02/11/2023
It has been five months since the Unified Patent Court opened its doors. Although the number of substantive actions filed at the new court is not quite what some commentators initially expected, there have been a steady number of actions filed by parties from all over the world across a wide range of technologies.
Around 60 separate substantive actions (infringement and revocation actions), based on around 50 individual patents, have been filed to the end of October, not including two counterclaims for revocation filed at each of the Hamburg and Dusseldorf courts as a defence in ongoing infringement actions.
Japanese claimants appear to have filed the most actions at the court, thanks to a series of 12 infringement actions filed by Panasonic Holdings Corporation against Oppo and Xiaomi, at the Mannheim and Munich local divisions. The actions concern Signal Spreading Methods in communication networks, and are based on 6 European patents (EP2197132, EP3221117, EP3024163, EP2584854, EP2207270, EP2568724 and EP3096315). Similarly, FUJIFILM Corporation has launched three infringement actions against Kodak GmbH based on three of its European patents (EP3476616, EP3511174 and EP3594009) directed to lithographic and printing process technologies. Astellas, the Japanese life sciences company, has filed two revocation actions at the Munich Central Division against two patents (EP3056563, EP3056564) filed by Japanese entities, Healios, Riken and Osaka University for methods of purifying retinal pigment epithelial cells.
Meanwhile, most revocation activity has taken place at the Paris Central division thanks to a series of 10 actions filed by NJOY Netherlands BV against competitor patents filed by VMR Products LLC and Juul Labs Inc for vaporizers used in electronic smoking devices.
As a consequence of the infringement actions by Panasonic Holdings Corporation and the revocation actions by NJOY Netherland BV, the breakdown of cases by technology area and nationality is led by Japanese and Dutch claimants in the telecommunication and consumer goods fields. However, stripping these big-ticket actions away reveals that there is also strong secondary activity in the life sciences and manufacturing sectors, based on actions from a number of competing parties.
In the life sciences field, American companies like 10x Genomics Inc, Amgen, and DexCom Inc. have filed infringement actions in Munich and Hamburg with high purported values of 10 and even 100 million Euros, more than twice those of some other sectors such as telecommunication and manufacturing. In manufacturing, Oerlikon Textile GmbH has filed two actions against competitors at the Milan local division based on its patent EP2145848 for a False Twist Texturing Machine, while AGFA has filed an action against Gucci in Hamburg for a method of Decorating Natural Leather; FUJIFILM has three actions against Kodak in Dusseldorf and Mannheim, for lithographic and printing process technologies, while KraussMaffei Extrusion GmbH, and MSG Maschinenbau GmbH, have launched actions against competitors in Munich.
Lastly, a number of infringement actions are playing out in Germany between large international corporations such as Chinese giant Huawei and Netgear Inc at the Munich local division, the US giant Broadcom and Tesla Germany in the Hamburg local division, and Korean company Seoul Viosys Co. Ltd and Expert e-Commerce GmbH in Dusseldorf. While outside of Germany, infringement actions have been filed at the Nordic Baltic court by Edwards Lifesciences Corporation and Ocado Innovation Limited, at the Helsinki local division by AIM Sport Vision AG, in Milan by Ocado Innovation Limited, and Oerlikon Textile GmbH, at the Paris local division by DexCom Inc, and at the Hague local division by Plant e-Knowledge BV.
One of the interesting remaining questions about the new Unified Patent Court is whether it will change the pattern of oppositions filed at the European Patent Office during the 9 month post grant Opposition period. The breakdown of 49 separate patents involved show that 19 patents are also involved or have been involved in the Oppositions and Appeals process before the European Patent Office. These case will therefore prove to be especially interesting if the decisions of the EPO and Unified Patent Courts on validity differ, or if the Unified Patent Court has to deal with an infringement action based on a patent that is being opposed.
By looking at the actions listed on the Unified Patent Court Case Management System, we can observe the following trends.
Infringement Proceedings
Most infringement activity appears to be taking place in Germany, thanks in part to the series of 12 actions filed by Panasonic Holdings Corporation. There has also been some activity in the Milan, Paris, Hague, and Helsinki Local Divisions and the Nordic-Baltic Division.
Revocation Proceedings
The Paris Central Division has seen the most stand-alone revocation actions filed so far, due to the NJOY Netherlands BV litigation against VMR Products and Juul Labs. Hamburg and Dusseldorf has received counterclaims for revocation as part of ongoing infringement actions.
Technology Breakdown
The breakdown of cases by technology area and nationality is led by Japanese and Dutch claimants in the telecommunication and consumer goods fields. However, stripping these big-ticket actions away reveals that there is also strong secondary activity in the life sciences and manufacturing sectors, based on actions from a number of competing parties.
Nationality Breakdown
Percentage of cases also involved in oppositions at the EPO
Of the 50 or so patents involved in infringement or revocation actions, around 20 are also involved in Oppositions at the EPO (10 patents being litigated in infringement actions are also opposed, with a similar number of patents in revocation proceedings being opposed).
Reddie and Grose is a firm of experienced European Patent Attorneys, with an excellent track record on matters before the European Patent Office, particularly with obtaining patent rights in advanced technology areas, and with contentious matters like Opposition and Appeals, as well as supporting our European clients involved with litigation in Europe. As Unified Patent Court litigators we can support you directly in proceedings before the UPC, or work as part of a larger legal team with local attorneys in particular jurisdictions. If you would like any further information as to how we can support you in Europe, contact us at the address below.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
