Franz Kaldewei GmbH & Co. KG v. Bette GmbH & Co. KG

The Unified Patent Court (UPC) issued its first decision on the merits, granting the first-ever permanent injunction covering seven UPC member states. Franz Kaldewei GmbH & Co. KG v. Bette GmbH & Co. KG (Düsseldorf Local Division, July 3, 2024).

The UPC found that the asserted patent was invalid in its granted form due to obviousness but upheld as valid an auxiliary request on which the injunction is based. Among other things, the Düsseldorf Local Division discussed procedural lapses around a missed deadline (denying the defendant a submission of certain documents one day prior to the oral hearing), jointly hearing the infringement case, and a counterclaim for revocation and inventive step. In this regard, the Court proceeded pragmatically and flexibly, as the UPC Court of Appeal (CoA) did in 10x Genomics, but unlike the European Patent Office (EPO) with its focus on the closest prior art and building a problem-solution approach thereon.

The decision further dealt with claims for information on the scope of infringement, claims for recall or removal from the channels of commerce, and considerations against requiring security for enforcement of a judgment on the merits in the given case.

Regarding so-called contributory infringement (i.e., indirect use of the invention), the UPC held that there is a double territorial requirement: the offer and/or delivery of the essential element must take place within UPC territory, and the invention must also be used within UPC territory. The Court left open the question of whether it is sufficient that the offering/delivery exists in a member state and the invention is intended for direct use in another, different member state. Further case law will have to clarify this point. Regarding the prior use defense, it follows from the decision that there is no “UPC/European” prior use. The existence of a right of prior use must be asserted for each member state according to its national law, and the respective defendant must provide the relevant information for each country individually.

Practice Notes:

• The UPC has shown that it is capable of dealing efficiently with both infringement and invalidity questions within the short timeframe it has set itself. The UPC delivered on its promise to issue a decision on the merits in just over a year and only a few weeks after the oral hearing.
• Regarding claim interpretation, the Düsseldorf Local Division referred to the CoA’s decisions on February 26, 2024, and May 13, 2024, stating that the principles of Article 69 EPC apply to both validity and infringement proceedings.

DexCom, Inc. v. Abbott et al.

The day after the UPC’s decision on the merits in Franz Kaldewei granting a permanent injunction, the Paris Local Division delivered its first decision on the merits and declared the patent in suit invalid in 17 UPC member states. DexCom, Inc. v. Abbott et al. (Paris Local Division, July 4, 2024).

The Paris Local Division also ruled on both infringement and validity questions and granted the counterclaim for revocation. The asserted patent is the subject of pending proceedings before the German Federal Patent Court. The German revocation action was filed on May 9, 2023, prior to the counterclaim for revocation in the UPC case. However, the German action was brought by only one of the defendants in the UPC case. The UPC held that it was therefore not obliged to decline jurisdiction in favor of the first court filing under Article 29(3) of the Brussels Regulation (recast) because there was no identity of parties and subject matter. The parties were different because the revocation action in Germany concerned only the German part of the patent and defendant eight was the sole claimant there.

It was therefore at the UPC’s discretion to decline its jurisdiction. The German national court was not expected to give its final decision before the UPC. Citing the principles of efficiency and expediency laid down in the Agreement on a Unified Patent Court, the UPC determined that it would not be in the interest of the proper administration of justice to either decline jurisdiction in favor of the German national court or to stay the proceedings.

 Practice Notes:

• This decision demonstrates the UPC’s relevance even in massive global disputes where companies are fighting over the relevant devices in Germany, Spain, the United Kingdom, the EPO and the United States.
• Given the expected speed and efficiency of the UPC, this case demonstrates that the UPC is capable of overtaking slower national proceedings.