Thursday, November 20, 2025
Executive Summary
A closing Berkeley Center for Law & Technology strategy panel featuring Ari Laakkonen (Powell Gilbert), Marc Lauzeral (Schertenleib), and Alexander Harguth (Bonabry), moderated by Steven Carlson (Robins Kaplan), distilled the conference’s enforcement themes into practitioner-level guidance on forum selection beyond Germany’s dominant local divisions, the contested German-versus-Dutch urgency models for UPC preliminary injunctions, the emerging long-arm assertion of US patents in German national courts against the backdrop of BSH Hausgeräte GmbH v. Electrolux AB, and the role of EU competition law as the only viable structural defense when a patent injunction threatens to shut down an entire product line.
Instructor(s)
Marc Lauzeral, Schertenleib Avocats
Ari Laakkonen, Powell Gilbert
Alexander Harguth, Bonabry
Steve Carlson, Robins Kaplan
Keywords
UPC venue selection — forum strategy beyond Munich and German local divisions • UPC preliminary injunction urgency requirement — German 30-day stopwatch vs. Dutch harm-based model • BSH Hausgeräte long-arm jurisdiction — UK, US patent assertion in European courts • Onesta v. BMW — US patent asserted in Munich Regional Court • Brussels Regulation drop-out — UK post-Brexit assertion of continental European patents • UPC permanent injunction scope — component patent vs. whole-product remedy • EU competition law defense to patent injunction — abuse of dominant position and compulsory license • SEP/FRAND defense — non-German local division forum selection strategy • UPC front-loading requirement — case preparation before filing as strategic imperative • Portugal sole deterioration of marketing authorization — UPC PI trigger • “which UPC local division should I file in for patent enforcement” • “can a UPC injunction be blocked by EU competition law or compulsory license”
Legal Analysis
Venue Selection Beyond Germany: Technology, FRAND Defenses, Long-Arm Jurisdiction, and the Onesta v. BMW Problem of US Patents in European Courts
The concentration of approximately 80 percent of UPC infringement actions in Germany’s four local divisions has persisted despite the availability of technically equivalent forums across the court’s membership. Laakkonen challenged the strategic logic of that default, observing that many non-German divisions “have their arms open and ready to receive cases,” that the Danish Local Division and Nordic-Baltic Division offer competitive quality with lower docket congestion, and that speed may actually favor less-busy courts because a judge rapporteur in an oversubscribed German division may be the third judge assigned to the panel rather than the primary case manager. His more substantive point was structural: in a case involving a Nordic-domiciled defendant, filing in the Nordic-Baltic Division satisfies the BSH Hausgeräte GmbH v. Electrolux AB, Case C-339/22 (CJEU 2025) long-arm predicate — defendant domicile — that extends the court’s practical reach to non-UPC territories, without requiring the practitioner to file in Munich and then argue for cross-border scope. For SEP cases in which a FRAND licensing defense is anticipated, Laakkonen offered a more pointed forum-selection rationale: “if you’re there … making the proactive move, and you want your FRAND defense to be successful, then you might choose a non-German local division,” because FRAND defenses in German local divisions have historically achieved very low success rates — a track record built up under the national bifurcated system and not yet reversed in early UPC practice.
Lauzeral added two further determinants: the technical composition of the panel and the national regulatory background of the jurisdiction. On the first, the UPC’s allocation of technically qualified judges by field of expertise means that a patentee with a pharmaceutical or biotechnology patent may gain a meaningful advantage by selecting a division whose technically qualified judge pool is deepest in the relevant scientific domain. On the second, Lauzeral cited the Boehringer Ingelheim preliminary injunction filed in the Lisbon Local Division as a case study in jurisdiction-specific regulatory leverage: Portugal is, uniquely among core EU patent jurisdictions, a country where the “sole deterioration of marketing authorization can trigger a PI” even before a generic actually launches, whereas other member states require actual market entry before urgency is established. Harguth confirmed that saisie-contrefaçon proceedings are more naturally accommodated in Paris — where French judges are experienced with the tool — than in German divisions, where the mechanism is less familiar and the judiciary’s comfort with it more limited: “I would, for instance, not do a CC in French in a German division, because that’s something what they never liked to do.”
The panel’s most legally novel discussion concerned the assertion of US patents in a German national court. The case Onesta v. BMW, filed approximately two to three weeks before the panel date in the Munich Regional Court (Landgericht München), is the first instance of a US patent being asserted in European infringement proceedings — a strategy premised on the same CJEU long-arm authority that underlies the UPC’s extended jurisdiction, applied to a national court rather than the UPC itself. Harguth observed that the UPC is likely insulated from this technique because its subject-matter jurisdiction is limited to European patents, making it structurally difficult to introduce a US patent into the UPC’s claim: “I’m not so optimistic that this is going to work out.” Laakkonen identified the most probable legal countermeasure: an anti-suit injunction from a US court to prevent interference with US patent validity proceedings that are addressing the same right. Lauzeral framed the strategic concern in stark terms: if a German court adjudicates infringement of a US patent across French territory by applying US patent law through expert evidence, a party would need to defend before a French court on an emergency application why “a German judge … decided and interpreted US law” in respect of French territory — and that position, he predicted, would be a “very bad position” from which to justify the proceeding.
UPC Preliminary Injunction Urgency: The German Stopwatch Model, the Dutch Harm-Based Approach, and When to Skip the PI Entirely
The UPC’s preliminary injunction regime has generated two competing urgency models that the court has not yet harmonised through a definitive Court of Appeal ruling. Laakkonen, drawing on his experience having successfully defended against a PI application, identified the divergence with precision: the German model operates as a “stopwatch” — when the patentee becomes aware of infringement, a countdown of approximately 30 days begins, after which the application may be refused for delay regardless of the merits; the Dutch model instead asks whether the application was filed before the harm sought to be guarded against has occurred, making the timeliness analysis outcome-focused rather than calendar-driven. Laakkonen assessed the German model as lacking logical foundation — “there’s no real answer to that question” of why the window should be 30 days rather than 60 — and expressed a desire for “more clarity on which one of those two applies.” He noted that at the time of the panel, a Court of Appeal decision on the urgency question from the Paris Local Division was expected imminently, which Lauzeral confirmed: “tomorrow you’re going to get a decision on that.” The substantive content of the urgency question also arose in the panel’s pharmaceutical context: Lauzeral described a generic-launch PI in which urgency was contested because the patentee had applied after launch but could have applied earlier given its knowledge of regulatory proceedings, a fact pattern that exemplifies the Dutch model’s potential to reach back and discipline patentees who time their applications opportunistically.
A related procedural tension flagged by Laakkonen concerned the balance-of-convenience or balancing-of-interests analysis applied in PI proceedings. The Dutch approach, in his account, takes a more common-law-style weighing of irreparable harm to the patentee if the PI is denied against irreparable harm to the defendant if it is granted, whereas the German approach links the balance more tightly to the strength of the underlying infringement and validity case. For UPC practitioners from common law jurisdictions accustomed to the four-factor framework — including the US standard derived from eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) — neither European model directly maps onto the familiar analytical template, and the UPC’s Rules of Procedure leave the synthesis of these competing traditions substantially to the developing case law. Lauzeral added a portfolio-management dimension to the urgency analysis: because national court decisions favorable to the patentee on apparent validity can influence the UPC’s PI assessment, a patentee who has obtained patent-upholding decisions in jurisdictions with mature patent litigation systems — he cited Poland as an example of a recently sophisticated system — can improve the documentary record supporting apparent validity before filing the UPC application.
Harguth offered the most strategically counterintuitive recommendation of the panel: in many cases, the prudent course is to forgo the PI route entirely and proceed directly to a merits action. The reasoning is structural rather than tactical. The UPC’s twelve-month first-instance timeline already produces injunctive relief with exceptional speed by any comparative standard; adding a PI proceeding introduces a front-loaded satellite litigation whose evidentiary demands are nearly as intensive as those of the merits case itself, and errors in the PI submissions — made under compressed deadlines — can prejudice the merits record. Harguth warned that the front-loaded nature of PI proceedings means “you can make so many mistakes as a lawyer,” and recommended that unless the patentee faces an emergency that cannot await the merits timeline, the better course is to “try it with the within a lawsuit on the merits, where you have also … the damage claims.” Carlson noted the additional economic dimension: proceeding to judgment on the merits rather than seeking a PI avoids the bond-posting obligation that attaches to an erroneously granted preliminary injunction, which in high-value cases can reach into the tens or hundreds of millions of euros.
Permanent Injunctions Across Whole Products, Competition Law as Structural Defense, and the Front-Loading Imperative as Closing Strategic Guidance
The UPC’s default injunction rule creates a structural challenge that has no close US analogue in the post-eBay landscape: a patent on a single component feature can, as a matter of court order, halt the distribution of the entire product in which that feature is incorporated. Carlson described a decided UPC case in which a patent on an LED structure used in mobile phone pixels was found valid and infringed, with the result that the court enjoined distribution of the entire mobile phone and ordered a claw-back of handsets already in the distribution channel. The same logic, he noted, extends without modification to complex multi-component products such as automobiles and enterprise servers — products in which a large number of separately owned patents may be valid and infringed simultaneously. Laakkonen identified the primary legal response available to defendants in this position: a design-around analysis to determine whether a non-infringing alternative supplier or implementation is technically available. If a design-around exists, the injunction’s practical effect is constrained to the transition period required to implement it; if no design-around is available, the patent functions economically as an essential right, and the appropriate defense shifts to EU competition law: “you’d use a competition law argument to say that there’s been an abuse of a dominant position, and therefore you should have a compulsory license to that particular patent on a competition law basis.”
Lauzeral developed the competition law defense with important qualifications. The cause of action requires establishing that the patent holder occupies a dominant position in the relevant market — a threshold that is not met in every case involving an indispensable feature — and the remedy sought is a compulsory license rather than a permanent injunction block, with the precise scope of the license remaining to be adjudicated. The practical enforcement pathway, Lauzeral observed, is not a direct judicial claim by the defendant in the UPC proceedings but rather a complaint to the European Commission or a national competition authority, which then runs the investigation autonomously: “you are just making a complaint, you are just kind of launching a grenade, and after that, that’s the competition authority which runs the case.” The strategic utility of the competition law complaint is therefore primarily as a settlement mechanism — a credible threat that forces the patentee to negotiate rather than proceed to enforcement of a whole-product injunction — rather than as a direct procedural defense that would prevent the injunction from issuing. Lauzeral noted that European competition authorities, unlike US antitrust enforcement, are “not afraid of putting huge fine[s]” and conduct dawn raids, making a well-founded competition complaint a commercially significant threat for a patent holder with market power.
The panel closed with condensed practitioner guidance distilling the conference’s strategic themes. Laakkonen’s closing injunction was proactivity: “if you have a chance to be proactive, then be proactive, because otherwise you will fall into the trap of the claimant’s choice of jurisdiction, particularly on PIs.” Lauzeral’s instruction was substantive: the UPC, despite its procedural novelty, is fundamentally a patent law tribunal in which validity, prior art, and infringement are adjudicated on the merits, and the practitioner who “tell[s] a good story” — who can summarize the invention in one sentence and locate it clearly in the patent application — will outperform one who treats the proceeding as procedural management alone. Harguth’s closing observation was structural and non-negotiable: the UPC’s front-loaded pleading model requires a level of pre-filing preparation that exceeds anything familiar from German national practice, because “all what comes later, after you filed, is under risk that it will be considered to be belated.” Carlson synthesised the US-practitioner perspective: American lawyers and American companies need not become UPC experts, but they must understand the court’s dynamics well enough to know what questions to ask and who to call — because the UPC has become, in his characterisation, “the big leverage these days in patent litigation and patent enforcement.”
Generated by AI based on the Interview/Transcript below.
Key Takeaways
- Competition Law Is the Only Structural Injunction Defense: When a component patent produces a whole-product UPC injunction and no design-around is available, the defendant’s sole structural remedy is a compulsory license predicated on EU competition law abuse of dominant position; Laakkonen confirmed the argument runs “on a competition law basis,” while Lauzeral cautioned the complaint mechanism is a settlement lever rather than a direct judicial bar.
- Be Proactive; Claimant Controls PI Forum: Laakkonen’s closing guidance was unambiguous: “if you have a chance to be proactive, then be proactive, because otherwise you will fall into the trap of the claimant’s choice of jurisdiction, particularly on PIs.”
- Urgency Doctrine Remains Unsettled: The UPC has not yet definitively chosen between the German 30-day stopwatch urgency model and the Dutch harm-before-filing model for PI applications; Laakkonen identified the German model as lacking logical basis and called for Court of Appeal guidance, noting that a Paris Local Division ruling was expected imminently at panel date.
- Skip the PI When One Year Suffices: Harguth recommended that practitioners default to the merits route rather than seeking a PI, because the UPC’s twelve-month timeline already provides rapid relief, front-loaded PI pleadings create prejudicial error risk, and proceeding on the merits avoids the bond-posting obligation on an erroneously granted preliminary injunction.
- US Patents in German Courts: Onesta v. BMW to Watch: The first assertion of a US patent in a European court (Onesta v. BMW, Munich Regional Court, Munich) raises unresolved questions about CJEU long-arm authority, US anti-suit injunction risk, fee escalation under German litigation-value rules, and the practical acceptability of a German court interpreting US patent law — a scenario Lauzeral characterised as “completely crazy” from a due-process perspective.
- Non-German Divisions for SEP and FRAND Cases: Laakkonen recommended that patentees who anticipate a FRAND licensing defense select a non-German local division, because FRAND defenses have historically achieved very low success rates before German local divisions and the same track record is likely to carry forward into UPC practice.
- Portugal Triggers PI Before Generic Launch: Lauzeral identified Portugal’s Lisbon Local Division as uniquely valuable in pharmaceutical cases because Portuguese law permits a PI upon the sole deterioration of a marketing authorization — before any generic launch — while other UPC member states require actual market entry before urgency is established.
- UK Long-Arm Is Bilateral, Not One-Directional: Laakkonen noted that when the UK dropped out of the Brussels Regulation upon Brexit, the exclusive-jurisdiction bar to asserting foreign patents in UK infringement proceedings disappeared, meaning UK courts already have BSH-equivalent long-arm authority to adjudicate infringement of continental European patents — a reciprocal dynamic that most practitioners have not yet engaged with.
- Front-Loading Preparation Is Now Non-Negotiable: Harguth distilled the UPC’s single most consequential procedural feature: case preparation before filing must be more thorough than anything required in prior German national practice, because evidence and arguments introduced after the statement of claim is filed risk being excluded as belated.
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Interview/Transcript
This transcript was based on a conversation on December 4, 2025 at the 2025 Berkeley-GW UPC Institute. This panel on “UPC Strategies: From Venue Selection to Injunctions” was given by Marc Lauzeral, Schertenleib Avocats, Ari Laakkonen, Powell Gilbert, and Alexander Harguth, Bonabry, and moderated by Steve Carlson, Robins Kaplan.
Steven Carlson 00:19
Talks of venue, you know how to pick a venue, how to maximize the injunctive relief you can get in the UPC, the bid on monetary damage and discovery, and any final nuggets of wisdom. So, without further ado, someone venue, if you’re going to plan an enforcement campaign, I mean, most people file in Germany, and most of people in Germany are Munich, so why would you file somewhere else? What are the factors that would say, you know, this is not a Munich case, this is not a German case. I’m going to, I’m going to go somewhere else in the UPC. Ari, thoughts on that?
Ari Laakkonen 00:58
Yeah, well, the world is your oyster, and I do think that there’s, there’s a lot of choice in a lot of these one for one thing, a lot of courts aren’t busy at the moment. You’ve got, you know, the Danish local division, which is, you know, has its arms open and it’s ready to receive cases. You’ve got the French divisions, and, and they’re ready, willing, and able, and you’ve got Nordic, Baltic. You might think that for particular sorts of technologies you want different divisions. You might think that, that, that, that you’re going to, you know, get really fast sort of trial timings, if you go to a non-busy court, and, and I have to say, I don’t fully understand. I know that statistically, you know, Germany is about 50% of the cases at the moment, but I don’t, and that statistics, but I don’t get the logic as to why people would automatically choose that, because you get roughly the same quality of judging, and you get fast speeds from other courts, and, and I actually think that the decision isn’t so much as to, you know, choosing between different courts, it’s actually about strategy, and so you might want to even a long arm type situation, you go to the, to you know, the domicile of the defendant, and that might be the Nordic Baltic Division. If you’re going after a Nordic company, you could, the interpretation of some of the likely defenses could be different, and if you’re looking at an SEP case with a friend defense, then you’d probably, if you’re there, if you’re making the proactive move, and you want your friend defense to be successful, then you might choose a non-German local division based on because historically Fran defenses in German local divisions have had very low success rates, so I think it’s strategy driven, and I don’t think it’s preference for food, the climate, or whatever.
Steven Carlson 03:05
Well, Mark, is it your.. I mean, you’re coming from Paris, obviously. Is it your view that basically, of course, you should choose Paris over what would mitigate favor going to Paris as opposed to other places?
Marc Lauzeral 03:22
I would now, I would not say Paris is mandatory at all. I mean, I’ve got clients who have proceedings in different local division. Sometimes it can be good. I noticed that, for instance, of course, if you want some kind of order to present evidence, French judges are more used to it. They tend to be known as well for bringing a significant amount of damages, so not afraid of injunction. But I think mostly you should define your strategy by where the basic, the basics, which are in the where is infringement, because you have basic rules. We say that you should bring the case where there is where there is infringement, do I want a longer jurisdiction? Sometimes you want to find it, whether headquarters is you also have, like it was said, the industry, you know, some legally qualified judges are trained scientifically, some are chemists, some have biotech background, so it can be really useful to have that as well, and I think that when you go, and I completely follow Ari reasoning in that when you go to a really crowded local division, you have higher chances of success that your judge rapporteur, which has a significant impact on the procedure, because he’s the one who is in charge of the proceeding, will be the third judges, which is designated by the panel. Now, what we can see is you have a really strong competition between the different local divisions, so I would say. And it changed my mind, changed after some months, I would not say years, because it’s not that far, but but it’s true that I can see some uniform uniformity between the local divisions, and also we tend to see, and what I see, for instance, in the last sense, see the cases cases, Boringer launched a PI in, in Portugal, in Lisbon, and I think it’s notably due to the fact that even though the generic was said I’m not going to launch, it was even injuncted, and I’m not going to launch, but because the Portugal is the only European one of the only core European country when the sole deterioration of marketing authorization can trigger a PI, while in other countries you don’t have that, so that’s why I would say sometime you can look at the national regulation on maximumized case law to understand the background of judges
Steven Carlson 05:58
and Alexander, you’re in Munich, that’s the epicenter, that’s where the, that’s the hot place to bring cases. Are you bringing all your cases there, or do you go elsewhere?
Alexander Harguth 06:08
You know, I personally, I’m a little bit like I said, there is no need to go to Munich, and for the time being, I would feel also comfortable to file a case with the local division in Paris. What we recently did, of course, there was, in addition, the issue that the defendant had the seat in Paris, and therefore we could also get, you know, Spain into this in our, in our complaint, but it is not a situation where I see here with respect to technology, or maybe this is, could be a reason, you know, that did you say that they had a kind of a case law in Portugal that for some reason they, you have already an infringement very early, which is not the case in other jurisdiction, but where I see maybe still a kind of a difference is I would, for instance, not do a CC in French in a German division, because that’s something what they never liked to do, and how do they, how they are going to change now from one day to the other, that and in France it was a very known feature, so they know exactly how to do it, and I, I would then rather, or in Italy, for instance, so therefore I would say that there are some elements where it plays out, but for the time being you cannot simply qualify, and for us it’s a success that Munich is so successful, but it’s not necessary to go there.
Steven Carlson 07:57
Alexander, one more question for you is you know, fun fact, just about two weeks ago, three weeks ago, for the first time, there was a suit brought in the Munich Regional Court, where they asserted against BMW, they asserted American patents, US patents were brought in Europe in the Munich court against BMW. So, first question is, that legit, like from a jurisdictional standpoint, can you do that?
Alexander Harguth 08:24
Okay, so it is. Was a case brought in front of the District Court, Munich. It’s a national case now. They did it because there is this, these age decision of the European Court of Justice, which gave possibilities to get into your case, also patents of other countries. My first question was, Does something like this work also with the UPC? I think there we could say no, because the UPC is somehow restricted to the European patent, and how would you get in US patent into your, let’s say, into your claim, but we will see whether this works out. I’m not so optimistic that this is going to work out, because at the end of the day, there are also then some political power on which plays a role that I don’t know whether the US would like that German courts start to decide on the infringement of US patents.
Steven Carlson 09:36
Right, right, it sounds sounds strange to me, but you know, who knows, we’re all watching that one
Alexander Harguth 09:41
but you know, coming back to the BSH, and there is no, you can even say a standard, so that you can, if you go with the, let’s say, with the seat of the defendant, it is domicile, then then you have the possibility to extend your, let’s say, your. PC complaint to UK to other countries, which are not belonging to the system.
Steven Carlson 10:06
Ari, how do you like that? That now with the UPC we can pull in, you know, enforcement in the UK. How does it sit with you?
Ari Laakkonen 10:16
Well, yeah, there’s many perspectives on that, and one of them is that, okay, well, if that’s a reality, then that’s how we’ll run all of our UK cases going forward, so we’ll just, if you can’t beat them in, then you join them, right, and and you sort of, you know, you may, you make it your policy to to actually run UK cases remotely with a with a long arm component from the UPC, and that might become a reality for, you know, some, some, some, some of the cases, but it’s I think that the UK long arm was was the one that they always discussed, because it was particularly fun in the context of Brexit, I think, to raise that example, because it sort of, it, it can cancels out some of the effects of Brexit in some ways, but it’s just, you know, it’s a sub case of of the long arm jurisdiction generally, and so I think the long arm jurisdiction seems to be with us to stay, and so I think the UK long arm as well will be with us to stay, and but I do think that you know when it comes to asserting US patents, that is a slightly problematic, that that’s going to be a more problematic scenario, because you can imagine the reaction here when people find out that this is going on, and there might be, you know, an anti suit, for example, that’s contemplated by a US court to prevent the interference in a validity to challenge. Here, I mean, why would people tolerate a validity to challenge that that messes around with something that’s going up, pretty valid completely? You know, court of competent jurisdiction here is addressing validity. Why should that be messed around with, so I can see real committee problems that arise from the unconstrained assertion of foreign patents.
Steven Carlson 12:11
Stay tuned, that case is Onesta versus BMW out of the Munich Regional Court. So stay tuned.
Marc Lauzeral 12:19
May I just say a word about it, because ethically speaking, I find that completely crazy. You know, is that UK said, ‘I don’t want to be part of this, I cannot be part, and I don’t want to be part in the in the EU anymore. And then they said, ‘No, you’re in. From a US point of view perspective, even though we have different right, we don’t have the word due process in our, in our, in our system. So you have to explain to us citizens when they cannot choose their car, or maybe, why do you have recall, and they say, okay, due process, you say that has been decided by a German quote, or a French court, or any one of it, and I think more specifically the strategic thinking, I’m not sure about it, because at the end of the day, there are only remedies, but each court remain has jurisdiction regarding the validity of the patent. So, if you do that, for instance, in Germany, covering the French territory, what I would do, I would say, “Okay, I’m going to go before the French judge, I’m going to obtain a super speedy proceedings in three weeks, we’re going to be in front of a judge, and you’re going to have to explain why, so that even though the judge is here, he was waiting for your case. You asked to a German judge to interpret French law, so you’re going to be in a very bad position. And I don’t want to be before, like, to make a deposition in US proceedings defending why it was the clever things to do, and it was completely normal that a French judge, you know, decided and interpreted US law.
Alexander Harguth 13:45
This is correct, of course, in the line of the decision of the European Court of Justice. This means that the case must be decided on, on the, you know, on the law of the United States, so this means that they would have to provide expert opinions, which are then, you know, people explaining to the church in Germany how this works in the, in the United States, including the eBay, whatsoever, what is necessary to, to know it, and I see here this is only one case, this I see for them a particular risk, because in Germany you can easily end up that the court is rising the litigation value to 30 million, and if you start very low on 1 million and they see something like this that you have, and you have added a US patent. Then I would feel in that situation that the court is putting up the litigation went to 30 million, which would mean then immediately that they have to add a lot of court fees, and this is considerable what you have to add in Germany. It will be then, more than a, you know, half a million euros.
Ari Laakkonen 15:07
The other thing that’s notable about it, or at least the UK long arm sort of version of the events, is that people think that, you know, that this thing, you know, came about and it was possible, particularly because of BSH, as a result of recent developments, and it’s, and it’s one-sided. It sort of comes from Europe and affects the UK. That’s not actually true, because when Brexit happened, the UK dropped out of the Brussels regulation, and the rules that prevented foreign patents from being enforced in UK patent infringement proceedings dropped away, and so the exclusive jurisdiction bar to asserting foreign patents disappeared, which means that the UK courts have had a BSH-like jurisdiction now for several years that just hasn’t been exercised, but it could be exercised back towards, towards the continent from the UK, so that if the, if the pattern of litigating UK patterns, but from the UPC, for example, continues, then two can play at that game, and and European patterns could be litigated in the UK in relation to infringement that happens on the continent, and that’s okay, because the Brussels regulation no longer prevents it. The main rules stopping it, people haven’t been talking about that a lot, but that’s that is a possibility. It’s not one that I think many people really want to engage in, because it adds a lot of extra cost and complexity to the litigation. It’s if you really want to sue someone, you might as well go in the court where they’re at and sort of make it cheaper.
Steven Carlson 16:48
I’ll look for the headlines coming out of Powell Gilbert on this. Well, let’s talk briefly about preliminary injunctions. We talked a lot about injunctions today, and it seems to me you win an injunction if you win the case, but preliminary injunctions, maybe yes, maybe no. What can you do to maximize your chances of winning that PI? Ari?
Ari Laakkonen 17:11
well, I’m in the position of having fought off a PI and defended successfully against it, and so the reason why we won on that defense is because there was no urgency, or there was no, there was no sort of, there’s a requirement that you can’t unreasonably delay, and so the lesson number one is obviously you have to do your prep work, so you have to have a some, some, you know, good argument on validity, and you have to have a good argument on infringement, but then you also have to move fast. The urgency requirement is, I think, kind of under review in the UPC system at the moment. We’ve got two choices on urgency: one is the German model, which I call the sort of stopwatch model, which is when you find out about infringement, you start the stopwatch and it’s ticking away, and you’ve got 30 days, which is a sort of more arbitrary requirement. So, there’s no reason why it has to be 30 days. Why can’t it be 60 days? There’s no real answer to that question. It’s just a matter of policy that it happens to be about 30 days, or you’ve got the Dutch model, which is that you have to apply for your PI before the harm that you’re trying to guard against happens, and that’s actually the meaning of the delay requirement. And we haven’t had a proper ruling from the UPC on which one of those two is the is the correct model in, or maybe the Court of Appeal has said something, but I would like some more clarity on which one of those two applies, because I think the stopwatch model lacks lacks logical basis.
Marc Lauzeral 18:49
It’s just that tomorrow you’re going to get a decision on that. Is that okay? I think tomorrow you’re going to get a decision on that on the PI case. I’m from a stickle in from the local Paris division, and I would completely agree with everything you said, and I will add that PI is specific in a way that they are going to look at the apparent validity of the patent, so if you are able to get some decision in other countries, which are more, if you’re the patentee, more favorable to the patentee, if you go to, I don’t know, Poland tend to be really mature in terms of patent litigation now, but some Eastern country, when you’re gonna, you’re gonna, the judges will tend to follow the EPO decision, then you get a better case.
Alexander Harguth 19:33
The last thought, maybe it’s a difficult question, because you have already a system which is very fast, in one year you get an injunction, so going the way through a preliminary injunction has a lot of risks, because maybe you, you’re going to to lose on elements which are then connected to the fact that you, it’s a even preliminary. Injunction proceeding, it’s a front-loaded, very front-loaded, yeah, and this does it’s mean that you can make so many mistakes as a lawyer that you rather say to a client, if it’s not absolutely necessary, you know better try it with the within a lawsuit on the merits, where you have also, in addition, you know, the damage claims, and the end of the day, you know, the patent can be invalidated. And then I would rather recommend that the normal case gives you the chance to really look into the validity of the patent, and, and to get a better and let’s say more, let’s say better decision
Steven Carlson 20:46
right, and that might insulate, insulate you also on having to post bonds, for example, to cover the cost of of an erroneous injunction, is that, is that right?
Alexander Harguth 20:55
I think, yeah, right.
Steven Carlson 20:59
so maybe, maybe the pruder case to go slow, because not slow isn’t slow, slow is one year, and that you may be able to develop a better record and be more methodical about it.
Alexander Harguth 21:08
but there might be situations where you really need a preliminary injunction. I don’t know, what is the situation in your case in Paris? What was the reason to use that to take that track in instead of not doing it in the simple way with a lawsuit of America.
Marc Lauzeral 21:29
It was a generic launch, so okay, so regulatory issue, and even there you get urgency. You have real question on urgency, which was mentioned during the trial hearing, because they applied after the launch, while because of regulatory issues, they could have applied earlier, so that’s why it’s going to answer your question regarding the Dutch or German
Ari Laakkonen 21:46
view. Yeah, the Dutch or German view, it’s also interesting, on, you know, the Dutch be the Germans, there’s also the issue of balance of convenience or balancing of interests, and whether that matters for a PI in a sort of conventional common law sense, where you’re trying to measure the harm to the patentee if the PI is not granted versus the harm to their to the defendant if the PI is granted, and trying to say whether you know whether the irreparable harm on one side or the other of that equation would outweigh another the Dutch view seems to be that you take a more common law approach to that versus the German view, which I think is more connected with the merits of the infringement and validity of the patent.
Steven Carlson 22:34
Let’s talk about permanent injunctions. So seems that if you win your case, you’re going to win a permanent injunction, but at some point, I mean, I, there’s one case I saw where it was a patent on an LED structure using the pixels in phones, and that patent was found to be valid and fringed, and so the court enjoined the distribution of the entire mobile phones and ordered a claw back with phones in the distribution channel, so I read that as an American, say, I say, “Wow, you never get the relief here, but does this create a problem that you’ve got patents on a small feature now shutting down the distribution of cell phones, and you apply that to cars, you apply that to, you know, servers, and at some point, if every everyone’s getting shut down and enjoined, you have a problem, is this going to be, you know, the hit to the economy with all these injunctions getting put and put in place. Ari, you want to try that?
Ari Laakkonen 23:34
Sure. So, I think initially, sort of the starting point is you do have a problem because the injunction that you get out of the UPC is either the German style sort of recital of the whole claim, which may include then use a device, or it’s just a Dutch style injunction, which just says do not infringe anymore, which would then still include, if the patent claiming claim includes it, then use a device, so the starting point is you do have a problem with that. I think the answer to it is to look at whether there’s a workaround, because if there’s a – if there’s a non-infringing workaround that could be used like a different LED supplier, then of course you’re not going to infringe if there is no workaround that could be used to get around infringement, then you have potentially an essential patent or an SAP, but but not one that’s been declared, and you’d use a competition law argument to say that there’s been an abuse of a dominant position, and therefore you should have a compulsory license to that particular patent on a competition law basis, you’d run that as a defense in your claim, and if you succeed on that, then there won’t be an injunction.
Steven Carlson 24:48
Marc, thoughts on that.
Marc Lauzeral 24:48
Yeah, I, that’s exactly what I thought. Again, Ari, follow you completely. No, I think when you’re in this kind of position, the only stick you’re going to have to try to fight. It back would be competition law, but it’s only limited to dominant position, so it means that you’re going to have first to see whether the patent has a dominant position on the relevant market, which is sometimes not the case. You can try to say that it created a minimum position, but yeah, I would consider that the competition law, is could be something you could consider, notably given the fact that, compared to the US European European Commission and national competition and market authorities are way more active, they are doing a lot of down raids, and they are not afraid of putting huge fine, but the threat of a fine or the threat of an action, because when you’re the defendant, you are just making a complaint, you are just kind of launching a grenade, and after that, that’s the competition authority, which run the case, so it’s going to bring a lot of of the patent, you would have to bring a lot of money to defend to that, so it could be a way to try to settle, to bring someone at the table at least,
Steven Carlson 26:08
Alexander, are all these injunctions, gonna wreak havoc on the economy
Alexander Harguth 26:13
of course. What, what US lawyer, can do is stand in that situation, if there is an injunction out, it’s more limited in terms of what kind of possibilities you have, and of course, what the first thing is that that you try to, you know, to to hinder the other side to start in a way by, by, if you make it dependent, for instance, from the security that such a such a injunction is is then at the end implemented, and that’s how we would normally address that situation.
Steven Carlson 26:57
Well, good. Well, we’re running up against the end of the end of the time. I want to ask each the panelists for one nugget of wisdom that’s not been aired already today about how to deal with UPC, either on the offense or defense, or just, you know, whatever observation we have, one one nugget of wisdom. Ari, you want to start it off. If
Ari Laakkonen 27:17
you have a chance to be proactive, then be proactive, because otherwise you will fall into the trap of the claimant’s choice of jurisdiction, particularly on PIs, and so preparing ahead of time, because you need to be very afraid of PIs
Marc Lauzeral 27:34
I would say that at the end of the day, you are doing patent law, so irrespective of the procedural issue, you’re going to discuss validity of the patent with prior art science infringement, so pick a UPC representative who is at least able to do all this stuff. You are in a trial lawyer position, so tell a good story. Do you have an invention? Can you sum maybe up in one sentence, and was it in the patent in the patent application?
Alexander Harguth 28:00
I think one thing Ali was already explaining that it is for us a big difference from what we did in the, in our previous professional life, and this was this is the situation that you have really, really to prepare your case very, very well in order to start a case with the with the UPC, simply because it’s so front loaded, you need to have it prepared better than better than we did it in the past, simply because all what comes later, after you filed, is under risk that it will be considered to be belated
Steven Carlson 28:43
and I will close from the US perspective. As a US lawyer, just observing this, is we need to know this. We need to know what’s going on. We don’t need to be experts. We can call trusted counsel overseas, but we, as American lawyers and American companies, need to be watching this, because this is the big leverage these days in patent litigation and patent enforcement, and it is our jobs to know what’s happening there, and to know who to call. So, with that, you know who to call. And thank you all.