Legal Lens on the Unified Patent Court | March 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.


 

NOTABLE CASES & POTENTIAL IMPACT


NANOSTRING TECHNOLOGIES, INC. V 10X GENOMICS, INC. 

Topics: standard for preliminary injunction; claim construction; evaluating an inventive step 

On February 26, 2024, the UPC Court of Appeal (CoA) issued its inaugural substantive ruling, overturning a preliminary injunction previously granted by the UPC’s Local Division Munich on September 15, 2023. This decision enables NanoString Technologies, Inc. to resume operations in most European markets.

The CoA’s decision centered on the preliminary conclusion that the patent asserted by 10x Genomics, Inc. likely lacks an inventive step. It determined that a prior art document (D6) disclosed all features of the patented method except for its application to analytes “in a cell or tissue sample.” The CoA determined this application would be obvious to a skilled person based on D6 alone or in combination with another document (B30).

The CoA clarified key substantive issues, including the approach to claim construction, the standard for granting a preliminary injunction and the evaluation of inventive step. It emphasized that patent claims are crucial for determining the scope of protection and must be interpreted using the description and drawings.

Regarding the standard for a preliminary injunction, the CoA clarified that a likelihood of both infringement and validity is required, balancing the need for certainty with the risk of harm to the defendant. While the applicant is always tasked with the burden of proof for entitlement and infringement, the party with the burden of proof regarding validity varies depending on whether the court hears the defendant.

On the merits for invalidity, the CoA found the Local Division Munich’s patent validity evaluation incorrect, determining that a skilled person would have reasonably expected success using the claimed method. Rather than strictly applying the “problem/solution” analysis common before the European Patent Office (EPO), the CoA relied on its own analysis of the understanding and capability of a skilled person, as reflected in the prior art references. This decision underscores the CoA’s commitment to shaping legal standards across the UPC, even if it requires correcting the work of the Local Divisions.

TAKEAWAYS: 

  • This case emphasizes the importance of precise and clear patent claims, which serve as the basis for determining the scope of protection. Ambiguities within claims can lead to disputes and affect the outcome of legal proceedings.
  • Courts must strike a balance between the interests of patent holders and potential harm to defendants when considering preliminary injunctions. A “more likely than not” standard is applied to both infringement and validity, and the analysis must consider the patent’s validity, ensuring sufficient certainty while preventing undue harm to either party.
  • The CoA demonstrated its active role in interpreting patent claims and evaluating inventive step, relying on its own technical judges rather than either party’s expert, and in diverging from strict adherence to the EPO’s problem/solution analysis. This highlights the CoA’s commitment to shaping legal standards and ensuring consistency across UPC proceedings.

GUANGDONG OPPO MOBILE TELECOMMUNICATIONS CORP. LTD. AND OROPE GERMANY GMBH V PANASONIC HOLDINGS CORPORATION 

Topics: language of proceedings; acceleration of proceedings; appeal decision without technically qualified judges 

In July 2023, electronics company Panasonic Holdings Corporation filed an infringement action with the Local Division Mannheim against the defendants, Guangdong OPPO Mobile Telecommunications Corp. Ltd. (OPPO) and OROPE Germany GmbH. On November 27, 2023, the UPC rejected the defendants’ request to change the language of the proceedings from German to English. Faced with a December 22 deadline in the Local Division Mannheim proceeding to file their statement of defense in German, OPPO and OROPE appealed the decision to the CoA and requested an acceleration of the appeal, pursuant to Rules 9.3(b) and 225(e) of the UPC Rules of Procedure (RoP), which would require Panasonic to respond in only five working days.

Days before the defendants’ deadline to file their statement of defense, the CoA rejected their appeal, finding that the interests of Panasonic and the principles of proportionality, fairness and equity outweighed the interests of OPPO and OROPE. The CoA emphasized that OPPO and OROPE had used their full 15-day appeal period and yet sought a substantially shorter period for Panasonic’s response. As a result, OPPO and OROPE were forced to submit their statement of defense in German, and Panasonic received the standard 15-day period to respond.

The CoA’s decision also addressed an important practical question: whether the CoA can rule without technically qualified judges on the panel when the appeal does not involve technical issues. Despite Article 9.1 of the Agreement on a Unified Patent Court (UPCA) requiring any CoA panel to consist of three legally and two technically qualified judges – based on an analogous application of UPCA Article 9.2 – the CoA determined that technically qualified judges were not necessary in appellate proceedings dealing with purely procedural questions. The CoA emphasized the need for a flexible and balanced application of the RoP, consistent with Recital 6 of the UPCA, which ensures rapid decisions, efficiency and cost-effective proceedings.

TAKEAWAYS: 

  • Requests to shorten time periods in the UPC should be filed as early as possible. UPC judges will consider the legitimate interests of the other party and only grant reasonable requests.
  • The CoA will apply the UPC’s RoP in a flexible manner. Appeal proceedings that don’t involve technical issues may be decided without technically qualified judges.

RECENT FILINGS


This section reflects data that entered the UPC’s register as of March 19, 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. Check out the latest below.

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

Legal Lens on the Unified Patent Court, February 2024

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


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 upcoming programs where we’ll discuss the UPC.

BIPLA 4th Annual Symposium | Unified Patent Court: Initial Cases, April 10, 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.