UPC week 3 – what we are seeing (and not seeing)

The Unified Patent Court (UPC) is in its third week of operations and from what is visible so far we’re seeing the life sciences sector taking a narrow lead on UPC actions, with nine proceedings, followed by eight proceedings in the tech sector and one for bath tubs, with another one or two unknown as yet. Fifteen of the proceedings are now in UPC divisions in Germany, two revocation actions having been transferred from Paris. Of the rest, there are two in the Nordic-Baltic regional division and two or three in Milan. Other than two related €100m cases, the rest have been valued in the range €500,000 to €10m.

Life sciences companies lead the charge

The Case Management system (CMS) showed that, as of Tuesday 20 June, 19 or 20 claims had been filed in the UPC - nine out of them relating to life sciences, with six infringement cases and three revocation actions (one relating to the same patent).

Infringement claims

The German local divisions seem to have attracted the majority of infringement claims (five), and will be the forum for the following cases :

• 10x Genomics v Vizgen (Hamburg local division, patent is for compositions and methods for analyte detection);
• 10x Genomics v Nanostring (2 preliminary remedies actions in the Munich local division, patents are for compositions and methods for analyte detection);
• Amgen v Sanofi-Aventis (preliminary remedies action in the Munich local division, patent is for antigen binding proteins to proprotein convertase subtilisin Kexin Type 9);
• Edwards Life Sciences v Meril (preliminary remedies action in the Munich local division, patent is for a system comprising a prosthetic valve and a delivery catheter); and
• Edwards Life Sciences v Meril/Smis (Nordic-Baltic regional division, patent is for a prosthetic valve).

Revocation actions

On the revocation side, cases were filed in the central division sections in both Munich and Paris on the first day. Sanofi-Aventis filed a revocation action against Amgen’s same patent in the Munich central division, while Astellas filed 2 revocation actions in the Paris central division against patents owned by Healios/Riken/Osaka University (patent for a method of producing retinal pigment epithelial cell) and Healios/Osaka University (patent for a method for purification of retinal pigment epithelial cells). However, Astellas’ cases appear to have been moved to Munich.

Presently, claimants in revocation actions can only file their action in the central division of either Paris or Munich in accordance the UPC’s May 2023 communication - following Brexit, cases previously allocated to the London division are split between the central division sections in Paris and Munich, at least until a final decision on the matter is taken by the Administrative Committee. Specifically, the Paris division is temporarily competent to hear disputes relating to patents in IPC Section (A) (Human Necessities) while the Munich central division is temporarily competent to hear disputes relating to patents in IPC Section C (Chemistry). Under Rule of Procedure 47(1) applying Rule 17(3)(c), these cases are initially to be allocated based on the first listed IPC section, but can be reallocated.

The Administrative Committee will take its final decision on the division of competence imminently but it is expected that, in about a year’s time, a central division in Milan will hear disputes relating to IPC Section A patents, while disputes relating to IPC Section C patents will be heard in the Munich central division and the Paris central division will be the seat to hear disputes relating to SPCs from Sections A and C.

While all three revocation actions relate to non-opted out “traditional” European patents, Amgen’s patent (EP 3 666 797) was granted less than 9 months ago, meaning it is still susceptible of opposition before the European Patent Office and parallel proceedings could ensue – the UPC Agreement and the Rules of Procedure provide for stay and acceleration requests in such scenarios.

Tech disputes

On the tech front, all eight infringement actions have been filed in Germany in the following cases:

• Philips v Belkin (Munich local division, two patents for a power transmitter and power receiver for an inductive power system and for a wireless inductive power transfer, plus a separate preliminary remedies proceeding on a third patent for controlling inductive power transfer systems);
• Avago v Tesla (Hamburg local division, patent for an on-board power supply monitor and power control system, plus a separate preliminary remedies action in the Munich local division on a patent for a programmable hybrid transmitter);
• Huawei (Munich local division, patent for a method and apparatus for transmitting wireless local area network information); and
• Ocado v Autostore (3 infringement actions in Nordic-Baltic regional, Dusseldorf and Milan local divisions, patents for a load handling device for retrieving units from a storage, a grid frame structure, storage systems and methods for retrieving units from a storage system).

What we are seeing (and not seeing)

We have seen some teething difficulties with the CMS, making it something of trial and error to identify the cases and parties (particularly in preliminary remedies cases). It has taken until now to identify the details of these cases, although the first eighteen cases which we can see were filed on 1 and 2 June. Details of one or two cases in Milan aren’t yet available beyond the registry numbers. And no details of the (ten) orders showing on the system as having been granted are public yet, beyond the division and the description “Generic Order”, despite Rule 262.

However, this should pass with time. In the meantime, we can see that the initial rush has been led in the German local divisions, particularly Munich (12 and 8 respectively), with Milan and the Nordic-Baltic division appearing popular. Preliminary remedies actions are particularly popular, with 7 so far visible (all in the Munich local division). Revocation proceedings have been more limited, which is perhaps unsurprising given the large number of opt-outs, but we can expect revocation counterclaims. And we are seeing several companies filing multiple actions, either trying out different divisions or both infringement and preliminary remedies in the same division. The named representatives all appear to be from the same country or region as the relevant division, with the exception of the revocation actions which were all filed by European Patent Attorneys based in England.