CASELAW-UPC – reviews of UPC decisions

I had the pleasure to be in person at a Conference organised by CEIPI on the UPC on : The UPC – The first year in review.

The present summary is by no means exhaustive and some figures might be incorrect as they result from notes taken on the fly.

Contribution n° 1  was given by Mrs Florence Butin, President of the Court of First Instance of the UPC: Introduction: presenting the Court, the Registry and its work.

She gave some interesting statistics for the first year. It is noticeable that the German LD have a great part over the actions before the UPC, Munich 29%, Dusseldorf 17,4%, Mannheim 8,7% and Hamburg 6,7%. The distribution of languages is the following:  GB 53%, DE 42%, FR 2%, IT 2% and NL 2%.

Requests for a language change amounted to 19, whereby 11 were refused and 6 granted. The CoA decided on 4 appeals 1 the decision of the CFI was infirmed, 1 confirmed and in 2 cases the language was changed to GB.

Mrs Butin spoke also about the possibility of bifurcation, but from the information she gave, it seems that LD prefer to decide at the same time on both infringement and validity, especially in order to avoid diverging decisions.

Contribution n° 2, by Mrs I. Schreiber and Mr K. Schallmoser, respectively professional representative and lawyer in private practice,  had for topic Framing the landscape of procedural law.

They noted that 70% of the actions were before German LD and the German CD, which could in the long run become a problem.

The number of possible and reasonable AR was also a point of discussion.

They also noted that successive amendment of the claims by the proprietor can only happen with the permission of the court.

Extension of time limits is only exceptional. A party requesting an extension ought to convincingly demonstrate the difficulty to respect a time limit.

Other points discussed related to confidentiality orders, access to the register and the preservation of evidence. The last point discussed was the question of a security for costs.

All those points were illustrated by quoting decisions of the CFI or of the CoA.

Contribution n° 3 by Me Véron, who delivered his contribution by ViCo. The topic was: Jurisdiction of the UPC, Territorial Jurisdiction and change of venue.

Me Véron has set up a search engine for UPC decisions under the following link:

https://www.veron.com/upc-caselaw/?lang=en for the English version.

Me Véron mentioned the possibility of parallel proceedings of infringement before a LD and at the same time nullity proceedings before the LD.

He reminded that for infringement it is the defendant’s domicile which should prevail or that of one of a plurality of defendants.

Mentioned were also possible conflicts of jurisdiction and the notion of lis pendens when actions were started at national level before the entry in force of the UPC.

The notion of “carve out” was mentioned. The action for infringement is not started for all CMS but which cannot restrict defendants to attack for nullity in all CMS. Me Véron reminded that in case of opt-out, all proprietors have to agree to the opt-out. The withdrawal of the opt-out was also mentioned.

Following an opinion of the Advocate General in C-339, Me Véron considers that the UPC has jurisdiction for all CMS in matters of infringement, but not for validity for non-EU and non-UPC CMS.

Contribution n° 3 was by Prof. E. Treppoz, Professor University Paris 1 Panthéon/Sorbonne:  “Determining the applicable law to the merits”. The plea was that there is a need for a methodology for the UPC.

In view of Art 20 and 24 UPCA, the sources of law for the UPC are in order of importance Union Law and the EU Regulations, the UPCA, the EPC, other agreements in matters of PI and, should necessity arises, national law. For Prof. Treppoz gave an example according to which French law would be applicable.

As far as contractual matters are concerned, there is no internal law for the UPC, and it might well be that US or Chinese law turns out to be applicable.

Contribution n° 4 was by Mr. G. Pricolo, Chairman of a TBA of the EPO and permanent technically qualified member of the EBA, and related to the “Relation between UPC and EPO Proceedings. Mr Pricolo showed that with acceleration the appeal procedures a decision could be achieved within 17 months.

A board can accelerate the procedure ex-officio or upon request by the UPC (or a national court). Parties can also request acceleration, but for good reasons. 

The possibility of divergent decisions between the UPC and the EPO in matters of validity can however not be excluded, be it for the simple reason of a different prior art or a different interpretation of the prior art and/or the claims.

Attention was drawn to the fact that an infringer cannot delay opposition procedures as an intervention is only possible after the first action for infringement before a national court, see T 308/23, Reasons 1.5.5 and 1.5.6.

Contribution n° 5 related to “The technically qualified judge and potential conflicts of interest; Code of conduct of judges and was given by F. Macrez, Professor at CEIPI. Most of the TQJ are professional representative in full activity be it in private practice or in industry. There is thus a potential conflict of interest for TQJ still in active service as TQJ will only be part-time judges for a while.

It was reminded that the ECHR considered that a three year “cooling” period was adequate in order to insure the absence of conflicts of interests. The  code of Conduct adopted at the UPC is rather strict as far as part-time TQJ are concerned. A distinction was made between the abstention and the recusal of a TQJ. In case of abstention it is the TQJ which decides and requests not to participate in a panel after having been designated from the pool of TQJ. In case of recusation it is a party to the procedure which requests that a TQJ is removed from a panel.

The speaker proposed a traffic light system: Red=conflict of interest; Yellow=an inquiry is necessary in order to exclude a conflict of interest; Green=no conflict at all.

The TQJ present, Mr A. Perronace explained that it should not be too difficult to decide and in his experience, when he accepted to sit on a panel, he did not experience any request for recusation.

A TQJ’s judge firm should abstain himself if its firm represents one of the parties, but what about the possibilty of representing future clients?

Contribution n° 6, by Mr. Perronace, pat-time TQJ related to “The practical work of a technically qualified judge of the UPC”. It was mainly about the way a claim should be interpreted, whether the PSA was applied or not. The interpretation should however also be in the eyes of the skilled person.

He explained that in spite of the primacy of the claims, sometimes the description can introduce problems of interpretation. Two examples with claims being directed at cars, but the description including planes or flying cars showed the difficulty which can appear. The referral G 1/24 was mentioned in this context.

Contribution n° 7 by Mr A. Dilg, Director of the International Section of CEIPI, professional representative in private practice, related to “Material patent law before the UPC: claim construction; assessment of inventive step; determination of scope of protection”

After having reminded that the UPC provides regulations against direct and indirect infringement, he noted that the UPC does not provide regulations concerning claim construction, scope of protection, butt merely refers to sources of law.  The UPCA itself does not include direct material regulations concerning validity, but merely refers to the EPC.

The presentation covered claim construction, Inventive step and novelty as well as scope of protection.

Whilst accepting in principle the primacy of the claims, the CoA made clear that the description and drawings must always be taken into consideration, and not only in case of ambiguities in the claim. The interpretation of a claim is to be made as well taking into account the skilled person’s common general knowledge, whereby an extrinsic source of CGK is acceptable.

The principles of claim construction are to be applied equally for determining scope of protection and for assessing validity. The decision of the CoA with respect to the interpretation of claims is different from that of the boards of appeal as some have refused to apply Art 69 EPC when it comes to validity. The referral G 1/24 was also mentioned.

As far as assessment of IS is concerned different options are open to the UPC:

• Apply or adapt the practice from the EPO
• Apply or adapt practice from the CMS
• Develop an autonomous method of assessing IS

There was a comparison made between the way of assessing IS at the EPO, PSA, in France, an adapted PSA, and in Germany. It appears that the CoA is inclined to follow the German approach.

As far as scope of protection is concerned, the question raised was whether there was a “prosecution history estoppel“ at the UPC. Such a conclusion could be drawn from a decision of the Munich LD commented in this blog. The CoA left it open whether a „prosecution history estoppel“ was to be taken into account. The decision of the CoA was also commented in this blog.  

As far as the granting of a PI is concerned, the criterion retained by the CoA appears to be “more likely than not” that the patent is valid.

Contribution n° 8 by Mrs Le Bihan, lawyer in private practice , related to Preliminary Injunctions. The onus of proof appears to be different when it comes to ex-parte or and inter- partes PI. The entitlement to a PI, by the proprietor or the exclusive licensee, was also mentioned. The urgency of the necessity to avoid infringement is also a criterion. There was also question of “protective letters”, when and how to use them.

There is one case in which a PI was granted as an exhibition was on the verge of opening, but the protective letter filed by the potential infringer was not granted.

This showed the difficulty in matters of PI and protective letters.

The day ended with a panel discussion with representatives from the bench, the chair of the LD Mannheim Mr Tochtermann, the industry, Mrs Meinel from Roche, and the lawyers, Mr Schumacher, the chair of EPLA. The discussion was moderated by D. Por.

The chair of the LD Mannheim was displeased with the computer problems at the UPC, but pleased with working with international colleagues.  

The representative from industry was displeased with the time pressure, but pleased with the acceptance of the UPC.

The chair of EPLA was displeased with the complexity and the tight time limits, but pleased with the enthusiasm with which the UPC was accepted.

Difficulties were seen when serving decisions or orders outside the EU, but the efficiency of the UPC was seen positively.

It was expected that many NPE would use the UPC, but the fact that costs have to be borne when loosing, could be seen as a deterrent to their coming to the UPC.

28% of cases were related to the pharma industry and 20% in electronics/mechanics. Those two domains were seen as the bulk of actions before the UPC.

The question was raised by the moderator whether the UPC was a kind of Esperanto court or a German court with an international accent.

The chair of the Mannheim LD explained that from the 1000-1200 yearly litigation cases in Europe, 900 ended in German courts. There is thus no surprise when parties come to German panels at the CFI. The UPC procedure nevertheless brought in some peculiarities like “saisie-contrefaçon”, as well as inspection on the premises which are unknown in Germany. With their high domestic pensum, it was difficult for German judges to travel and therefore to be part of panels in other countries.

The moderator also enquired about the relationship between national procedures and the UPC.

The representative from the bench explained that national procedures should stay, as the UPC is not the right forum in all possible cases.  Similar views were expressed by the industry representative and the representative of the bench.

The topic of mediation/arbitration was also mentioned, but nothing much could be said as the corresponding institutions were not yet established. Mediation/arbitration could be a possible way to clear problems related to SEPs. The human factor often appearing in litigation conflicts could also best be settled by mediation/arbitration.

Agreement was reached that the costs for litigation before the UPC would be significantly higher than before national courts.

Comments

The conference was highly interesting and the CEIPI is to be congratulated in organising it. The day was quite full and it was at times difficult to follow the speakers as the time schedule was rather tight and did not allow many questions.

I might have been quite long, but the density of the presentations did not allow more shortening without falling into general statements.

From all the discussions it became clear that the UPC is a rather intricate and complicated system. In spite of what all supporters might say, it does not lead to the  expected simplification.  

It is worth noting that nothing hinders the proprietor to request a limitation of the claims under Art 105a EPC before the EPO if the UPC does not allow a further amendment of the claims. See my blog on this topic. Resorting to a procedure under Art 105a EPC could well jeopardise the tight time schedule of the UPC.

The dovetailing of procedures before the UPC and before the EPO is non-existent in spite of the agreement between the UPC and the boards of appeal to exchange of decisions. The risk of diverging decisions is therefore not negligible.

The CoA has made clear that in spite of acceleration at the EPO, it is not minded to stay the procedure before the UPC. The CoA made it clear that, in the interest of harmonisation, a subsequent court should adopt the decision of the court having decided first. This decision has been commented on the present blog. What the CoA wants is not harmonisation, it is supremacy as it will always decide first.

It is to be noted that the Code of conduct was published after the designation of TQJ and they are not allowed, and neither are the firms they work for, to mention their quality as part -time TQJ. Some had done after their designation, but were then obliged to remove any indication of their participation to the UPC.

The chair of the drafting committee of the code of conduct, a well-known lawyer, staunch UPC supporter, never disguised his objections against TQJ. He actually dislike them profoundly. I hear this comment with my own ears.

To my knowledge, Dutch courts also has TQJ, but those are not any longer in active practice. This would have made matters simpler at the UPC.

There exists a lot of decisions on procedural matters from the UPC as a whole, but a relatively low number of decisions on substantial matters, especially from the CoA, but this is not a surprise in view of the short time since the opening of the UPC. All presentations were completed with quoting decisions of the CFI or of the CoA.

From decisions of the CoA and in view of the numerous actions before panels of the CFI in Germany, there is a risk that the UPC will become too German loaded. This is to be avoided.

There was one white elephant in the room: G 1/24. When the CoA requires that the claims are always interpreted in the light of the description, it adopts the German practice. If the CoA wanted to pre-empt the result of G 1/24, it would not have said anything different. Also the CoA appears to adopt the German approach when it comes to assessing IS.

With the present chair of the CoA and the strong weight of German judges in the CFI panels having decided those matters up to now, this is not a real surprise. The question is therefore: will the UPC become a branch of the BGH (German Federal Court) or a truly international jurisdiction?

It should not be forgotten that the chair and one panel member of a LD in Germany being German LQJ, the other LQJon the panel, or the TQJ, will have a difficult task to inverse this tendency.

In this respect, the CD is truly international and a TQJ is always member of the panel.

It is also difficult to accept that the CoA takes decisions with only 3 LQJ in plain contradiction with Art 9(1) UPCA, see my blog.

When discussing PI and protective letters, as well as later in the panel discussion, it became clear, in view of the rather short time limits in the UPC procedure, that the costs for representation will be significantly higher before the UPC than before national courts.

From the panel discussion it emerged that national procedures should be kept as the UPC is not “one size fits all”. This poses the question of the end of the transition period after 7 or 14 years. By then all EP validated in a CMS should be under the exclusive jurisdiction of the UPC.