Day 2, Panel 4 (Litigation): Update on the UPC and its impact on IP-litigation Strategies
December 5, 2025
B-CLE Recording (CLE: $100) | Agenda | Event Resources | Speaker Biographies
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Speakers
Chris de Mauny, Bird & Bird
Julia Schönbohm, Linklaters
Eric Whitaker, 10x Genomics
Panel Summary
Tess Waldron opened by framing the UPC as both a growing concern and potential opportunity for US-based companies, before Julia Schönbohm provided a statistical overview of the court’s first nearly two years of operation — over 940 first instance cases by June 2025, with Munich leading as the most active local division followed by Düsseldorf, Mannheim, and Hamburg, and English serving as the procedural language in 55% of cases reflecting the historic dominance of German practitioners. Julia highlighted several structural advantages of the UPC for plaintiffs, including speed of proceedings typically delivering a first instance decision within 12 to 15 months, access to evidence through saisie-contrefaçon style seizures and technical inspections, and the ability to amend claims during litigation — a feature Eric Whitaker described as transformative for patent owners accustomed to the rigidity of US practice. However, Julia and Tess both flagged significant structural challenges, particularly around validity unpredictability — noting that technical judges, who receive only approximately 37 hours per case, may lack subject matter expertise in the technology at issue, and that unlike EPO opposition proceedings or German nullity actions, the UPC does not provide parties with any preliminary indication of the court’s thinking on validity before the hearing, creating what Julia characterized as a “black box” validity determination. Chris De Mauny noted that while plaintiffs hold a structural advantage in forum selection and timing, actual outcomes have been relatively balanced at approximately a 50% success rate on combined infringement and validity, and that preliminary injunctions — granted at a remarkable 60% rate compared to roughly 10% in the US — impose enormous time pressure on defendants who may have as few as four to five weeks to mount a comprehensive defense.
The panel then turned to the landmark February 2025 CJEU decision in BSH v. Electrolux, which the panelists unanimously described as the most significant development in European patent litigation jurisdiction in decades. Chris De Mauny explained that BSH overturned the prior rule that infringement claims based on foreign patents would be automatically stayed when validity was disputed, and established that EU national courts — and by extension the UPC — can now accept jurisdiction over and adjudicate infringement claims based on patents from any country in the world, including US patents, without staying the case pending validity determination in the patent’s home jurisdiction. Eric Whitaker characterized BSH as potentially more strategically significant than the UPC’s claim amendment flexibility, pointing to the already-filed Nesta v. BMW test case in which Fortress acquired AMD patents and asked a German national court to enjoin BMW from exporting US-patent-infringing infotainment systems — requiring a German judge to apply US patent law and determine whether US injunction standards like eBay apply or whether German injunction standards govern. Julia Schönbohm tracked the rapid expansion of UPC long-arm jurisdiction through a series of first instance decisions — extending from UK patents, to non-UPC EU member state patents, to third-party defendants connected only through authorized resellers — while Tess Waldron cautioned that the UPC Court of Appeal has signaled it may take a more restrained approach to jurisdictional expansion than first instance divisions have shown. Chris Young added that the EPO opposition process, while somewhat diminished in relevance given the UPC’s speed advantage for fresh patents, remains strategically useful for monitoring competitor patent grants and potentially generating interim invalidity ammunition to support stay requests or parallel proceedings.
Key Learning Points:
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BSH v. Electrolux Is a Complete Game Changer for Global Patent Strategy: The February 2025 CJEU ruling that EU national courts and the UPC can accept jurisdiction over infringement claims based on any country’s patents — including US patents — without mandatory stay for validity challenges fundamentally reshapes global litigation strategy, enabling plaintiffs to use fast European courts to seek injunctions affecting US-patent-infringing products manufactured or exported from Europe, and requiring defendants to rethink their validity challenge toolkit in the absence of reliable IPR institution (Eric Whitaker; Chris De Mauny; Julia Schönbohm).
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UPC Preliminary Injunctions Are a Powerful and Underappreciated Weapon: With a 60% grant rate compared to roughly 10% in US federal courts, UPC preliminary injunctions impose extraordinary pressure on defendants — who may have as little as four to five weeks to simultaneously address infringement merits, validity, urgency, proportionality, and commercial balance — making early preparation and a pre-filed writ of protection essential for any company that may face UPC enforcement, and making PI strategy a central pillar of plaintiff-side UPC litigation planning (Chris De Mauny; Eric Whitaker; Julia Schönbohm).
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The IPR Collapse Has Directly Amplified the UPC’s Strategic Value for US Companies: The near-total discretionary denial of IPR petitions has eliminated the primary US mechanism for quickly challenging patent validity and obtaining a stay of parallel European proceedings — meaning defendants sued in both the US and Europe can no longer rely on IPR institution statistics to justify a European stay request, dramatically accelerating European timelines relative to US timelines and making the UPC’s speed an even more decisive strategic advantage for plaintiffs (Eric Whitaker; Tess Waldron).
Program Transcript
Key Terms: Unified Patent Court (UPC), Local Division, Central Division, Regional Division, Court of Appeal, First Instance, UPC Agreement, UPC Rules of Procedure, Judge Rapporteur, Technical Judge, Legal Judge, Panel Composition, UPC Case Management System, UPC Opt-In, UPC Opt-Out, Unitary Patent, European Patent (EP), UPC Caseload Statistics,Munich Local Division, Düsseldorf Local Division, Mannheim Local Division, Hamburg Local Division, Paris Local Division, The Hague Local Division, Nordic-Baltic Regional Division, Lisbon Local Division, Central Division Paris, Central Division Munich, UPC Member States, Non-UPC EU States, EPC States, Front-Loaded Proceedings, 12-15 Month First Instance Timeline, Written Procedure, Interim Conference, Oral Hearing, Writ of Protection, Ex Parte Injunction, Claim Amendment, Expert Evidence, Technical Inspection, Preliminary Opinion, Black Box Validity, Urgency Requirement, Proportionality Test, Balance of Interests, Preliminary Injunction (PI), Saisie-Contrefaçon, Asset Seizure, Evidence Seizure, Technical Inspection, PI Grant Rate, Ex Parte PI, Inter Partes PI, PI Merits Standard, More Likely Than Not Standard, Urgency Factors, Commercial Factors, PI Court of Appeal Decision, Writ of Protection, BSH v. Electrolux, CJEU Decision, Long-Arm Jurisdiction, Cross-Border Injunction, Foreign Patent Jurisdiction, Infringement Stay Rule, Mandatory Stay Abolition, Domicile-Based Jurisdiction, Place of Infringement, Spider in the Web Doctrine, Inter Partes Effect, Non-EU Patent Jurisdiction, Export Ban, Import Ban, Anchor Defendant, BSH v. Electrolux, Nesta v. BMW, Fujifilm Decision, Onesta Case, Dyson Case, Formicon Case, Regeneron and Bayer Case, Fortress AMD Patents Case, Electrolux Case, Counterclaim for Revocation, Central Revocation Action, EP Opposition, National Nullity Action, Insufficiency Standard, Added Matter, Inventive Step, EPO Opposition Division, Technical Board of Appeal, Validity Attack, Inter Partes Validity Decision, Validity Unpredictability,European Patent Office (EPO), EPO Opposition Period, Opposition Division, Technical Board of Appeal (TBA), Nine-Month Opposition Window, EPO Acceleration, National Court Competition, German National Court, Dutch National Court, Spider in the Web, Cross-Border National PI, BSH Implementation, Delaware Litigation Speed, TC Heartland, Post-TC Heartland Venue, Federal Circuit Timeline, IPR Discretionary Denial, IPR Institution Rate, Stay Request Statistics, eBay Factors, German Injunction Standards, US Injunction Standards, Delaware Injunction Gap, UPC Speed Advantage, DJ Action Validity, Method Patent Extraterritoriality, Standard Essential Patent (SEP), FRAND Licensing, SEP Litigation, Anti-Suit Injunction, Anti-Anti-Suit Injunction, SEP Enforcement Strategy, FRAND Rate Setting, SEP Policy, Global Litigation Strategy, Forum Selection, Parallel Proceedings, Multi-Jurisdictional Strategy, Plaintiff Forum Advantage, Defendant Preparation Timeline, Patent Enforcement Strategy, Cross-Border IP Strategy, Patent Portfolio Enforcement, Competitor Domicile Analysis, Long-Arm Strategy, Tess Waldron, Julia Schönbohm, Chris De Mauny, Eric Whitaker, Chris Young, Judge Grabinski, Judge Calden, Powell Gilbert, Linklaters, Bird & Bird, 10x Genomics, Fortress, AMD, BMW, Dyson, Regeneron, Bayer, CJEU, EPO, UPC Court of Appeal
[HOST]
So, with that we’re on to the UPC portion of today’s talks which I know is a, for some of my clients, a growing concern, and for others of my clients, a potential boon. And leading the discussion today is Tess Waldron of Powell Gilbert, one of the preeminent UK and European IP firms.
So, we’re in capable hands. Tess?
[TESS WALDRON]
Thanks very much. I don’t know if everyone can hear me. I quite often get told I speak too quietly, so if I overcompensate, tell me to turn the volume down. I’m gonna let my panelists introduce themselves.
I think we’ve got a great lineup here to have a sort of quick skip through what’s going on at the UPC, what you should be excited about, and what you should potentially be worried about, and how you should be thinking about it in terms of global litigation strategy. So Julia?
[JULIA SCHÖNBOHM]
Thank you. My name is Julia Schönbohm. I’m a partner at Linklaters heading the global TMT IP practice, a passionate patent litigator, and now a UPC representative testing this new forum and looking forward to sharing insights. Thanks.
[CHRIS DE MAUNY]
I’m Chris De Mauny. I’m a partner at Bird & Bird. We’re an international law firm with a very substantial European patent litigation practice. I’m now based in San Francisco to offer kind of on-the-ground support for West Coast clients with their European IP needs.
[ERIC WHITAKER]
I’m Eric Whitaker, the chief legal officer at 10x Genomics. You may wonder how I got on this panel without an accent. The answer is that 10x filed three of the first 10 cases at the UPC who are involved in 58 written decisions, which I think is the highest number of decisions by one party in front of the UPC. We have used the forum quite a bit.
We have opinions on the forum. I will say that I’m not usually in a room with Bird & Bird without a judge. So I’m hoping that Tess, you’ll play that role.
[TESS WALDRON]
I should’ve sat between you really, shouldn’t I? So I think we’re not gonna spend any time like talking about what the UPC looks like. I’m sure everyone in the room is some sort of familiar with what it is. But we thought it might be useful just to give a very quick recap of where we are after nearly a couple of years in terms of case volume, where the favorite divisions are and things like that.
So Julia’s gonna do that whistle stop tour.
[JULIA SCHÖNBOHM]
Thank you, Tess. So, actually Eric is not alone. There have been other plaintiffs that were testing this forum and brought their cases in front of the relevant local divisions. When you look at the data it basically, the UPC had some IT issues, so they changed their court management system.
So, the data r– refers back to June of, of, of ’25. And back at that time, the UPC had handled over 940 cases across the first instance divisions.
I think by now it must be over 1,000 easily. Mostly infringement actions and revocation counterclaims, cases coming really from all types of industries.
And yeah tech, big pharma, you name it, whatever you want to see, and SEP litigation is also increasing. Um, Munich has been the frontrunner when it comes to the caseload. So, it is leading with over 120 cases, followed by Dusseldorf, Mannheim, and Hamburg that together have handled about 150 cases.
And Paris also has been a local division that people reached out to. And the central divisions altogether, they have seen probably about 70 cases.
English, 55% f– 55% followed by German, 39%, and then French with 3%. Um, I think those numbers are not too surprising because Germany has been Europe’s patent litigation hub.
And now plaintiffs have been bringing the cases in front of the judges that they used to know sort of to have some predictability in the first instance. On the appeal level, sort of that will be an interesting one. So, we have been having two divisions. Um, one under the lead of the German judge, Judge Grabinski, who was at the Federal Court of Justice before, and the other one under the lead of Rian Calden.
As of January, there will be a third one under French lead. So, let’s see how that plays out.
[TESS WALDRON]
Um, so Chris, I know as a sort of non-German practitioner it, you know, wonder whether you’ve got any views on the dominance of the German local divisions in the UPC so far. Is it a problem? And is the UPC doing anything to try and spread the work a bit more evenly?
[CHRIS DE MAUNY]
Yeah. I mean, I think whether you see it as a problem or not obviously depends on your perspective. But what you, what you are seeing is that a very– there’s a very heavy German influence, particularly on first instance decisions. I think it’s over 75% of cases are filed in a German division in one sort or another.
And so, that does raise questions about the supposed multinational nature of the court. That said, since the court got up and running, there has been a degree of preference shown by some plaintiffs for other forums. And that has led to some interesting decisions from places in, as far afield as Lisbon, the Nordics the from The Hague, and then Italy, et cetera. And when we get up to the appellate level, there are a majority of non-German judges in the appellate bench.
So I think there’s a kind of issue there of presentation as to, is this truly an international court? What the UPC is doing about that. The the German division seem very keen to expand and offer more and more judges.
I think you indicated yesterday you thought there was something happening as to judge rapporteurs, which I hadn’t heard.
[TESS WALDRON]
Yeah. Um, Judge Grabinski in Madrid the other week was telling me that one thing they’ve been doing, it’s because the way the UPC panels are composed, there’s, like, two local judges and then they have a third judge who comes in to complete the panel, said that what they’ve been doing is encouraging that third judge to be the judge rapporteur. So for instance, if you file in Munich, you might get a Dutch judge as the judge rapporteur, who is then leading the proceedings. And I think the hope is that as people then become very accustomed to seeing those judges, they might become more inclined to try out the other local divisions.
Which, like, you know, I strongly recommend as a firm. I think we’ve been in almost all of them. And if nothing else, it gives you a chance to sample the baked goods of various jurisdictions with Lisbon obviously coming out on top in all of them.
But in all seriousness, there are definitely pros and cons to some places. So, we are seeing quite a lot of long-arm cases, which we’ll come onto, filed in The Hague, because the Dutch judges are traditionally quite expansionist. Um, if you think you’ve got a case that expert evidence would be helpful for, you might wanna go to the Nordic-Baltic Regional Division because they have, to date, they’ve only had a couple of cases, but in both of them, they have actually heard expert testimony.
So there’s definitely some strategic considerations about where you might be best off. And particularly now, the German divisions are so busy that they are slowing down a bit. But if, you know, want a quick decision, you might go to a quieter docket.
You know, again, we’ve been up and running a couple of years. Julia, in your experience, what are, you know, we all thought before the court opened that there were some clear advantages to it. Have those advantages been borne out? Like, what do you think is, why do you think it’s a good place to litigate?
[JULIA SCHÖNBOHM]
Well, so there are clearly some advantages. Well, it’s a very speedy procedure still. I mean, it promised 12 months for the first instance. Sometimes it’s up to 15 months, but usually it’s still pretty quick.
It’s heavily front-loaded. The good thing when you’re the plaintiff is that you basically decide when you bring your action and you bring your action when you’re ready, when you have aligned your experts, when you have looked at validity, if you anticipate sort of the arguments to be made in the nullity counterclaim. When you’re a defendant that can bring you in a pretty difficult position because if you don’t anticipate, you know, to be sued in the UPC, you have to do all that work in the three months that you have.
And that can be quite challenging, or at least it puts you under a lot of time pressure. So speedy proceedings, you can get evidence. I come to that. So actually, it’s not that there is no discovery in Europe.
So I’ve been hearing that on one panel yesterday. The French saisie-contrefaçon was sort of adopted also in the UPC, so you can seize evidence, you can inspect. So that is definitely an advantage and as a defendant, you need to be prepared that your premises are being searched on the basis of a UPC seizure.
Then yeah, the judges, at least the legal judges, you know them, and it is quite predictable. However, there is one crucial point which is predictability as to validity. So you don’t really know who the technical judge will be. The pool of technical judges has reduced quite significantly since the start of the UPC, just because initially many patent attorneys in private practice, they wanted to be a part-time technical judge.
And then that created so many conflict issues that you don’t really have, like for specified cases, you don’t have subject matter experts, and then, of course, know when you basically put patent validity in this forum and you risk having a technical judge who is not familiar with the technology that requires you as a plaintiff really to do your briefing as if you were briefing a jury here, right? Sort of very detailed, lots of expert support for that And then I think the time allowance for the technical judges is not that significant either. I think they get, like, 37 hours for a case, like for everything. So, know that this is definitely something where I think the process can be improved, just because it is so crucial and also, unlike in the EPO opposition proceedings or in a German nullity action, usually you get, like, a hint of what the court is thinking about your patent validity.
You get, like, not a preliminary opinion or something. In the UPC, you don’t get anything. So basically, you come to the hearing and then you get confronted with something, what was not really communicated before. So I think this is something what the divisions should adopt to allow the parties sort of to really prepare for the issues.
It’s a bit of a black box.
[TESS WALDRON]
Yeah, there’s quite a bit of variability, I think. Some panels at the interim conference basically tell the parties, “Well, these are the points that we’re particularly interested in,” but other panels you just turn up, and it’s like, “Oh, okay, let’s do added matter, and we’re not really interested in anything else.”
Which I agree makes preparation much harder. But what’s your view, Chris?
What, the good, the bad, and the ugly?
[CHRIS DE MAUNY]
Yeah, just a couple of points And then I’ll let Eric go. I mean, just to add to what Julia was saying, I think there are those sort of structural advantages to being a plaintiff in terms of choice, speed, putting the defendant under pressure, et cetera.
The actual outcomes from what we’ve seen so far are relatively balanced, so we’re not seeing super high win rates for infringement claims. You’re hovering around the 50% mark of valid and infringed, so that’s, sort worth bearing in mind.
The plaintiff has that structural advantage, but kind of ultimately, we’re seeing a balance in the results. The other thing I wanted to mention was on discovery, yes, there are various procedures and that might well feed into where you choose to go, but there isn’t a kind of large-scale standard routine phase of discovery like you would be used to in the U.S. or even in its reduced form, potentially, in the UK.
And the final thing I wanted to mention, actually going back to the first point, was just the provisional measures are particularly scary on the timescales and the amount that you have to prepare. And I’m gonna talk about that in– more in a moment, but timescale-wise, you’re really looking at maybe only four or five weeks to get things together. And that puts an incredible amount of pressure on respondents.
[TESS WALDRON]
So Eric, I mean, from the industry perspective, do you think the availability of the UPC as a forum has impacted significantly on litigation dynamics, on like settlement pressure, things like that?
[ERIC WHITAKER]
Mm. Yeah, so Tess, first of all acknowledge we’re a little bit of an anachronism in that we are an operating company that still uses patents and still enforces patents, and there aren’t that many of us left. If you look at the statistics particularly in the U.S. it’s, we’re in the bottom third of cases brought.
But let’s talk about the pros and cons. Uh, this– the speed attribute is huge and it’s talked about and it should be talked about because Delaware doesn’t work.
And this three to four years to get to a decision to lower court and then another two years to get a decision by the Federal Circuit before you have finality is just, it does not work for U.S. companies. It does not work for the speed of the economy.
And the UPC’s exploited that well, but I think there are some other points to make. On preliminary relief, the numbers in the U.S., the last numbers I see are roughly 10% of PIs are granted, right? And that is a number that is biased by the fact that not many PIs are brought because everyone knows only 10% of PIs are granted. In the UPC, we’re at 60% of PIs being granted.
That is an incredible remedy. It is an incredible remedy. It puts a lot of pressure when we’re on the plaintiff’s side on the other party. But some other features that go underappreciated, to those who don’t practice in Europe o– often, there is an ability to amend claims on the fly.
I mean, what could make me happier? Right?
(laughter)
Like, it’s like you know, someone just gave you a completely new tool that creates another set of rules in the game, which is super fun. But I will point out on the balance side that Chris was hitting the validity part can either be looked at as creating balance, or it can be looked at as potentially a negative attribute in the system because you have many choices of validity attacks if you’re a defendant. You’ve got a counterclaim for revocation, you’ve got a central revocation action, you have EP oppositions, and if the facts support it, you may even have national counterpart nullity actions.
So, the defendant controls that timing to some extent, and that does create some balance in the system on the validity side, and you should have some confidence that your palle– patents will survive the rather more formalistic test of a European validity challenge than it would in the U.S. This is not a hand-waving district court exercise where, okay, in 20% of the cases, the patent’s getting validated.
The courts will look hard at validity. The last point I want to make, though, is on this, the point you made, Chris, about a lot of the actions coming out of Germany. That is true, and it raises, to me, both a substantive and political question with respect to the Court of Appeals because the Court of Appeals is being very active, and maybe active in a way that would surprise us for the normal rules around a– a review court.
And there are suspicions that some of that is political and some of it is substantive. And it’s going to take some time to unpack how much that is political and kind of telling the German judges, “Hey, rein it in a bit,” and how much that is truly substantive if we’re trying to create a harmonized law across the entire European Union, and by the way, with the EPO as well.
So that time will tell.
[TESS WALDRON]
Yeah, I mean, I, we’ve seen very clearly that the Court of Appeal is aligning very deliberately on substantive law. So just last week, I think it was, we had simultaneous li– from the two different panels, two different substantive decisions on the merits on Inventive Step, the two fr– so obviously there’s yours on a sort of PI context, but these were the first two merits, and they are very aligned. So they clearly, I think, you know, are very concerned that there should be consistency of substantive law and consistency of procedural law.
But another thing that’s perhaps slightly unusual if you don’t come from a civil law jurisdiction is that on appeal, it’s not like, you’re not limited to review of legal points. Like, you know, you can just run everything out again, which I think also gives them quite a lot of opportunity to wade in where they think they should be. But turning then to PIs in more detail. Chris, do you want to, ’cause I think we’ve had, as you say, a lot now and some of them, well, say approximately over 50% have been successful.
Do you think we now have a settled approach to preliminary injunctions in the UPC and what is it?
[CHRIS DE MAUNY]
I think, certainly think it’s a lot more settled than it was and it’s settling out. There is a number of factors that the court is gonna look at. It’s gonna look at the merits, both of infringement and validity. Is it more likely than not that the patent is gonna survive and be infringed?
It’s gonna look at the urgency factors and whether the applicant has delayed and it’s potentially gonna look at the balance of the party’s interests, commercial factors, et cetera. I think in the early case law, there was a lot more emphasis on that first substantive merits point and a kind of almost formalistic approach to urgency. Had you moved within a month, had you moved within two months? So whatever the local division thought was an appropriate timeframe.
I think we’ve seen the case law evolve to pay some more attention to the reasons why you need a provisional measure. Why can’t you wait for the hearing on the merits?
And to factor into that, more regard for the commercial factors. There was a Court of Appeal decision in February that made it clear that that should be so. So I think the case law is now settling around both looking at the substantive merits, but also being clear that regard has to be taken to the other factors as well.
[TESS WALDRON]
And Julia, what other provisional measures are there at the UPC? I’m not just asking this to make you say saisie contrefaçon, again, for everyone, but please do.
[JULIA SCHÖNBOHM]
Actually, this is, I think, the really additional crucial interim measure that you can get access to evidence, seize evidence, even get technical inspections in addition to the preliminary injunctions. You can also seize certain assets when there is danger, like a broad range, but I think the seizure and the interim injunctions are the most important ones.
And also on the interim and injunction element for a German litigator, that looks pretty familiar because, I mean, all the systems were mixed together in the rules and this concept of a writ of protection that is pretty sort of standard in German litigation that basically to avoid an ex parte injunction, you preemptively sent your story to the court to avoid the injunction issues ex parte that has been adopted and it’s also part of– Of the considerations in the overall litigation context.
[TESS WALDRON]
Yeah, it’s interesting actually, isn’t it, on PIs? Because although they are definitely available in the UPC and the UPC’s gone to quite a lot, if you think, step back and take a look at it, not only do you have to have a patent which they think is more likely than not valid and infringed, but you also have got to you know, convince the court that you need one. So then these factors that you’re kind of were more used to as common lawyers come into it, like proportionality and you know, all of that sort of stuff. So it’s actually in some ways a more onerous test than is applied perhaps in the UK and in some of the continental jurisdictions.
[CHRIS DE MAUNY]
I think just briefly to say that really does add to this pressure point that we were talking about, because you’ve got to deal with all of those things that as common law lawyers we’re more familiar with, but you’ve also got to address the merits in detail. Because the standard of proof is effectively the same as it will be at the merits hearing down the line.
So you’ve got to have a proper defense to your infringement and good validity argument if you want to fend it off, unless you’ve got a very good case on the other points.
[JULIA SCHÖNBOHM]
Right, and it’s actually better not to submit a writ of protection if you don’t have a good story because this will actually play in the hands of the applicant.
[TESS WALDRON]
Yeah. So we were all just getting to grips with our new our new patent system, and then in February of this year, as you’ve all heard the Court of Justice of the European Union decided just to lob a grenade into our carefully ordered lives and handed down this decision of BSH and Electrolux. And Chris has the unenviable task of explaining what I would describe as boring but important European jurisdictional law to you all, but I’m sure he’ll do a great job.
[CHRIS DE MAUNY]
Well, I’ll do my best, and the first important point is that this is not a UPC-specific case. It applies to the UPC very, very likely but it applies to EU courts.
So it comes from the Court of Justice and it applies in the EU national courts as well. I think it’s best understood by considering the position before this case. If you brought a claim in an EU court based on a foreign patent and the validity of that patent was put in dispute, the claim for infringement would be stayed.
What the Court of Justice has effectively done is say that claims based, infringement claims based on foreign patents do not need to be stayed. They can proceed.
That’s not to say they will necessarily proceed. It is possible they will be stayed, but claims for foreign patents can proceed in the EU courts. It also explicitly recognized that that is not limited to patents for other EU countries. So on the one hand, if it’s a patent for an EU country, there is exclusive jurisdiction for the validity case to that country’s court.
If it’s a patent for a non-EU country, that doesn’t apply, and the court has effectively left more open what will happen there. But explicitly, both other EU countries’ patents and foreign patents from outside the EU can be asserted in an EU court and the court can accept that jurisdiction and proceed with the infringement claim.
[TESS WALDRON]
Yeah, so I always think about it as you’ve got like three concentric circles. So in the middle you’ve got the UPC states, and in terms of if revocation and invalidity there, that’s easy because the UPC can revoke them.
Outside that, you’ve got EU non-UPC states, and the UPC can’t revoke those patents because it doesn’t have jurisdiction to. And there’s a question after this decision about what it does with them, whether it can just assume they’re valid or invalid or if in fact it shouldn’t be making those sorts of determinations at all.
And then outside that, you’ve got all other patents, including EPC patents in places like Turkey and the UK, but also including like US and Chinese patents, and in respect to those patents, if you raise an invalidity defense, this judgment says the court can decide whether they’re valid or not as between the parties to the litigation. So no change to the register in those countries, so they’re not usurping anyone’s jurisdiction, but they are deciding the issue as between the claimant and the defendant in their court, which is quite a big change. So Julia, how has the UPC been dealing with this?
[JULIA SCHÖNBOHM]
Well, so let me put it that way there. We can see a development of the arm getting longer and longer and grabbing more and more jurisdictions. So the first two cases were related to the UK, so the first even issued before the BSH decision. So there, yeah, infringement of a UK patent was at issue.
The first decision, the court ruled it was Mannheim.
[JULIA SCHIERMEIER]
Well, actually I can decide about that but it concluded that that patent wasn’t infringed. There was a second Fujifilm decision when the infringement was confirmed and an injunction issued. The German local division issued an injunction covering the UK and ruling on validity with effect inter partes. The rationale for this decision was that the defendant was based in Germany and that this was okay sort of to rule in that context.
So, that was the starting point, then the arm became even longer. So Paris sort of took that to Spain, and you had some other local divisions sort of deciding about having jurisdictions in other non-UPC member states.
Interesting was a decision of the court in Hamburg actually where the court concluded that only one of the defendants needs to be based in Germany. And the other sort of parties who were involved in the distribution of the product could be brought before the same court because it is just more efficient to basically litigate all of that together in the same place over the same product. And there it was a case against Dyson.
And for some products that are subject to regulatory approval in the European Union, there is usually a requirement that you have an authorized reseller and the Hamburg court said, “Well, “your authorized reseller here is your anchor defendant, “so you can basically sue that authorized reseller here “in the local division and you can bring in the other parties as well.” So then that arm got even longer.
So there were two cases, one from the local division in Paris and another one from the local division in Mannheim where basically it was said, well, that whole BSH concept is not limited to defendants who are domiciled there, but it equally applies to the place of where the infringement occurs. And infringement can occur where you do the action or where basically the damage, the harm is done and you can choose.
So I think this is where we are. And another one which is, no, that’s a local one.
Sorry.
[JULIA SCHÖNBOHM]
That’s not a UPC one.
[TESS WALDRON]
Yeah, I mean, it’s worth noting in those cases, like in the Mannheim case, I think that the jurisdiction was based on goods being shipped through a UPC country–
[JULIA SCHÖNBOHM]
Yeah.
[TESS WALDRON]
For sale in non-UPC countries. But nevertheless, because infringement was occurring because of the shipping through the country, they have jurisdiction for the non-UPC countries. I mean, it’s fair to say that this has not yet been considered at all by the UPC Court of Appeal, and also that the noises coming out of the Court of Appeal judges that they’re going to be a bit less expansive than we’ve seen at first instance.
But at the moment, it’s a very unsettled picture. And yeah, I’d be interested, Eric, in your thoughts about it as somebody trying to grapple with it from a business perspective.
Is it problem? Is it an opportunity?
[ERIC WHITAKER]
Yeah, so first off, BSH has been mentioned like three times this conference. If you haven’t looked at it or doing emails, put the emails away, go look up BSH. It is a huge change.
I mean this is, I don’t wanna get lost in the details here on what a huge change this is. European National Courts can litigate U.S. patents, period. That’s the rule, okay? Now, we’ll find the contours of that rule but if that’s the change, and it seems to be the change, it is a complete game changer for strategists, right?
And when I’m thinking about IP strategy from the plaintiff’s side or the defendant’s side, this is maybe as good, maybe even better than my ability to amend in the middle of litigation. I mean, I can’t decide what I’d rather have for Christmas. But I’ll take this one. I’ll take BSH because it is an astounding, mind-blowing, complete difference when it came out.
It came out in February, and we were all thinking, ‘Who’s gonna be the first to use it?’ I wanted to be, but I’m not, and it looks like Fortress is with a case called Nesta versus BMW, which was filed in October. And in a Nesta, it looks like Fortress acquired some AMD patents and asserted not just a German national patent in the German National Court, but they asserted two family members that are U.S. patents with the German patent in the National Court and said, ‘German Court enjoin BMW from exporting an infotainment system made in Munich to any automotives made in the U.S.’ Seems a relatively reasonable request, but it’s a US patent, right? And this is an injunction, a scope of injunction being requested that I don’t think we’ve ever seen before. It’s going to put a lot of pressure on BMW to respond.
And interestingly, about this, the U.S., excuse me, the German court is charged with applying U.S. law. Okay? Now let’s think about the politics and administrative behavior going on right now in Germany. Certainly, they could decline jurisdiction, but if you’re a judge in Germany and all your colleagues just got appointed to the UPC, and you don’t have any cases, I find it highly unlikely you’re going to decline jurisdiction.
I mean, it’s possible certainly, but I’m not gonna put money on that. As Matt would say, I’d short that trade. So you’re sitting there with a U.S. patent that you have this wonderful request for this kind of worldwide injunction effectively, and you’re thinking, ‘Well, what do I do?
And now I’ve gotta apply U.S. law.’ Does that include eBay, right?
(audience laughing)
I don’t know. Does it include eBay I mean, we’ve got our own remedy system here at the German National Courts.
Are we gonna, as a matter of comedy, defer to the U.S. injunction standards? Or are we gonna apply the German injunction standards? I mean, this is, like, fascinating stuff for practitioners And I think this test case is going to be incredibly illuminating.
It is just a sandbox right now that we can all play in with respect to how to set up these cases on a multinational basis because the outcomes are pretty unknown. But I will say again, if I don’t have much work, I would expect that the lower court has certain incentives that may be very interesting to watch.
[TESS WALDRON]
Yeah. I mean, it’s worth noting that there’s a, I mean, Julia, probably, maybe you wanna pick it. There’s a difference between the UPC’s long arm, like how long the UPC’s arm can go, and how long, you know, like, the German, the Dutch National Court’s arms can go. And we can come on to talk about this, but clearly, at the moment, there is competition between European courts for business.
[ERIC WHITAKER]
And just let me throw one more thing on that because this really blows my mind. Delaware, for example, and the Federal Circuit have very clear law on many aspects of long-arm jurisdiction.
One of which, let’s just take an example, is method patents. If you have one step of a method performed outside the U.S., you don’t have infringement in the U.S., right?
I mean, just think about this from a jurisprudential point of view. What is the U.S. saying there? That is, in this interconnected economy and electronic economy, one of the strangest outcomes I can ever imagine, right?
If you essentially send it to a data center for analysis outside the U.S., which, by the way, you can configure Amazon to do if you’re using their web cloud services, all of a sudden, you don’t have infringement in the US anymore. So we, in the U.S., are pulling back in many ways, politically, but also in our jurisprudence to say we are going to decline jurisdiction effectively in those situations by saying we’re not gonna find infringement in those situations. It’s just one example of many ways the US is declining to step into these situations, which has created a vacuum, and I think we’re gonna see the vacuum filled either by the UPC or the national courts or something else because you also have these outlying UPC judges that nobody’s giving any business to.
And I’m curious to my colleagues in Europe, who’s gonna bring the first case in Lithuania?
[TESS WALDRON]
Do you wanna just pick up this point about the, why there’s a difference?
[JULIA SCHÖNBOHM]
Yes. So, so sort of the case that you’ve been mentioning, the Onesta case in, in front of the Munich Court is in the local court, so it’s not a UPC case. And actually, sort of many local courts they do apply BSH which can– you can see you may not need the UPC if basically the national courts start granting cross-border injunctions. You may not have to go to the UPC and not deal with all these uncertainties.
So I think it’s quite a– like, strategically what will happen with the UPC, it is a very interesting development, right? Which can also challenge the existence of the UPC. On the Onesta case, so if so I was looking a little bit on that, of course, just what, what was in the press. So according to my understanding, they are not seeking an injunction covering the So basically, it’s sort of an export ban on the basis of an infringement of a US patent that occurs once the goods exit Germany.
So since you are not basically ruling on a, or issuing an injunction that covers US territory, I think eBay factors, et cetera, that’s a little bit less problematic. But you do have in a couple of jurisdictions like your import ban that you get at the ITC you can get an export ban. In China, for example, have that and I think what is being sought here is similar to that, that sort of the– the– the basis is a US patent rather than a German patent and somehow there must be a gap because otherwise you wouldn’t have to enjoin these activities on the basis of a US patent if you had a German, no, a patent with protection in– in Germany.
But I think these cross-border injunctions in the local courts, they– it looks like they are coming back. I think the Dutch in the early 2000s were the first ones with the spider in the web doctrine, so I remember that from my baby lawyer days. So that’s yeah. The local division in, not local division, the National issued a cross-border PI in the against Formicon now on behalf of Regeneron and Bayer which was also spanning more– Then 20, more than 20 countries, so definitely an interesting space to watch and on the basis of the BSH decision, now opening up these possibilities for national courts as well.
[TESS WALDRON]
Yeah. I mean, it’s just worth noting under the UPC agreement, the jurisdiction of the UPC should be limited to European patents, so that’s patents granted through the EPO. So theoretically their jurisdictions should not extend to, like, you know, US patents But, I mean, I’ve yet to see a case when the UPC, when offered to take jurisdiction or decline it, has declined it. So I wouldn’t bet against them finding some way to decide that, in fact, they do have the equivalent jurisdiction but we’ll see. So Chris, I mean, what else do you have in Europe?
So, obviously, we’ve got the, you’ve got the UPC, we’ve got the national courts which are kind of maybe reinvigorated now with this new jurisdiction. What about the EPO? Is that still useful?
[CHRIS DE MAUNY]
I think it is. Let me just also just comment on, on, on that discussion, if I may, which is that an, an important detail of BSH which I didn’t mention because, as Julia went on to explain, it’s kind of been left behind in some of the cases we’ve seen, is that it’s founded on the defendant being domiciled in that court’s jurisdiction. So the UPC seems to be expanding away from that and saying, “Oh, well. You can access a website.
That’s also good enough.” That’s a different legal basis for jurisdiction. Whether the UPC judges, Court of Appeal judges rein that in, we will see, whether the national courts deal with this in a different way, and ultimately this goes up to the European Court of Justice again, will need to see.
But if you kind of go back to BSH itself, which is still only 10 months ago there may be important reasons to use the UPC if you need to kind of go with a more expansive approach, or a national court if you’ve got a patent there. Maybe it’s a national patent, or indeed because you want to be very clear that you are founding it on domicile and really in the roots of the original BSH. So, that’s one comment.
Then–
[ERIC WHITAKER]
But just pause there for a second. It’s a huge comment, and I don’t know if people really look at where their competitors are domiciled in Europe.
But I’ll tell you, there are some weird places, you know? And all of a sudden you look at your competitor, they’re like domiciled in Berlin and you’re thinking, “Yeah, I love the Munich National Court, but I’m not sure I love the Berlin National Court choice,” by the way, don’t really like patent cases. So it does, I mean, there are some boundary conditions here that make it hard to find the perfect case for it, where you’ve got related patents and you’ve got the right jurisdiction, which really why they don’t Onesta case is such a wonderful test case I mean, Julia, to your point, sure, they’re only asking for a ban on exports. Okay, yeah.
But if I were looking to extend the law, that would be the perfect case. As a starting point to extend the law because. I’m with you.
Have it in Munich, there’s no dispute that this is manufactured in Munich, BMW’s headquartered in Munich, and you say, “Look, all I want under, you know, is just a ban on export under these U.S. patents.” I’ll tell you what the next case is gonna be.
It’s not gonna be a ban on export.
[JULIA SCHÖNBOHM]
I just love it. It’s a sort of power play. It’s like I’m marching into Germany and I’m taking down your, like, flagship motor industry target. So, I mean, it’s just fascinating, like, how it’s gonna play out. But yeah, getting back to the EPO.
[CHRIS YOUNG]
Yeah, wanted me to comment on the EPO. So the EPO, I think still has significant relevance, but the relevance has changed, and one of the reasons it’s changed is because the UPC is so fast. So if, for example, you have a patent granted and you file immediately, which is definitely something that people do and that patent’s opposition period is going to last another nine months, you’ll pretty much be at the first instance hearing before the opposition period even closes and the OD picks it up and even looks at it.
So if you’re dealing with fresh patents, as it were, then the utility of opposition, I think, has reduced quite significantly. On the other hand, if you are monitoring your competitor’s patents in Europe, you see something granting, you’re not yet in the market but you know you may have an issue with that patent, well, it’s still a very cheap and potentially effective way of knocking patents out that you have an eye on for the future. And it might be useful, even if you can’t get all the way through, to get, let’s say, an interim decision or first instance decision that gives you ammunition to put before the court to show that the patent may be invalid. So I think it still has a role, but the role’s changed and it’s mostly about timing.
[TESS WALDRON]
Yeah. Just for background as well, in Europe, you can challenge, you can put an opposition in, but as Chris was saying, it’s only nine months after grant. So if you miss that window, then you’ve missed your chance to challenge in the EPO. But they are also speeding up in response to the UPC, so I’ve got one case at the moment where we’re having a TBA, a Technical Boards of Appeal, so the second instance at the EPO hearing, like less than eight months after the Opposition Division heard it because the judges wrote to the EPO to say, ‘Can we speed this along?’ And that’s would have been unheard of before, it would take years.
[ERIC WHITAKER]
Tess, I gotta throw one more thing in here. Okay. So you get sued in national court in Germany, you’re BMW, for the infringement of U.S. patents, and you think to yourself, ‘All right, I’ll challenge validity.’ No, the decision, BSH is very clear that you cannot, the national courts of Europe cannot invalidate a patent issued by another country. So they cannot invalidate a U.S. patent.
Okay? That seems non-controversial. But what do they do with validity? I mean, they’re gonna have to make some ruling on validity to grant relief, for example, under the national law, so as a defendant you might think to yourself, ‘Well, I will run and file an IPR to raise into question validity.’ Oh, whoops.
[TESS WALDRON]
Yeah.
[ERIC WHITAKER]
That’s not the best weapon anymore. So, with that out of the quiver, and this is to me, one of the biggest impacts of the change in IPRs, because, what you should have done and would have done is quickly run and got an IPR instituted, then gone to the national court in Germany in this case and say, ‘Stay the action.’ Right?
There’s a reasonable non-negligible chance that this patent will go down, here are the statistics on it. That’s the standard, reasonable non-negligible chance. Well, all of a sudden you’re not gonna get an IPR instituted, you’re gonna get it summarily denied in all likelihood.
So what’s your second-best option, a DJ in Delaware on validity? Hmm, I don’t know about that timing.
All of a sudden the German injunction gap looked like really, really fast by comparison, right? Because the Delaware injunction gap is going to be three years–
[TESS WALDRON]
Yeah, I mean–
[ERIC WHITAKER]
Before It’s ruled upon? The timing is a nightmare.
I’m pretty confident that in, you know, ’cause obviously the UK is, we’re in a similar position to you guys, but we have a judiciary who are very aware of the problem and have been saying, you know, ‘If this happens and you come to our court, we’ll go nice and fast for you.’ But I mean, it raises all sorts of questions, like what happens if the UPC makes an inter partes decision on, that the patent’s valid And then you go ahead and revoke it in the UK? There’s nothing to stop, why you can’t be stopped from filing a revocation action or somebody else might file a revocation action. You’re still gonna be enjoined in the UK if the patent’s, like, goes down because someone else invalidates it?
[TESS WALDRON]
There’s, you know, there’s all sorts of unanswered questions, which presumably will come clear in the fullness of time. But we’ve only got a few minutes left, so I guess just some sort of closing remarks.
Eric, I think I probably know your answer to this, but is the UPC evolving into a sort of preferred global dispute resolution forum?
[ERIC WHITAKER]
Yeah, look, the speed attribute alone makes it so, and I think what’s going to be interesting to see is how other countries respond to all of this happening because I don’t see some other major patent-interested countries just sitting by and saying, “Wow, this is interesting. We’ll just watch.” There will be a response.
And then I think there’s also just a question of what the changes are in the national courts in Europe and the changes are in the outlying UPC courts that have not had many cases because you really have, for the first time in my practicing years, a real competition intra court, and that’s going to lead to strategy opportunities for companies. But yes, getting back to your original question, having the speed of the UPC is absolutely essential, given how the U.S. courts have just Delaware, mainly, right? I mean, post, post TC Heartland, Delaware is, is just not working at a speed that works for us.
[TESS WALDRON]
Yeah. And Chris, I mean, how do you think how soon do you think we’re gonna have predictability in terms of decision-making at the UPC? I mean, I think we’ve, we’re getting there, but how long is it before you think you’ll be able to confidently tell a client what to expect?
[CHRIS DE MAUNY]
I think on substantive issues, we’re getting there. I mean, we’ve just had a couple of Court of Appeal decisions which have clarified a number of things, but it’s all kind of at the f– at the first level as it were. So we have now a test that we can look at for insufficiency, but it’s expressed in pretty broad terms. How is that actually going to work with this type of claim or this type of claim?
So that’s also something that we’ve seen in the procedural sphere, looking at, let’s say, PIs. The first PI Court of Appeal decision was, I think, February 2024, if I have the year right, and then you’ve had a number of other Court of Appeal decisions following that. So, you get kind of a first tier after maybe a year or two of the system, and then we’re gonna have to wait another year or two until we get the second tier. And then I think it’s gonna be looking a lot more predictable than it is now, but it is already substantially more predictable than it was when it got up and running.
[TESS WALDRON]
Yeah. And Julia, obviously apart from the jurisdiction stuff that we’ve been discussing, what else should we be looking out for over the next year or 18 months?
[JULIA SCHÖNBOHM]
Well, I think the case law will settle better and hopefully there will be more alignment and more predictability. But I think sort of the national courts, they will use the opportunities that they have following BSH and they will also grant cross border injunctions.
And as a plaintiff, depending on your validity and whether you want to put all your eggs in one basket. Now it allows you to have a nice mix of enforcement measures and we will see more sophisticated litigation strategies and not with the expansion of the extraterritorial scope, probably more anti-suit injunctions and all these things, no, that you have in your toolkit in the SEP field.
[TESS WALDRON]
Yeah, I was gonna say, we’re all FRAND lawyers now. So that, I think, perfect timing. Takes us to lunch. Thanks everyone for listening.
If you’ve got any questions, I think any of us or all of us would be happy to talk through them over lunch. So I just wanna say thanks to my panelists.
That was a great discussion. And yeah, great to be here.
Thank you.
(audience clapping)