Legal Lens on the Unified Patent Court | February 2024


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.



Note: At the time this newsletter went to press, the UPC Court of Appeal’s decision overturning the preliminary injunction in 10x Genomics v NanoString had not yet been released. We will provide a review of that case in our March 2024 issue.   


Topics: rules of construction; access to justice for small companies; language of proceedings

In October 2023, carbonated beverage device manufacturer SodaStream Industries Ltd. filed an infringement action with the UPC in Germany against Swedish competitor Aarke AB under a European patent EP1793917, directed to a device for carbonating a liquid with pressurized gas. On December 4, 2023, Aarke filed an application – in English – petitioning the court to change the language of the proceedings from German to English, the language of the patent at issue.

Aarke argued that it is extremely inconvenient for a small company to be sued in a language it is not fluent in. Aarke also alleged that SodaStream chose German as the language of the proceedings to impose burdensome translation costs on Aarke. SodaStream requested that the court reject the application to change the language of the proceedings for being inadmissible per Rule 323.1 of the Rules of Procedure (RoP). SodaStream argued that the relevant UPC procedural rules and articles should be interpreted to require that respondents apply to change the language of the proceedings in the original language in which the complainant initiated them, and that respondents can only apply to change the language with the submission of its statement of defense.

The court rejected SodaStream’s interpretation of the RoP, finding it inconsistent with the meaning of the rules and articles taken as a whole. Rather, the court interpreted Rule 323.1 to say that the submission of the statement of defense is the deadline for the applicant to request a change of language, not the only time it can be done. The court also determined that Aarke’s situation as a small business defending itself warrants “particular consideration” and granted its application to change the language from German to English.


  • The rules and articles of the UPC should be interpreted “as a whole.”
  • Equity is “an important goal of the UPCA” when it comes to ensuring “fair access to justice” for small and midsize enterprises.
  • The claimant’s suggestion that the defendant a much larger entity was attempting to use choice of language for strategic advantage is not implausible.


Topics: ex parte preliminary injunction granted; trade show; prosecution history

On December 11, 2023, the UPC’s Local Division Düsseldorf granted an ex parte preliminary injunction for ORTOVOX Sportartikel GmbH against Mammut Sports Group AG and Mammut Sports Group GmbH (collectively, Mammut) for allegedly infringing ORTOVOX’s European patent EP3466498, directed to a search device and methods for locating avalanche victims. The accused device is named Barryvox S2, which could be preordered online and was also exhibited at the ISPO Munich Trade Fair in November 2023.

In its order, the court declared that it was convinced “with sufficient certainty” that ORTOVOX’s rights were infringed by the offer and distribution of the “attacked embodiment” within Germany and Austria and granted the requested ex parte provisional injunction.

In examining the out-of-court argumentation of Mammut (which was made in response to a warning letter) and interpreting the scope of protection of ORTOVOX’s patent, the court stated that the “grant file [was] not to be taken into account, in principle, when interpreting the patent.” The court added that “mere statements made during the grant procedure do not initially have any significance in terms of limiting the scope of protection” and that “at most, they can have an indicative meaning as to how the person skilled in the art can understand the feature in question,” citing national case law from the German Federal Court of Justice.


Topics: preliminary injunction denied; prosecution history applied

On December 20, 2023, the Local Division Munich rejected a request for a provisional injunction by SES-Imagotag SA under its European patent EP3883277 gainst Hanshow Technology Co. Ltd. and its affiliates (collectively, Hanshow). The application had been filed September 4, 2023, against Hanshaw’s electronic labels for products and price labeling. The decision focused on how the printed circuit board (PCB) and antenna are arranged relative to each other within the housing of the electronic label. The meaning of the claim features was disputed between the parties.

The court stated that it was not convinced that the attacked embodiments implemented the patented teaching.

In interpreting the scope of protection of the patent, the court referred to the patent specification and changes it had undergone during prosecution. It determined that the original version of the applied-for patent claim at issue “can be used as an aid to interpretation in connection with amendments made during the grant procedure” and thereby impacts the claim construction after the grant proceeding.

The court interpreted the claim narrowly, as requiring the antenna and the PCB to be placed “diametrically” opposite each other and thereby excluded the accused device. Imagotag appealed the decision on January 4, 2024.


  • In general, European courts do not apply the doctrine known in the US as the “file wrapper estoppel doctrine,” which requires a court to consider the statements made or amendments filed by the applicant during prosecution proceedings when later interpreting the scope of the patent in infringement or invalidity proceedings. The US doctrine is an equitable doctrine – a patent holder is not allowed to advance an infringement argument that relies on a patent scope that it surrendered during negotiations with the examiner to get the patent issued. (Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 733 (2002).)
  • European courts do not apply this doctrine largely because Article 69 of the European Patent Convention does not mention that prosecution history may be considered. Similarly, the Agreement on a Unified Patent Court (UPCA) and its protocol does not specify that the prosecution history is to be considered.
  • But the UPC does provide that national law is to be applied, and the relevance of the prosecution history is debated among the UPC Member States and potentially applicable in the UPC:
    • According to German case law, statements made before the European Patent Office (EPO) during prosecution will generally not bind the patentee in later infringement proceedings. However, the German Federal Court of Justice may allow the reference to statements in the grant procedure as an indication of how a person of ordinary skill in the art (POSITA) construes the patent’s subject matter. The German Federal Court of Justice may also allow the reference to differences in wording between the granted patent and the preceding published patent application.
    • In France, the declarations made by a patent holder before the French Patent Office or the EPO are admissible and may be examined by French judges as factual elements to be considered along with other factors to assess, inter alia, the validity of a patent, but have no binding force over them.
  • No decision from the Court of Appeal has been made as to whether and to what extent to consider the file history.


  • In ORTOVOX, the Local Division Düsseldorf adopted the position of the German Federal Court of Justice by dismissing the patent prosecution information (e.g., statements made by the patentee during grant proceedings) to construe a patent claim before the UPC. In line with German case law, however, the Local Division Düsseldorf accepted that such information may have an “indicative” role in the assessment of the POSITA’s technical understanding of a claimed feature.
  • In Imagotag, by relying on the original version of a patent claim (that was later modified before the grant proceeding) to determine the scope of protection of such claim, the Local Division Munich adopted a somewhat more daring approach. It stated in its official guiding principles that the prosecution history may be used to help construe patent claims. If the Court of Appeal upholds such a position, it will give rise to a landmark decision that could have a snowball effect on UPC Member States’ national patent courts.
  • It will be interesting to see whether the Court of Appeal weighs in favor of the file wrapper estoppel doctrine, and to what extent, starting with the Imagotag case.


Topics: access to UPC files

This is a case that may be surprising to those practicing in the US – in order to access filings at the UPC, the requesting party must be represented by UPC counsel, and the request approved by the judge-rapporteur.

On October 17, 2023, the UPC Nordic-Baltic Regional Division issued an order, based on Rule 262.1(b) of the RoP, allowing a third party to access Ocado Innovation Limited’s statement of claim and other procedural documents in the patent infringement proceeding pending against AutoStore AS. Access to the court register was requested, inter alia, “to see how the claim filed in the Nordic-Baltic division was framed, particularly since it was filed in parallel with cases in other divisions.”

On November 6, 2023, Ocado lodged an appeal against this order to prevent public access to the court register. Two law firms – Mathys & Squire LLP and Bristows LLP – filed an application to intervene in the appeal proceeding, claiming that the Court of Appeal’s decision would help third parties with similar applications access pleadings and evidence in pending cases. Thus, the Court of Appeal had to assess whether the applicants established a legal interest in the outcome of the action before the Court of Appeal, which was the substantive test to be met for allowing or rejecting interventions.

On January 10, 2024, the Court of Appeal ruled that the applications to intervene by Mathys & Squire and Bristows were inadmissible, as the indirect interest in the action’s outcome by reason of similarities between their situation and that of one of the parties was deemed insufficient to allow an intervention in a separate proceeding. Thus, both applications to intervene were rejected.

In parallel, on February 8, 2024, the Court of Appeal held that the individual who requested access to the procedural documents of the Ocado case needed to be represented by a legal practitioner pursuant to Article 48 of the UPCA. The Court of Appeal did not consider this requirement to be unnecessarily burdensome since the person seeking access to the court register has to file a reasoned request. It will also be part of an adversarial phase before the judge-rapporteur who will decide whether to grant such access. According to the Court of Appeal, being represented by a lawyer or patent agent will protect members of the public “when it comes to the legal consequences of procedural measures.” The Court of Appeal’s position diverged from both Ocado and the opinion of the individual who requested access to the procedural documents. The Court of Appeal gave the individual 14 days to appoint a representative and scheduled a hearing on the merits of the appeal for March 12, 2024.


  • It may be understood from the Court of Appeal’s first decision that having a situation similar to that of a party in a separate case is insufficient for a third-party intervention to be granted. To grant an intervention, the Court of Appeal requires a direct and present impact of the decision on the intervener’s legal or factual situation.
  • This first decision restrictively assesses the substantive test to be met for allowing an intervention and reduces the scope for third-party intervention in future cases.
  • As a result of the second Court of Appeal’s decision, it will be more difficult and expensive for individuals to obtain access to procedural documents of a pending case. However, in several other administrative or judicial courts, such as the EPO, US courts and certain European national courts (e.g., in Germany – essentially in patent revocation cases – and in Sweden) procedural documents may be accessed either for free or for a small fee.


This section reflects data that entered the UPC’s register as of February 15, 2024.


*The number of counterclaim 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.






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

Composition of the UPC COA Panel on Procedural Questions and Rejection of a Request to Shorten a Time Period, GRUR-Prax 2024, 99, February 26, 2024

SEPs, Medical Devices, E-Cigarettes: Biggest UPC Battles Reveal Broad Court Remit, JUVE Patent, February 7, 2024

Legal Lens on the Unified Patent Court, January 2024

Unified Patent Court Procedural Timeline, January 2024


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 upcoming programs where we’ll discuss the UPC.

WIPR Summit: Charting the Course for Global IP Excellence | The Shifting Global IP Landscape, March 20-21, 2024

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


Have questions or want to discuss your UPC strategy? Contact one of our UPC authors below.