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 aims to keep patent holders and legal departments well-informed. McDermott’s on-the-ground team in Germany, France, the United Kingdom, and the United States offers a unique cross-border perspective on issues to help put them in a global context.
In This Issue:
Substantive Decisions by the Numbers
While many cases before the UPC have settled or were otherwise withdrawn, the Court has already made dozens of substantive decisions on the merits. To examine trends at the UPC, McDermott analyzed the Court’s published decisions and orders between May 22, 2024, and January 10, 2025. Of the hundreds of publications released during that period, 47 offered a substantive decision on either the case’s final disposition or preliminary measures.
Notable Cases & Potential Impact
- Huawei Technologies Co. Ltd. v. Netgear, Inc.: The Local Division Munich granted an anti-anti-suit injunction (AASI) to prevent Netgear from seeking an anti-suit injunction in the US, emphasizing the UPC’s willingness to grant AASIs quickly and on an ex parte basis.
- Alexion Pharmaceuticals, Inc. v. Samsung Bioepis NL B.V. and Alexion Pharmaceuticals, Inc. v. Amgen Technology (Ireland) Unlimited Company: The UPC Court of Appeal clarified the standard for correcting errors in patent claims, aligning it with similar standards in other jurisdictions.
- Plant-e Knowledge B.V. & Plant-e B.V. v. Arkyne Technologies S.L. (Bioo): This case marks the first UPC ruling on the doctrine of equivalents, where the Court found infringement by equivalence and issued an injunction against Bioo.
Emerging Legal Issues
- Risk of inadmissible, late-filed arguments: The UPC’s fast-paced proceedings require parties to present their arguments early. Recent decisions clarify the types of late-filed arguments that risk being stricken, emphasizing the need for patent holders and accused infringers to introduce all grounds of invalidity and infringement claims early on. The UPC also takes a nuanced approach toward late-filed arguments, allowing some responsive arguments and documents if they directly address challenges made by the opposing party.
- Use of UPC proceedings in US litigation: Parties have started to leverage UPC proceedings to support their positions in US litigation as the UPC issues more decisions on the merits, but US courts have given little weight to UPC decisions thus far. In a recent case, a Delaware district judge rejected an enhanced damages theory based on conduct in a parallel UPC proceeding, emphasizing that the conduct must be specific to the US proceeding.
- Standard essential patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) licenses: In two recent cases, the UPC largely followed the framework established by the Court of Justice of the European Union (CJEU) in Huawei Technologies Co. Ltd. v. ZTE Corp., which mandates that patentees must offer FRAND licenses but can seek injunctions if the implementer is unwilling to negotiate. The UPC is taking a more flexible approach, considering the conduct of both parties during negotiations and allowing for injunctions if the SEP holder complies with FRAND requirements.
