Report of the Litigation Committee
The Litigation Committee had its last [in-person] meeting for the term 2020-2023 on 10 October 2023 with a good attendance with over 2/3 of our members. We have also had meetings with the UPC IT Team & Registrar as well as observers before the UPC Administrative Committee.
Litigation Committee meeting
Now that the UPC is operational, we had presentations on some of the initial decisions issued by various UPC local divisions.
The first case – UPC_CFI_ 177/2023 – myStromer AG v Revolt Zycling AG - concerned a Preliminary Injunction at the Düsseldorf Local Division.
The hearing was held ex parte although the Defendant had filed a Protective Letter. The Protective Letter included non-infringing arguments, arguments regarding exhaustion of rights, and also a request for a hearing, however the Protective Letter did not call into question the validity of the patent. The Court did not find the arguments in the Protective Letter convincing. The court found that factors including the urgency requirement and irreparable harm to be relevant.
Accordingly, the PI was found appropriate and justified, and thus it was granted - decision.
The second case – UPC_CFI_2/2023 – 10x Genomics u.a. v NanoString Technologies u.a. – was an inter partes Preliminary Injunction hearing at the Munich Local Division.
The focus of this case was on claim interpretation. The claimant also requested a limitation of the claim considered to be infringed as an auxiliary request at the hearing stating that no stipulations exist which clearly would not allow such an auxiliary request.
The PI was granted – decision.
The third case – UPC_CFI_214/2023 – AIM Sport Vision AG v Supponor Oy/Limited/SASU/Italia SRL/Espaňa SL took place at the Helsinki Local Division.
The case concerned an Infringement Action and a Preliminary Injunction. The Defendant contested the claims and raised Preliminary Objections in relation to both the Infringement Action and the Preliminary Injunction on the competence of the UPC, the Helsinki LD.
The basis for the Preliminary Objection was an infringement and a validity action before German courts initiated before the UPCA entered into force and which were still pending.
The Claimant had filed an opt-out on 12.5.2023 and a withdrawal of opt-out 5.7.2023 (in parallel with filing the claim before the UPC).
The Court [exceptionally] gave an oral decision at the end of the hearing concluding that the withdrawal of the opt-out was not valid and referred to Article 83(4) UPCA and Rule 5(8) RoP as well as to Article 28 of the Vienna Convention of the Law of Treaties – written decision.
Further we had a discussion on a planned legislation in France on privilege for in-house counsel. The issue of privilege for in-house counsel has also come up at international forums.
Sub-committees
The work of the sub-committees, in relation to the list of topics of that sub-committee, was reviewed. In the instance, where the work on a topic of the sub-committee was completed, the topic was closed. The remaining open topics are being brought forward for review in the next term. It was also suggested that the set-up of the sub-committees should be reviewed for next term.
For the subcommittee on “Representation and Privilege” we will have a possibility to join the sessions of the “WIPO Standing Committee on the Law of Patents” to directly follow-up on the international discussions on Client-Patent Attorney Privilege.
The sub-committee on UPC CMS and Rules of Procedure has been discussing unclarities in Rule 220 RoP relating to leave to appeal for certain orders or decisions. A draft letter on this has been prepared to be discussed with the UPC Administrative Committee and the UPC IT Team & Registrar. In the meantime, however, several cases have dealt with this rule which seems to indicate that it is functional in its present form.
UPC Administrative Committee (AC) and UPC IT Team & Registrar
The most recent 8th meeting with the UPC IT Team & Registrar was held on 23 October 2023.
We thus had a chance to discuss issues raised at the Litigation Committee meeting. General authorisations and other issues regarding opt-outs, the process flow for filing cases, and availability of decisions and orders were some of the topics that came up. At the meeting we were told that opt-out issues would have to wait as there are some more urgent matters to deal with. We learnt that a “my legal team” function is under progress as well as self-correction functions for representative data.
From the next 9th meeting (11 December 2023) onwards the other UPC Administrative Committee observers; BusinessEurope, EPLAW and EPLIT will also participate in these meetings.
The 9th meeting of the UPC AC was held on 24 November 2023.
The total number of cases to date at the Court of First Instance is 138. This figure covers 59 infringement cases, 23 isolated revocation cases, 42 counterclaims for revocation, 8 preliminary measure applications, 5 applications for preserving evidence and 1 application for inspection. At the Court of Appeal 9 appeals have been filed including 1 on provisional measures (hearing on 18th December 2023), 7 procedural (preliminary objections) appeals and 1 appeal regarding Rule 262 RoP (two conflicting CFI decisions).
However, in these statistics e.g. an infringement case with four (4) defendants each filing a counterclaim for revocation would count as 5 cases. Thus, on average the number of individual, i.e. not-linked cases would be about 110. German prevails as the dominant case language, followed by English.
The Registrar noted that the “my legal team” function and “self-correction of representative data” should be implemented shortly. Struggles with the CMS by both users and internally within the UPC are recognised, but it is clear that the IT team are working hard to ensure improvements are under way.
The implementation of the Patent Mediation and Arbitration Centre (PMAC) has been somewhat delayed. The next steps are the recruitment of a Director and a 12 member Expert Committee (responsible for the Rules of Mediation and Arbitration and the list of mediators and arbitrators).
The EPLC accreditation requests by CEIPI and Fernuniversität in Hagen were approved. Now there are four accredited course providers. We are now preparing for the term 2023-2026. Hopefully we can also continue with brief reports on UPC cases!
