Legal Lens on the Unified Patent Court | October 2024

Overview


The Unified Patent Court (UPC) is revolutionizing the way patents are enforced in Europe, and McDermott’s intellectual property (IP) team is here to help you navigate this dynamic landscape. Our Legal Lens on the Unified Patent Court newsletter is designed to keep patent holders and legal departments well-informed. And with an on-the-ground team in Germany, France, the United Kingdom and the United States, we offer a unique cross-border perspective.


 

NOTABLE CASE & POTENTIAL IMPACT


FIRST UPC PRELIMINARY INJUNCTION UPHELD: MAMMUT SPORTS GROUP AG AND MAMMUT SPORTS GROUP GMBH V. ORTOVOX SPORTARTIKEL GMBH

Topics: first ex parte preliminary injunction upheld by Court of Appeal; prosecution history

On September 25, 2024, in a landmark decision, the UPC Court of Appeal (CoA) affirmed an ex parte preliminary injunction issued by the Local Division Düsseldorf against Mammut Sports Group AG and Mammut Sports Group GmbH. This is the first time a preliminary injunction has been upheld and enforced by both a lower division and the CoA. The Local Division Düsseldorf had issued the ex parte preliminary injunction in December 2023 for Mammut’s accused infringement of ORTOVOX Sportartikel GmbH’s EP3466498, directed to a search device and methods for locating avalanche victims. As a result, Mammut was barred from selling its accused Barryvox avalanche rescue devices in all UPC countries where the patent is validated (i.e., Austria and Germany in this case). ORTOVOX then filed an infringement suit against Mammut in a main proceeding. Mammut counterclaimed for revocation of the patent.

In April 2024, Mammut unsuccessfully attempted to overturn the ex parte order. In its appeal to the CoA, it reiterated and elaborated on its various invalidity contentions but, as the CoA explained in the opinion’s detailed analysis, those arguments were unpersuasive. Relying on the 10x Genomics, Inc. v. NanoString Technologies, Inc. decision that overturned the grant of a preliminary injunction, the CoA affirmed the lower division’s determination that the patent was more likely than not infringed and valid. Here, the CoA held “there are no significant doubts” about the invention being sufficiently disclosed and valid despite Mammut’s arguments to the contrary. It also affirmed the Local Division Düsseldorf’s holding that the accused device, the Barryvox S2, literally infringed despite Mammut’s argument that different Barryvox S2 variants exist.

TAKEAWAYS:

  • The CoA’s first affirmance of a preliminary injunction applied the same “more likely than not” standard previously clarified in 10x Genomics v. NanoString Technologies. There, the CoA overturned a preliminary injunction based on a finding that the asserted claims were likely invalid. Here, the CoA used the same standard but found the likelihood of infringement and validity to be stronger.
  • When determining the likelihood of infringement and validity, the court should only consider the submissions made in the actual proceedings for interim measures (i.e., the preliminary injunction proceeding itself) and not consider any submissions made in the main proceedings (e.g., in Mammut’s defense to the main infringement action or in the counterclaim for revocation). As with the availability of ex parte hearings, this restriction is an applicant-friendly rule that limits the extent to which the respondent can challenge the injunction on appeal.
  • The UPC does not require a showing of irreparable harm. Under Rule 212.1 of the UPC Rules of Procedure (RoP), which allows the UPC to issue ex parte preliminary injunctions, a court may order an ex parte injunction “in particular” if a delay would likely cause irreparable harm to the applicant. However, in contrast to the US standard for preliminary injunctions, the finding of irreparable harm is not a necessary condition for the UPC to issue an injunction.
  • The CoA declined to take a position on the use of prosecution history in claim interpretation, indicating that consideration of that history would not change the interpretation of the claims in this case. The CoA thus left alive a divergence of approaches in local court decisions. On one hand, in this case, the Local Division Düsseldorf took the position that the file history should not be considered in claim interpretation, whereas in SES-Imagotag SA v. Hanshow Technology Co. Ltd., the Local Division Munich ruled that the file history can be used in claim interpretation.

RECENT FILINGS


This section reflects updated data regarding UPC usage, taken from the UPC’s register as of September 30, 2024.

Note: McDermott collects the data in the Recent Filings section directly from the UPC’s register and is not responsible for the accuracy of the data.

NUMBER OF CASES ON UPC REGISTER BY TYPE

*The number of counterclaims for revocation cases does not necessarily reflect the UPC’s true case load because the UPC’s Case Management System required several defendants in infringement proceedings to launch their own counterclaim for revocation, even if the substance of the counterclaims was fully identical across the parties. This inflates the number.

NUMBER OF CASES ON UPC REGISTER PER DIVISION

LANGUAGE OF UPC PROCEEDINGS

FIRST INSTANCES OF INFRINGEMENT AND REVOCATION CASES PER MONTH IN 2023 AND 2024

*September 2024 values are incomplete.

INFRINGEMENT AND REVOCATION CASE VALUES


HIGHLIGHTS FROM McDERMOTT'S UPC TEAM


OUR WORK

  • On October 15 and 16, 2024, the McDermott UPC team argued its third and fourth hearings before the Court in Paris.

LATEST INSIGHTS

 


UPC TEAM


Have questions or want to discuss your UPC strategy? Contact Hon.-Prof. Dr. Henrik HolzapfelChuck Larsen, or Diana Pisani.


Endnotes


[1] 10x Genomics, Inc. v. Vizgen, Inc., 1:22-cv-00595-MFK (D. Del. Nov. 28, 2023).

[2] Lex Machina, Patent Litigation Report 2024 at 17.

[3] Lex Machina, Patent Litigation Report 2022 at 21.

[4] See Lex Machina, Patent Litigation Report 2022 at 4-5; Lex Machina, Patent Litigation Report 2024 at 5-6.

[5] See United States Government Accountability Office (GAO) Report on the PTAB, GAO-23-105336 (Dec. 2022) at 6-7.

[6] See Appendix A – Exemplary Schedule, Standing Order Governing Proceedings for Patent Cases (J., Albright and Mag. J., Gilliland) (Jan. 23, 2024).