The UPC's top 10 defining decisions

It is one year since the first UPC order was published on its website. Here, we take stock and assess which 10 decisions of the court so far have the most tactical and strategic significance:

10: One court, but not quite

One of Taylor Wessing’s own cases. The UPC has made it clear already that it is going to forge its own approaches to procedures and the statuary patent law. Even though it is a single court, however, this independence extends to some extent to the divisions too.

This was the case in Abbott v Dexcom, where the Paris Local Division decided that although its confidentiality order related to the same protected confidential information as an order in the Munich Local Division, “the two orders were ruled by two divisions in two different proceedings concerning different patents. In such circumstances, one division is not bound by a decision in another division despite belonging to the same unified court.”

Different penalty sums were therefore imposed in the two orders relating to the same information.

9: Dealing with difficult service

One of the challenges for the UPC registries in their early months has been the service of documents. The temptation for lawyers has been to take this task into their own hands. Care is needed, however, because the registries will want to follow all the procedures first, as Panasonic v Xiaomi explains.

8: Pre-existing parallel national actions

There is a set of questions concerning conflicting decisions between the UPC’s divisions and the national courts, in parallel cases, and how they may be avoided. Mala v Nokia is the first order to answer one of these questions: what happens if a parallel action is ongoing before the UPC opens?

7: Public access to pleadings and evidence

Unredacted pleadings and evidence should generally be available after proceedings have concluded, states the Court of Appeal in its high profile Ocado decision about public access to the UPC file. If there is a direct interest, access may be obtained sooner.

As the court makes clear, however, there is a separate and higher hurdle to obtain information that has been redacted for confidentiality reasons.

6: English language tipping point?

The objective factors the court sets out in Curio Bioscience v 10x Genomics when asked to change the language of proceedings to the language of grant of the patent, generally militate in favour of English. 

5: When opt-out leads to lock-out

The decision in AIM Sport v Supponor was eagerly awaited because it deals with one of the key questions of the transitional period. It holds that European patents are permanently locked out from the UPC if they were opted out while national actions were still pending when the UPC came into force.

4: Parallel actions between UPC and EPO

A point of common strategic importance is how UPC actions are affected by a rapid decision in parallel proceedings in the EPO. One of a number of decisions to begin outlining the approach taken by the court is Astellas v Helios, which suggests that the EPO decision in question need not be from the Board of Appeal alone. See also the UPC Court of Appeal in Court of Appeal, Carrier v Bitzer)

3: Using a straw man to do the forum shopping

Edwards Lifesciences v Meril held than a recently created Italian subsidiary of the Indian parent company was not the “same party”. This allowed the subsidiary to file a standalone revocation action in the central division, despite the parent being a defendant in infringement proceedings for the same patent in the Munich Local Division. 

In suitable case, this option may provide a way to revoke a patent in the Central Division, before a local court can decide on its alleged infringement.

2: Aligning cases in the Central Division

In a decision of similar strategic importance to Edwards, in Amgen v Sanofi-Aventis the use of different corporate entities in parallel revocation claims (in the Central Division) and counterclaims (Munich Local Division) led to their consolidation, with the parties’ consent, in the Central Division. Sanofi was thus enabled to continue the revocation in the forum of its choice and deny the chosen forum of Amgen. 

1: The approach to preliminary injunctions 

There have been a lot of orders during the first year of the UPC that arise from litigation relating to 10x Genomics’ analyte detection technology. But it is the Munich Local Division decision of 19 September 2023 to award a preliminary injunction against NanoString Technologies that stands out. 

Although this decision was overturned on the issue of validity by the Court of Appeal, it has nonetheless set a template for approaching preliminary injunctions in later UPC cases, as well as giving rise to interesting orders on other issues such as enforcement.