Latest substantive UPC decisions

• VusionGroup (formerly known as SES-imagotag) brought an application for provisional measures against Hanshow in the Munich LD for alleged infringement of its EP, relating to the display of information, in particular price information labels in sales areas. VusionGroup alleged that various Hanshow products infringed claims 1 and 3 of the patent in issue. The Munich LD dismissed VusionGroup's application for provisional measures. It was not satisfied to a sufficient degree of certainty that the products infringed the patent.
• The Court of Appeal applied the standard from 10x Genomics v Nanostring for interpretation of the claims of the patent. On the basis of this interpretation, the Court of Appeal held that the Munich LD was right in its conclusions on features 7 and 8.4 of the claim relating to the positioning of the printed circuit board and antenna. The Court of Appeal noted that its interpretation of claim feature 8.4 was based on the wording of the claim, read in light of the description and drawings from the perspective of the skilled person based on their common general knowledge, without having regard to the prosecution history of the patent. The court stated that the parts of the EPO examination file cited by the parties did not shed any new light on its interpretation and therefore the Court of Appeal did not need to address the question of whether the prosecution history can be taken into account when determining the scope of protection of an EP.
• As per the Court of Appeal in 10x Genomics, the court must consider it on the balance of probabilities more likely than not that the patent is infringed to grant a preliminary injunction. On this basis, the Court of Appeal agreed with the Munich LD that the attacked embodiments did not fall within the scope of protection of the patent on the balance of probabilities as not all of the features of the claim had been realised in the product. Therefore, VusionGroup's argument on claim 1 and dependent claim 3 both failed and the Munich LD was right to reject its application for provisional measures.

• 10x Genomics filed a claim against Curio for infringement of its patent protecting a method and product for localised or spatial detection of nucleic acid in a tissue sample. 10x Genomics alleged that Curio's "Curio Seeker Spatial Mapping KIT", which was distributed in Germany, France, and Sweden, infringed its patent either directly or indirectly. 10x Genomics sought provisional measures, including a preliminary injunction.
• The Düsseldorf LD undertook a detailed assessment of infringement and concluded that it was more likely than not that Curio’s products would be found to make literal use of the technical teaching of claim 14 of the patent at issue. Claim 14 protected a product per se. In contrast, the court found that method claim 1 was not directly or indirectly infringed.  
• When evaluating the validity of 10x Genomics' patent, the Düsseldorf LD noted “the fact that the patent at issue has not yet survived any adversarial validity proceedings does not prevent the validity of the patent from being sufficiently certain”. It further concluded that each of the validity attacks asserted did not reach the required threshold to call into question the validity of the patent.
• Curio further objected to the grant of provisional measures on the basis that 10x Genomics had not satisfied the urgency requirement and that the weighing of interests was in its favour. The court undertook a detailed analysis of both. With respect to urgency, although the court accepted that the documents on file suggested the 10x Genomics was aware of Curio's Seeker and thus of the contested embodiments, it held that this alone did not create a sufficient basis for filing an application for the ordering of provisional measures. In its view, there must be specific indications of infringing activities in at least individual UPCA contracting member states where the patent at issue is validated.
• With respect to the weighing of interests, the court noted that the degree of probability to which the court is convinced of the existence of each circumstance to be weighed up is a crucial factor. The more the convinced the court is that the rightsholder is asserting the infringement of a valid patent, the less likely other factors will stand in the way of the order. In this situation, the fact Curio was a small company with a single product line did not outweigh the strong finding of infringement and validity.

• 10x Genomics applied for provisional measures against Curio. Subsequently, Curio applied for a change of language of the proceedings from German to English. Curio's application was rejected by the President of the Court of First Instance. The present decision concerns Curio's appeal against that decision.
• The Court of Appeal noted that when deciding on a request to change the language of proceedings to the language of the patent on grounds of fairness, all relevant circumstances must be taken into account.
• Relevant circumstances should primarily be related to the specific case and the position of the parties. The Court of Appeal stated that relevant circumstances related to the specific case may include, amongst other things, the language mostly used in the field of technology involved, of particular relevance - the language the evidence (including prior art) is primarily written in, the nationality or domicile of the parties and/or relative size of the parties to each other.
• The Court of Appeal stated that, according to Article 49(5) UPCA, if the outcome of balancing of interests is equal, the position of the defendant is the decisive factor. The reason for this being that the claimant has the choice where (with some divisions having multiple languages designated) and when to bring proceedings (except in cases of extreme urgency). It therefore can decide how much time it takes to prepare its statement of claim, whereas the defendant is immediately bound by the UPC's strict time limits. Moreover, where the claimant is asserting a patent, it must be taken into account that it chose the language of the patent when filing the application and therefore must anticipate that it might litigation in that language.
• Applying the general principles to the present proceedings, the Court of Appeal held that the request to change the language of the proceedings to the language of the patent (English) must be allowed and therefore Curio's appeal was successful.
• In particular, the Court of Appeal considered the following factors in favour of Curio: both companies are US companies, the language of the underlying technology field is English, the infringement evidence 10x Genomics relied on is almost exclusively in English, and that the majority of the evidence Curio relies on for its defence is also in English. However, the Court of Appeal was clear that the language skills of the party's representatives is not a relevant factor to be considered.

• On 15 August 2023, a member of the public applied under Rule 262.1(b) RoP to be given access to – amongst other things – the statement of claim in proceedings between Ocado and Autostore. Ocado appealed the order.
• The general principle laid down in the UPCA (Articles 10 and 45) is that the register is public and the proceedings are open to the public, unless the balance of interests involved is such that access to the public is to be denied.
• The balance of interests includes the protection of confidential information and personal data ("the interest of one of the parties or other affected persons") but are not limited thereto. The general interest of justice and public order also have to be taken into account. The interest may also be general in nature or specific to the proceedings in issue.
• Applying the general principles set out above to the present proceedings, the Court of Appeal concluded that the interest from the member of the public was general in nature.
• Ocado has not argued that the request was abusive and there is no indication it was. At the time of the contested order was made, the proceedings between Ocado and Autostore had come to an end by a settlement. Ocado had not requested that certain information contained in the statement of claim should be excluded from public access for reasons of confidentiality or personal data protection. The balance of interest was therefore in favour of allowing access.

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• PMA filed two ex parte applications for preserving evidence and inspection against AWM and Schnell. The Milan LD granted both of these orders, which were executed on 17 October 2023.
• Accordingly, the thirty-day period prescribed by Rule 197 RoP for the timely submission of a request for review of the order expired on 16 November 2023.
• Neither AWM nor Schnell applied to review the order, nor did the parties appeal. Furthermore, PMA did not bring an action on the merits against AWM and/or Schnell.
• On 16 February 2024, PMA filed a request for access to the expert report, arguing that knowledge of the content of the reports and their annexes were absolutely essential in order to assess whether or not to commence proceedings on the merits against AWM and Schnell. In response, AWM and Schnell requested that the court revoke the provisional measures and for them to cease to have effect, in accordance with Article 60(8) UPCA and Rules 198.1 and 199.2 RoP.
• Article 60(8) UPCA and Rules 198.1 and 199.2 RoP expressly provide that the court shall ensure that the measures to preserve evidence and the orders for inspection are revoked or otherwise cease to have effect, at the defendant’s request, without prejudice to the damages which may be claimed, if the applicant does not bring proceedings on the merits within a period not exceeding 31 calendar days or 20 working days (whichever is longer).
• In view of the facts, and in particular of PMA's failure to comply with the statutory time limit laid down in Article 60 UPCA and Rules 198.1 and 199.2 RoP, the Milan LD declared that all the measures were revoked and therefore no longer had any effect.

• NJOY Netherlands brought five revocation actions at the Paris CD. All versions of the statements of revocation listed the defendant as "Juul Labs, Inc.”. The proprietor of the patents at issue is Juul Labs International, Inc.
• A preliminary objection was raised on the basis that the revocation actions were brought against Juul Labs, Inc., which is not the proprietor of the patents at issue. It was further argued that, as a consequence, the Paris CD would not be the competent division in the case at hand since an action against an entity other than the patent proprietor is not an action that fulfils all the requirements set out in Article 33(4) UPCA (competence of the divisions of the Court of First Instance).
• By orders of the judge-rapporteur in all five revocation actions, the Court of First Instance rejected the preliminary objection and ordered the Registry to rectify the name of the defendant to read “Juul Labs International, Inc.”
• Juul Labs International, Inc appealed the decision, requesting that the Court of Appeal declare the revocation actions inadmissible. This was rejected by the Court of Appeal. The Court of Appeal found that despite the incorrect statement of name, it must have been clear to Juul Labs International, Inc that the statements for revocation were directed against it. Moreover, Juul Labs International, Inc was not unreasonably prejudiced by the incorrect statement of name and by the rectification ordered by the Paris CD.
• The Court of Appeal also ruled that it would not issue an order for costs at this stage because its decision was not final and did not conclude the action. The final decision on who would bear the costs of the legal proceedings would be made later, considering the outcome of the appeal. This meant that the determination of costs was deferred until the case was fully resolved, ensuring that the party who was less successful in the overall proceedings would bear the appropriate costs.

• At first instance in the Munich LD, Nanostring sought a preliminary injunction against 10x Genomics for alleged direct and indirect infringement of its unitary patent. The patent related to a method for detecting a plurality of analytes in a cell or tissue sample. The Munich LD had granted the preliminary injunction.
• However, the Court of Appeal overturned the Munich LD decision, rejecting Nanostring's request for the preliminary injunction.
• In doing so, the court explained that "[t]he claim is not only the starting point but the relevant basis for determining the scope of protection of a European patent under Art. 69 EPC in conjunction with the Protocol on the Interpretation of Art. 69 EPC."
• For the interpretation of a patent claim, the Court of Appeal stated that it is not only its exact wording in the linguistic sense that is decisive. The description and the drawings are always to be consulted as explanatory aids for the interpretation of the patent claim, and not only to remedy any ambiguities in the patent claim.
• When considering an application for provisional measures, a sufficient degree of certainty pursuant to Rule 211.2 RoP, in conjunction with Article 62(4) UPCA. This requires that the court considers it, on the balance of probabilities, at least more likely than not that the applicant is entitled to initiate proceedings and that the patent is infringed. A sufficient degree of certainty is lacking if the court considers it on the balance of probabilities to be more likely than not that the patent is not valid. The court confirmed that the burden of proof for establishing these factors lies with the applicant.
• In this case, the Court of Appeal found that the validity of the patent was not established with a sufficient degree of certainty for the preliminary injunction request to have been rightly raised.
• The headnote was amended in German here.

This analysis is based on a machine translation of a decision not available in English.

• Healios (defendants in the main proceedings) requested a stay of the main proceedings pending the outcome of parallel EPO opposition proceedings. Astellas' (claimant in the main proceedings) statement of grounds of revocation at the UPC were substantively identical to the EPO opposition filed. A final decision by the EPO was expected by mid-2028.
• According to Article 33(10) UPCA, the court may stay proceedings when a "rapid" decision is expected from the EPO. However, neither the UPCA nor the RoP define what is meant by "rapid" or what is considered as a "decision" in this context. In the absence of any guidance, the Munich CD held that what is considered "rapid" has to be determined on the basis of the facts and circumstances of each case.
• The Munich CD held that Article 33(10) UPCA should not be limited to "final" decisions of the EPO and therefore it is open to the court to stay proceedings awaiting any relevant decision from the EPO, provided that the decision is expected "rapidly". However, the court noted that if the first instance EPO decision is likely to be appealed and that appeal is likely to take a considerable amount of time, this is a factor that may be taken into account by the court when exercising its discretion. An approach later taken by the Court of Appeal.
• The parties agreed that a final decision from the EPO was not expected before mid-2028. If the proceedings were to be stayed as per Healios' request until the conclusion of the opposition proceedings, then the duration of the stay would be at least 5 years. This would not constitute a rapid decision for the purposes of Article 33(10) UPCA and Rule 296.3 RoP.
• The Munich CD found that Astellas had established that there was legitimate interest in pursuing the revocation action to obtain commercial certainty.
• The court rejected Healios' request to stay the proceedings but, in an attempt to mitigate the risk of conflicting decisions, agreed to approach the EPO Opposition Division to see if it would be feasible for the Opposition Division to render its written decision before 24 May 2024. If that was not feasible, then the court would consider postponing the oral hearing in the revocation action and/or staying the proceedings until the written decision was available. The court stated that this approach "sufficiently and fairly" took into account both the claimant's and the defendants' interests.

• Fives filed a claim for damages following a German national infringement case in which it had been found to infringe the patent at issue. REEL filed a preliminary objection under Rule 19.1(a) RoP asserting that the Hamburg LD did not have jurisdiction to hear an application for damages under Article 32(1) UPCA, which conclusively lists those actions for which the UPC has competence.
• The Düsseldorf Regional Court had already made a decision on the infringement of the patent, in which Fives was injuncted and ordered to pay damages (amount to be determined). That verdict was final as neither party had appealed. As such, the court decided that it did not have jurisdiction to hear the action for a determination of damages for patent infringement proceedings that had already been fully concluded before a national court. In doing so, it upheld REEL's preliminary objection.
• Under Article 32(a) UPCA, the UPC only has jurisdiction to determine damages after a previous action for patent infringement before the UPC. Additionally, Article 32(f) UPCA establishes jurisdiction only for actions for damages or compensation based on the provisional protection conferred by a published EP application. Neither of these provisions were applicable in this case.

This analysis is based on a machine translation of a decision not available in English.

• C-Kore is the proprietor of a patent relating to subsea apparatus and the testing of it, which it acquired in 2013 from its former parent company. The patent was exploited by C-Kore through the use and marketing of its "cable monitor" product.
• C-Kore brought an ex parte application for provisional measures (preserving evidence) against Novawell, requesting: (i) a detailed description of the alleged infringing product; (ii) physical seizure of the product and documents; (iii) preservation and disclosure of digital media; and (iv) a written report carried out by a court appointed individual.
• The Paris LD concluded that the conditions set out in Rule 192.2 RoP were met.
• The court explained that the validity of the patent was sufficiently certain because it was in force in France, Germany, Italy, the Netherlands, Denmark and Norway, and that no opposition was pending before the EPO.
• The court accepted pictures extracted from Novawell's website as evidence to prove that the attacked product had the necessary features to satisfy C-Kore's infringement claim at this stage.
• According to Rule 194.2 RoP, the court shall take into account the urgency and the reasons to grant an ex parte order. The court noted the relevance of the competitive market at hand. The court further noted that, having previously been a client of C-Kore, Novawell was now a direct competitor. C-Kore took less than three months from becoming aware of the existence of the allegedly infringing product to filing this application (having sent pre-action letters during this period), which the Paris LD found to be a reasonable delay in this case. This was especially so because C-Kore asked for a "standard procedure" and not an "urgent procedure". The court also held that there was a risk that evidence could be easily removed if Novawell was informed or was heard before the measures were carried out. Therefore, it was justified in making the order on an ex parte basis.

• At the time of the present application, multiple proceedings were pending at the UPC between the parties (and group companies). Pursuant to a judgment from the Munich LD the court issued, amongst other things, a preliminary injunction against Harvard College. At the time of the present application, an appeal was pending at the Court of Appeal against that order.
• Harvard College issued an application for security of costs against Nanostring, arguing that there was a tangible risk that it would not be able to enforce a costs order against Nanostring.
• The Munich CD found that, in line with the Helsinki LD in AIM Sport Vision AG v Supponor and the Munich LD in Edwards Lifesciences Corporation v Meril GmbH, the court has the discretion to order security for legal costs and other expenses incurred and/or to be incurred based on Article 69(4) UPCA and Rule 158.1 RoP. Although Article 69(4) UPCA specifically mentions the cases referred to in Articles 59 to 62 UPCA, according to the Munich CD a security order is not limited to those cases because of the “in particular” wording in Article 69(4).
• Factors to be considered when ordering a security for costs order include: (i) the financial position of the other party that may give rise to a legitimate and real concern that a possible costs order might not be recoverable; and/or (ii) the likelihood that a possible costs order by the UPC may not, or may in an unduly burdensome way, be enforceable. Whether such factors are present and to what extent needs to be established in view of the facts and arguments brought forward by the parties.
• In the present case, Harvard College argued that because Nanostring is located in the UK, this created a risk that it would not be able to enforce a cost reimbursement.
• The court noted that after the UK’s withdrawal from the EU, the recast Brussels Regulation no longer applies in the UK. Consequently, judgments rendered by EU courts will no longer automatically be recognised in the UK as before Brexit (under Article 36(1) of the recast Brussels Regulation). The UK is also not a member of the Lugano Convention or of any other instrument of international law with a similar effect to the best of the court’s knowledge. As a result, the Munich CD considered this to be a factor that weighed in favour of ordering security for costs.
• Harvard College also referred to statements made by Nanostring in other proceedings, which it said gave rise to a legitimate concern that Nanostring would not have adequate financial means to cover the legal expenses that it may be liable for. In response, Nanostring did not provide any evidence of its financial security, merely relying on the cash position of its group of companies. However it was argued (and accepted by the court) that despite the group cash position being in excess of US$100 million, the group had never been profitable. It relied on money from investors and had long-term debts exceeding its cash position.
• The Munich CD ordered Nanostring to provide security for costs in the amount of €300,000. It noted that Harvard College had not provided any information about the actual costs already incurred or that it expected to incur and, therefore, if additional security was required in the future then Harvard College would be able to request it "at any time during the proceedings" as per Rule 158.1 RoP.

• PMA filed two application for preserving evidence and for inspection against AWM and Schnell, requesting an ex parte order. The applications were identical and therefore were joined and ruled on together.
• PMA is the proprietor of an EP protecting a method and an apparatus of continuously producing a lattice girder. PMA gathered information about the ongoing production, promotion and commercial offer of apparatus by AWM and a group member Schnell since 2022. PMA alleged infringement.
• PMA explained that it intended to issue infringement proceedings, relying on the evidence that was the subject of the application. Upon consideration, the court decided that the conditions set out in Rule 192.2 RoP for applications for preserving evidence were met.
• PMA had implied that, as a result of the EPO Board of Appeal decision, the opposition proceedings were rejected, and therefore the validity of the patent at this early stage was proved.
• With regard to infringement, PMA provided a picture from the website and a YouTube screenshot to show the height adjustment of the device. The court accepted this as sufficiently providing reasonable evidence.
• The court granted the order to inspect the premises and gather evidence.

• The applicant brought an ex parte application for the preservation of evidence (saisie) and preparation of a description for a device for treating night time breathing problems.
• The application was brought with extreme urgency. The application was made on 20 September 2023, with judgment handed down the following day. There was an upcoming symposium, taking place on 22 and/or 23 September 2023, whereby OrthoApnea, as a gold sponsor, would likely promote, offer and exhibit its products.
• The Brussels LD allowed the application for the provisional measures in view of the imminent infringement and allowed the applicant to seize evidence during the two-day symposium. The court also allowed an expert to draw up a report detailing the characteristics of the products and submit them to the Brussels LD.
• The applicant had provided evidence from the OrthoApnea website that its device met the characteristics of claim 1.
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This analysis is based on a machine translation of a decision not available in English.

• 10x Genomics filed an application for preliminary injunction alleging direct and indirect infringement of its EP relating to compositions and methods for analyte detection.
• To decide the application, the Munich LD conducted a thorough assessment of both validity and infringement. It considered the validity of the patent under novelty, inventive step, added matter and sufficiency. The court decided that the patent was valid as, on the balance of probabilities, it had "sufficient certainty" under Article 62(4) UPCA and Rule 211.2 RoP.
• To determine unreasonable delay under Article 62 UPCA, the court must consider (1) when the claimant first became aware of the patent infringement and then (2) when the application was brought. Here, 10x Genomics had requested delay of grant of the EP to be able to benefit from a UP. The court considered the clear advantage of the UP justified the delay, and the action was brought on the first possible day.
• The court also considered the balance of the parties' interests in deciding whether to grant the order (in particular the respective harm). The court explained that it would be more likely to grant an injunction where damages would not be an adequate remedy and where there was greater certainty that the patent would be valid. However, if when weighing the interests there may be a point to undermine the court's conviction, then the court may be more lenient and only order security or even dismissal of the request.
• Upon consideration of the various factors the court granted a preliminary injunction, closely tracking the words of the claims of the EP, with a penalty of €250,000 for each infringement if breached. No security was required from 10x Genomics.

• CUP&CINO filed an application for provisional measures for infringement of the patent that covered apparatus for production of milk foam with adjustable temperature.
• Alpina opted-out the patent after the application for interim measures had been submitted. The Vienna LD decided that the opt-out application was ineffective under Rule 5.6 RoP given that an "action" had been commenced before the UPC and an "action" includes proceedings for a preliminary injunction.
• The court also explained that the scope of protection for a EP must be based upon Article 69(1) EPC and its interpretative Protocol, together with Article 24(1)(c) UPCA. Accordingly, the scope of the protection is determined by the content of the claims, the interpretation of which much also be based on the description and drawings.
• CUP&CINO had argued that the product infringed claim 2, but the question of interpretation was raised regarding the length of the pipeline:  claim 2 did not define any mandatory specifications for length. The court decided that the challenged embodiment did not make use of the patent's teaching as the knee connection and coupling part of it, which together had a length of about 10cm, were not a section of the pipeline in accordance with the patent in suit.
• The court rejected the application on the basis that the patent was not infringed. As such, it was not necessary to weigh the parties' interests.

This analysis is based on a machine translation of a decision not available in English.

• This decision concerned an ex parte application for a preliminary injunction issued by myStromer AG against Revolt Zycling AG in respect of alleged infringement of its patent protecting a combination structure of a bicycle frame and motor hub by Revolt's e-bike range "OPIUM".
• Revolt had presented the allegedly infringing e-bikes at a trade fair the day before the application was issued.
• Interestingly, Revolt had filed a protective letter with the court as a defence to the issuance of an ex parte preliminary injunction. However, the Düsseldorf LD granted the ex parte preliminary injunction, finding that the arguments put forward in the protective letter (non-infringement and exhaustion) were not sufficiently substantiated.
• myStromer met the urgency requirement for the grant of the preliminary injunction and the validity of the patent at issues was "secured to the extent required". The court noted that the patent did not have an opposition filed against it and no national revocation actions had been brought. It also noted that Revolt had not been able to present relevant prior art either before the court or in its protective letter.
• The preliminary injunction was granted on an ex parte basis because myStromer had "credibly demonstrated" that any delay would likely cause irreparable harm as per Rule 212.1 RoP. The court also noted that the trade fair was of considerable importance to the industry and that the exhibition of the contested embodiment at the fair could lead to a loss of sales or market share for myStromer that could not be reversed.
• The preliminary injunction covered Germany, the Netherlands, France and/or Italy. myStromer subsequently requested that the order be rectified to include Austria, arguing that the omission of Austria was an “obvious slip” within the meaning of Rule 353 RoP. This request for rectification was denied by an order dated 3 July 2023. According to the judges, an obvious slip required that a “declaration of the judicial intention in the decision or order must deviate from the intention present when the decision was made”.
• The Düsseldorf LD also made a seizure order under Rule 211.1(b) RoP, requiring Revolt to hand over any of the attacked embodiment in its direct or indirect possession or ownership at the trade fair to a bailiff.