UPC: Parallel proceedings

“With the UPC in place, patentees and defendants face a multitude of new options.”

During a transitional period, Art. 83 UPCA allows parallel infringement and revocation proceedings at the UPC and national courts or “other competent authorities”, such as the European Patent Office. We present you with an overview of recent UPC case law on this issue. So far, the UPC has dealt with:

(1) - proceedings pending in various UPC divisions: Edwards v. Meril Italy

(2) - proceedings before the UPC and national courts: (2a) Nokia v. Mala & (2b) NanoString v. Harvard

(3) - proceedings before the UPC and the EPO: (3a) Carrier v. Bitzer & (3b) Edwards v. Meril India

(1) Proceedings in different divisions of the UPC: Edwards v. Meril Italy

In this case, Edwards filed an infringement action against Meril India and Meril Germany before the UPC’s Munich Local Division. Also, a stand-alone revocation action was brought by Meril Italy before UPC’s Paris Central Division. Edwards objected to Paris Central Division’s competence to rule on Meril Italy’s stand-alone revocation action in light of Art. 33(4) UPCA and the infringement case pending in Munich. Paris Central Division rejected Edwards’ objection with a main focus on the term “same parties” referred to in Art. 33(4) UPCA. That is, Meril Italy cannot be considered the same party as Meril India or Meril Germany. Hence, a patent may be attacked by different subjects even if linked by organizational ties or commercial relationships and even if based on the same grounds of invalidity.

 

(2a) Proceedings in the UPC and national courts:

Nokia v. Mala In this case, Mala asserted patent infringement against Nokia before the Düsseldorf District Court. In response, Nokia Solutions and Networks filed a nullity action against Mala before German Federal Patent Court which was not successful (patent upheld). Nokia Technology then filed a revocation action with the UPC’s Paris Central Division. Shortly later, Nokia Solutions and Networks appealed the Federal Patent Court’s decision before the German Federal Court. Mala filed a preliminary objection that the UPC should not have competence to hear the revocation action or stay the case until the decision of the German Federal Court. UPC Paris Central Division rejected Mala’s objection, and did not stay the proceedings. Finally, the UPC Court of Appeal overruled the first instance decision by Paris Central Division. In it’s decision, the UPC Paris Central Division considered Arts. 29 to 32 of Regulation (EU) No 1215/2012 (“Brussels I recast”), regulating parallel competence of courts of EU member states, to be not applicable. According to this EU regulation, when a same action between same parties is pending before two EU member state courts, the latter called court should stay its proceedings.

The UPC Court of Appeal (CoA) overruled said decision and ruled that Arts. 29-32 Brussels I recast shall in principle apply – during the transitional period of Art. 83 UPCA – to proceedings pending before the UPC and a national court, even if the national proceedings were initiated prior to the transitional period. However, the claimant (Nokia Technology) in the UPC revocation action and the claimant (Nokia Solutions and Networks) in the German nullity action were not the same parties within the meaning of Arts. 29-32 Brussels I recast, as the term “same party” is to be determined from a formal point of view. Hence, also the UPC CoA did not stay the UPC revocation action until the decision in the pending parallel national proceedings, for essentially the same reasons as already applied in the case Edwards v. Meril Italy. The UPC CoA further ruled that a request for a stay of proceedings can be part of a preliminary objection (Rule 19, Rules of procedure (RoP) of the UPC), which further provides that a preliminary objection may also relate to questions of jurisdiction governed by Art. 30 Brussels I recast.

 

UPC: Parallel proceedings

“With the UPC in place, patentees and defendants face a multitude of new options.”

(2b) Proceedings in national courts and the UPC-NanoString v. Harvard In this case, NanoString Technologies Germany brought in 2022 a nullity action against the President and Fellows of Harvard College (“Harvard”) before the German Federal Patent Court that did revoke the patent in its entirety. NanoString Technologies Europe brought in 2023 a revocation action against Harvard before the UPC’s Munich Central Division. At this time, the Federal Patent Court’s decision was appealed and thus pending. The UPC Munich Central Division decided not to stay the proceedings, despite that the German nullity action and the UPC revocation action were “considered as related proceedings under Art. 30 [Brussels I recast]”. According to the UPC LD MUC: The UPC proceedings were ready to be decided after concluding the oral hearing, while the German appeal proceeding was still at an early stage. Also, the decision of the German action is only enforceable in Germany, while the UPC proceedings aim to enable the parties to further obtain a decision on e.g., Dutch and French portions of the patent. Staying the UPC case only for the German portion would also not yield any economic benefits. Deciding the UPC revocation action may well avoid costs for further parallel proceedings in Germany and the UPC. Summarized, the UPC LD MUC saw no risk of inconsistent or conflicting rulings and thus decided to not stay.

(3a) Proceedings before the UPC and the EPO: Carrier v. Bitzer In this case, Carrier brought a revocation action against Bitzer before UPC Paris Central Division. Bitzer filed a request to stay the proceedings under Rule 295(1) RoP and Art. 33(10) UPCA until an opposition proceeding pending with the EPO would be resolved. The UPC Paris Central Division rejected the request and decided not to stay the proceedings. The appeal to the UPC CoA was not successful. The UPC CoA held that the UPC may stay proceedings only “when a rapid decision may be expected from the EPO”, as per both Art. 33(10) UPCA and Rule 295 RoP. However, in this case, the EPO’s decision could be expected only after 9 to 10 months, which was not considered “rapid”. UPC CoA saw it paramount that the final oral hearing at UPC first instance takes place within one year. Thus, the UPC will not stay proceedings to wait for the EPO, since otherwise, this schedule cannot be maintained.

(3b) Proceedings before UPC and the EPO: Edwards v. Meril India In this case, the UPC CoA further clarified that the EPO’s decision that should be expected rapidly does not have to be a final decision. Hence, the decision can be the one made by the Opposition Division (OD) and must not be a final one of a BOA. However, the UPC still has the discretion to stay the proceedings due to the non-final nature of OD’s decision in order to prevent conflict between the UPC’s decisions in infringement actions and the EPO’s decision in opposition proceedings. Unlike parallel revocation actions, infringement and opposition actions may fundamentally conflict, which shall be avoided in the first place.

 

CONCLUSIONS

UPC seems to move towards a formal concept of the term „same parties“ (in line with CJEU). For example, Meril Italy cannot be considered the same party as Meril India or Meril Germany. No clear guidelines are established yet as to whether or not a UPC case should be stayed due to pending parallel national court proceedings. No clear time limits for defining the term „rapid“ under Art. 33(10) UPCA but the UPC CoA weakened the „rapid“ requirement and expressly recognized that a stay is to be affirmed when infringement and opposition proceedings may conflict.

 

EPO: Adapting the specification

“The EPO missed an opportunity to resolve this matter for good once and for all.”

In the examination of EP patent applications, after narrowing down the claims, EP examiners often request the removal of embodiments not encompassed by the narrowed claims or to designate them as mere examples for understanding the invention. In complex cases involving numerous embodiments, this task can be quite burdensome.

Typical scenarios include embodiments being broader than the claims and claim like language in the specification not yet in line with the claims. In the EPC itself there are a variety of potential legal bases for objections in such cases but there is not the one legal basis that clearly addresses it. Potential legal bases include: Art. 84 EPC – “The claims shall be … supported by the description.” Rule 42(1)c) – “The description shall: disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood.” Rule 48(1)c) EPC – “The European patent application shall not contain: any statement or other matter obviously irrelevant or unnecessary under the circumstances.”

There has been highly diverging case law on whether the EPC holds legal bases for objections against a description not adapted to the claims. Decisions T1989/18 and T1444/20 refused Art. 84 EPC, Rule 42(1)c), Rule 48(1)c) EPC as legal bases. Decisions T1024/18, T2766/17, T2293/18, T121/20, and T1516/20 confirmed Art. 84 EPC as legal basis.

In appeal procedure T56/21 the BoA proposed a referral to the Enlarged BoA and asked the appellant to comment – the appellant confirmed the need for referral and so did multiple 3rd party observations.

Surprisingly, there was no referral to the Enlarged BoA but the BoA just issued its decision in late 2024.

This however is only another T-decision binding solely the Examining Division of that specific case. Unfortunately the issue is not yet settled once and for all. We thus remain with our current best practice: “Adapt regularly but not extensively.” By this we signal goodwill regularly but mostly manage to avoid extensive adaptations, thus saving effort and costs for our clients.

 

UPC: Auxiliary Requests in PI

“More clarity on the UPC’s stance on validity in PI infringement proceedings.”

At the UPC, the validity of a patent can be attacked via a revocation counterclaim to the infringement claim, which differs significantly from the strict separation of these questions in Germany via completely distinct infringement and validity actions. But how far carries the UPC’s holistic approach when it comes to preliminary injunctions (PIs)?

Recent case law of the Local Divisions in Milan, Italy and Lisbon, Portugal can shed some light on this issue.

UPC LD Milan, UPC CFI No. 400/2024 Insulet v. Menarini In this case, Insulet filed an application for provisional measures against Menarini for patent infringement. In response, Menarini raised multiple validity attacks to which Insulet reacted by lodging four auxiliary requests to amend the patent. Later, Insulet even lodged an application pursuant to Rule 263.3 RoP, unconditionally limiting its claim to these four auxiliary requests. In UPC PI proceedings, the Applicant is required to cumulatively provide with a sufficient degree of certainty that:

(i) the Applicant is entitled to initiate proceedings under Art. 47 UPCA,

(ii) the patent is valid,

(iii) its rights are being infringed or that such infringement is imminent (Rule 211.2 RoP), and

(iv) the balance of interests is in favour of the Applicant (R. 211.3 RoP).

In this case, UPC LD Milan found an insufficient degree of certainty that the patent is valid and dismissed the PI application. However, in doing so it explicitly stated that auxiliary requests are itself not a sign of lack of validity. The UPC LD Milan in fact did not even consider these auxiliary requests but dismissed them following a decision of the UPC LD Lisbon (see below).

UPC LD Lisbon, UPC CFI No. 317/2024 Ericsson v. Asustek In this case, UPC LD Lisbon found: “such a request [to amend the patent] would be inadmissible in preliminary injunction proceedings. The legal framework of the UPCA and the RoP for provisional measures does not expressly allow for such a possibility, in contrast to R. 30 RoP, which applies to actions on the merits. Furthermore, an analogous application of R. 30 RoP is not admissible. An auxiliary request to amend a patent claim in provisional measures is incompatible with the nature of such proceedings which are: summary proceedings; (…) the provisional nature of such action is inconsistent with the (…) request.”

UPC LD Milan, UPC CFI No. 400/2024 Insulet v. Menarini In reaction to the UPC LD Milan’s stance, Insulet lodged an application pursuant Rule 263.3 RoP, specifying that it was unconditionally limiting its claim to the auxiliary request. Rule 263.3 RoP reads “Leave to limit a claim in an action unconditionally shall always be granted.” Insulet argued that in R. 263.3 RoP “claim” can refer to “patent claim”. However, this notion was refused by the UPC LD Milan under reference to an earlier decision of the UPC Central Division Paris and the UPC CoA: “The phrase „amend its case“ under Rule 263 RoP refers to any modification to the case by introducing a new claim to replacing the original one („change its claim“), even in the context of provisional measures” (UPC CoA No. 182/2024). “It follows that the request to replace the original application to amend the patent with a new set of amendments appears to be outside the scope of said Rule 263 RoP, as it does not pertain to a claim” (UPC CD Paris No. 412/2023, order of 9 February 2024). CONCLUSIONS The case law of the UPC is steadily developing, thereby clarifying more and more procedural aspects of the UPCA and the UPC RoP, which may have been initially partially uncertain. It can be considered certain at this point that auxiliary requests to amend the patent are not allowed in UPC PI proceedings. This however does not exclude – in itself – PI applications based directly on a dependent claim.

 

UPC: Withdrawal of Opt-Out

“An earlier national proceeding does not always preclude an “opt-in” to the UPC.”

What are “opt-outs” and “opt-ins” again?

Opt-Outs allow patent holders to exclude their European patents (i.e. classical EP “bundle” patents) from the UPC’s jurisdiction, keeping them under national courts' jurisdiction during the transitional period (min. 7 years from 1 June 2023). “Opt-Ins” (=withdrawals from Opt-Outs) allow previously optedout patents to again return to UPC jurisdiction (“conditions apply”).

What was the case?

In AIM v. Supponor a PI was requested based on an EP patent that was litigated nationally prior to the UPC’s entry into force. The patent was opted-out prior to the UPC’s entry into force and the opt-out was then later withdrawn (“opt-in”) after the UPC’s entry into force. At the time of the “opt-in”, the national litigation proceedings started prior the UPC’s entry into force were still pending. The UPC LD Helsinki ruled the “opt-in” ineffective due to the pending national proceedings and as Rule 5.8 RoP does refer to ”pending and concluded earlier proceedings”, thus keeping the patent out of UPC jurisdiction (UPC_CFI_214/2023). The UPC CoA overruled this decision and ruled that “opt-ins” can be valid in cases where national proceedings were pending before the UPC system started and that “actions” in Art. 83 UPCA refer only to those initiated during the transitional period (UPC_CoA_489/2023 and UPC_CoA_500/2023). The UPC CoA apparently prioritized Art. 83 UPCA over Rule 5.8 RoP UPC to avoid contradictions and interpreted it deviating of its actual wording (CoA’s interpretation added red):

Article 83 – Transitional regime

(4) Unless an action has already been brought before a national court DURING THE TRANSITIONAL PERIOD, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.

According to the UPC CoA Art. 83 UPCA relates to the transitional regime and Art. 83(4) UPCA only concerns actions initiated during the transitional period, not the ones that were already pending when the UPC entered into force. Patent holders who opted out earlier may now consider “opting-in” for strategic advantages, such as fast UPC procedures and provisional measures as well as multi-jurisdiction litigation. The decisions render the UPC again more attractive for claimants.