Most infringement actions filed at the Unified Patent Court appear to be related to existing national proceedings, according to a senior lawyer.
Christian Stoll, partner at Hogan Lovells in Hamburg, provided his perspective during a webinar hosted by the firm today, June 21.
Stoll, who was discussing whether any legal trends could be seen since the court opened its doors on June 1, said: “It appears to me that the currently existing proceedings somehow relate to already existing disputes.”
Revocation actions filed so far are also obviously connected to pending national disputes between parties, Stoll said.
Protective letters
Also during the webinar, Stoll recommended some defence arguments that counsel could include in protective letters filed at the UPC.
Protective letters, which are commonly used in Germany but not in all individual UPC member states, are submitted by parties whose patents are subject to preliminary injunction requests.
The court has to consider the arguments outlined in such letters rather than making an ex parte decision.
Stoll noted that it’s tricky for defendants to present credible non-infringement arguments while trying to avoid educating the patentee on how its product works.
He added: “In particular, if it comes to claim construction, you have to be very selective on how to present your defence case. The key goal is to avoid an ex parte ruling and convince the court to schedule an oral hearing.”
Stoll suggested that invalidity arguments should also be addressed in a protective letter, highlighting an advantage of the UPC for defendants in this regard.
“In the UPC you’re a bit better off than in German proceedings because the UPC will also have to look at the validity of the patent because it’s competent to hear validity [arguments].”
He also said counsel should use a lack of urgency defence in a protective letter because urgency is a requirement for securing a preliminary injunction.
“If you can explain ‘look, the patentee knew this infringement situation for ages and did not act’, this is a very strong argument against a preliminary injunction.”
Balancing act
Stoll said outlining the specific harm the preliminary injunction could cause might also work as a defence argument, but that this is tricky to demonstrate.
“On the one hand it’s important of course for the balancing of interests, so it should basically go in.”
However, he went on to state that on the other hand, the bigger a business is then the larger the harm on the patentee side.
“So, it’s very important how to present this,” he said.
Stoll added that if a party wants to use a licensing or exhaustion defence then the defendant has to justify this in detail because the burden of proof rests with it.
"If you want to rely on such arguments you would have to explain this in somewhat more detail, otherwise the court may consider this as insufficient," he said.
The webinar was part of a new series by Hogan Lovells called ‘The new Unitary Patent and Unified Patent Court – Kick-start 2023’.
Stanislas Roux-Vaillard and Gertjan Kuipers, Hogan Lovells partners in Paris and Amsterdam respectively, also participated.
