Executive Summary
This decision addresses procedural questions regarding the proper party to file a revocation counterclaim against in UPC proceedings. The court clarified that while the material owner is the ultimate rights holder, the registered patent holder can also be correctly sued for revocation purposes. This flexibility aims to streamline the process and prevent the alleged infringer from having to prove complex ownership chains.
What the Court Held — Ratio Decidendi
The court ruled that a revocation counterclaim can be properly directed against either the registered patent holder (Rule 8.6) or the material owner (Rule 8.5-Inhaber). The purpose of this flexibility is to exempt the alleged infringer from proving material entitlement when filing a revocation counterclaim against the registered holder.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Munich (DE) Local Division. Understanding the court's reasoning in Heraeus Electronics GmbH & Co. KG vs Vibrantz GmbH is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Dolby International ABvsHP Deutschland GmbH, HP Inc., HP International SARL, HP Austria GmbH, HP France SAS, HP Belgium SPRL, HP Inc Danmark ApS, HP Finland Oy, HP Italy S.r.l., Hewlett-Packard Nederland BV, HP PPS Sverige AB, HPCP – Computing and Printing Portugal, Hewlett-Packard d.o.o., Hewlett-Packard Luxembourg SCA, HP Inc Bulgaria EOOD
In a procedural order, the Düsseldorf Local Division of the UPC suspended the complex infringement and revocation proceedings involving Dolby International AB against various HP entities regarding EP 3 490 258 B1. The suspension was granted upon the mutual request of all parties involved in the litigation. This decision highlights how parties can utilize procedural mechanisms within the UPC to pause active disputes, potentially allowing for strategic reassessment or negotiation before a full hearing.
Maschio Gaspardo S.p.A.vsSpiridonakis Bros GP
In a significant decision by default, the UPC granted Maschio Gaspardo S.p.A. an infringement declaration against Spiridonakis Bros GP regarding its reversible agricultural tool patent (EP 1998604). The court upheld the permanent injunction and established recurring penalties for continued infringement across several member states. This case highlights the strict evidentiary requirements placed on claimants pursuing default judgments in UPC proceedings, while also clarifying the scope of territoriality under Art. 26 UPCA.
Amazon.com, Inc.vsInterDigital VC Holdings, Inc.
This UPC Court of Appeal decision clarifies the rules surrounding the use of private transcripts derived from oral hearing recordings. The court ruled that while a full transcript is not automatically provided by the UPC, parties can obtain one with professional assistance if specific conditions are met. These conditions include clearly labeling the document as non-authoritative and ensuring compliance with all confidentiality and data protection mandates.
NJOY Netherlands B.V.vsVMR Products LLC
This UPC Court of Appeal decision addressed an appeal against a revocation action concerning EP 3 456 214, a patent covering vaporizer technology. The court confirmed the initial finding that several claims lacked inventive step due to anticipation by prior art (Pan). Furthermore, the judgment provided important procedural guidance on how parties must manage new evidence and arguments when responding to applications to amend under the UPC's strict front-loaded system. This case is significant for practitioners navigating complex revocation proceedings in the unified patent court.
IMI Hydronic Engineering Deutschland GmbHvsBelparts Group N.V.
In this case, IMI Hydronic Engineering Deutschland GmbH initiated a revocation action against Belparts Group N.V. concerning patent EP3812870. While the proceedings progressed through interim conferences and even faced potential oral hearings, both parties ultimately reached an out-of-court settlement. The UPC Court of First Instance subsequently permitted the withdrawal of both the revocation action and the infringement counterclaim, declaring the case closed. This decision highlights the practical reality that settlements often supersede ongoing litigation in the UPC framework.
Dealing with a patent challenge?
Whether it's a Section 3(d) rejection, a post-grant opposition, or a FRAND dispute, Arctic's patent litigation team has handled it. Get a strategy call.
Disclaimer: This page contains an automated summary based on publicly available judicial records. The content is generated for informational purposes only and does not constitute legal advice. Always verify details against the original source judgment before relying on this information for any legal purpose. If you believe any information is inaccurate, please contact us.