UPC live – Key takeaways from the first oral hearing under the new regime

Three months after the new Unified Patent Court (UPC) system started, the UPC held its first public hearing. The case was heard before the Local Division Munich and relates to preliminary injunction proceedings.

The panel of the local division Munich is seated by judges Matthias Zigann (also presiding judge of the Higher Regional Court of Munich), Tobias Pichlmaier (also presiding judge of the Regional Court Munich), András Kupecz (Dutch lawyer and patent attorney) and the technical qualified judge Eric Enderlin (French patent attorney and partner of IP law firm Novagraaf).

The hearing started with a surprise as the applicant was not present at 9 am when the hearing was meant to start. As it turned out, this was due to issues with the UPC’s Case Management System (CMS) since it still happens, as pointed out by the judge, that the CMS accidentally sends notifications not originating from the panel. This is a good lesson that everyone needs to review the originator of the court orders very carefully since the real court orders are signed by the judges (which was only true for the “real” hearing notification). Given that the UPC is new for everyone, the court waited until the applicant arrived and there was no negative impact.

With respect to procedural and legal questions, these key takeaways are relevant for further cases before the UPC:

1. Given that the applicant seemed to have filed (based on its own press release) the request for a preliminary injunction (PI) on the very first day of the UPC on 1 June 2023, it means that it’s taken the court around three months to schedule the hearing for a PI case. Although there might have been some delays due to administrative difficulties during the first couple of weeks, it seems that the UPC will handle PI cases with the pace that we know from national (e.g. German) proceedings.  
2. Parties can expect the panel to give quite a detailed introduction to the case and respective relevant questions at the beginning of the hearing. However, this does not necessarily mean that the judges will also indicate in this introduction whether they, overall, lean towards the applicant’s or defendant’s side.
3. Although there is a validity presumption of the asserted patent due to the granting act of the patent office, the question of validity will not be ignored by the UPC. As is common practice also under National Law, the UPC will take into account the invalidity attacks brought forward by the defendant. The exact threshold and the requirements under which the UPC will investigate the validity of the patent is yet to be determined.
4. With respect to invalidity and specifically inventiveness, the panel has not yet been given a clear indication whether it intends to follow the problem-solution approach of the EPO or the slightly different approach of the German Federal Court of Justice. Although both approaches often reach the same result, there can be important differences when considering whether the skilled person had reason to develop a teaching in a certain direction in an obvious manner.
5. Yet to be decided is also the question whether the plaintiff can assert a limited claim version by means of an auxiliary request in the PI case if the claim version is not yet subject to a parallel pending EPO opposition. If this was to be allowed, especially in a PI case, it would significantly improve the patent owner’s position.
6. Finally, and with respect to balancing of interest, the panel phrased a preliminary opinion in its introduction that can have the potential to be quite tricky for defendants. If losing the case is similarly detrimental for both sides respectively, it might follow from the Enforcement directive that the court should lean towards the plaintiff in this case.

At least some of these questions will be clarified in the decision scheduled for 19 September 2023. On the same day, the Local Division Munich will hear another PI case between the parties which may clarify and raise further questions.

It will be a while until the first main proceedings (and therefore also the cases which DLA Piper is involved in) are heard. But these early PI cases will provide important guidance on how the UPC intends to handle its cases.

Feel free to reach out if there is anything that you want to discuss with respect to the UPC in general or these initial impressions from the first hearing.

Read more about this case and the UPC in general on our website.