Legal Lens on the Unified Patent Court | April 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. And with an on-the-ground team in Germany, France, the United Kingdom and the United States, we offer a unique cross-border perspective.


 

JUST IN


UPCOMING CHANGES FOR LOCAL DIVISION MUNICH

Since the establishment of the UPC in 2023, the Local Division Munich has proven to be the most popular division with nearly as many cases as the next four divisions combined (Mannheim, Paris, Düsseldorf and Hamburg). Because of its high workload, the Local Division Munich judges recently announced that the division will be receiving the following additional resources:

  • Presiding Judge of the Local Division Munich Dr. Matthias Zigann will transition to a full-time UPC judge from his current part-time role in which he splits his time equally between the UPC and Germany’s Higher Regional Court of Munich.
  • The Local Division Munich will receive two new legally qualified judges. Each judge will split their time equally between the UPC and their current national courts. The names of the appointed judges remain confidential, but they are current judges from German national courts.
  • With the appointment of additional judges, the Local Division Munich will establish a second panel of judges.

These changes will likely take effect June 1, 2024, to combat the Local Division Munich’s increasing workload and share of patent litigation in Europe.


NOTABLE CASE & POTENTIAL IMPACT


PANASONIC HOLDINGS CORPORATION V XIAOMI TECHNOLOGY GERMANY GMBH

Topics: proper service of process on non-European defendants

Rule 274 of the UPC Rules of Procedure (RoP) governs service of process on non-European entities, requiring it be done through EU regulation (Regulation (EU) 2020/1784), through the Hague Convention or through diplomatic or consular channels. If that cannot be done, Rule 275 of the RoP permits the UPC to approve an “alternative” service of process.

Last year, Panasonic Holdings Corporation filed a patent infringement action with the Local Division Mannheim against Xiaomi Technology Germany GmbH (Xiaomi Germany) and other affiliates over 4G technology. In December 2023, the UPC rejected Panasonic’s request that its attempts in serving four foreign defendants constituted an alternative service of process and ordered Panasonic to send the requisite documents for service.

Panasonic argued that by serving process on Xiaomi Germany at its German business address, it thereby effectively served three China-based Xiaomi affiliates and a fourth Xiaomi affiliate based in Hong Kong. In Panasonic’s view, the defendants operated as a unit and thus Xiaomi’s affiliates outside of Europe had actual knowledge of the suit and could therefore be considered served along with Xiaomi Germany. Specifically, one of the China-based affiliates had led negotiations on standard-essential patents for the entire group of defendants, and the other three foreign affiliates were aware of the UPC suit from parallel proceedings before the High Court of Justice in London. Rule 275 had previously been interpreted by the Local Division Munich to mean that service is proper if the defendant has necessary knowledge of the suit and can be attributed to a foreign defendant if there is a legal relationship between the two defendants or other specific circumstances that support the conclusion.

The Local Division Mannheim rejected the Local Division Munich’s approach, instead determining that Rule 275 mandates that service must first be attempted in accordance with Rules 270 to 274 before permitting an alternative service. Accordingly, service on the China- and Hong Kong-based defendants must have been attempted under the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters (Hague Service Convention), to which China and Hong Kong are signatories. Because such service had not been attempted, the UPC rejected Panasonic’s application for an alternative service under Rule 275 and ordered Panasonic to send the required documents for service.

The Local Division Mannheim’s decision aligns with a more recent decision by the Local Division Munich: that Rule 275 first requires an attempt at formal service before requesting approval to use an alternative service means. However, because formal service may result in substantial delays, the UPC may consider “reasoned request(s)” for an alternative service over a short period (e.g., a few weeks) after the service of process is received by a designated central authority in a foreign country.

TAKEAWAYS:

  • Requesting an alternative service of process under Rule 275 requires service first be attempted under Rules 270 to 274. A defendant’s actual knowledge of the suit is secondary to the procedural rules governing formal service of process.
  • A reasoned request for an alternative service on a foreign defendant may be made shortly after the service of process is received by the designated central authority in the defendant’s country.
  • The UPC’s strict approach to service of process on foreign defendants may vary from other jurisdictions. For example, Germany permits service by publication, at least as a last resort and if it’s not possible to serve the documents abroad or if such service is unlikely to be successful. In the US, federal courts are given broad discretion to authorize an alternative service under Federal Rule of Civil Procedure 4(f) without requiring an attempt to effectuate formal service under the Hague Service Convention.

RECENT FILINGS


This section reflects data that entered the UPC’s register as of April 18, 2024.

NUMBER OF CASES ON UPC REGISTER BY TYPE

*The number of counterclaims for revocation cases does not necessarily reflect the UPC’s true case load because the UPC’s Case Management System required several defendants in infringement proceedings to launch their own counterclaim for revocation, even if the substance of the counterclaims was fully identical across the parties. This inflates the number.

NUMBER OF CASES ON UPC REGISTER PER DIVISION

LANGUAGE OF UPC PROCEEDINGS

FIRST INSTANCES OF CASES PER MONTH IN 2023 AND 2024

INFRINGEMENT CASE VALUES


LATEST INSIGHTS


We provide real-time insights on UPC filings, decisions and other related developments. Additionally, 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. Check out our latest insights and upcoming speaking engagements below.

Legal Lens on the Unified Patent Court, March 2024

UPC Court of Appeal Issues First Decision, Overturns Preliminary InjunctionOn the Subject, March 1, 2024

LSPN North America Spring 2024 | Unified Patent Court, May 8-9, 2024


UPC TEAM


Have questions or want to discuss your UPC strategy? Contact Hon.-Prof. Dr. Henrik HolzapfelChuck Larsen or Diana Pisani.