UPC Newsletter - November 2024

UPC Statistics

At just over five months into the second year of operation of the UPC, it is instructive to compare the statistics of the first year of cases with the second year so far. ?Note that cases can take some time to appear on the UPC list of cases, and the numbers depicted represent the cases that are publicly visible.

Number of cases

Compared with the first year, there has been a fall off in the number of revocation actions compared with infringement actions (which remain strong). Applications for provisional measures and preserving evidence continue.

Language of cases

English is about level with German as the language of choice for infringement actions. The other languages continue to be rarely employed.

Divisions

The German local divisions continue to dominate infringement actions, and Düsseldorf is now of equal popularity with Munich for these cases. Local divisions in other countries continue to receive only a handful of cases each. The divisions for provisional measures, fewer in number in absolute terms, are more evenly spread, and include the only case so far at the Lisbon local division.

UPC Decisions

A widely reported decision from the Court of Appeal indicated that an application for a provisional injunction did not extend to Ireland (which has signed but not ratified the UPC Agreement). Some reports suggested that the ruling meant that provisional measures could not be ordered in a country covered by the European patent but outside the UPC system, but the reasoning was on the much more narrow ground that, correctly construed, the request was not made in respect of Ireland. The wider question of the permissible geographic extent of UPC provisional injunctions remains open. Another Court of Appeal decision confirmed that preliminary objections to an action can only be raised on the narrow grounds listed in Rule 19 of the Rules of Procedure, and cannot be extended to other criteria such as manifest lack of foundation.

Two decisions by default have been issued (where the defendant does not reply to the claim), one in a revocation action, and one in an infringement action.

A striking first instance judgment (whose appeal is eagerly awaited) has ruled that in general an in-house lawyer cannot act as a UPC representative to represent their employer in a UPC action, as they lack the necessary independence.

Philips has been successful in an infringement action on the merits in a case involving wireless chargers, in which the UPC notably departed from the claim construction adopted by German national court.

Sodastream has been successful in an infringement action against Swedish competitor Aarke. ?In interpreting the claim in the rather broad manner contended for by the patentee, the Court noted that if the patent distinguishes itself from the prior art in a particular way, an interpretation that negates that distinction must be avoided. ?

NanoString has been successful in revoking a patent on the basis of which 10x Genomics sought, but was denied, a provisional injunction. The reasoning is consistent with reasoning of the decision denying the injunction.

Provisional injunctions have been refused on the grounds that imminent infringement was not substantiated, and on the grounds of delay in bringing the action. Football enthusiasts may be interested in a decision denying a provisional injunction relating to VAR technology.

Provisional injunctions have been granted in cases involving barcode readers,?herbicides?and electric toothbrushes. This last decision is notable in that the injunction was granted ex parte, and on the basis of infringement at a trade fair, that in pre-action correspondence the defendant had stated that they would not attend (but then did).

A provisional injunction related to a device to assist in searching for avalanche victims was confirmed by the Court of Appeal.