UPC one year on: a review of the court’s first 12 months in action

Herbert Smith Freehills lawyers Sebastian Moore, Frederic Chevallier and Rachel Montagnon look back on the Unified Patent Court’s maiden year

The Unified Patent Court (UPC) has had a successful first year with more than 340 separate applications, including more than 120 infringement actions, and more than 30 revocation actions, 28 of which having been filed before the Paris central division. Much of the infringement action has been seen in the four German UPC first instance local division courts with more than 90 of the infringement actions commencing there. The Milan seat of the UPC central division will shortly enter into the picture – it is due to commence receiving cases on 24 June – and will principally deal with pharmaceuticals.

The UPC’s resolution to get patent cases to trial within a year seems to be succeeding, with the first full trial, of a case lodged on 1 June 2023, set for 4 June this year – and for only one day (a consolidated revocation and infringement action). As expected, the new forum has proved attractive to NPEs, and standard essential patents (SEPs) have been the subject of enforcement proceedings, in particular in the telecoms and auto sectors. Big Pharma and multinational biotech companies bringing infringement actions, as well as smaller scale disputes involving trade fairs and mechanical patents, all make up the landscape of the first year of the UPC.

There has been no shortage of preliminary injunctions, with both ex parte and inter partes awards, plus a successful appeal and an unsuccessful review (the party that has had an injunction awarded against it ex parte can apply for an inter partes review by the same court – i.e. not an appeal). The pattern has been to review validity in detail – indeed in the 10x Genomics v NanoString litigation, the Court of Appeal reviewed validity in toto, applying a different approach than the Court of First Instance had done and reaching a different conclusion (that the patent was likely to be invalid) and thus revoking the PI. In doing so the Court of Appeal began the process of creating a UPC-specific approach to construction and validity.

The importance of demonstrating likely validity and infringement to gain a PI at the UPC is well illustrated in the Dusseldorf court’s decision in the first UPC PI case following the Court of Appeal’s decision: “The more convinced the court is that the right holder is asserting the infringement of a valid patent, due to factual and temporal circumstances necessitating the issue of the order, and that possible damage to the opponent or other justified objections do not stand in the way, the more justified the issuance of an injunction becomes.” 

To do so necessitates detailed and persuasive evidence at the very early stages of the proceedings – front-loading in other words.

There has also been much interesting interplay on where actions are commenced. A defensive strategy appears to be developing, to bring preemptive revocations actions centrally. This allows the revoking party to gain the upper hand in the litigation and can lead to any subsequent infringement action in a local division court between the same parties (and in relation to the same infringement) being stayed. It could also be transferred to combine the central division case where there is a counterclaim for revocation in the infringement action, as has been the case in the Sanofi-Aventis/Regeneron v Amgen litigation.

In the cases involving Edwards Lifesciences and various Meril entities, a newly created Meril entity (Meril Italy) was able to bring a revocation action in the central divisions even though there was an infringement action against other members of the Meril group in the local division. This was allowed as the Meril parties were held to be different. If they had been held to be the same, the revocation action – being second in time – would have needed to be consolidated with the infringement action. The current state of affairs will mean that Meril entities may have what Edwards Lifesciences described as “two bites at the cherry” of revocation. The decision of the Court of Appeal on this approach is awaited.  

From the claimant’s point of view, a recent decision confirming that multiple defendants can be sued in the UPC court in the state where at least one of the defendants has domicile, has been welcomed. In ICPillar v ARM, the Paris local division court held that the only requirements to be met were that 1) the multiple defendants have a commercial relationship; and 2) the action relates to the same alleged infringement. These the court interpreted broadly, which will enable the centralisation of infringement actions where the parties are linked and in relation to the same infringement.   

The preponderance of German as the majority language of proceedings at the start of the UPC has now converted to a majority use of English. The UPC Court of Appeal has given guidance on where transfer to English should be allowed, including consideration of the language the patent was filed in, the language of the main prior art and the fairness on the defendant – with the defendant’s wishes given a carrying weight when all else in balanced. So we expect to see more English being used going forward.  

All UPC users and potential users were relieved by the Court of Appeal’s findings on transparency in the Ocado v Autostore case. Access to pleadings and evidence had previously been only available to the parties in each case, but following this decision in March, anyone making a reasoned request who is directly affected by the subject matter of the case can get hold of copies of the pleadings. For the majority however, pleadings will not be available until the proceedings are completed so as to preserve the integrity of the proceedings. The usual confidentiality restrictions will apply, with parties able to request redactions. This decision should make things much easier for those conducting oppositions at the EPO which are running in parallel to a revocation case at the UPC, for example.

In conclusion, the UPC is proving popular – both for enforcement and revocation. The resolution of the UPC to provide swift proceedings and decisions is to be applauded and may turn out to be a major factor in the court’s increasing success in its second year in action. 

As well as in relation to any action you may bring in the UPC, research and preparation is vital in anticipation of any enforcement action that might be brought against you, as the timescales for response as a defendant are short and pre-emptive revocation actions by defendants should be part of this strategy.

Sebastian Moore is a partner and head of intellectual property at Herbert Smith Freehills. Frederic Chevallier is a partner and IP litigator at Herbert Smith Freehills. Rachel Montagnon is a professional support consultant in the IP group at Herbert Smith Freehills.

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