First hearing for PI damages per RoP 213.2 at the UPC - another “first” for Bird & Bird and its clients NanoString/Bruker

The Unified Patent Court’s (“UPC”) first-ever wrongful-enforcement damages hearing will be held on September 18, 2025, before the LD Munich. This will be the UPC’s first damages case based on the revocation of provisional measures (“PI”). In this context, RoP 213.2 stipulates “where provisional measures are revoked (…) the Court may order the applicant (…) to provide the defendant with appropriate compensation for any injury caused by those measures”. The order can be found here. It showcases (again) the willingness and capacity of the UPC for fast-track proceedings.

Background

As well known to the UPC community, the LD Munich had issued a PI on September 19, 2023, based on EP 4 108 782 as granted (UPC CFI 2/2023). The PI was announced after the UPC’s very first substantive hearing on September 5/6, 2023. On the substance, high damages at the end of the Defendants in case of an injunction were discussed, with a security request for the enforcement of “at least €20 million” raised. However, no enforcement security was ordered by the LD Munich.

In view of validity concerns the first panel of the Court of Appeal (“CoA”) then – based on its first substantive hearing – revoked the PI with an order from February 26, 2024, (UPC_CoA_335/2023). Thereafter, a first request for rehearing was dismissed by the second panel of the CoA (App_22399/2024) and thus the revocation of the PI became final.

Against this background, the damages request for the unjustified PI was filed by the Bird & Bird team for their clients on February 25, 2025. Shortly thereafter, the patent as granted was revoked by the EPO’s Opposition Division during the hearing from March 18-20, 2025, and maintained in an amended form. The EPO first instance decision also triggered the continuation of the UPC main proceedings based on the patent at issue where the hearing is scheduled for September 17, 2025. It remains to be seen how the LD Munich decides on the substance of the infringement and counterclaim for revocation and to which extent this may or may not influence the PI damages claim.

In any case, clear guidance is expected from the LD Munich on various issues concerning the prerequisites and assertion of PI damages. Stay tuned!

The team representing NanoString/Bruker in the damages case is Oliver Jan Jungst and Mortiz Schroeder with the support of Annika Lückemann and with Daniela Kinkeldey, Jan van Dieck and Anne Halbach on all validity aspects.