Executive Summary
This UPC appellate decision addresses a complex issue regarding cost allocation in patent litigation where one party initiates an invalidity action and the other subsequently waives their rights to the patent. The court ruled that equitable considerations can override strict procedural requirements concerning the timing of a waiver and revocation request under Art. 105a EPC. This provides significant relief for patentees who may have delayed formalizing their withdrawal due to complex legal circumstances.
What the Court Held — Ratio Decidendi
The court established an exception to the general rule regarding cost allocation (Art. 69(1) EPC), allowing for a waiver of patent rights to be considered timely even if procedural requirements (like filing a revocation request under Art. 105a EPC) were not strictly met, provided there are equitable grounds and the waiver was announced promptly.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Luxembourg (LU). Understanding the court's reasoning in Stäubli Tec-Systems GmbH vs ehemalige Patentinhaber is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Amycel LLCvsPL
In a default judgment case concerning mushroom strains, the UPC confirmed infringement of EP 1 993 350 B2 held by Amycel LLC. The court specifically addressed patentability issues, ruling that the subject matter (a specific mushroom strain) is not excluded from protection under Art. 53(b) EPC. This decision reinforces the enforceability of plant-related patents within the UPC territory and confirms significant remedies, including permanent injunctions and interim damages.
Syngenta LimitedvsSumi Agro Limited
This UPC decision addresses a procedural request for confidentiality rather than patent infringement itself. The Court of First Instance granted the defendants' motion to classify specific exhibits (SA-1 and SA-9) as strictly confidential under Rule 262A. This ruling is significant for practitioners, reinforcing the court's commitment to protecting sensitive commercial information during litigation proceedings.
ONWARD Medical N.V.vsNiche Biomedical, Inc.
This UPC appellate decision addressed procedural matters in a dispute over neuromodulation systems. While the core infringement appeal was dismissed, the court issued an order regarding provisional costs. The ruling reinforces principles on how non-registered claims can be asserted and clarifies the standards for determining indirect patent use (Verwendungsbestimmung) based on objective evidence. This case is significant for practitioners dealing with procedural hurdles in complex medical device IP litigation.
GXD-Bio CorporationvsMyriad International GmbH (and associated Myriad entities)
In a significant decision, the UPC Local Division Munich revoked European Patent EP 3 346 403. The patent covered methods for quantifying gene expression in breast cancer tissue using RT-PCR and normalization to endogenous reference genes. Despite GXD-Bio Corporation's infringement claims against Myriad International GmbH and its subsidiaries regarding their EndoPredict-Test, the court dismissed the infringement action following the revocation of the patent. This ruling underscores the dual nature of UPC proceedings, where a successful counterclaim for revocation can immediately extinguish an associated infringement claim.
M-A-S Maschinen- und Anlagenbau Schulz GmbHvsAltech Makina Sanayi ve Ticaret Anonim Sirketi
In this UPC decision, the court addressed both an infringement claim and a counterclaim for patent revocation concerning a plastic purification device. The court dismissed the infringement suit, emphasizing that remedies like recall or destruction are generally inapplicable in cases of indirect infringement. Crucially, the ruling set high standards for provisional damages claims, requiring plausible factual support, and clarified the burden of proof in revocation actions, demanding detailed explanations of prior art combinations rather than mere citation.
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.