2024 was a very productive year for the UPC. While many important and interesting decisions were handed down, we have selected five that we believe stand out the most.

NanoString/10x Genomics: preliminary injunctions and claim construction

This was the first ever substantive decision by the Court of Appeal, but is noteworthy for more than that reason alone.

Pursuant to art. 62 UPCA, preliminary injunctions can be granted. In this respect, the court may require the applicant to provide any reasonable evidence to satisfy the court "with a sufficient degree of certainty" that the applicant is the right holder and that there is (imminent) infringement. R. 211.2 RoP furthermore mentions that the court may require the applicant to provide evidence on the validity of the patent.

A key question to be answered in demonstrating this degree of certainty then becomes: when exactly is there "sufficient certainty"? The Court of Appeal held that this requirement is met if it is at least "more likely than not" that the applicant was entitled to initiate PI proceedings and that the patent-in-suit was infringed. Similarly, a sufficient degree of certainty is lacking, however, if the court considers it - on the balance of probabilities - to be more likely than not that the patent is invalid. The patentee bears the burden of proof demonstrating an infringement, while the defendant has the burden of proof demonstrating invalidity and other defensive arguments.

In terms of claim construction, the Court of Appeal ruled that the patent claim is not only the starting point, but the decisive basis for determining the scope of protection, both in relation to assessing infringement and validity. The interpretation of a patent claim, however, does not only depend on the strict, literal meaning of the wording used: the description and drawings must always be used as explanatory aids and not only to resolve any ambiguities in the patent claim. However, this does not mean that the patent claim merely serves as a guideline.

The Court of Appeal concluded by overturning the highly-publicised first-instance injunction, finding the claimed subject matter of the patent-in-suit more likely than not obvious in light of the prior art.

Ocado: transparency at the UPC – public access to case file

This case concerned Ocado's appeal against the Nordic-Baltic Regional Division's order to grant access to case materials (at least including Ocado's statement of claim) to a member of the public.

When a request for access to the case file (that is, written pleadings and evidence) is made, the interest of the applicant as a member of the public (transparency of proceedings) must be weighed against the interests mentioned in art. 45 UPCA (the interests of one of the parties or other affected persons, or the general interest of justice or public order). To allow the balancing of interests, the applicant in their request must set out the reasons why they have an interest in obtaining access.

The Court of Appeal distinguished different stages of the proceedings where the applying of relevant criteria and the weighing of interests differ. According to the Court of Appeal, the interest of integrity of proceedings usually only plays a role during the course of the proceedings. In pending proceedings, the Court may therefore impose certain conditions on granting access, such as the obligation for a member of the public to maintain the confidentiality of written pleadings and evidence they were given access to as long as the proceedings have not come to an end.

The interests are usually properly balanced and duly weighed against each other if access is given to a member of the public after the proceedings have come to an end by a court decision. In a third "flavour", that is, where proceedings have come to an end not by a decision but, for example, by settlement or withdrawal, the balance is usually in favour of allowing access (subject to the protection of personal data and confidential information). The case file may still give insight in the handling of the dispute by the court and/or serve another legitimate interest of a member of the public (for example, scientific and/or educational interests), and the integrity of proceedings no longer plays a role at this stage.

The Court of Appeal dismissed Ocado's appeal, finding that the balance of interest was in favour of granting access to the applicant.

AIM Sport Development AG/Supponor Group: opt-outs at the UPC

AIM/Supponor is an important decision by the Court of Appeal about the effect of national proceedings potentially locking out the UPC as a venue for patent actions.

Pursuant to art. 83(4) UPCA, a patentee can withdraw an opt-out unless an action has already been brought before a national court. Whether this includes national actions filed before the UPC came into effect, however, remained the question.

In this case, after AIM's patent-in-suit was opted out during the sunrise period (before the UPC entered into force), AIM applied to withdraw its opt-out on 5 July 2023 (after the UPC entered into force). On that same day, AIM brought an infringement action as well as a PI request (both before the UPC) against Supponor. In response, Supponor contested the effectiveness of the withdrawal of the opt-out. The Local Division Helsinki agreed with Supponor, but the decision was overturned on appeal.

The Court of Appeal held that only national proceedings initiated during the transitional period (which started 1 June 2023) can prevent the withdrawal of an opt-out. Proceedings brought before the transitional period, whether pending or not, do not stand in the way of an effective withdrawal of an opt-out.

Sanofi/Amgen: inventive step at the UPC – "realistic starting point" and incentive

In this revocation action, the Central Division Munich did not apply the problem-solution approach. Instead, it applied another test for inventive step, which seems to be gaining ground at the UPC.

The Central Division first determined that inventive step is to be assessed from the point of view of the skilled person on the basis of the state of the art as a whole, including the skilled person's common general knowledge. The decisive factor is whether the claimed subject matter follows from the prior art in such a way that the skilled person would have found it on the basis of their knowledge and skills (for example, by obvious modifications of what was already known).

It is not necessary to identify the "most promising starting point". Rather, a "realistic starting point" – of which there can be a several – should be determined. This is the case if its teaching would have been of interest to a skilled person who, at the priority date of the patent at issue, was seeking to develop a similar product or method to that disclosed in the prior art which thus has a similar underlying problem as the claimed invention.

The subsequent question is whether it would be obvious for the skilled person to, starting from the realistic prior art starting point, in view of the underlying problem, arrive at the claimed solution. In general, a claimed solution is obvious if, starting from the prior art, the skilled person would have an incentive to consider the claimed solution and to implement it as a next step in developing the prior art. In this respect though, it may be relevant whether the skilled person would have expected any particular difficulties in taking any next step(s). A technical effect or advantage achieved by the claimed subject matter compared to the prior art can be an indication of inventive step. A feature that is selected in an arbitrary way out of several possibilities will generally not contribute to inventive step.

The Central Division concluded that the claimed subject matter was obvious and did not involve an inventive step.

Panasonic/OPPO: FRAND

The fifth "can't miss" decision of the year is Panasonic/OPPO, which is the first ever full-fledged substantive decision by the Local Division Mannheim on the licensing of standard essential patents (SEPs) on Fair, Reasonable and Non-Discriminatory (FRAND) terms.

In summary, the court examined the facts of the case within the context of the landmark ruling of the Court of Justice of the European Union (CJEU) in Huawei/ZTE. It found Panasonic's infringement notice sufficient (which referred to a claim chart of the Chinese part of the family, but also referred to the relevant European patent); did not find it necessary for the expression of willingness to comply with specific wording; frowned on OPPO's refusal to provide information on the extent of its use; rejected OPPO's argument that Panasonic should have provided a licence agreement (instead of basic economic terms); and ruled that OPPO did not act in good faith. Regarding the counterclaim filed by OPPO aimed at determining a FRAND licence, the court assumed jurisdiction but rejected the claim. For more details, we refer to our earlier article.

Since then, a second FRAND decision has been handed down. In Huawei/Netgear (LD Munich 18 December 2024, UPC_CFI_9/2023), the Local Division Munich also applied Huawei/ZTE. An interesting addition compared with Panasonic/OPPO is in any event that the Local Division Munich stated that submitting an initial offer that is not FRAND does not as such constitute market abuse; rather, it is only the starting point for negotiations in the course of which the patentee should develop a FRAND-compliant offer. Thus, even if the patentee's offer is not FRAND and the user nevertheless makes a counteroffer, the user must provide security.

Looking ahead: 2025

The UPC has finished its first full calendar year with an interesting body of developing case law, and has certainly given us a glimpse of its full potential. We can only wait and see how the UPC further progresses as the case law continues to grow in 2025 and beyond.