Case-Law of the Unified Patent Court – Key Takeaways from the first Decisions
The Unified Patent Court (UPC) is up and running since more than one year, the number of cases at the UPC has now passed 500 and a flurry of major and minor decisions and orders have been issued. The new court has proven capable of acting swiftly and issuing well-reasoned decisions, some of which shall be highlighted in this article.
Preliminary Measures
The imposition of preliminary measures requires “sufficient degree of certainty” of the validity of the patent being enforced and of the infringementArt. 211.2 RoP, in conjunction with Art. 62(4) UPCA (see also Art. 9(3) Directive 2004/48/EC). While the German case-law had traditionally required validity of the patent “beyond reasonable doubt”, the CJEU had thrown cold water on this approach in 2022https://eur-lex.europa.eu/legal-content/DE/ALL/?uri=CELEX:62021CJ0044 such that it should not come as a surprise that the UPC adopts a “balance of probabilities” standard in provisional measures. This approach 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.
Ex Parte Procedures
The UPC immediately showed its force with its first ex-parte decision myStromer AG v. Revolt Zycling AGhttps://www.unified-patent-court.org/sites/default/files/upc_documents/2023-06-22%20LD%20D%C3%BCsseldorf%20UPC_CFI_177-2023%20ORD_526778-2023%20ACT_525740-2023%20anonymized%20Translation.pdf on June 22, 2023. Issued only a few days after starting its operation, the UPC has proven quick reaction and willingness to enjoin likely infringements even without hearing the defendant based on granted patents hot having been proven valid in inter-partes procedures and to take measures to obtain evidence even outside its jurisdictionThe decision mentions an inspection on June 19 at the Swiss headquarters of Revolt Zycling. Procedural details are not published.. The prospect of having one’s business closed in all UPCA signatory states without prior notice based on a freshly granted European Patent should make business holders rethink their patent monitoring strategies.
A similar willingness to act quickly was shown in actions for preservation of evidence, e.g. seizing machines at Milan trade fair and promotional materials in OERLIKON TEXTILE GMBH & CO KG v. Himson Engineering Private Limitedhttps://www.unified-patent-court.org/sites/default/files/upc_documents/23-06-13-ld-milan-standing-judge-order-r.-9-rop-not-extremely-urgent-498862_2023.pdf and for inspection in situ (“saisie contrefaçon”) PROGRESS MASCHINEN & AUTOMATION AG v. AWM S.R.L., SCHNELL S.P.Ahttps://www.unified-patent-court.org/sites/default/files/upc_documents/2023-09-25-ld-milan-upc_cfi_286-2023-ord_576298-2023-app_565446-2023-anonymized.pdf. What might be process as usual for French, Belgian and Italian colleagues is a new and exciting option for German litigants. Obtaining an order for preservation of evidence at the UPC basically requires a presumption of validity of the patent and presumption of infringement which must, however, be more than “fishing expedition”. Procedurally, the on-site inspection at the presumable infringer’s premises will be conducted by an expert under duty of confidentiality, wherein the court then rules on confidentiality questions after hearing the defendant.
A protective letter submitted by the defendant in myStromer AG v. Revolt Zycling AG did not prevent the preliminary injunction from being issued lacked sufficient detail to cast doubt on the validity of the patent in question. However, a protective letter submitted in SES-imagotag SA v. Hanshow Technology Co. Ltd. Et alhttps://www.unified-patent-court.org/sites/default/files/files/api_order/Anordnung%20SES%20Hanshow%20fin%20EN.pdf seems to have helped the defendant.
Claim Interpretation
On claim interpretation, the UPC asserts itself self-consciously against the EPO by pre-empting the answers to the questions asked in G 1/24https://www.epo.org/de/law-and-practice/boards-of-appeal/communications/referral-enlarged-board-appeal-g-124-heated. The Enlarged Board of Appeal is asked, the UPC answers!
In Nanostring v. 10x Genomicshttps://www.unified-patent-court.org/sites/default/files/upc_documents/576355-2023%20AnordnungEN.final_.pdf, point 29 and VusionGroup/Hanshowhttps://www.unified-patent-court.org/sites/default/files/files/api_order/Anordnung%20SES%20Hanshow%20fin%20EN.pdf the Court of Appeal (CoA) of the UPC clarified that that the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim. According to the UPC; the person skilled in the art does not apply a philological understanding when interpreting a patent claim, but determines the technical meaning of the terms used with the aid of the description and the drawings. A feature in a patent claim is always to be interpreted in light of the claim as a whole.
In Regeneron v. Amgenhttps://www.unified-patent-court.org/sites/default/files/files/api_order/F84161EC0AD46D1A7ABB3E60DCF98439_en.pdf, the Munich Central Division of the UPC adds that the actual technical function of the features the in question must be the deduced function of the individual features in the context of the patent claim as a whole. The description and the drawings may show that the patent specification defines terms independently and, in this respect, may represent a patent’s own dictionary. Even if terms used in the patent deviate from general usage, it may therefore be that ultimately the meaning of the terms resulting from the patent specification is authoritative.https://www.unified-patent-court.org/sites/default/files/files/api_order/F84161EC0AD46D1A7ABB3E60DCF98439_en.pdf, Reasons 6.6
The latter “function-oriented claim interpretation” seems to follow the approach developed by the Düsseldorf Courts German Federal Court of Justice (BGH), e.g. BGH X ZR 62/17 Lenkergetriebehttps://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py?Gericht=bgh&Art=en&sid=a7ee086b433b18ee9c6b0ef76be40cc5&nr=102023&anz=6&pos=2 and BGH X ZR 29/15 Pemetrexedhttps://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py?Gericht=bgh&Art=en&sid=a7ee086b433b18ee9c6b0ef76be40cc5&nr=75370&anz=6&pos=3, which should not come as a surprise considering the background of the UPC judges setting these landmark decisions.
In Nanostring v. 10x Genomics, the function-oriented interpretation resulted in the finding of the CoA that a detection method “comprising” the method steps “(c) incubating” and “(d) detecing” covers embodiments where former steps are carried out multiple times, i.e. that the decoder samples may be removed and then replaced again with the same detection reagent analyte and the detection reagent, whereas the court of First Instance had found that claim 1 of the patent in suit requires the continuation of the binding between the analyte and the detection reagenthttps://www.unified-patent-court.org/sites/default/files/upc_documents/2023-09-19-ld-munich-upc_cfi_2-2023-act_459746-2023-app_528389-2023-anonymized-english-translation.pdf, page 60.
Inventive Step
In Nanostring v. 10x Genomics, the CoA of the UPC does not apply the Problem-and-Solution-Approach of the EPO and judges that a modification is obvious if it would be considered a logical “next step” in a development – here the transfer from in vitro detection to in situ detectionhttps://www.unified-patent-court.org/sites/default/files/upc_documents/576355-2023%20AnordnungEN.final_.pdf, see page 32, 2nd par. According to the same decision, finding antibodies matching a given antigen is generally obvious. The UPC thereby follows the approach of the EPOhttps://www.epo.org/en/legal/guidelines-epc/2024/g_ii_6_2.html rather than that to the US Federal Circuit, where a patent of the same family had been revoked due to lacking enablementhttps://www.supremecourt.gov/opinions/22pdf/21-757_k5g1.pdf.
Inventive step is further addressed by the Munich Central division in Regeneron v. Aventishttps://www.unified-patent-court.org/sites/default/files/files/api_order/7BD3093D60CBD34C06940FCA0C598CEE_en.pdf, which asserts inter alia that the assessment of inventive step starts from a realistic starting point in the prior art, wherein here can be several realistic starting points. It is not necessary to identify the “most promising” starting points and that a technical effect or advantage achieved by the claimed subject matter compared to the prior art may be an indication for inventive step, whereas a feature that is selected in an arbitrary way out of several possibilities cannot generally contribute to inventive step.
Conclusion
The UPC has proven to be capable of taking bold action in a swift and forceful manner and to be willing to develop an independent body of case-law. The promising first year will likely boost the confidence of litigants in the new system, leading to higher case-load. Divergent approaches on claim interpretation and inventive step should be closely watched and might result in friction and be detrimental to legal certainty.
