A guide to the UPC and the UP - Flipbook - Page 107
Bifurcation
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The issue of bifurcation of infringement and validity actions has been controversial since the
signing of the UPCA and was raised as a major concern by some in industry. 110 Art.33(3) UCPA
deliberately leaves it to the local or regional division of the Court in an infringement action to
proceed as it deems fit following a counterclaim for revocation. One of the options open to the
division is to refer the counterclaim for revocation to the central division and proceed with the
action for infringement i.e. to bifurcate the action.
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The RoP have made commendable attempts to limit the risk of abuse or at least to build in
additional checks. However, the Preparatory Committee saw no reason to limit the discretion
of the Court by defining what should happen in all scenarios. 111 So, in theory at least, the risk,
or opportunity, for bifurcation and of an “injunction gap” (which refers to the concern that
weaker patents could be pushed through the infringement divisions quickly, leading to
injunctions that benefit from presumed patent validity) still exists.
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Nevertheless, possible impact and frequency of bifurcation should not be overstated.
Since the Court is a single court, there is a structural guarantee against inconsistent
claim construction in those rare instances where infringement and validity cases are
argued separately. Prof. Fransozi’s popular analogy of the “Angora cat” 112 is an example
of a situation that should, and can, be avoided if panels from different divisions rule with
a single voice. Furthermore, most courts in Europe are used to dealing with infringement
and validity together and the judges from such countries are unlikely to change their stance.
Although judges from jurisdictions with a national system of bifurcation such as Austria and
Germany may be more open to bifurcating actions, it has been said that the divisions in
Germany at least are expected to proceed with both actions. 113 In any event, appropriate
guidelines will be determined as a body of case law develops since divisions are obliged
to give reasons for their decisions to bifurcate (which, no doubt, will be appealed to the
Court of Appeal).
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The rules in art.33 UPCA on which division has competence where there is more than one
action are discussed below.
110
111
112
113
For instance, see the letter dated 26 September 2013 in the New York Times signed by Apple, Google, Intel, Samsung
and others (http://graphics8.nytimes.com/packages/pdf/business/26trolls-letter.pdf) [Accessed 1 April 2023], stating:
“Patent cases often involve the related issues of whether a particular patent is valid and, if so, whether it has been infringed.
The UPC Agreement allows these questions to be decided by different courts in the same case, but gives little guidance as to
when or how this should or should not be done. This could, in some cases, allow plaintiffs to obtain a quick infringement
ruling, along with an injunction barring products from most of the European market, before any determination of whether
the patent in question is actually valid. Given the drastic impact of such an injunction on the defendant, unprincipled plaintiffs
would be able to extract substantial royalties (through settlements or verdicts) from European and other companies based on
low-quality, and potentially invalid patents.”
There may be instances where bifurcation is beneficial such as where a defendant deploys delaying tactics in the revocation
action/counterclaim.
Jacob LJ commented in European Central Bank v Document Security Systems Inc [2008] EWCA Civ 192 at [5]: “Prof. Mario Franzosi
likens a patentee to an Angora cat. When validity is challenged, the patentee says his patent is very small: the cat with its fur
smoothed down, cuddly and sleepy. But when the patentee goes on the attack, the fur bristles, the cat is twice the size with
teeth bared and eyes ablaze.”
“Responses to the Public Consultation on the [15th draft] Rules of Procedure of the UPC: Digest of Comments Received”
6 March 2014, p. 60.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 97
