UPC allows intervention by Licensee

​
Darren Smyth
​
May 22, 2024
#
UPC
#
Basic
#
Infringement
#
Intervention
Table of contents
  • Toc Heading
  • Toc Heading

Seoul Viosys Co., Ltd. v. expert klein GmbH, expert e-Commerce GmbH (UPC_CFI_363/2023)

Order of 22 April 2024 (ORD_5343/2024)[1]

Seoul Viosys sued expert klein GmbH and expert e-Commerce GmbH for infringement of EP3926698 at the Düsseldorf Local Division, and expert klein GmbH counterclaimed for invalidity of the patent. The local division decided to hear the infringement action and invalidity counterclaim together.

Seoul Semiconductor Co., Ltd. is a (non-exclusive) licensee under the patent, and filed a request to intervene in the proceedings. This request was supported by the claimant and opposed by the defendants.

The Court noted that Rule 313.1 RoP requires the intervener to have a legal interest in the result of the action before the UPC. It considered that a licensee necessarily has a direct and present interest in the outcome of the invalidity counterclaim, because if the counterclaim is successful, the patent in dispute will be declared invalid retroactively, so the licensee would lose their preferential position compared to non-licensees.

Moreover, the Court considered that the intervention should not be permitted only in respect of the counterclaim. Once the Court has decided to hear the infringement action and invalidity counterclaim together, both will be decided based on a uniform interpretation of the patent. The infringement action and the invalidity counterclaim are therefore closely linked in terms of content. Any change in the claim interpretation directly influences not only the question of infringement, but also the assessment of the validity of the patent. Accordingly, the intervener can only effectively pursue its interest in preventing the invalidity of the patent in dispute if joins the legal dispute as a whole.

The Court therefore declined to decide the legal issue of whether a (non-exclusive) licensee would be entitled to intervene in an infringement action in isolation.

Accordingly the Court allowed the intervention and set a deadline for the intervener to submit a statement in intervention (Rule 315 RoP).

[1] https://www.unified-patent-court.org/en/node/709

Recent Case Reports

See all Case Reports

UPC Court of appeal issues final decision, despite no finding on infringement at first instance
30 March 2026
In Rematec v Europe Forestry, the UPC Court of Appeal overturned the Mannheim Local Division’s revocation of the patent and, applying Article 75(1) UPCA, issued a final decision on both validity and infringement despite no infringement finding at first instance. The Court adopted a narrower, description‑led approach to claim interpretation, confirmed the patent’s validity, found infringement, and granted final remedies without referring the case back to the Court of First Instance.
​
Litigation insurance as security for costs
30 March 2026
In Syntorr v Arthrex, the UPC Court of Appeal clarified that while litigation insurance is not itself a form of security under Rule 158 RoP, it is a relevant factor when deciding whether security for costs should be ordered at all. By failing to consider the claimant’s insurance policy, the Munich Local Division wrongly exercised its discretion. The Court set aside the €2 million security order and confirmed that insurance can mitigate concerns about cost recoverability.
​
National law applies to claims for loss of profit if the events occurred before the UPC came into force
30 March 2026
In Fives v REEL, the Hamburg Local Division of the UPC dismissed a standalone damages action despite prior findings of infringement. Although the UPC was competent to assess damages, the court held that national law applied because the relevant events pre‑dated the UPC’s entry into force. Applying German law, the court found that the claimant had not proven causation or lost profit, highlighting the demanding evidentiary burden for price‑reduction damages claims and the importance of substantiating counterfactual tender outcomes.
​