IPrime’s Post

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

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 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.

In the traffic signal case pending in the Unified Patent Court's Vienna Local Division (SWARCO Futurit v. STRABAG), a third party (DMV industrijski kontrolni sistemi) believes the same infringement accusations may be leveled against its own products, also in light of a Slovenian case brought by the same plaintiff against Kontron, d. o. o. | Kontron SI and DARS d.d., and requested access to the pleadings. That petition has been denied by Presiding Judge (and judge-rapporteur) Dr. Walter Schober, who held that the petitioner's interest in access to such information did not outweigh the plaintiff's interest in keeping the complaint confidential and the court's interest in being able to make its decisions without external influence. It continues to be difficult for third parties to obtain access to pleadings, particularly before the UPC has made a decision on the merits. The petitioner gave two main reasons for seeking access: 1. Fear of infringement allegations against its own products -- here, the court held that the patent-in-suit is publicly accessible and nothing stops the petitioner from performing (without using that terminology) a freedom-to-operate analysis. 2. To the extent that the petitioner believes the defendant to the UPC complaint might be among its customers, the court says it's up to the defendant to know with whom it does business. Petitioner DMV is represented by freigutpartners IP Law Firm's Dr. Thomas Körner, plaintiff SWARCO Futurit by NOMOS Rechtsanwälte GmbH's Alexander Koller and patent attorney Patentanwälte Barger, Piso & Partner's Werner Barger, and defendant STRABAG by SONN Patentanwälte's Dr. Rainer Beetz. https://lnkd.in/dFS82kzD

******************************************** * * UPC DECISION ON EP 3 375 337 B1 * ******************************************** Case Number: UPC_CFI_7/2023 Court: Local Chamber Düsseldorf of the Unified Patent Court Date of Decision: July 3, 2024 Plaintiff: Franz Kaldewei GmbH & Co. KG Defendant: Bette GmbH & Co. European Patent EP 3 375 337 B1 The plaintiff contends that the patent is both novel and inventive, at least in the form claimed by the auxiliary request. The defendant, on the other hand, argues that the patent lacks novelty and inventive step, and thus should be declared invalid. Key Points of the Decision: 1. Combined Hearing: The court decided to hear both the infringement claim and the counterclaim for nullity together. 2. Interpretation of Patent Claims: The decision emphasizes the necessity of a unified interpretation of the patent claims under Article 69 EPC and its protocol. In summary, while the original claim of the patent was invalidated due to a lack of inventiveness, the auxiliary request was upheld, maintaining the patent’s validity in a revised form. As one of the initial decisions of the Unified Patent Court, this ruling sets a precedent for future cases, shaping the interpretation and enforcement of patent rights under the new system. #PatentLaw #IPLaw #UnifiedPatentCourt #EuropeanPatent #PatentLitigation https://lnkd.in/ejXPBMRi

𝐅𝐚𝐦𝐢𝐥𝐢𝐚𝐫, 𝐲𝐞𝐭 𝐬𝐨𝐦𝐞𝐰𝐡𝐚𝐭 𝐝𝐢𝐟𝐟𝐞𝐫𝐞𝐧𝐭 – 𝐟𝐢𝐫𝐬𝐭 𝐞𝐱𝐩𝐞𝐫𝐢𝐞𝐧𝐜𝐞𝐬 𝐰𝐢𝐭𝐡 𝐩𝐚𝐭𝐞𝐧𝐭𝐚𝐛𝐢𝐥𝐢𝐭𝐲 𝐚𝐭 𝐭𝐡𝐞 𝐔𝐧𝐢𝐭𝐚𝐫𝐲 𝐏𝐚𝐭𝐞𝐧𝐭 𝐂𝐨𝐮𝐫𝐭 (𝐔𝐏𝐂) After a string of decisions mostly relating to formal issues at the UPC, the time has finally come to look at the recent first decisions on patentability. Can we already see how the UPC handles substantial law issues when it comes to patentability? To read the entire article by Jan B. Krauss visit our website: https://lnkd.in/gstVqTE7

The Unified Patent Court's Dusseldorf Local Division denied an extension of time for an answer to a complaint where the sole issue is whether service of process of a complaint can be effectuated at a trade show (see ip fray's June 26, 2024 UPC roundup: https://lnkd.in/dDEYHMW2). Judge-rapporteur Dr. Bérénice Thom held that defendant Can srl Airxcel Europe was either served correctly at that trade show, in which case it has not given reasons capable of justifying an extension (and everyone knows the UPC wants to keep its timelines), or it was not, in which case the period to file an answer did not begin at the trade show. The court declines the invitation to decide on the form of service at this stage. The court was not going to call into question whether the form of service that it authorized a few months ago was correct. But -- according to the order -- there wouldn't have been any other reason for granting an extension. In practical terms, the defendant must respond in time because otherwise it takes the risk of a default judgment. As ip fray reported this week, a default judgment just came down in some other case. In practical terms, an appeal would come too late now to solve the deadline problem. Counsel for plaintiff Truma Geraetetechnik GmbH & Co. KG: KRIEGER MES's Dr. Axel Verhauwen and Jens Künzel as well as patent attorney Peter Wilhelm (Patentanwälte Ruff, Wilhelm, Beier, Dauster & Partner mbB). Counsel for defendant: DLA Piper's Dr. Constanze Krenz, Julia Oertel and Dr. Joschua Fiedler, and their Italy-based partner Gualtiero Dragotti. https://lnkd.in/dj8SGEK3

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

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

A four-judge panel of the Unified Patent Court's Dusseldorf Local Division has affirmed a decision by Presiding Judge and judge-rapporteur's Ronny Thomas to relegate a decision on the admissibility of a subsequent auxiliary request to amend the patent to a later stage of proceeding *and* not to trigger a whole multi-round pleading process concerning the amended claims. The first part is about judicial flexibility in case management. The later-filed amended claims filed by Seoulviosys (with support from Seoul Semiconductor) against a German retail group named expert e-Commerce GmbH are now in a Schroedinger's Cat state. The box won't be opened until the actual decision is made, if ever (as the patent could be upheld without the court reaching that question). That part should not be controversial. The second part is also a matter of judicial discretion, but considerably trickier. Complete briefing on the amended claims would cause delay, and the UPC very much wants to keep its timelines. In the specific circumstances of this case, the court believes that it does not compromise the defendant's right to be heard (also since the court can take the defendant's interests into account when deciding on admissibility) and it also interprets the Rules of Procedure as if full briefing after the filing of subsequent claim amendments wasn't mandatory. Here, the court apparently considers the differences between the first set of auxiliary requests and the second so minor that full briefing appeared disproportionate. The court may very well be right in the case at hand, and chances are that the defendant requested a full briefing opportunity just to cause delay. An appeal of the underlying logic would, however, be interesting. Regardless of how much the governing statutes emphasize the speedy resolution of disputes, a patentee who proposes amended claims more than once *may* just have to live with the delay such tactical decision causes. A patentee should *arguably* have to decide: try to prevail without new amendments, or accept delay. And it may just be a lack of flexibility in the UPC's rules that the court can't shorten the time for briefing on minor changes (e.g. 3 weeks instead of 2 months). Panel: Presiding Judge and judge-rapporteur Ronny Thomas, Judge Dr. Bérénice Thom, Judge Mojca Mlakar, Technically Qualified Judge Alessandra Sani. The plaintiff and its supporting intervenor are represented by Linklaters's Dr. Christopher Bolko Ehlgen and Dr. Julia Schönbohm as well as Schneiders & Behrendt's Dr. Olaf Isfort, and the defendant by Krieger Mes & Graf v. der Groeben's Dr. Dirk Jestaedt and HGF Limited's Bernhard Ganahl https://lnkd.in/d5ZRGYvx