UPC busy with main action decisions and key appeals so far in November 2024

There has been a flurry of caselaw from the UPC over the last month, with seven main action decisions (decisions on the merits) and one PI decision, as well as several interesting appeal decisions and other key procedural interpretations in November so far (to 26 November 2024).  

In terms of decisions on the merits, things have been going the patentees' way a little more this month with patents being held infringed in all the infringement cases (although in one that involved two patents, the other was held invalid) and where validity was challenged, five out of the seven patents involved survived.

Here is a round-up of the most significant developments so far this month:

• Milan's first decision on the merits: Back at the start of the month (4 November) the Milan local division gave its first decision on the merits in Oerlikon v Bhagat (CFI 241/2023) finding the patent infringed (although there was no challenge to the validity of the patent by the defendant). The defendant had instead requested that the court use its residual powers of stay (under RoP 295(m)) to stay these proceedings pending the outcome of ongoing proceedings involving the same claimant and patent but a different defendant (Oerklion v Himson Engineering CFI 240/2023) in which the patent's validity has been challenged. This request was unsuccessful and the Milan court granted an injunction. See our post here for more on this case.
• Decisions on vape-related patents: The were two NJOY v Juul revocation decisions on 5 November from the Paris central division. In CFI 309/2023 the vaporization patent was revoked and in CFI 315/2023 the adjustable seal patent was upheld.  
• Prior national proceedings and withdrawal of opt-outs: In a key decision, the Court of Appeal held on 12 November in AIM v Supponor (CoA 489/2023) that only national proceedings brought after the UPC commenced can act to prevent the withdrawal of the registration of an opt-out of that patent from the UPC's jurisdiction. This reversed the decision of the court of first instance in this case (the Helsinki local division) which had found that even proceedings commenced before the UPC started hearing cases could act to block a subsequent withdrawal of an opt-out.  For more commentary on this see our post here.
• Application of national law to pre-UPC infringements not necessary: In Hewlett-Packard v LAMA CFI 358/2023 on 13 November, the Paris local division held that one patent in issue was valid and infringed and the other was invalid. Each party bore 50% of the costs. Significantly, the Court considered that when assessing acts of infringement occurring before 1 June 2023, it is not relevant to refer to sources of national law; the sources of substantive law applicable before the UPC that define what constitutes an act of infringement are Articles 25 and 26 UPCA. The UPC's jurisdiction to deal with matters arising prior to 1 June 2023 was clear and the Court refused a request to refer the issue to the CJEU. LAMA had tried to argue that there was exhaustion of rights (see Art 29 UPCA) and abuse of dominant position under Art 102 TFEU. The exhaustion arguments failed and it was held that no dominant position had been demonstrated so this competition argument also failed. The UPC refused a referral to the CJEU on whether the UPC had jurisdiction to hear these competition defences.
• Modifying injunctions: In a main action/decision on the merits on 15 November, Edwards v Meril (CFI 15/2023), the Munich local division found Edward's patent for a heart valve to have been infringed by Meril and granted an injunction. However, the Court stated that the injunction specifically did not extend to those valve devices "that have already been scheduled for implantation in an individual patient by 15 November 2024" (ie at the date of the decision). A similar approach has been taken in the Valeo v Magna decisions (CFI 347/2023 and 368/2024) in relation to infringing parts destined for particular BMW models, the production of which would have had to be halted without such lee-way being provided in the injunction (this was also the subject of several "obvious slip" applications to ensure the correct vehicle types to be excluded had been included in the injunction wording, see here and here).
• Stay pending EPO opposition: In another Edwards and Meril UPC dispute,Meril v Edwards (CoA_511/2024) on 21 November (a separate infringement action from that mentioned above relating to a different patent) that had been brought in the Nordic Baltic regional division, Meril appealed to the Court of Appeal, requesting that that infringement action brought against it by Edwards (CFI 380/2023) which was due have a full oral hearing on 16 January 2025, be stayed until after the EPO's accelerated opposition which was due to be heard on 17 January 2025. This appeal against the refusal of a stay by the Nordic Baltic court, was successful in that the CoA appeared to view the proximity of the EPO opposition hearing as sufficient to bring a stay into consideration (the CoA held that it was evident that the requirement for a rapid decision by the EPO was met in this case), but the CoA referred the case back to the Nordic Blatic court to exercise its discretion on a stay in relation to the other considerations for a stay within the UPCA and RoP.
• Doctrine of Equivalence: On 22 November, the Hague local division applied the doctrine of equivalence in a decision on the merits, Plant-e v Arkyne (CFI 239/2023). Acknowledging that the UPC Agreement (UPCA) did not cover the doctrine of equivalence (DOE), the Court held that the test to be applied to the assessment of infringement by equivalence is based on the case law in various national jurisdictions, as proposed by both parties in this case (and specifically referring to the Dutch CoA's approach to DOE in Eli Lilly (2020). The patent was held valid and infringed by equivalence and an injunction was granted for Benelux, France, Germany and Italy.
• Milan LD refuses PI application: In the preliminary injunction application in Insulet v A Menarini Diagnostics (CFI 400/2024) Milan local division, 22 November, the patent was held more likely than not to be invalid on the basis of lack of novelty. Interestingly, in making this decision, the Milan court stated that it "follows" the Paris central division and the Lisbon local division in their findings that auxiliary requests could not be used to amend a patent at PI stage (note, there is no precedent principle at the UPC re CFI decisions).  The claimants tried to get their patent amended using other procedural means that allow parties to amend their case but the Court held that these did not apply here as the claimant sought a claim limitation and this would be a formally distinct type of request under those RoPs. The Court saw this approach as being an "an attempt to use a different instrument to introduce a request for the amendment of the patent - governed by Rule 30.2 RoP – into these proceedings".   The defendant's preliminary legal expenses were ordered to be paid as interim costs (117,465 euros).
• FRAND defences: Also on 22 November, in Panasonic v Oppo (CFI 210/2023) the UPC gave its first decision on the merits which involved an (unsuccessful) FRAND defence. Applying the ECJ guidance in Huawei v ZTE, the UPC's decision on this point was based on its finding that (1) Oppo had delayed licensing negotiations and failed to provide sufficient information about its products, and (2) Oppo had made offers restricted to Europe, the USA and Japan, rather than for a worldwide licence. The general approach adopted by the Mannheim local division is in line with our earlier predictions that the German local divisions at the UPC were likely to take an approach to FRAND very similar to that of the German national courts set by the Sisvel v Haier decision. See our blog post here for more on this decision.