Key Takeaways | Litigating in the Unified Patent Court: Strategies for Success

During this webinar, Hon.-Prof. Dr. Henrik Holzapfel and Chuck Larsen shared their first-hand accounts of handling matters in the Unified Patent Court (UPC). Through a Q&A moderated by Aashish Kapadia, they shared their insights into the intricacies of UPC litigation to help organizations and their counsel develop their UPC strategies.

Top takeaways included: 

1. The UPC is generally delivering what it promised. The initial UPC cases have delivered fast and efficient infringement and validity decisions. Oral hearings are held about one year after filing the statement of claim and decisions are issued about six weeks later. The UPC handles complex global patent cases with high competence. As a result, it has already demonstrated its relevance in the global patent litigation landscape and is growing into an attractive forum as case numbers increase.
2. Parties need to be aware of the unique front-loaded character of UPC litigation. To ensure efficient UPC proceedings, parties are expected to present their full case, including factual and legal arguments and evidence, as early in the proceeding as reasonably possible. The UPC may exclude arguments from consideration that are not made at the earliest possible stage and not responsive to something the other party submitted in its preceding writ. In practical terms, this means, for example, that the claimant should file a statement of claim that is well substantiated from the start. The UPC may also exclude invalidity arguments against auxiliary requests to maintain a patent in amended form if essentially the same invalidity arguments could have been raised before against the patent claims as granted.
3. There is a challenging, fast-paced timetable for UPC litigation and deadlines are not liberally extended. In infringement proceedings, the defendant has only three months to file a complete statement of defense, including a counterclaim for revocation. This pace, combined with the front-loaded character of UPC proceedings, requires experienced litigators who can react swiftly and develop a case strategy and a substantiated pleading against short deadlines.
4. Choose your legal venue wisely. The choice between the different UPC divisions has an impact on the practical case handling and the potential for success. Most cases are handled by the German divisions. For example, the Local Division Munich has an even higher share of total injunctions granted relative to its share of total cases. The Local Division Mannheim actively manages cases by issuing orders with early analyses of key issues while the Central Division Paris holds its cards close to its chest – even in an oral hearing.
5. Although the UPC’s approach to the day-to-day questions of patent litigation is still evolving, it appears to be patentee friendly. The UPC has held that a patentee, when defending the validity of its patent, does not need to file a motion for a specific combination of granted claims to be maintained. The UPC will still examine all granted claims and their possible combinations. Additionally, the Local Division Munich is prepared to suggest suitable auxiliary requests to patentees who enforce their patents. A patentee-friendly tendency is further reflected in the general statistics: The various UPC local divisions found asserted patents to be valid and infringed in 59% of cases.

McDermott has an active role at the UPC. Our unique cross-border UPC team – with lawyers from Düsseldorf, London, and Boston – provides the knowledge, efficiency, and experience necessary to achieve success before the UPC. We also make simultaneous patent litigation in Europe and the United States possible. McDermott was among the first law firms to file multiple lawsuits before the UPC and is among the leading law firms by the number of patents litigated.