1. FRAND Developments in Munich
The Munich Local Division underscored implementer obligations in FRAND disputes, emphasizing the need for prompt counteroffers, adequate security, and clear disclosure of SEP use. Failure to meet these obligations can lead to limited review of the SEP holder’s licensing offer. While the court aligned with the Huawei v. ZTE framework, it highlighted procedural strictness that places the burden on implementers.
2. FRAND Precedents in Mannheim
The Mannheim Local Division set a significant precedent in Panasonic v. Oppo, focusing on good-faith negotiations under the FRAND framework. The court clarified that implementers must show unconditional willingness to conclude a license, and fragmented jurisdictional proposals will not suffice. This decision aligns with traditional German jurisprudence but establishes a robust foundation for UPC SEP litigation.
3. Common General Knowledge at the UPC
The Paris Central Division provided insights into the treatment of common general knowledge in patent validity disputes. The Central Division rejected an overly expansive view of common general knowledge, holding that it must be widely accepted and easily accessible. This decision reflects a commitment to a stricter evidentiary standard.
4. Revocation Action in Paris
The Paris Central Division reaffirmed the importance of the “front-loaded” procedural system under the Rules of Procedure (RoP) of the UPC. Parties must present their full case, including all relevant facts and evidence, as early as possible. However, the Court underscored that this principle must be balanced with proportionality and procedural efficiency, ensuring that parties are not burdened with unnecessary tasks or excessive documentation.
1. Infringement Based on the Doctrine of Equivalence at the UPC
On November 22, 2024, the UPC’s Local Division in The Hague ruled on European Patent EP2137782, owned by Plant-e Knowledge B.V. The court found that the defendant’s devices, while not literally infringing, did so under the doctrine of equivalence. The court applied a four-step test to determine equivalence, assessing technical equivalence, fair protection for the patentee, reasonable legal certainty for third parties, and the novelty and inventiveness of the allegedly infringing product over prior art. This approach aligns closely with German and Dutch practice, indicating a harmonized application of the doctrine across jurisdictions.
2. The Court of Appeal Unlocks the Door for Patents Previously Excluded by the Helsinki Division
On November 12, 2024, the UPC’s Court of Appeal clarified the application of Article 83 of the UPC Agreement (UPCA). The case involved the withdrawal of an opt-out for a patent during the UPC’s transitional period. The Court of Appeal determined that the term ‘action’ in Article 83 UPCA includes all actions within the UPC’s jurisdiction, not just infringement and revocation actions. Importantly, the court specified that only actions initiated during the transitional period restrict the withdrawal of an opt-out, thereby allowing certain patents to fall under the UPC’s competence despite prior national proceedings.
3. The Central Division Paris – Review of All Granted Claims if Attacked and if Potential Claim Amendments Are Not Allowed
On November 5, 2024, the Central Division of the UPC in Paris addressed European Patent EP 3 498 115 B1. The court emphasized its authority under Article 65(3) UPCA to limit or partially revoke patents independently of amendment applications by the patent owner. It underscored that litigation is directed by the parties’ requests, which shape the court’s review process. The court is required to examine each granted claim individually if challenged, aligning with the standard practice of the German Federal Patent Court. Additionally, the court reiterated that claim interpretation is a question of law that it can address at any stage of the proceedings.
4. The Local Division Düsseldorf – Importance of the “Characterized in That” Clause
In a decision concerning European Patent EP 1 793 917, the Local Division Düsseldorf provided insights into patent claim interpretation. The court highlighted that the scope of a patent claim should not be strictly limited to specific embodiments depicted in the patent drawings. Instead, claims should be interpreted based on the understanding of a skilled person, considering the entire patent description and drawings. The court also noted that prior art should not unduly constrain claim interpretation unless the patent itself makes specific distinctions from the prior art. Furthermore, the court discussed publication rights, stating that publishing a decision should be reserved for instances where other legal measures do not sufficiently protect the claimant.
Chapter 1: Timing of Auxiliary Requests in Munich
The Munich Central Division found that auxiliary requests submitted after the closure of written proceedings are too late, even if presented as an immediate reaction to a finding of the Court of Appeal in a parallel case. Further, the Central Division clarified that international jurisdiction must always be examined by the court not withstanding whether or not the parties raise this issue timely. Last, the Central Division did not stay the revocation action despite of a quite matured German revocation proceedings.
Chapter 2: Group Defence in Düsseldorf
The Local Division Düsseldorf addressed how multiple defendants can independently manage their defence in patent infringement cases. On the downside: If a defence strategy of any defendant includes that the patent being allegedly infringed is invalid, such defendant is required to file a counterclaim for the patent’s annulment. On the plus side: The co-defendants may jointly file such revocation action.
Chapter 3: The Court of Appeal – Understanding “Frontloaded” Procedures
The CoA clarified that the idea of front-loaded proceedings, which aims to have parties present comprehensive cases from the start, does not preclude them from further developing their arguments or submitting additional evidence as the proceedings evolve. As a general rule, the Court of Appeal does not issue cost orders in branched-off proceedings that do not conclude the action. Instead, the costs are assessed at the end of the main proceedings, considering the overall outcome and the parties’ success or failure, as per Article 69 of the UPCA.
Chapter 4: Interim Measures by the Court of Appeal
The CoA found the subject matter of claims 1 and 13 inventive, underscoring the lack of “incentive/motivation” in the prior art. The Court exercised discretion in admitting new arguments regarding the prior art that were not accepted in the first-instance proceedings due to their late submission. As a general rule, submissions after the conclusion of oral hearings are not considered in the court’s decision-making process. Also as a general rule, the timeframe for requesting a Preliminary Injunction starts when the claimant becomes aware or should have been aware of the infringement. Last, the CoA clarified that irreversible damage is not necessary for granting preliminary injunctions, focusing instead on the balance of interests between the patent holder and the alleged infringer.