Legal Lens on the Unified Patent Court | January 2024

Overview


The Unified Patent Court (UPC) is revolutionizing the way patents are enforced in Europe, and McDermott’s intellectual property team is here to help you navigate this dynamic landscape. Our Legal Lens on the Unified Patent Court newsletter is designed to keep patent holders and legal departments well-informed of the latest updates and strategic insights on the new patent court.


 

NOTABLE CASES & POTENTIAL IMPACT


MYSTROMER AG V REVOLT ZYCLING AG

In June 2023, bicycle manufacturer myStromer AG filed a petition with the UPC alleging that its competitor, Revolt Zycling AG, had infringed myStromer’s patent covering an electric bike design. MyStromer sent a cease-and-desist letter to Revolt Zycling and requested a preliminary injunction against Revolt Zycling within the same day. In response, Revolt Zycling filed a protective letter with the court, arguing that Revolt Zycling had not infringed the patent and that myStromer’s rights with respect to the patent were exhausted in accordance with UPC Agreement Article 29, but Revolt Zycling did not, for example, argue against validity of the patent. The UPC issued its decision granting myStromer AG’s preliminary injunction the same day that the petition was filed, in ex parte proceedings, that is without giving Revolt Zycling any opportunity to add to the arguments put forward in the protective letter. The injunction was effective immediately, but myStromer was required to post a €500,000 bond within a short period after the date of the decision, and Revolt Zycling was subject to a €250,000 fine if it violated the injunction. Revolt Zycling did not appeal the preliminary injunction.

TAKEAWAYS:

  • The UPC has shown that it is capable of reacting quickly to requests for ex parte preliminary injunctions. Urgent applications may be granted within the same day that they are filed.
  • Filing a protective letter to stave off the issuance of an ex parte preliminary injunction is a strategic decision subject to both advantages and disadvantages depending on the circumstances. Strong arguments in a protective letter may convince the UPC to hear the defendant before ordering a preliminary injunction. Alternatively, weak arguments in a protective letter may embolden the UPC to issue a preliminary injunction where the UPC otherwise may have been inclined to wait to hear the defendant’s side of the story.

10X GENOMICS V NANOSTRING

On June 1, 2023, Harvard College and its licensee 10x Genomics, Inc., filed an application with the UPC Munich Local Division requesting a preliminary injunction against NanoString Technologies, Inc., and its affiliates, which were alleged to have infringed Harvard College’s unitary patent. The asserted patent involves a method for detecting analytes “in a cell or tissue sample.” The applicants challenged the defendants’ embodiments related to the detection of RNA as infringing the applicants’ patent. On September 15, 2023, the Munich Local Division issued a preliminary injunction after an oral hearing. This was the first preliminary injunction issued in the UPC system that was not decided on an ex parte basis. In deciding in favour of 10x Genomics, the court found the following:

  • The interests of 10x Genomics in enforcing its patent rights outweighed the interests of NanoString.
  • Monetary damages would be insufficient to redress the damages caused by NanoString’s infringement.
  • The asserted patent claims were sufficiently likely to be valid.
  • There was “sufficient certainty” that NanoString had infringed the asserted patent claims.

According to the court, the defendant bears the burden of proving by a “preponderance of probability” that the patent is invalid. NanoString appealed the preliminary injunction; a decision by the UPC Court of Appeal is pending.

TAKEAWAYS:

  • In interpreting the validity of patents, the UPC appears to have taken an approach that is not necessarily aligned with some European national courts, but instead closely follows the standards set by the European Patent Office.
  • Patentees seeking injunctions within UPC countries may find greater success in the UPC than in European national courts. For example, German courts apply a standard of review that is less favourable to patentees than the UPC’s standard of review in determining whether defendants have met their burden to prove invalidity in the context of disposing of a preliminary injunction motion.

AIM SPORT VISION AG V SUPPONOR OY

AIM Sport filed a statement of claim for infringement action against Supponor on July 5, 2023, and shortly thereafter filed an application for a preliminary injunction. AIM and Supponor are competitors that offer virtual advertising services that allow sports broadcasts to superimpose location-appropriate ads on sport stadiums to effectively target members of a global audience. The UPC Helsinki Local Division held an oral hearing in which both AIM’s preliminary injunction and Supponor’s preliminary objection to AIM’s statement of claim were argued. Ultimately, the court did not reach the merits of the case because the court found that it lacked jurisdiction. In accordance with the UPC Agreement’s opt-out regime, AIM had opted its non-unitary patent-in-suit out of the UPC system. Before filing the UPC action against Supponor, AIM attempted to withdraw its earlier opt-out. However, based on the UPC Rules of Procedure and the UPC Agreement, the court found that this withdrawal attempt was unsuccessful because AIM had commenced infringement and invalidity litigation in German national courts before withdrawing its opt-out from the UPC system.

TAKEAWAYS:

  • In evaluating a patentee’s ability to renege on opting a patent out of the UPC system, it is important to consider whether the patentee has previously commenced litigation in European national courts. If such litigation has been commenced, then the patentee will not be able to subsequently come back to the UPC system after it opted out.

CUP&CINO KAFFEESYSTEM V ALPINA COFFEE SYSTEMS GMBH

CUP&CINO filed an application with the UPC for a preliminary injunction on June 27, 2023. The technology in the asserted patent involved a “method and device for producing milk foam.” After filing the application, CUP&CINO opted the patent-in-suit out of the UPC system. Nevertheless, the UPC Vienna Local Division found that this procedural hiccup did not deprive the court of jurisdiction to hear the request for a preliminary injunction. The court based this conclusion on its interpretation of the UPC Agreement, which provides that “[u]nless an action has already been brought before the Court a proprietor of . . . [a] European patent . . . shall have the possibility to opt out from the exclusive competence of the Court.” Ultimately, the court did not grant the applicant’s preliminary injunction because the court found that the applicant had not proven with sufficient certainty that the defendant had infringed the patent-in-suit.

TAKEAWAYS:

  • Applications for preliminary injunction and applications for infringement constitute “action[s]” under the UPC Agreement. Such actions may continue to be subject to the UPC’s jurisdiction even after the patentee opts their patent out of the UPC system.

Note: Decisions on preliminary injunctions are the focus of the recent notable cases because the UPC has not existed long enough for actions on the merits to proceed to judgment. In fact, the majority of pending cases are actions on the merits.


RECENT FILINGS


The section reflects data that entered the register as of January 15, 2024.

NUMBER OF CASES ON UPC REGISTER BY TYPE

NUMBER OF CASES ON UPC REGISTER PER DIVISION

LANGUAGE OF UPC PROCEEDINGS

FIRST INSTANCES OF CASES PER MONTH IN 2023

*December data may be incomplete as cases from that month were still entering the register by the time of this publication.

INFRINGEMENT CASE VALUES


LATEST INSIGHTS


We provide real-time insights on UPC filings, decisions and other related developments. Check out the latest below.

Evaluating Europe’s New IP Court: How the UPC Is Doing So Far and What’s to Come, IP Watchdog, December 20, 2023

UPC Court of Appeal Hands Down First Decision at Breakneck Speed, IAM, October 26, 2023

The UPC Means Business: Latest Patentee Wins Preliminary Injunction, On the Subject, September 25, 2023

A Win for Patentees: UPC Issues First Reasoned Decisions, On the Subject, August 24, 2023


SPEAKING ENGAGEMENTS


Our lawyers regularly participate in industry-leading conferences and events to assess the UPC’s progress and equip companies with the knowledge they need to navigate the new court. Below are the programs from last quarter where we discussed the UPC.

LSPN Europe 2023 | The Unified Patent Court: The New Era, November 21, 2023

OCIPLA Virtual Program | The Unified Patent Court: Initial Cases, November 16, 2023

Life Sciences Dealmaking Symposium 2023 | IP Workshop: Asset Valuation and the Changing International Landscape, November 9, 2023

IAM Connect: UPC 2023 | Using the New Court System to Maximum Effect, October 17-18, 2023

6th Annual International IP Summit | EU’s Unified Patent Court, October 12-13, 2023


UPC TEAM


Want to discuss your UPC strategy? Contact a member of our UPC team in the Authors section below.