UPC Judge Klaus Grabinski shares advocacy tips and reflections on court’s first year

In his role as the most senior judge at Europe’s new Unified Patent Court, Klaus Grabinski – one of four IP Hall of Fame inductees for 2024 – has the eyes of the world’s patent profession on him. 

Presiding over the UPC Court of Appeal, Grabinski is responsible for answering the most important procedural and substantive questions that arise at the new court as well as for harmonising UPC case law. And, as chair of the UPC Presidium, he is also the public face of the new court. In that capacity, he has commented on wider issues affecting the European patent landscape, such as when he criticised the EU’s proposed SEP licensing regulation at the UPC’s inaugural ceremony in May 2023. 

These responsibilities have been conferred on Grabinski after many years’ of service in some of Europe’s most important IP judicial positions. Having qualified as a German judge in 1992, he served for many years as a judge on the Dusseldorf Regional Court and Dusseldorf Higher Regional Court – two of the world’s most important patent dispute forums – before being appointed to the German Federal Court of Justice in 2009. 

Speaking to IAM shortly after his induction into the IP Hall of Fame, Judge Grabinski shared some advocacy tips for UPC practitioners, gave some reflections on the court’s first year in operation and identified the most interesting UPC decision he has been involved in to date.

How do feel about being inducted into the IP Hall of Fame?

The IP Hall of Fame brings together personalities who have made outstanding contributions to IP law; and it is a great honour and pleasure for me to become part of this group, which includes such eminent figures as Robin Jacob, David Kitchin, Paul Michel, Kathleen O’Malley and Peter Meier-Beck. Trying to live up to this standard will be a real challenge for me.

How would you describe your experiences of the UPC’s first year? Has anything about it been different to what you expected?

I think the UPC’s off to a good start. Two hundred and seventy cases have been filed in its first year, including actions for infringement, revocation, preliminary injunctions and preservation of evidence. The number is beyond my expectations.

I have been impressed by how efficiently and pragmatically judges and clerks have managed to deal with this large number of often quite complex cases.

Significant numbers of orders and decisions have already been issued, dealing procedural but also substantive law issues. As such, the UPC has started to set up a body of case law, helping to build predictability and trust in the court. 

What are the key challenges you face in your role at the UPC?

My role at the UPC is two-fold. I chair the UPC Presidium, which is the managing body of the UPC. But I am also the presiding judge of a panel of the UPC Court of Appeal and have a number of other judicial functions. 

Whereas at the beginning of my work with the UPC I was almost exclusively involved in administrative tasks – such as the drafting of documents like the code of conduct and the registry rules – now my judicial work takes more space. In the future, I see my key challenges being in the judicial work. 

Are there any legal or procedural questions you would consider to be particularly important that have yet to be answered?

There are some important questions left to be answered, like how to deal with the doctrine of equivalents – which is very important. Other significant questions include how to deal with indirect infringement. And another issue not yet decided is whether and to what extent the files should be taken into consideration when interpreting patent claims. 

It will be important also for the court decide on procedural aspects, to interpret the Rules of Procedure. A few orders have already issued in that regard. And I am confident that there will be many more decisions on these issues in the near future.

In terms of the public-facing side of your role, is that something new for you? 

As a judge, you are always in the public. By definition, court hearings are open to the public. Aside from that, for many years I have been attending conferences for example, so I am used to that side of it. But regarding the administrative functions of the court, that is something new for me. 

Why did you get into law, and intellectual property law in particular?

Germany has a career judge system, which I entered in my late 20s having passed two mandatory state exams. I joined the Dusseldorf Regional Court, and after half a year dealing with civil law cases I was allocated to a panel having jurisdiction over IP matters, in particular patent cases.

At that time, almost half of all the patent infringement cases litigated in Germany were brought at the Dusseldorf Regional Court. I started to enjoy dealing with legal aspects of technology. Another aspect that I liked was the European and international dimension of IP, and in particular patent law, including the exchange of views that it involved with lawyers, judges and patent attorneys from other jurisdictions. 

You have spent most of your career as a judge. Why were you attracted to this type of role?

I have always been interested in various aspects of judicial work. One is that this is not theoretical work. Decisions taken have a direct practical relevance and impact on the parties. 

The other aspect that I like is that judicial work requires unbiased application of the law. The role of a judge is different from that of a lawyer, who must pursue the interests of his or her party. Both roles are equally important for the functioning of the judiciary, but I was always more interested in dealing with cases independently from any party interest. The German system allowed me to do this from the start, after finishing my studies and internships.

What are the most important lessons you have learnt about what makes a good judge? 

The most important things that make a good judge are the ability listen carefully to the parties but also the ability to filter the facts that are relevant for deciding the case from those that the parties have submitted. Being able to interpret the law is also quite helpful for a judge!

Is there a different culture at the UPC to the other courts you have served on? 

The special quality of the UPC is that it brings together judges from different European jurisdictions, speaking different languages and having different legal backgrounds. These different backgrounds make cooperation on the bench particularly interesting and enriching, as I have experienced now for a year. The fundamental willingness to work together as colleagues has always been the same at the UPC as at the other courts I have served on.

How easy or difficult is it proving to reconcile the different national traditions at the UPC?

It has been surprisingly easy, because the judges are taking a European approach to their new role, and not a national approach. This very cooperative and instructive approach means that collaboration among judges is working very well.

What is your proudest achievement? 

As a judge, the service I provide is well-conducted proceedings and my product is a convincing decision at the end of those proceedings. The extent to which I have achieved this is for others to decide! Also, in my whole career, I have always been on the panel with other judges; never acting as a single judge.

What is the most interesting or important patent case you have worked on?

I have worked on many interesting and important cases throughout my career. In recent times, I would like to mention the NanoString/10x Genomics case heard by the UPC Court of Appeal earlier this year. 

That was the first case ever decided by the UPC on an appeal relating to preliminary injunction proceedings. It was also the first decision to set a standard on how to interpret patent claims and to set the threshold for proving facts in preliminary injunctions proceedings, which we determined was a ‘balance-of-probability’ threshold. 

What is your advice to UPC representatives on how they can advocate effectively? 

In terms of conducting written proceedings, it is my view that it is helpful if the written submissions focus on the essential points and do not include too much on unimportant aspects. Making the submission a bit shorter and writing it in an efficient way helps.

The other aspect I would like to mention is that it is important in oral hearings to be able to react ad hoc to questions from the judges, including on technical aspects of the case. This contributes to an effective discussion of the crucial points of the case. 

You were an early advocate of the UPC. Why was this? 

I always expected that a European court in patent law would come up at some point. I thought it was important to contribute to this work, so that the court goes in the right direction. 

You have criticised the proposed SEP Regulation in the EU. Do have anything new to say about that legislation?

I prefer not to add anything at this point. But I stick with what I said at the inauguration event last year. I don’t see any improvement in that regard, in terms of what is now on the table. 

Who has influenced or inspired you the most?

Over the years, I have been influenced and inspired by many people during my studies and throughout my professional life. But my parents were probably the most influential. I learnt from them to approach challenges with optimism rather than pessimism. That applies also to the UPC.