dexcom over glucose-monitoring devices (24 May).

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Ireland's government officially postpones UPC referendum

Today, Ireland’s minister for enterprise, trade and employment, Peter Burke, has confirmed that the country’s government has postponed its scheduled referendum on ratification on the UPC Agreement. Originally due to be held on 7 June 2024, to coincide with the local and European elections, the government has not confirmed on which date the vote will instead be held. In Ireland, a referendum on the country being a UPC signatory is required, since a yes vote would devolve jurisdictional power away from the Irish courts to the supranational court, which is currently comprised of 17 members. In a statement, Burke says, “While the government continues to believe that joining the UPC is essential and that the referendum should be pursued, it is clear to me that more time is needed for public discourse and engagement on the matter to help inform the debate.” As such, it appears the government is concerned that public awareness concerning the issues at stake are not high enough to secure a vote in the affirmative.

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Parties can now file counterclaims for revocation for multiple defendants

Today the Unified Patent Court announced a significant change to its case management system. In defending against an infringement suit, parties now have the ability to file one counterclaim for revocation on behalf of multiple defendants. Previously, counterclaims for revocation had to be filed separately for each defendant.

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UPC Court of Appeal hears vital transparency case today

At 9.30am CET, the UPC Court of Appeal in Luxembourg convened to hear the much-anticipated case, brought by Freshfields Bruckhaus Deringer partner Christopher Stothers, over court transparency and access to documents. In a previous order made by the court, the three-strong judging panel comprised of Rian Kalden, Ingeborg Simonsson and Patricia Rombach decreed that as a ‘member of the public’ Stothers must appoint an official representative to officially bring his case to the court. In the intervening time, he has engaged eight representatives overall. Opposing party Ocado is represented by three patent law firms. The hearing will mostly cover defining the threshold for a reasoned request as laid out under Rule 9 UPC Rules of Procedure, and how the court should deal with access in a situation where defendants are served proceedings prior to the conclusion of a case. Read the full case preview by clicking on the link below.

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Milan's UPC central division signed into agreement

The Unified Patent Court, represented by president of the UPC Court of Appeal Klaus Grabinski, and the Italian Ministry of Foreign Affairs, have signed a formal agreement pertaining to the third seat of the UPC Central Division in Milan. On 26 January, a ceremony took place whereby the two parties signed the Headquarters Agreement which, according to Italian deputy Prime Minister and Minister of Foreign Affairs and International Cooperation, Antonio Tajani, “represents another significant step in the Italian government’s efforts to promote the protection of industrial property, a crucial element for the growth and competitiveness of our country”. Director general for Europe of the Italian Foreign Ministry, Nicola Verola, signed the agreement on behalf of Italy. The country gained the third seat of the central division following the departure of the UK, and thus the London seat, from the pan-European system in 2020. The two other central divisions in Munich and Paris are currently sharing all appeal cases, but from summer 2024 the Milan central division will have competence to hear proceedings concerning ‘human necessities’, including pharmaceuticals and medical devices, although SPC-related cases will remain with Paris. The UPC has not yet confirmed the seat’s technical and legal judges.

Ireland confirms UPC referendum date

On 22 January, the Irish government confirmed that a referendum concerning the country's participation in the Unified Patent Court will take place in June 2024. Should the population return a 'yes' vote, Dublin would become the next location for a UPC local division, and Ireland would be the 18th participating member state. The referendum will take place alongside the country's local and European elections.

Paris moves forward with UPC seizures

As UPC cases at the local and central divisions in Paris increase, the use of seizures, which traditionally play a role in national proceedings in patent infringement cases in France, is coming to the fore. The first orders to secure material to prove a possible patent infringement have already been issued. One was issued by the Paris local division ex parte in the dispute between C-Kore Systems and Novawell over EP 2 265 793, which covers a “subsea apparatus, assembly and method”. These cable monitors are used for testing subsea electrical assets and for fault finding, e.g. in oil fields. C-Kore, represented by a team from Schertenleib Avocats and HGF, accuses its former customer Novawell, of infringing its cable monitor with the competing product Sicom. The judges Camille Lignieres, Carine Gillet und Alima Zana ordered a seizure at Novawell’s Montpellier premises to secure evidence of infringement (UPC_CFI_397/2023/ORD_587064/2023). Weighing the interests of both parties, the judges saw sufficient justification for C-Kore’s application and proof of urgency of a seizure and granted an ex-parte order for the preserving of evidence pursuant to the Rules of Procedure 192. The court appointed Jérôme Sartorius, patent attorney of Cabinet Nony to carry out the seizure with the assistance of a bailiff.

Düsseldorf division issues PI in dispute over avalanche rescue technology

As things currently stand, Mammut Sport may not launch a new version of its devices for locating avalanche victims in the German and Austrian markets. At the request of patent holder Ortovox, the Düsseldorf local UPC division issued an ex parte PI (case ID: ACT_589655/2023). Mammut had previously presented the new devices in its Barryvox series at the ISPO sports trade fair in Munich. Ortovox believes the new model infringes its EP 3 466 498, which protects a search device for avalanche victims and a method for operating it. This is a bundle patent valid in Germany, Austria and Switzerland. Nullity proceedings against the Swiss part of the patent are also pending at the Federal Patent Court in St. Gallen. Ortovox produces and sells its own search devices based on its EP 498. A team from the Düsseldorf IP law firm Kather Augenstein led by partner Miriam Kiefer represented the sporting goods manufacturer in the application for provisional measures at the UPC. Shortly after the judgment, a Düsseldorf-based Bird & Bird team around Oliver Jüngst took over representation of Mammut Sport.

Munich local division rejects PI application by SES-imagotag against Hanshow

For the second time, the Munich local division has rejected an application for a preliminary injunction. This was requested by the French company SES-imagotag against its Chinese competitor Hanshow (case ID: UPC_CFI_292/2023). However, the judges were not sufficiently convinced that European patent EP 3883277 was infrindged and did not grant PI. SES-imagotag can now appeal the judgement. The dispute between the two companies centres on electronic price tags, such as those used in supermarkets. In early September a Munich based team of US-firm Finnegan Henderson had filed the PI case for SES-imagotag against the Chinese competitor. Hanshow has enlisted the help of a team of patent attorneys from Dompatent and lawyers from Taylor Wessing for the proceedings. The company chose this combination in 2022 already for inspection proceedings before the Düsseldorf Regional Court in the same dispute. In the meantime, Hanshow has filed a nullity case against SES-imagotag’s patent at the Central Division in Paris (case ID: ACT_578871/2023). So far the Local Division Munich is considered by plaintiffs to be very attractive for PI claims. To JUVE Patent's knowledge, the court had previously issued one PI in the dispute between 10x Genomics and NanoString and rejected a second one in the same dispute.

UPC to hear test case on third-party access to pleadings in February 2024

UK firm Mathys & Squire has applied to intervene in a UPC appeal against a decision in the now-settled Ocado vs. Autostore dispute (case no. for intervention: APL_584498/2023). The appeal seeks to overturn a judicial decision to allow third-party access to the statement of claim. Mathys & Squire has already argued that evidence and pleadings should be made available to the public by default, and filing a test case on the matter at the central division in Munich (case no. APP_588681/2023) at the end of November. The Court of Appeal case has been assigned to the second panel with judge Ingeborg Simonsson as judge-rapporteur, while the Munich case is stayed pending the outcome of this appeal. The judge has set a 15-day deadline for comments on Mathys & Squire's intervention application. Judge Simonsson will then decide whether to accept the application, after which parties will then have an additional 15 days for written arguments before an oral hearing scheduled for February 15, 2024.

BMW and Bardehle file revocation action at UPC

BMW is the first car manufacturer to use the UPC to destroy a patent. The Munich-based company recently filed a revocation action with the Central Division Paris against the Spanish company ITCiCo (ACT_585518/2023). The action focuses on EP 2 796 333, which protects a "speed detection system and compliance monitoring". It was granted by the EPO in 2019. The Spanish IP law firm Lehmann & Nuovo is responsible for the application. Johannes Lang of Bardehle Pagenberg represents BMW in this case. The IP firm has a long-standing albeit non-exclusive relationship with the carmaker. It is not yet known who is representing the other side in the UPC case.

New functionality enables multiple legal team members to work in UPC CMS

Today the administrators of the UPC CMS have activated the "My Legal Team" functionality. Lawyers and patent attorneys have complained since the launch of the UPC that the CMS does not offer the possibility to work on cases as part of a team. Instead, the designated UPC representative is responsible for entering and uploading all documents and communication relating to the cases. This does suit the division of labour in law firms. There has also been particular criticsm that the uploading process takes too long and technical problems cause delays. With the introduction of this new functionality, however, UPC representatives can now assign authorisation to other users in their team, such as legal assistants, thus enabling them to work directly on cases in the CMS. The functionality will be available for existing cases as well as for newly submitted cases.