Summary of the UPC month
Christmas and the New Year are just around the corner, which seems to result in a UPC “crunch time”: The rate of new cases per month has been steadily increasing since summer, seeing the biggest jump for now with 47 new cases in November.
This leads to a total number of 585 cases now pending at the Court of First Instance, whereby close to 100 infringement actions and applications for preliminary measures are pending before the Munich Local Division.
As more and more first instance decisions on the merits are rendered, applications for cost decisions are now becoming standard, and November also brought the first appeal under R. 221 RoP against such a decision.
Requests for suspensive effect to the CoA increased by 40 %, whereby it must be kept in mind that appeals as a general rule do not have suspensive effect (Art. 74 (1) UPCA).
Key decisions in a nutshell
The key decisions of the month are dealing with:
(1) Doctrine of equivalents
The LD The Hague is the first to establish a test for infringement by equivalence. The test consists of four questions derived from various national approaches considering
(a) technical equivalence, then balancing
(b) the patentee’s legitimate interests in protection with
(c) third parties’ need for legal certainty and last but not least
(d) examining the allegedly infringing product for novelty and inventive step.
The specific questions are:
- Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
- Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee in view of his contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)?
- Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
- Is the allegedly infringing product novel and inventive over the prior art (i.e. no successful Gillette/Formstein defence)?
(2) Late filed invalidity arguments and supporting facts
The CD Paris is reminding claimants to set out their full case in the UPC’s front loaded proceedings as early as possible: in principle, nullity claimants cannot introduce new grounds of invalidity or new allegedly novelty destroying documents as well as new starting points for the assessment of lack of inventive step after their statement of claim. Exceptions may (only) apply with regard to new supporting facts in response to the defendant’s counter-arguments.
(3) Competence of the UPC for counterclaims to obtain a FRAND-license
According to the LD Mannheim, counterclaims to obtain a FRAND-license are “counterclaims concerning licenses” within the meaning of Art. 32 (1) lit. a) UPCA, giving the UPC competence. There is no reason to believe that the Contracting Member States did not want the UPC to rule on FRAND issues based on antitrust law.
Remarks
19 months into the UPC and basically all relevant topics of substantive patent law have now already been addressed by the Court of First Instance.
All of these decisions confirm the user experience that there is a great deal of predictability when it comes to infringement.
Essentially, the same holds true for invalidity, whereby the question of “intermediate generalization” in the context of added-matter appears one important area where guidance by the Court of Appeal would be very welcome.
