Initial judgments indicate tendency of UPC to restrict patents

Since June 2024, the various divisions of the UPC have been issuing more and more decisions on the merits in infringement claims. The UPC has restricted or nullified a surprising number of patents. JUVE Patent makes an initial assessment of the UPC's position.

As the UPC is well into its second year, one of the most interesting questions is how plaintiff-friendly the court will turn out to be. Although it is not possible to compile statistics from the few published judgments, initial rulings show that the divisions are analysing patents critically.

So far, the majority of patents have been restricted or nullified, and only a few plaintiffs have been successful.

Tough luck for plaintiffs

In the dispute with Broadcom/Avago, various UPC divisions ruled in favour of the defendant Tesla at the end of August. The UPC upheld one patent only to the extent that it was not infringed by Tesla. In the second ruling, the court declared the patent invalid.

Similarly, at the end of July, the Munich local division had declared Dexcom’s patent for glucose-monitoring technology invalid and rejected the infringement claim against Abbott. Previously, the Paris local division had declared another Dexcom patent invalid in the extensive dispute.

However, judges did not hand down a decision in the infringement action brought by KraussMaffei Extrusion against Troester. The plaintiff withdrew the action after the oral hearing, with the defendant’s agreement. In the meantime, the EPO had only upheld the patent to a limited extent in the appeal proceedings.

In the dispute between bathroom fitter Franz Kaldewei and Bette, the UPC also upheld Kaldewei’s EP 3 375 337 to a limited extent. Nevertheless, the ruling was plaintiff-friendly as the court recognised an infringement by Bette and granted an injunction — the UPC’s first ever.

No trend in revocations

An evaluation of the most recent revocation judgments shows a balanced picture. In the first ever revocation judgment, the Munich central division declared Amgen’s EP 3 666 797 invalid in mid-July. This was an important patent for Amgen’s cholesterol-lowering drug Repatha. For Sanofi and Regeneron the decision was a significant victory, and is also relevant for the parallel infringement action against Sanofi’s drug Praluent.

The pharmaceutical sector, which has so far been more reluctant than other industries to use the UPC, will certainly analyse the ruling in detail.

The central division came to the conclusion that the patent as granted was invalid because it did not involve an inventive step over Lagace. The court based its decision on the fact that the skilled person interested in developing a treatment for hypercholesterolemia targeting PCSK9 would arrive at the claimed subject matter in an obvious way. The judges said the skilled person would, starting from and following the teaching of Lagace, without inventive skill, develop antibodies against PCSK9 that block the interaction of PCSK9 with the LDLR.

Time will tell

In the first decision in a revocation action concerning medical devices, however, the patent owner was successful. The Paris central division issued its first revocation judgment and confirmed Edwards Lifesciences’ important EP 3 646 825 (case IDs: UPC_CFI_255/2023 and UPC_CFI_15/2023). The patent protects a system comprising a prosthetic heart-valve and catheter. Thus, the direct revocation action and two counterclaims for revocation by Meril Life Sciences were unsuccessful.

In the revocation action by Blitzer and Carrier, the court upheld patent EP 3 414 708 only to a limited extent (ACT_555899/2023, UPC_CFI_263/2023).

The initial judgments in infringement actions show that, so far, the UPC has not positioned itself per se as plaintiff-friendly. Although, in these early stages it should be noted that plaintiffs are only entering certain patents into the new system, partly to test it.

Additionally, with so few judgments it is too early to make the assertion that the UPC revokes patents on a regular basis.

This article is based on the judgments already published in the UPC database and does not claim to be exhaustive.