Alfa Patent Stan Advoka | IP Attorneys’ Post

The first decision on infringement by the Unified Patent Court has been issued, only 13 months after the Court's launch! The result is an injunction to prevent infringement, and the patent in question has been maintained in amended (narrowed) form following a counterclaim for invalidity. The patent that was enforced is a "classical" European patent, filed in 2018 and granted in 2022. This shows that, as intended, the UPC can work its way through an action to a decision quickly. This can be very challenging for defendants. If an action for patent infringement is brought against you in the UPC then you have only 3 months from service to file a response and to file any counterclaim. That is a very short period of time in practice and is especially short if, as is common, you want to carry out detailed searching for prior art to use in a counterclaim for invalidity. As time passes, more decisions will issue and we will begin to establish patterns as to how the Court acts. For now, it is good to see the Court successfully serving the purpose for which it was created.

🔔 What's been happening at the UPC? First infringement judgment in proceedings on the merits! The UPC Düsseldorf Local Division has issued its first infringement judgment in the case of Kaldewei v. Bette. Kaldewei filed the action for infringement of its patent EP 3 375 337, related to a bath tub device, while Bette counterclaimed for patent revocation. The court declared the granted version of EP 337 invalid due to lack of inventive step but upheld its validity in the modified version submitted by Kaldewei as an auxiliary request. The court also ruled that Bette both directly and indirectly infringed the contested patent and could not claim a right of prior use. As a result, the court prohibited Bette from marketing the infringing devices in Austria, Belgium, Denmark, France, Italy, Luxembourg, and the Netherlands. Additionally, Bette was ordered to recall the infringing products, remove them from distribution channels, and provide Kaldewei with necessary information to quantify the damages, including details on the origin, distribution channels, quantities sold, costs, and profits made. Read the full judgment here: https://lnkd.in/ejXPBMRi (in German) Evelina Marchesoni #UPCJudgment #PatentInfringement #KaldeweiVsBette #PatentLaw #EP337 #InnovativeStep #IntellectualProperty #PatentLitigation #UPCourt #LegalUpdate #PatentInvalidity #InfringementCase #PatentProtection #PatentRights #LegalNews #DüsseldorfCourt #PatentRuling #ProductRecall #PatentDamages

First UPC infringement judgment on the merits! #unifiedpatentcourt #upc #UPCJudgment #PatentLaw #IntellectualProperty #PatentLitigation

This is the first judgment on the merits in a UPC infringement action. There have been judgments in preliminary injunction actions, but there the validity of the patent is only prima facie assessed as part of the decision on the injunction, it is not decided. However, depending on the wording of the judgment, such an assessment can be an important indication of the likely outcome of proceedings on the merits.

UPC CoA affirms PI: in ORTOVOX v. Mammut Sports Group AG, the Unified Patent Court's Court of Appeal has *affirmed* the Dusseldorf Local Division's preliminary injunction over devices for the search of persons buried under an avalanche. This is the third time that the UPC decides Ortovox is entitled to a PI: first there was an ex parte PI, which was then affirmed by a Dusseldorf LD panel (Presiding Judge Ronny Thomas, Judge Dr. Bérénice Thom, Judge Dr. Walter Schober (Vienna) and Technically Qualified Judge Erwin Wismeth. And now the CoA has upheld it. The detailed decision dismantles ground of appeal after ground of appeal (there were plenty). One key lesson is that a PI defendant has to raise all of its arguments and plead all of the facts in the PI proceedings (or PI appeal proceedings) themselves, as opposed to just cross-referencing some pleadings from the related main proceedings. As for the urgency window for PIs, the decision doesn't say anything new. The fact pattern here was that the patentee saw some prototype at a trade show, but the CoA, like the Dusseldorf LD, considered the plaintiff to have become aware of the infringement only when the final product was shown at a trade show in late November 2023 (there is a typo in the judgment: in one instance it says "November 2024"). Just before this decision became public, ip fray published a UPC CoA roundup (last 10 days). Panel: Presiding Judge Rian Kalden, Judges Ingeborg Simonsson and Judge Patricia Rombach and Technically Qualified Judges Eric AUGARDE and Max Tilmann. This is a win for KATHER AUGENSTEIN (the firm that has filed more cases on behalf of UPC plaintiffs than anyone, just one more than BARDEHLE PAGENBERG, which however represents lots of defendants). Counsel of record for the plaintiff: Miriam Kiefer LL.M. and Robert Knaps, with patent attorney Michael Siebel of HSS - IP Patent & Recht (Hofstetter, Schurack & Partner). Counsel for defendant Mammut: Bird & Bird's Oliver Juengst, Dr. Moritz Schroeder and patent attorney Felix Harbsmeier. https://lnkd.in/d6a4qmqh

The Unified Patent Court's Munich Local Division has thrown out a fee-shifting motion by a successful defendant because it requested a retroactive extension of time (after first seeking fee-shifting in the CoA, which told the party it had to talk to the Court of First Instance) under Rule 9(3) RoP instead of seeking a re-establishment of rights under Rule 320 RoP. The Munich LD holds in a headnote that Rule 320 is a lex specialis and, therefore, takes priority under EU law over the more general Rule 9(3) (discretion of the court). Not only did the movant fail to invoke the correct rule but also to put up the related fees. SES-imagotag had unsuccessfully sought a preliminary injunction against Hanshow, and the appeal was rejected as well. Hanshow then sought a cost order from the CoA instead of the first-instance court -- and even that motion was five days out of the one-month window for doing so. The Munich LD doesn't have to resolve the question of whether a retroactive extension of time is an option in the first place. It's simply that Rule 320 would become pointless if Rule 9(3) could solve that problem. Panel: Presiding Judge Dr. Matthias Zigann, Judge-rapporteur Tobias Pichlmaier, Judge Margot Kokke and Technically Qualified Judge Uwe Schwengelbeck. Counel for SES-imagotag: Dörries Frank-Molnia & Pohlman Patentanwälte Rechtsanwälte PartG mbB's Alexandre Hoffmann. Counsel for Hanshow: Taylor Wessing's Roland Küppers. https://lnkd.in/dUP5MyVV

This is a very important case in the development of the UPC.

This morning, the Unified Patent Court's Dusseldorf Local Division entered a discovery order (https://lnkd.in/d8BrG9aW) in the Dolby Laboratories v. HP case in which patent pool administrator Access Advance LLC was allowed to intervene (as ip fray reported four weeks ago: https://lnkd.in/dUBYtcZj) because the FRAND compliance of its terms was disputed by the defendant entities. HP unsuccessfully sought to limit access to information concerning its bilateral licensing negotiations to Access Advance's counsel, withholding that information from any of its employees. At least that was HP's preference, the minimum objective being to limit the number of persons who would be granted access. The court held that an intervenor must have equivalent rights as a party (as opposed to just being enabled to share information with the party it supports) and decided that one Access Advance employee will therefore get access, obviously just for the purposes of this particular litigation. The decision does not hinge on, but does mention, the fact that the defendants' own election to raise arguments concerning the alleged FRAND non-compliance of Access Advance's pool rates gave rise to the latter's intervention. The order was handed down by Presiding Judge (and judge-rapporteur) Ronny Thomas. Dolby and Access Advance are represented by BARDEHLE PAGENBERG's Dr. Volkmar Henke and Dr. Tilman Müller as well as Georg Anetsberger, Dr. and Dr. Johannes Möller. 15 HP entities are represented by Freshfields Bruckhaus Deringer's Dr. Frank-Erich Hufnagel, Dr. Nina Bayerl, Dr. Stephan Dorn, Dr. Sabrina Biedermann, Eva Acker and Vanessa Romy Werlin.

On Wednesday, the Court of Appeal of the Unified Patent Court stayed the enforcement of an injunction of the LD Munich, to the extent it was addressed to the managing directors of an infringing company. On the basis of Article 63(1) of the UPC Agreement, injunctions can also be granted against "[a]n intermediary whose services are being used by a third party to infringe a patent". According to the LD Munich, the directors of the infringing companies (Belkin) qualified as such because, as directors, they rendered services to the infringing companies which were used to infringe the patent-in-suit and would be able the influence the infringing acts. According to Belkin, this constituted an obvious legal error and the Court of Appeal agreed. The Court of Appeal correctly held that a managing director of a patent-infringing company represents this company. For that reason, this company cannot be regarded as a "third party". Therefore, liability on the basis of Article 63(1) of the UPC Agreement as an intermediary cannot solely arise from the function as managing director of a patent-infringing company. To me and from a (Dutch) corporate law perspective, this decision of the Court of Appeal seems correct. Directors should be liable towards third parties (such as a patent holder) in case of exceptional circumstances only (as follows from settled Dutch case-law).

The Unified Patent Court's Munich Local Division declined to hand down a written ruling on the merits of an application for provisional measures (PI motion) that was withdrawn between hearing and decision, but the plaintiff has to bear 100% of the costs, including those of a protective writ. The case is TRM Tiroler Rohre GmbH v. SSAB Swedish Steel. The hearing took place on May 6, 2024. On June 3, TRM dropped its PI motion. That fact validates what ip fray learned about the hearing: the court denied the request for a PI at the end of the hearing (see https://lnkd.in/dds6MvGD), and said the written decision would follow a month or so later. SSAB, however, wanted a written decision, even more so after TRM filed (two weeks later) an infringement complaint for the purpose of conducting main proceedings in the same matter (with a substantially lower value of the dispute as far as ip fray knows). However, the Munich LD did not assume jurisdiction after the withdrawal of the motion, given that a PI decision would not have preclusive effect on a main proceeding. At minimum. the defendants wanted to make sure the plaintiff would have to bear the costs. On that one, the court agreed with the defendants. Panel: Presiding Judge Dr. Matthias Zigann, Judge-rapporteur Tobias Pichlmaier, Judge Margot Kokke, Technically Qualified Judge Dennis Kretschmann Lead counsel for defendants: Dr. Christian Meyer (Maiwald Intellectual Property) Lead counsel for plaintiff: Florian Robl, Ph.D. (Torggler & Hofmann Patent Attorneys) https://lnkd.in/dvkd3GhU