4 novembre 2022
The initial list of judges recruited to the Unified Patent Court (UPC) was announced on 20 October after months (if not years) of speculation. This is the full list of legally and technically qualified judges who will sit in the various divisions of the court from the day it opens, subject to three candidates who are still to be appointed. Opening day is currently pencilled in for 1 April 2023.
Who are they and why does it matter?
The nationalities of the judges have been so hotly anticipated because their approaches to patent disputes may feed into litigants' decisions about forum shopping in the UPC, particularly in infringement actions. In addition, as regards the legally qualified judges, litigants will want to scrutinise the track records of the individual judges: how experienced are they in patent matters; how pro/adverse to patentees have they been; how likely are they to award a preliminary injunction; how comfortable are they with technical subject matter; and how familiar are they with validity issues? These are just some of the questions that will be asked.
Dr Klaus Grabinski, currently Vice-Chairman of the Patent Senate at the German Federal Court of Justice, has been elected President of the UPC Court of Appeal for a three-year term and appointed as a judge at the Court of Appeal for a six-year term. Klaus Grabinski not only has almost 30 years of experience as an outstanding patent infringement judge in Germany, following positions as Presiding Judge at the Düsseldorf District Court and the Court of Appeal, but has also been involved with the UPC system since the adoption of the "Unitary Patent Package" by the European Parliament on 11 December 2012: Since 2013, he has frequently published on legal issues of the UPC and has been a member of the so-called Expert Panel of the Preparatory Committee of the UPC since September 2014. He has always been an advocate for the unification of patent law in Europe and is very well networked with fellow judges throughout Europe. He is therefore not only an outstanding expert in national, but especially in European patent law and as such is certainly a perfect choice as President of the Court of Appeal in Luxembourg.
Dr Patricia Rombach, currently a judge in the Cartel Senate of the German Federal Court of Justice, knows patent matters very well from her time as Presiding Judge of a patent litigation division at the Mannheim District Court and will therefore strive to balance the interests of patent owners and competitors as well as the general public.
Judge Kalden, when dealing with SEP cases in the end of 2019, applied a rather strict approach towards implementers as far as it concerns their willingness to take a FRAND licence (ECLI:NL:GHDHA:2019:3535). After this decision had been rendered, the highest German Court followed this approach in the Sisvel v Haier case in 2020, despite of the fact that the lower German courts had previously not been easy towards the SEP owner. Therefore, Kalden has a good foresight.
In the Pemetrexed case (Court of Appeal in The Hague, ECLI:NL:GHDHA:2020:2052) in 2020, Judge Blok rendered a landmark decision when following the approach from the English Supreme Court as far it concerns infringement by means of equivalence. This approach was started by German judges.
In proceedings on the merits, and despite of various attempts from infringing parties to apply a farther-reaching proportionality test, judges Kalden and Blok are still prepared to impose injunctions.
These are examples of matters that will be considered with great interest as the opening of the court approaches. Some questions about the legally qualified judges do seem to have been answered: they are well-known; of a high quality; and from a wide spread of jurisdictions.
In particular, the appointment as President of the UPC Court of Appeal of Dr Klaus Grabinski (an internationally renowned patent expert from the German Federal Court of Justice) is a very secure anchor for the new court. The Presiding judge of the second panel of the Court of Appeal is Ms Rian Kalden (the highly respected senior judge of the Court of Appeal in the Hague). These figures are joined in the Court of Appeal panels by further judges from Germany and the Netherlands as well as from France, Italy and Sweden.
The legally qualified judges on the list that are appointed to the Court of First Instance will either sit in one of the central division branches, which are predominantly but not exclusively concerned with validity matters, or the local divisions, which are primarily concerned with infringement matters but can also hear validity. There is also the Nordic-Baltic regional division, which carries out the same functions as a local division but covers Estonia, Latvia, Lithuania and Sweden, and is based in Stockholm. All of the 17 countries initially expected to participate in the UPC are represented by either a local or regional division except Malta, Luxembourg and Bulgaria. Germany has four local divisions, each one in Munich, Düsseldorf, Mannheim and Hamburg.
There is an important difference between the German, Dutch, Italian and French local divisions compared to the other local divisions. This is that, because of the historic expertise of these countries in patent disputes, they are permitted to have two permanent legally qualified judges on each panel of three from their own country:
|Local division with two local judges
||Legally qualified judges on the panel|
|The Hague||Mr Edger Brinkman (NL)||Ms Margot Kokke (NL)||Foreign judge|
|Mr Tobias Pichlmaier (DE)||Mr Matthias Zigann (DE)||Foreign judge|
|Düsseldorf||Ms Bérénice Thom (DE)||Mr Ronny Thomas (DE)||Foreign judge|
|Mannheim||Mr Holger Kircher (DE)||Mr Peter Michael Tochtermann (DE)||Foreign judge|
|Hamburg||Ms Sabine Klepsch (DE)||Mr Stefan Schilling (DE)||Foreign judge|
|Milan||Mr Pierluigi Perrotti (IT)||Ms Alima Zana (IT)||Foreign judge|
|Paris||Ms Carine Gillet (FR)||Ms Camille Lignieres (FR)||Foreign judge|
Judges Brinkman and Kokke from the Dutch local division are highly experienced patent judges (Judge Brinkman even has a background in chemistry) and are able to grasp the most difficult technologies right from the start. They have a friendly and very pragmatic approach during oral hearings and their decisions are always well-reasoned. We expect them to be of value to the UPC system and creating interesting case-law.
In all four German local divisions, Presiding Judges of a patent litigation division of a District Court have been appointed:
In Munich, Tobias Pichlmaier and Dr Matthias Zigann, two Presiding Judges with many years of experience in patent litigation, have been appointed. With landmark judgements, for example in FRAND disputes, they have attracted more and more plaintiffs to Munich and made the Munich District Court an important forum for patent litigation in Europe. Presiding judge Tobias Pichlmaier was responsible for the referral to the ECJ on the question of the secured validity of the patent-in-suit in preliminary injunction proceedings, which led to the highly regarded ECJ decision of 28 April 2022 (Phoenix Contact v. Harting). Both judges will certainly also issue preliminary injunctions in the Munich local division and decide the question of the validity of the patent-in-suit in the proceedings before the local division.
In Mannheim, two Presiding Judges of the patent litigation divisions at the Mannheim District Court with many years of experience in patent litigation, especially in the SEP/FRAND area, have been appointed to the local division, namely judges Holger Kircher and Peter Tochtermann. Before the local division in Mannheim, one is therefore also confronted with two extremely experienced patent infringement judges and will therefore certainly not experience any unexpected surprises.
In Düsseldorf, judge Dr Bérénice Thom, a younger but nevertheless experienced Presiding Judge of a patent litigation division of the Düsseldorf District Court, has been appointed to the local chamber and will conduct the oral proceedings in a very fact-oriented and well-structured manner. Judge Ronny Thomas, Vice-Chairman of the Patent Senate of Dr Kühnen at the Düsseldorf Court of Appeal, is also a very experienced patent judge who - like Judge Dr. Thom - does not expect any unpleasant surprises.
In Hamburg, Sabine Klepsch, Presiding Judge of a patent litigation division at the District Court of Düsseldorf, has been appointed to the local division. She is a patent judge with twenty years of experience in patent litigation, particularly in the field of pharmaceuticals and biotechnology. Judge Klepsch is distinguished by the fact that she is also a chemist and therefore has a profound understanding of technical issues in the field of pharmaceuticals and biotechnology. It therefore remains to be seen whether the local chamber in Hamburg will develop greater significance in the field of life sciences patent litigation than is currently the case at the Hamburg District Court.
The third judge on each panel will be appointed on a case-by-case basis from one of the other local divisions or the regional division.
The remaining local divisions have one permanent judge from the country in which the division is located and two foreign judges who will be appointed on a case-by-case from the other local / regional divisions:
|Local division with one local judge||Legally qualified judges on the panel|
|Vienna||Mr Walter Schober (AT)||Foreign judge||Foreign judge|
|Brussels||Mr Samuel Granata (BE)||Foreign judge||Foreign judge|
|Copenhagen||Post to be filled
||Foreign judge||Foreign judge
|Helsinki||Mr Petri Rinkinen (FI)
|Lisbon||Ms Rute Lopes (PT)
|Ljubljana||Ms Mojca Mlakar (SI)
||Foreign judge||Foreign judge|
In Brussels Sam Granata, judge in the IP chamber of the Antwerp Court of Appeal, has been appointed to the local division. He is one of the main promotors in Belgium of the UPC, being a co-author on a book hereon. He is an experienced patent judge, as he was the main patent judge in Antwerp until all patent cases were centralized in Brussels in 2018. His decisions are well reasoned and he certainly has the willingness and ability to grasp the technical details if the case. In matters not settled by Belgian case law yet, he usually adhered to the EPO case law, referring to decisions of the Technical Boards of Appeal as if it were Belgian case law. One may expect him to do the same at the UPC.
The Nordic-Baltic regional division will have permanent judges Ms Kai Härmand (EE) and Mr Stefan Johansson (SE), plus a foreign judge from the local divisions.
All of the local and regional divisions can in certain circumstances also appoint a fourth, technically qualified, judge (see below).
The central division of the UPC was initially intended to be split between three cities, but since the UK dropped out of the system, there has been no replacement for London to hear disputes concerning the validity of patents related to 'human necessities', which includes the important area of life sciences. There is speculation that this will be Milan but, for the time being, the appointment of judges to the central division is divided between Paris (which will hear cases including electronics) and Munich (which will hear cases including mechanical subject matter):
|Central division branch||Legally qualified judges appointed|
|Munich||Ms Mélanie Bessaud (FR)
Ms Ulrike Voß (DE)
|Post to be filled|
|Paris||Ms Florence Butin (FR)
Mr Paolo Catallozzi (IT)
Ms Tatyana Zhilova (BG)
With Judge Ulrike Voß, currently Presiding Judge of the Second Patent Senate at the Düsseldorf Court of Appeal, an extremely competent and experienced patent judge has been appointed to the Central division. She is able to reliably understand complex technical issues and to hear cases in a very structured manner. Presiding Judge Voß is certainly an ideal appointment for the Central division branch in Munich.
Maximilian Haedicke, who is a professor of patent law at the University of Freiburg (Germany), served for many years as a part-time judge in a patent senate at the Düsseldorf Court of Appeal. He is also active as an expert witness, arbitrator and mediator in patent matters and was involved in litigation in the US, in UK, in the Netherlands and at the European Patent Office in these functions. He is therefore certainly a good choice for the Central division in Munich.
Each panel hearing a case in one of the central division branches will include two legally qualified judges from the above list and one technically qualified judge (see below).
There are twice as many legally qualified judges appointed to the central division branch in Paris as the branch in Munich. The reason for this is unknown, but it has invited speculation that the 'human necessities' / life sciences validity cases that were originally allocated to London will now go to Paris (perhaps as an interm measure until Milan or another suitable court is established).
Last, but not least, are the technically qualified judges. Of the 85 judges that have been appointed, 51 are technically qualified judges. The technically qualified judges have been recruited mostly from private practice patent attorneys and fall under five categories of technical expertise: biotechnology, chemistry and pharmaceutics, electricity, mechanical engineering and physics.
In central division cases, a technically qualified judge will automatically make up the third judge on the panel. Technically qualified judges may also be appointed to a regional or local division by request of either one of the parties to the President of the Court of First Instance. The panel itself may make this request of its own initiative if it deems it appropriate, having first heard the parties. Alternatively, the UPC Agreement allows the appointment of a technical qualified judge if a local or regional division decides to hear an action for patent revocation.
The appointment of the legally and technically qualified judges to the UPC will settle some nerves amongst those who were worried about the potential quality of the judges who would be appointed. It is also clearly a major step in the preparations of the court and brings the reality of this system into much sharper focus. There are still some questions, however. In particular, concerns have been raised about the potential for conflicts of interest to arise in respect of the technically qualified judges, who are mostly private practitioners who will work part time as judges. With suitable safeguards in place, however, this potential ought to be avoidable. After all, it is not unusual for private practitioners in the UK (both barristers and solicitors) to sit as part time judges in the Patents Court. We would also expect, from the number of individuals on the list of technical judges, that it would be unlikely that nobody would be available for a particular case because of conflicts.
In those local divisions in which two legally qualified judges of each panel are foreign judges, there will always be uncertainty about their identity until a case has begun. Similarly, the exact mix of judges on a particular appeal panel or central division panel will not be known in advance. However, given that we now know all the judges on the lists from which they will be drawn, users can be confident that each panel will be able to apply a great deal of knowledge and experience in patent disputes.
The next big hurdle to be cleared before the opening of the UPC is the completion of a fully functioning case management system. Will that be ready for 1 April 2023?
par plusieurs auteurs
par plusieurs auteurs