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Structure and key points of the first jurisprudence of the Unified Patent Court

Jean B. Devaureix

Introduction

We have already had decisions from the Unified Patent Court for some months now. I have always liked to analyze the structure of pleadings as they are often the basis for the success or failure of a legal proceeding and, of course, the judgments, which set the trend to be followed by other legal operators in terms of structure.

Well, in this article I will rely on a recent judgment of the Unified Patent Court of November 22, 2024, in case 239/2023, which applies a very modern, professional and rational structure, with a total of 43 pages, and with numbered sections, as is usual also in the decisions of the General Court of the EU. 

Headnotes and keywords: A key summary to understand the case

The judgment begins with some headnotes in which the issues to be elucidated are, in this case, the validity of the patent and a literal and equivalence infringements, and also, the equivalence test that has been applied and, finally, the order that the Court may issue regarding the publication of the judgment, based on Article 64 of the UPCA.

The judgment goes on to establish some keywords, indicates the parties, their representatives, the patent in question (patent number and holder), and the judges who decide the case (4), at least one of them with a clearly technical profile, as established in the UPCA.

This facilitates the identification of the key technical and legal issues in the judgment.

The presentation of the case: A visual and technical structure

The first section is a very broad summary of facts. The patent is cited by its last three numbers, as is customary in several EU countries. In this case, it is patent “EP 782”. In this summary, the full text of the patent claims is included, and the figures that are considered relevant by the Court, as well as the patent description itself which serves to interpret the claims.

Also in this initial part of the summary of facts, the Court exposes the allegedly infringing conduct, reproducing photographs of the product considered infringing and images of the defendant’s own website, as well as the EU countries in which the infringement occurs, all of which produces as a consequence a much better understanding of the problems set out in the judgment.

Arguments of the parties: approaches and strategies

The second section, entitled “appeal and pleadings”, sets out the requests of the parties in their respective pleadings (which, incidentally, are very similar to those we are used to seeing in a patent infringement proceeding in Spain)

Specifically, and with respect to the plaintiff and patent holder, it is requested the cessation of the infringing activity (in this case of both method and product), the destruction of the infringing products and of the means to carry out the infringement, the compensation for damages, the publication of a text on the defendant’s web page or the costs of the proceedings.

With respect to the defendant, it denies patent infringement and files a counterclaim for invalidity.

Grounds for the decision: Detailed technical and legal analysis

It is in the third section, called “GROUND FOR THE DECISION” where the Court analyzes both patent invalidity and patent infringement, starting, as is also customary, with the possible invalidity of the patent.

This section is divided into several subsections, in which (i) the patent, its teachings and claims are analyzed in an extremely precise manner, clearly stating the technical aspects on which the parties disagree, and (ii) the validity of the patent is analyzed in light of the precedents cited by the defendant, in this order: first, novelty, second, inventive step and, third, insufficiency in the description, which were the grounds for invalidity invoked by the counterclaimant.

Once the Court has determined the validity of the patent, it enters to assess the infringement. Obviously, if it had upheld the counterclaim, it would not have analyzed the infringement of said patent, due to the ex tunc effects of the declaration of nullity of the patent.

Regarding the infringement, the Court first assesses the literal infringement, which it rejects after a detailed explanation of the characteristics of the infringing product (again including photographs) and those of the patent claims (in particular, claim 11). The Court then goes on to analyze infringement by equivalence, which it does consider occurring in this case, to which it devotes no less than seventeen paragraphs of its Judgment (from 86 to 103).

This section sets a benchmark for future cases by combining technical depth with a structured methodological approach.

Remedies: An exemplary decision

The last subsection, which establishes the “remedies”, explains in detail the sentence, which includes the compensation for damages, to be determined in a subsequent proceeding for the determination of damages (although it already condemns the payment of damages in the amount of €35,000 on a provisional basis, to be paid in three weeks), and the costs, for which it establishes a ceiling  of €200,000 for the defendant.

The last section of the DECISION, contains the sanction to the defendant, granting the plaintiff’s claims to cease use and destruction, publication, provision of information to the plaintiff, compensation for damages (including provisional damages of €35,000), and a fine of €2,000 per infringing product if they continue to market since the notification of the judgment.

Conclusion: A Model for Future Jurisprudence

Without prejudice to other interesting issues in the judgment, as a conclusion, what is relevant for the purposes of this article is that, as we have seen, the structure of the judgment is of high professional quality, modern, with logical and clearly differentiated sections and subsections, simple headings, each paragraph numbered, an easy to read typeface, a change of size and typeface when quoting passages from documents that facilitates the reading of the judgment together with photographs and images that illustrate what is explained in the judgment, and all this with profound technical reasoning, as commented by the European Patent Attorneys with whom I have had the opportunity to talk about some of these judgments of this new European Court, the Unified Patent Court.

About the author

I am mainly involved in representing national and foreign clients before all judicial bodies in the field of intellectual and industrial property and in civil matters in general. I am also familiar with related disciplines such as civil and commercial contracts licensing and agency agreements, etc.

In the field of industrial property, I have experience in patent litigation in different technical fields such as pharmaceuticals, telecommunications and mechanics. I have also been involved in trademark, design, copyright and unfair competition proceedings.

Apart from the legal activity, I feel very committed to organic farming as a healthy way of life and a mechanism for the preservation and recovery of rural environments.

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