Just over a year after the UPC Agreement came into force, the Paris local division handed down UPC’s first decision on an infringement action. Unfortunately for the patentee, the court dismissed his action, ruling that the patent invoked was null and void.
In this case, two manufacturers, DEXCOM and ABBOTT, were involved in a dispute over glucose monitoring devices. DEXCOM claimed that patent EP 3 435 866 was infringed by monitoring devices marketed by ABBOTT. In reply, ABBOTT claimed that the patent was invalid. The Paris division ruled in favor of the defendant, holding that the patent in question should be revoked. This decision applies to all 17 countries currently members of UPC.
Some will point out that it gives concrete expression to the fears that patentees had of the UPC system, which explain the large number of carve-outs before it came into force. At the same time, while it’s true that caution is always called for, and that the use of this jurisdiction involves more risks than with multiple national lawsuits on European territory (i.e., cross-border actions), I’m not sure that the case reported here can be held up as an example of its kind. Indeed, this is a large-scale case, in which similar patents have been asserted for various territories, and, unfortunately for the patentee, in which various jurisdictions have already adopted a position identical to that of the Paris local division. Without entering into the debate on the merits, we can simply note that German and English judges, often cited, rightly or wrongly, as “pro-patentees”, had already adopted positions similar to that of the Parisian judges for national parts of the same European patent (an annulment decision by the English High Court and an unfavorable preliminary opinion by the German Federal Patent Court).
It could also be noted that fees to reimburse will be fixed in a separate procedure and that Paris division rejected the provision of 100,000 euros claimed by ABBOTT, since, according to the Court, the interim award was not sufficiently justified by the claimant.
Eventually, the decision handed down by the Paris local division seems simply to be in line with previous decisions on patent EP’866. But, still, this position could change in Luxembourg if DEXCOM lodges an appeal.
The Paris local division and the counterclaim for revocation
Article 33(1) of the Agreement on a Unified Patent Court allows an infringement action to be brought before the local division of the Contracting Member State where the infringement occurred or where the defendant is established, which is how disputes reach the Paris local division. Article 33(3) then governs what happens when the defendant files a counterclaim for revocation : the division may hear infringement and validity together, refer the counterclaim to the central division and stay or continue the infringement case, or, with the parties’ agreement, refer the whole case to the central division. The language of the proceedings follows Article 49 of the Agreement, which allows the official language of the host Contracting Member State or, by agreement or by decision, the language in which the patent was granted.
The first option concentrates the risk. Validity is decided by the same panel that rules on infringement, and under Article 65 UPCA revocation takes effect for every Contracting Member State for which the patent has effect. A single hearing can therefore undo a European patent across the whole territory of the Court. The proprietor may defend the patent by proposing amendments to the claims, which the division examines in the same decision, so the drafting of auxiliary requests becomes part of the infringement defence itself.
Costs and appeal
Article 69 UPCA places reasonable and proportionate legal costs on the unsuccessful party, within the ceilings set by the Administrative Committee, and the Rules of Procedure provide for a separate costs procedure after the decision on the merits. An interim award on costs is possible but must be justified, which is not automatic before the Paris local division or any other division. The ceilings are set by reference to the value of the dispute, so the exposure can be estimated at the outset and weighed against the commercial stakes of the case.
Appeals lie to the Court of Appeal in Luxembourg, which may review both law and facts. A first instance outcome, favourable or not, is therefore provisional until that stage is exhausted, and the appeal strategy is best framed when the written case is first built. Provisional relief granted at first instance may also be suspended pending appeal, which affects the practical value of a favourable decision for the party that obtained it.
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