UPClytics

Decisions

DateCaseDivisionActionMotionOutcomeSummary
2024-09-25UPC_APP_48805/2024Munich LDPreliminary objectionmotionName.jurisdictionalDismissedThe Munich Local Division dismissed the request by Heraeus Precious Metals GmbH (co-claimant 2) to have Vibrantz's counterclaim for revocation rejected as obviously unfounded or inadmissible, holding that the counterclaim was properly directed against the registered patent proprietor.
2024-09-25APL_21143/2024Court of AppealAppeal RoP220.1motionName.appeal_decisionPI grantedThe Court of Appeal upheld a first-instance preliminary injunction (including a seizure order) obtained by Ortovox against Mammut for alleged infringement of a patent relating to avalanche rescue devices, affirming the findings on urgency, infringement likelihood, and balance of interests. The appeal by Mammut was dismissed and provisional cost reimbursement was ordered in favour of Ortovox.
2024-09-25UPC_CoA_182/2024Court of AppealAppeal RoP220.1Procedural onlyRectification order of the Court of Appeal correcting an obvious clerical error in the operative part of the appeal order of 25 September 2024 (Mammut v Ortovox). In item 3 of the original order, 'Antragsgegnerin' was incorrectly used instead of 'Ortovox'; the corrected wording orders Mammut to reimburse Ortovox further provisional costs of EUR 19,858.40.
2024-09-25UPC_CoA_182/2024Court of AppealAppeal RoP220.1PI grantedThe Court of Appeal dismissed the appeal by Mammut Sports Group and confirmed the provisional measures order issued by the Court of First Instance (Local Division) in favour of Ortovox. The Court rejected Mammut's attempts to introduce new submissions and its counterclaim for revocation in the appeal proceedings. The Court confirmed the provisional measures (seizure order and publication), the threatened penalty payment, and the security ordered. The Court additionally ordered Mammut to reimburse Ortovox's further interim costs of EUR 19,858.40 and to pay the costs of the appeal proceedings. Key legal principles established include: discretion to consider submissions rightly rejected at first instance; urgency requirements under R.211.4 RoP; irreparable harm not being a necessary condition for provisional measures; and applicability of R.263 RoP to provisional measures proceedings.
2024-09-24APL_32345/2024Court of AppealAppeal RoP220.1motionName.appeal_decisionProcedural onlyThe Court of Appeal upheld the Düsseldorf Local Division's order refusing to require Panasonic to produce licence agreements for the FRAND defence raised by OPPO/OROPE, ruling that the request did not yet satisfy the requirements of necessity, relevance, and proportionality at the current stage of proceedings.
2024-09-24APL_32347/2024Court of AppealAppeal RoP220.1motionName.appeal_decisionProcedural onlyCourt of Appeal order on OPPO's appeal concerning requests for production of evidence (R. 190 RoP) to support a FRAND defence. The Court held that a defendant may invoke R. 190.1 RoP to request production of counter-evidence. The court must balance the defendant's interest in disclosure of documents useful to a FRAND defence against the other party's interest in protecting confidential information. The first-instance court has discretion, including as to timing in the proceedings. An application may not yet satisfy the requirements of necessity, relevance and proportionality at one stage but may do so at a later stage.
2024-09-24APL_32347/2024Court of AppealAppeal RoP220.1motionName.appeal_decisionDismissedCourt of Appeal dismissed OPPO and OROPE's appeal against orders denying their requests for production of evidence (R.190 RoP) in FRAND proceedings. The Court held that the CFI acted within its margin of discretion in finding that production of Panasonic's settlement licence agreements did not meet criteria of necessity, relevance and proportionality at the current stage of proceedings.
2024-09-24UPC_CoA_298/2024Court of AppealAppeal RoP220.1Procedural onlyOrder of the Court of Appeal (Panel 2) on appeals by Guangdong OPPO Mobile Telecommunications and OROPE Germany GmbH against the Mannheim Local Division's refusal to order document production (Rule 190 RoP) in FRAND-related patent proceedings by Panasonic. The Court of Appeal held: (1) a defendant may rely on Rule 190.1 to seek production of counter-evidence; (2) the court must balance the defendant's interest in evidence useful for a FRAND defence against the other party's and third parties' confidentiality interests; (3) the first-instance court has discretion under Rule 190, which may include sequencing considerations; (4) the assessment may depend on the procedural stage and may be premature at earlier stages.
2024-09-18APL_38206/2024Court of AppealAppeal RoP220.1motionName.appeal_decisionProcedural onlyThe Court of Appeal allowed Google's appeal and ordered the change of language of the proceedings from German to English, finding that Google's internal working language was English and that it was unduly disadvantaged by having to conduct proceedings in German, while Ona's managing director was proficient in both languages.
2024-09-18APL_30169/2024Court of AppealAppeal RoP220.2motionName.appeal_decisionDismissedDecision of the Court of Appeal dismissing Volkswagen AG's appeal against the Munich Local Division's rejection of preliminary objections (Rule 19/Rule 361 RoP) and finding that the opt-out withdrawals for the patents in suit were validly filed by NST's representative under Rule 5.3(b)(i) RoP without requiring a separate power of attorney. The appeal also failed on the merits of the Rule 361 RoP requests concerning standing to sue and damages for past infringements.
2024-09-18APL_38948/2024Court of AppealAppeal RoP220.1motionName.appeal_decisionProcedural onlyCourt of Appeal order on Apple's appeal against refusal to change the language of proceedings from German to English in infringement proceedings brought by Ona Patents against Apple before the Düsseldorf Local Division. The Court of Appeal clarified that internal working language of parties and their ability to coordinate on technical issues are relevant factors when deciding a language change request on grounds of fairness (Art. 49(5) UPCA). Parallel national court proceedings between the parties are of less relevance to this analysis.
2024-09-18UPC_CoA_264/2024Court of AppealAppeal RoP220.2DismissedThe Court of Appeal dismissed Audi AG's appeal in six consolidated cases challenging the Munich Local Division's refusal to grant preliminary objections under Rule 361 RoP (action manifestly bound to fail) against NST's infringement actions. The court held that R.361 RoP is reserved for clear-cut cases and cannot require the claimant to pre-empt every possible line of defence in the statement of claim. The court also rejected Audi's arguments that opt-outs were invalidly withdrawn, finding the UPC has jurisdiction.
2024-09-17APL_25922/2024Court of AppealAppeal RoP220.2motionName.appeal_decisionProcedural onlyThe Court of Appeal set aside the Munich Local Division's orders refusing security for costs and ordered Network System Technologies LLC to provide security for costs to Volkswagen AG, finding that NST's financial position as a special-purpose patent enforcement entity created a legitimate concern that a cost order might not be recoverable.
2024-09-17ACT_581538/2023Brussels LDInfringement ActionProceduralProcedural onlyThe Brussels Local Division issued a procedural order following an interim conference under R. 105.5 RoP, setting the schedule and framework for the oral hearing in this infringement action concerning EP 2 331 036.
2024-09-17APL_25919/2024Court of AppealAppeal RoP220.2motionName.appeal_decisionProcedural onlyThe UPC Court of Appeal set aside the Munich Local Division's orders denying security for costs and ordered Network System Technologies LLC to provide security to Audi AG in amounts of EUR 100,000 (two cases) and EUR 300,000 (one case), finding that the lower court applied too high a standard of proof and that NST's failure to disclose its financial situation warranted the order.
2024-09-17APL_26889/2024Court of AppealAppeal RoP220.2motionName.appeal_decisionProcedural onlyCourt of Appeal ordered the stay of UPC revocation proceedings (UPC_CFI_484/2023) in Mala Technologies Ltd. v Nokia Technology GmbH concerning EP 2 044 709 (German part only), pending the outcome of parallel German Federal Patent Court/BGH revocation proceedings initiated by Nokia Solutions. Applying Art. 30 Brussels I recast Regulation, the court found that the causes of action in both proceedings are almost identical, the parties closely related, and the German proceedings at a more advanced stage. Mala's request for stay was upheld, and Nokia Technology's auxiliary request to limit the stay to the German part was rejected as moot.
2024-09-17UPC_CFI_189/2024Paris CDGeneric applicationProceduralProcedural onlyCentral Division (Paris) order dismissing Meril's application to reject Edwards' counterclaim for infringement as inadmissible. The court retrospectively extended the two-month deadline under Rule 49 RoP by one week to 23 July 2024, finding the counterclaim timely. The court declined to hold a hearing before deciding.
2024-09-17UPC_CFI_240/2023Milan LDInfringement ActionProceduralProcedural onlyThe Milan Local Division refused Oerlikon's request to admit an eighth auxiliary request to amend EP 2 145 848 B1, finding that AR8 did not constitute an effective response to the new prior art relied upon and that it introduced an inadmissible intermediate generalisation contrary to Art. 84 EPC.
2024-09-17UPC_CFI_240/2023Milan LDInfringement ActionProceduralProcedural onlyThe Milan Local Division refused Oerlikon's request to admit an eighth auxiliary request to amend EP 2 145 848 B1, finding that AR8 did not constitute an effective response to the new prior art relied upon and that it introduced an inadmissible intermediate generalisation contrary to Art. 84 EPC.
2024-09-16APL_33746/2024Court of AppealAppeal RoP220.2motionName.appeal_decisionProcedural onlyThe Court of Appeal dismissed ICPillar LLC's appeal against a first-instance order requiring security for costs (R. 158 RoP). The court upheld the finding that a bank guarantee from a US-licensed bank does not provide adequate security under R. 158 RoP, and that this requirement is substantively justified and does not constitute unlawful nationality discrimination. The court also confirmed its discretion to disregard late-filed evidence even absent objection from the other party (R. 222.2 RoP).
2024-09-16ACT_545615/2023Mannheim LDInfringement ActionProceduralProcedural onlyMannheim Local Division issued a pre-trial procedural order for oral hearing preparation in Panasonic v Xiaomi (UPC_CFI_219/2023), an SEP infringement case concerning EP 2 568 724. The order set a hearing schedule over multiple days (technical issues on day 1, FRAND on day 2), addressed admissibility of document FBD-T13, confidentiality arrangements for FRAND discussions, submission of visual aids, language of pleadings, and set the value in dispute at EUR 8,000,000 for UPC_CFI_219/2023.
2024-09-16UPC_CFI_210/2023Mannheim LDInfringement ActionProceduralProcedural onlyProcedural order from the Mannheim Local Division scheduling and structuring the oral hearing in a SEP infringement action. The order confirms hearing dates and provides guidance on the structure of oral submissions, seating arrangements, and confidentiality measures. No substantive ruling on the merits.
2024-09-13UPC_APP_42538/2024Paris CDAction against the decision of the EPO (RoP88)motionName.appeal_epoProcedural onlyThe Paris Central Division closed the proceedings after the EPO rectified the contested decision in response to Qualcomm's interlocutory revision application under Rule 88 RoP, without a reimbursement of fees as no special circumstances justified it.
2024-09-13ACT_583273/2023Munich LDInfringement ActionInfringement meritsInfringedMunich Local Division found Belkin GmbH, Belkin International Inc., and Belkin Limited liable for infringement of Philips' EP 2 867 997 B1 (wireless power transfer technology) and dismissed the counterclaims for revocation. An injunction was granted against Belkin's infringing acts outside Germany (German acts excluded due to opt-out/national proceedings). Defendants were ordered to provide information, recall products, pay EUR 119,000 interim damages, and cover approximately 5/6 of costs. The revocation counterclaims were dismissed. (German territorial acts were carved out from the injunction as a separate matter.)
2024-09-13UPC_CFI_11/2024Dusseldorf LDGeneric OrderProcedural onlyEarly procedural order by Düsseldorf Local Division in Grundfos v Hefei Xinhu Canned Motor Pump deciding under R. 37.2 RoP to proceed jointly with infringement action and counterclaim for revocation under Art. 33(3)(a) UPCA. The decision was taken early to allow timely assignment of the technically qualified judge given part-time panel staffing constraints.
2024-09-11UPC_CFI_127/2024Munich LDGeneric applicationProcedural onlyMunich Local Division ordered correction of party designations under R.305 RoP by analogy. The Court corrected the names and addresses of defendants 3 and 5 following identification that one defendant did not exist at its stated address and another was incorrectly named. The Registry was instructed to re-serve the statement of claim on the corrected defendant 5.
2024-09-09UPC_CFI_516/2024Hamburg LDApplication for provisional measuresPreliminary injunctionPI grantedThe Hamburg Local Division granted Philips a preliminary injunction against Shenzhen Yunding at the IFA 2024 trade fair based on EP 3 197 316 B1 (oral care system with post-brushing feedback), ordering the defendant to deliver infringing products to a court bailiff for storage and to pay a fine of up to EUR 250,000 per violation.
2024-09-09UPC_CFI_88/2024Hamburg LDGeneric applicationProcedural onlyPreliminary procedural order from Hamburg Local Division dated 9 September 2024 in infringement proceedings brought by Roche Diabetes Care GmbH and F. Hoffmann-La Roche AG against Tandem Diabetes Care entities and VitalAire GmbH regarding EP 2 196 231. The order deals with Tandem's request to stay the proceedings. The court balanced the right to a fair trial (Art. 6 ECHR, Art. 47 EU Charter) with the principle that proceedings should normally conclude within one year (RoP Preamble point 7). No stay was granted; the case management timetable was maintained.
2024-09-06APL_47300/2024Court of AppealRequest for a discretionary review (RoP 220.3)motionName.appeal_decisionDismissedThe Court of Appeal rejected Motorola's request for a discretionary review of a Munich Local Division order that had denied leave to change its claim, finding that Motorola had not demonstrated that review was necessary to ensure consistent application and interpretation of the Rules of Procedure.
2024-09-06ACT_459987/2023Munich LDInfringement ActionProceduralProcedural onlyThe Munich Local Division judge-rapporteur issued a procedural order in Edwards Lifesciences v. Meril concerning EP 3 646 825, addressing defendants' arguments that the Central Division Paris first-instance decision on the patent amendment application had failed to consider key invalidity arguments. The judge-rapporteur referred the matter to the full panel, noting that the appeal proceedings before the Court of Appeal would address the alleged deficiencies in the Paris decision.
2024-09-06ACT_18551/2024Dusseldorf LDApplication for provisional measuresPreliminary injunctionPI deniedOrder by Düsseldorf Local Division (UPC_CFI_166/2024, 6 September 2024) rejecting Novartis AG and Genentech Inc.'s application for provisional measures against Celltrion Inc. for alleged infringement of EP 3 805 248 B1 (biologic/antibody). The application was dismissed on the merits (infringement insufficiently established). Applicants were ordered to pay interim costs of EUR 138,562.80. The court addressed claim interpretation, imminent infringement, non-applicability of stay of proceedings (R. 295 RoP) to PI proceedings, and the costs gap in the absence of main proceedings.
2024-09-06UPC_CFI_165/2024Dusseldorf LDApplication for provisional measuresPI deniedOrder of Düsseldorf Local Division rejecting Novartis/Genentech's application for provisional measures against Celltrion Healthcare entities regarding EP 3 805 248 B1 (biosimilar product Epysqli). The court found the requirements for provisional measures were not met and ordered Novartis/Genentech to pay interim costs of EUR 138,562.80. The court set out important headnotes on: the interpretation of Art. 25 and 62 UPCA as autonomous uniform law; the concept of imminent infringement; group company liability; inapplicability of R. 295 RoP to provisional measures applications; and parties' obligation to present focused technical arguments.
2024-09-05APL_12739/2024Court of AppealAppeal RoP220.2motionName.appeal_decisionDismissedCourt of Appeal (5 September 2024) dismissed Advanced Bionics' appeal against the CFI's refusal to transfer their infringement case to the Central Division. The CoA confirmed that joinder under R. 340 RoP cannot result in transfer to a different chamber outside Art. 33 UPCA, and that Art. 33(5) UPCA does not allow transfer of an infringement action to the Central Division without the consent of both parties.
2024-09-05APL_24598/2024Court of AppealAppeal RoP220.1motionName.appeal_decisionDismissedCourt of Appeal (5 September 2024) dismissed Advanced Bionics' appeal against the CFI's refusal to change the language of proceedings from German to English (the patent language). The CoA confirmed that the domicile of parties in a German-speaking country was a decisive factor against granting a language change, and clarified that Art. 49(5) UPCA does not require the language change request to be included in the statement of defence.
2024-09-05UPC_CFI_486/2024Dusseldorf LDApplication for provisional measuresPreliminary injunctionPI deniedThe Düsseldorf Local Division rejected Bioletic's application for a preliminary injunction concerning EP 3 685 783 B1 without an oral hearing, holding that the applicant had failed to demonstrate why a main action would be insufficient and had not established an ongoing or imminent harm justifying urgent provisional relief.
2024-09-05UPC_CoA_207/2024Court of AppealAppeal RoP220.1DismissedThe Court of Appeal dismissed Advanced Bionics' appeal against the President of the Court of First Instance's refusal to change the language of proceedings from English (language of the patent) to German in the infringement action before the Mannheim Local Division. The Court held that the parties' domicile in countries where the language chosen by the claimant is an official language is an important factor weighing against a language change. The application was not required to be included in the Statement of Defence (Art. 49(5) UPCA; R. 323.3 RoP).
2024-09-05UPC_CoA_106/2024Court of AppealAppeal RoP220.2DismissedThe Court of Appeal dismissed Advanced Bionics' appeal against the Mannheim Local Division's order refusing to refer the infringement action to the Central Division via a connection joinder (R. 340 RoP). The Court held that a connection joinder under R. 340 RoP cannot result in referral to another division beyond the possibilities provided in Art. 33 UPCA, and Art. 33 UPCA does not permit referral of an infringement action from a local division to the central division without the agreement of the parties.
2024-09-03UPC_CoA_188/2024Court of AppealAppeal RoP220.2Procedural onlyOrder of the Court of Appeal dated 3 September 2024 on AYLO entities' appeal against the Mannheim Local Division's rejection of their preliminary objections in infringement proceedings brought by DISH Technologies and Sling TV regarding EP 2 479 956. The CoA dismissed AYLO's appeal and upheld the CFI's rulings on: (1) international jurisdiction of the UPC (Art. 7(2) Brussels I in conjunction with Art. 71b(1)) – jurisdiction exists if the patent has effect in at least one Contracting Member State and alleged internet-accessible services can cause damage there; (2) competence of the Mannheim Local Division; (3) rejection of the parallel national proceedings argument under Art. 30(2) Brussels I; and (4) confirmation that the list of preliminary objections under R. 19.1 RoP is exhaustive – abuse of process and manifest inadmissibility are not recognised as unwritten preliminary objections.
2024-09-03UPC_CoA_188/2024Court of AppealAppeal RoP220.2DismissedThe Court of Appeal dismissed AYLO's appeal against the Munich Local Division's rejection of AYLO's preliminary objection challenging UPC jurisdiction and competence. The Court of Appeal upheld UPC jurisdiction under Art. 7(2) Brussels I recast and Art. 71b(1) in conjunction with Art. 33(1)(a) UPCA, holding that jurisdiction exists where a European patent has effect in at least one Contracting Member State and alleged damage may occur there (including via internet access). The list of preliminary objections in R. 19.1 RoP is exhaustive; defences based on abusive procedural conduct and manifest lack of foundation are not admissible as preliminary objections.
2024-09-02UPC_CFI_368/2024Dusseldorf LDGeneric applicationDismissedPresident of the UPC Court of First Instance dismissed Magna entities' application for review of the allocation of a technically qualified judge. The Court held that parties have no right to request a specific technical background for a technically qualified judge and that partiality is the only permissible objection to a judge's participation.
2024-08-30UPC_CFI_99/2024Dusseldorf LDApplication RoP262AProcedural onlyProcedural order from the Düsseldorf Local Division dated 30 August 2024 on confidentiality protection (R. 262A RoP) in infringement proceedings brought by Ona Patents SL against Apple entities. The order addresses the protection of trade secrets, specifically ruling that negative facts (the statement that products do not support certain functionalities) can also be subject to confidentiality. The names of employees involved in the relevant technical matters were also included within the confidentiality order.
2024-08-30UPC_CFI_52/2023Munich LDInfringement ActionInfringement meritsNot infringedThe Munich Local Division found EP 1 838 002 B1 invalid (revoked for the territory of Germany) on the counterclaims for revocation filed by Tesla, finding the patent anticipated by prior art D3. The patent amendment requests were dismissed. The infringement action was dismissed as the patent lacks validity. Avago (claimant) bears all costs.
2024-08-27ACT_9216/2024Munich LDApplication for provisional measuresPreliminary injunctionPI grantedMunich Local Division granted a preliminary injunction (provisional measures) against Hand Held Products for indirect/contributory infringement of Scandit AG's barcode-scanning patent EP 3 866 051. The court found indirect infringement (mittelbare Patentverletzung) of claims 1 and 10 proved to the necessary standard and ordered Hand Held Products to cease and desist from offering/supplying the infringing SDK software in multiple UPC member states, subject to a periodic penalty of up to EUR 100,000 per day of non-compliance. The application for direct infringement was rejected. The injunction was conditioned on Scandit providing security of EUR 500,000. Cost applications by both parties were dismissed.
2024-08-27ACT_23636/2024Munich LDApplication for provisional measuresPreliminary injunctionPI grantedMunich Local Division granted a preliminary injunction (inter partes) against respondents ordering them to cease and desist from manufacturing, offering, placing on the market, using, exporting or possessing a herbicide composition (Kagura) infringing a patent with claims directed to a composition, across multiple UPC contracting states. The court held that for a product composition claim the applicant need only allege and prove the composition had all features of the claim; it is not required to explain why the composition had those features. Distributing infringing products outside contracting states while advertising under the same name inside creates a risk of first infringement. An actus contrarius is insufficient to eliminate such risk; a cease-and-desist declaration with penalty clause is required. Respondents may revoke the injunction if applicant does not commence main proceedings within 31 calendar days.
2024-08-26UPC_CFI_54/2023Hamburg LDInfringement ActionInfringement meritsNot infringedThe Hamburg Local Division dismissed Avago's infringement claim against Tesla for EP 1 612 910 B1 (power management system) as no infringement of any claim could be established, and on Tesla's counterclaim partially revoked the patent, maintaining only claim 1 in the form of auxiliary request 1 with claim 3 deleted.
2024-08-22UPC_CoA_364/2024Court of AppealPetition for review of Registrar's decisionmotionName.registrar_reviewProcedural onlyOrder of the President of the Court of Appeal on a petition for review of the Registrar's decision refusing registration of an applicant in the list of UPC representatives. The applicant (anonymized) argued he met the requirements of Art. 48(2) UPCA as a European patent attorney and German patent attorney (Patentanwalt). The dispute centred on whether his training in the 1997-1998 'Munich Year' (Münchner Jahr) was equivalent to the 'Law for Patent Attorneys' course at FernUniversität Hagen required under the transitional provisions of the EPLC Rules. The President of the Court of Appeal reviewed the Registrar's two refusal decisions.
2024-08-22UPC_CoA_364/2024Court of AppealPetition for review of Registrar's decisionmotionName.registrar_reviewDismissedThe President of the Court of Appeal dismissed the petition for review of the Registrar's decision refusing to enter the applicant (anonymised) on the list of UPC representatives under Art. 48(2) UPCA. The applicant held a DPMA 'Patentassessor' qualification and claimed his 'Munich Year' training was equivalent to the FernUniversität Hagen 'Law for Patent Attorneys' course listed in Rule 12.1(a)(ii) EPLC Rules. The President found no evidence that the curriculum and examination requirements were identical, and rejected the equivalence argument.
2024-08-21APL_45142/2024Court of AppealRequest for a discretionary review (RoP 220.3)motionName.appeal_decisionProcedural onlyThe Court of Appeal dismissed AYLO's request for discretionary review of the Mannheim Local Division's confidentiality order, which had admitted three DISH/Sling-designated persons to the confidentiality club regarding protected business information.
2024-08-21UPC_CoA_454/2024Court of AppealRequest for a discretionary review (RoP 220.3)DismissedCourt of Appeal held that Microsoft's appeal against an order denying its R.361 RoP request (manifestly inadmissible application) was inadmissible because the impugned order was a case management order issued by a single judge-rapporteur rather than a panel. An appeal from a case management order is only admissible if the order was issued by a panel. The request for discretionary review was dismissed.
2024-08-21UPC_CFI_347/2024Dusseldorf LDApplication RoP262AProcedural onlyDüsseldorf Local Division issued a confidentiality order under R.262A RoP restricting access to confidential information submitted by Magna entities (defendants) in their Statement of defence and Rejoinder, relating to supply chain and trade secrets. Access was limited to specific named representatives of Valeo.
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