UPC Central Division , 13 November 2023: Preliminary objection to competence Central Division in revocation action rejected

Preliminary objection concerning the competence of the Central Division because of a pending action before the Munich Local Division rejected: Meril Italia is not the same party a Meril India or Meril Germany (article 33(4)UPCA, Rule 20 RoP)

•             the Unified Patent Court framework does not exclude that a patent may be attacked by different subjects, even if linked by organizational ties or commercial relationships, and by the means of different claims, even if structured in the same grounds of invalidity.

•             No per se abuse of the Unified Patent Court Framework

•             Italian law to determine whether Meril Italy is a different party from Meril India and/or Meril Germany.

•             The primary role of the central division as the judge of the revocation actions is confirmed by the provision that allows the local or regional division before which a counterclaim for revocation has been brought in an infringement action to refer the counterclaim or, with the agreement of the parties, the whole case to the central division (Article 33 UPCA).

•             Article 33 UPCA contains an autonomous set of rules that regulates the situations of parallel proceedings, and is not regulated by article 29 Brussels I-bis recast  

•             no sufficient evidence that the Respondent is a straw company for Meril India

•             Risk that two divisions of the Court would decide on the same issue and that competitors would have two (or more) ‘shots’ at the same patent limited because local division discretionary power to refer the counterclaim for revocation for decision to the central division and suspend or proceed with the action for infringement or with the agreement of the parties (article 33(3) UPCA)

Moreover, the general tool offered by Rule 295(m) RoP may come at hand also in such a situation, pushing one of the Divisions to wait for the decision of the other Division and then decide accordingly on the validity issue.

•             Revocation action has no ‘blocking’ effect on infringement and no ‘bifurcation by default’ effect

Preliminary requests to postpone the hearing on Preliminary objection and to exclude exhibits rejected (Rule 20 RoP)

•             One exhibit is not a new document but a more complete version concerning an irrelevant fact for the present case. Other exhibits concern three judicial decisions issued by national judges, which cannot be deemed as introducing (new) ‘facts’ – whose fling, as previously said, is, in principle, not admissible after the lodging of the Preliminary objection – since they do not relate to historical facts, but to arguments used to support an opinion.

11. The purpose of allowing the parties to file written submissions until the day before the hearing set for discussing the Preliminary objection is to anticipate to the opponent and to the judge the main points that would be addressed at the hearing.

•             No leave for appeal granted, because the Respondent has no actual and concrete interest in it (Rule 220 RoP). This decision is not capable of causing any harm to the Respondent, since a prejudice to its positon may arise only by the decision that allows the Preliminary objection.

IPPT20231113, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences