2024 UPC December

IPPT20241230, UPC CFI, LD Munich, Huawei v Netgear
Request to assign another technically qualified judge (R. 34 RoP) because of resignation of judge (Article 9(2) Statutes)
 

IPPT20241230, UPC CFI, LD Milan, Insulet v Eoflow
Application for cost decision dismissed (R. 150 RoP) because the order refusing intervention did not contain a costs decision deciding in principle on the obligation to bear legal costs in accordance with rule 118.5. RoP

IPPT20241230, UPC CFI, LD Hamburg, Nera Innovations v Xiaomi
Requests to be decided by the judge-rapporteur or the panel. Procedural economy: request to amend the action based on a request to amend the patent  (R. 30 RoP, R. 263 RoP, R. 334(h) RoP))
The Judge-Rapporteur must keep in mind the principle of procedural economy not only with regard to the parties, but also as a representative for the bench as a whole. In the interests of procedural economy, it is not normally necessary, outside the standardised cases of opposition under Rule 19 RoP, for the panel to decide, in the context of a preliminary ruling under Rule 334 (h) RoP, on questions of substantial significance for the decision on the merits, such as the substantive admissibility of five requests for amendment of the action (R. 263 RoP), which are based on a request for amendment of the patent (R. 30 RoP). Substantive decisions of this scope are regularly to be left to the main proceedings, namely the oral proceedings, in particular the final decision by the panel.

IPPT20241227, UPC CFI, LD Munich, Netgear v Huawei
Maintaining confidentiality (R. 262 RoP,  R. 262A RoP). Order to include the Huawei-Qualcomm-license by resubmitting it in these proceedings with requests accordance with Rules 262.2 and 262A of the Rules of Procedure. This is the only way to ensure that the confidentiality requirement can be documented in the CMS. The continued application of the confidentiality measures already ordered is ordered.

IPPT20241227, UPC CFI, LD Düsseldorf, Ona Patents v Google 
€ 500.000 security for costs (R. 158 RoP). There are no apparent financial reserves other than the minimum amount of share capital. Even any financial support from third parties, such as the licensee, is not certain, apart from the question of whether it would be sufficient from a legal point of view. Finally, the Claimant seems to have no other significant assets beside other patents.

IPPT20241227, UPC CoA, Sumi Agro v Syngenta
Rule 13.1(q) RoP (request that document need not be translated in Statement of claim) applies mutatis mutandis for other submissions, although not explicitly for a Statement of response in appeal proceedings. (R. 236 RoP). A party in appeal proceedings will only be relieved from the duty to provide translations of documents filed first with the Court of Appeal if the Court of Appeal accepts this (R. 7 RoP).

IPPT20241227, UPC CFI, CD Paris, Microsoft v Suinno - II
A request for additional security actually amounts to a request to modify the security already granted by increasing its amount (R. 158 RoP). The first two arguments (increasing of costs related to the progression of the written procedure and respondent’s admission in the appeal proceedings of lack of financial resources) constitute new facts that must be considered in the assessment on whether to amend its previous order. The Court is of the view, however, that these circumstances are not such as to require a reassessment of the adequacy of the security already ordered.

IPPT20241227, UPC CFI, CD Paris, Microsoft v Suinno - I
An order granting security for costs (R. 158 RoP) can be revoked or amended by the Court if there is a change in the factual circumstances underlying the order. Granting this opportunity to the parties, even in absence of a specific and direct legal provision, is necessary to render the measure consistent with its purpose, namely to address the risk of non-recovery or significant difficulty in recovering costs of the proceedings. Security amount for costs determined by the “value” of the action which is to reflect the “objective interest pursued” by the claimant at the time of the filing of the action (R. 370.6 RoP) and any subsequent modifications – like a subsequent reduction of damages – is of no relevance. The incorrect citation of the legal provisions upon which the application is grounded does not relieve the Court of its obligation to consider the motion where it is possible to identify the correct legal grounds based on the legal arguments and factual grounds put forward by the applicant in support of the application. This is what occurs in the situation at hand.[Article 42(2) UPCA, Article 76 UPCA]

IPPT20241226, UPC CFI, CD Paris, Advanced Bionics v MED-EL
Revocation rejected, maintained as amended by auxiliary request (Article 65 UPCA).Parties are to submit copies of documents relied on (Article 76 UPCA).  Admissible later filed documents (R. 44 RoP, R. 263 RoP). Admissibility of subsequent request to amend the patent (R 30(2) RoP) . Inventor not allowed as expert (R. 181(2) RoP).  Skilled person (Article 56 EPC). Common General Knowledge.  No insufficient disclosure (Article 83 EPC, Article 138(1)(b) EPC). Added matter – impermissible generalization (Article 123(2) EPC).  Inventive step (article 56 EPC). 

IPPT20241224, UPC CFI, LD Munich, Panasonic v Xiaomi
Withdrawal pursuant to settlement after written proceedings: agreed that each party bears its own costs, 40% refund of court fees (R. 265 RoP, R. 370.9(b)(ii) RoP)

IPPT20241224, UPC CFI, LD München, Snowpixie v Golf Tech
Extension of deadline due to health impairments of representative, which are to be further substantiated, for filing Reply in infringement action and Statement of defence in revocation action until 27 December by way of exception (R. 9.3 RoP, R. 29 RoP, R. 284 RoP)

IPPT20241223, UPC CFI, LD Paris, Tiru v Maguin (and Valinea)
Ex parte order to preserve evidence and inspect premises subject to disclosure terms and subject to the providing of security by applicant (R. 196 RoP, R. 199 RoP). No extreme urgency requiring an immediate decision by the standing but only urgency (R. 194.4 RoP). The urgency in this case being the risk of the furnace in question being put into operation in the first quarter of 2025, i.e. at the earliest in early January 2025

IPPT20241223, UPC CFI, LD Munich, Panasonic v Guangdong OPPO
Withdrawal after settlement of infringement claim and counterclaim for revocation (R. 265 RoP). Each party bearing its own costs. Each party gets a fee refund of 40 per cent in accordance with R. 370.9(b)(ii) RoP. 

IPPT20241223, UPC CFI, LD München, Avago v Tesla
Withdrawal of the case after decision of 30 August 2024 in which patent was declared invalid (R. 265.1(c) RoP) with each party bearing its own cost

IPPT20241223, UPC CFI, LD Düsseldorf, Maxeon v Aiko - II

IPPT20241223, UPC CFI, LD Düsseldorf, Maxeon v Aiko - I
Confidentiality club rules (R. 262A RoP). To the extent that the Defendant 7. requests access for another lawyer, there is no need to grant such access. Either the lawyer for whom access is requested is actively involved in the case. In this event, it is already the responsibility of the Defendant’s 7. representatives to grant access as part of their team, with the consequence that they are also responsible for ensuring that these other lawyers keep the information confidential. Or that other lawyer is not actively involved in the case. In this situation, there is no need to grant access to the confidential information. Rather, the Defendant’s 7. interest in confidentiality will prevail [...].. The Court has refrained from setting an upper limit on the potential penalties to be imposed. This gives the Court the necessary flexibility to take account of the circumstances of each individual breach of the confidentiality order and to determine the penalty payments on that basis.

IPPT20241223, UPC CFI, CD Milan, Insulet v Menarini
Cost decision to pay € 1,764 for legal costs regarding unsuccessful intervention. Application to intervene opens sub-proceedings (R. 313 RoP). Successful party in intervention sub-proceedings entitled to ask for legal costs  compensation (R. 151 RoP, Article 69 UPCA) in accordance with the general principle that the successful party is entitled to recover from the unsuccessful party the costs incurred in the proceedings. 

IPPT20241223, UPC CoA, Microsoft v Suinno - II
A unconditional limitation of the damages claimed shall be regarded as an unconditional limitation of the claim  (R 263.3 RoP). The determination of the value of the action (at the time of filing the action) will be the responsibility of the judge-rapporteur during the interim procedure (R 22, 104 and 370.6 RoP)

IPPT20241223, UPC CoA, Microsoft v Suinno
Application for confidentiality of “Confidential Global Licence & Art 79 UPCA Settlement offer to Microsoft” granted under R. 262 RoP (to the public) instead of R. 262A RoP (intra parties). This document, in its original version, is obviously known by Suinno and its representative and, as a result, does not require a restriction of access to specific persons pursuant to R 262A RoP. Instead, considering the confidential nature of some information contained therein, its original confidential version shall be treated as confidential and shall not be available to the public.

IPPT20241220, UPC CFI, LD Hamburg, 10x Genomics v Vizgen
Subsequent request to amend patent rejected (R. 30.2 RoP). The new amendment could have been made at an earlier stage in response to the preliminary opinion of the Opposition Division. Irrespective of whether the defendant's view is correct that the plaintiff in 2) could have filed the two additional auxiliary requests of the third amendment together with the first amendment due to the defendant's attacks on the legal status, it is still not clear why the request was filed at the end of October 2024, even though the EPO's preliminary indication was issued on 2 August 2024.

IPPT20241220, UPC CFI, LD Mannheim, Pohl-Boskamp v pharma-aktiva
Preliminary injunction and provisional measures granted (article 69 UPCA). Jurisdiction over companies belonging to the Aldi-Süd Group (Article 33(1)(b) UPCA). Like the second respondent, the fifth respondent belongs to the Aldi-Süd group and was supplied by the first respondent as the manufacturer of the contested embodiment II. The rebuttable presumption of being the patent proprietor not rebutted by obvious clerical error (Article 47 UPCA, R. 8.5(c) RoP): the letter ‘o’ was omitted in the legal form suffix ‘GmbH & Co. KG’ of the applicant in the information contained in the application. Must be assumed that the features of claim 1 are realized (Article 25 UPCA, R. 171.2 RoP). The respondents have not specifically contested the realisation substantiated by the applicant, who bears the burden of proof in this respect (Rule 171.2 RoP). It is not sufficient to dispute the proper performance of the analyses carried out by the applicant on the weight proportions and viscosities. No high probability that the patent is invalid. Not established with a high probability ((überwiegender Wahrscheinlichkeit) that the European patent does not disclose the invention in a manner sufficient for it to be carried out by a person skilled in the art (Article 138(1)(b) EPC). Same for lack of inventive step (Article 138(1)(a) EPC, Article 52(1) EPC). Weighing of interest is in favour of the applicant (Article 69(2) UPCA). Infringement undisputed; The distribution of the contested embodiments, which are a competing product to the applicant's product, would deprive the applicant of the market opportunities associated with patent protection, at least for the period until a title is obtained in the main proceedings; no commitment to maintain distribution discontinued or destroy stocks. Left open whether admissible provisional measures are exhaustively regulated in Article 62 UPCA or whether the non-exhaustive wording in Rule 211(1) RoP  allows for other measures or whether Article 67 UPCA is applicable in proceedings concerning applications for provisional measures does not require a final assessment. Order for provisional reimbursement of costs (€ 11.000) based on Art. 69 UPCA in conjunction with R. 211.1(d) RoP.

IPPT20241220, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Leave to amend (R. 263 RoP, R. 105(5) RoP): respective claims in infringement action and counterclaim to add Romania as wished by both parties; details of the way in which the information is to be provided by the defendants, the request falls under Rule 13 RoP. 

IPPT20241220, UPC CFI, LD Munich, Phoenix v ILME
Public access granted while proceedings are still pending to opponent EPO opposition proceedings (R. 262 RoP)

IPPT20241220, UPC CoA, Alexion Pharmaceuticals v Amgen
Claim construction (Article 69 EPC). A linguistic error, a spelling mistake or any other inaccuracy in a patent claim can only be corrected by way of interpretation of the patent claim if the existence of an error and the precise way to correct it are sufficiently certain to the average skilled person on the basis of the patent claim, taking into account the description and the drawings and using common general knowledge. The Court of Appeal can leave open the question of whether the average skilled person, in the context of claim interpretation, can be expected to consult catalogues and databases to check how a perceived error in the claim should be corrected. Even if the average skilled person would do so, it would not be sufficiently certain that the signal peptide consists of 22 amino acids for the following reasons. Alexion’s assertion during the grant proceedings, and in particular the TBA’s endorsement thereof, can be seen as an indication of the view of the person skilled in the art at the filing date. Insufficient disclosure (Article 83 EPC). Claimed pharmaceutical composition comprises an antibody comprising a light chain consisting of SEQ ID NO: 4 including the first 22 amino acids is not suitable for formulation as a pharmaceutical composition and used as a drug.

IPPT20241219, UPC CFI, LD Copenhagen, Hybridgenerator v HGSystem
Ex parte order for preservation of evidence and inspection of property of 26 August 2024 upheld (Article 62 UPCA,  R. 211 RoP). The report prepared by the appointed independent IT expert will be provided to the representatives of the parties to the case. The representatives are obliged to keep secret any trade secrets and other confidential information that may come to their knowledge in this connection. The report can only be used as evidence in the main proceedings. The decision on costs is postponed until the main proceedings

IPPT20241219, UPC CoA, Sumi Agro v Syngenta
Additional pages from publication already submitted in first instance proceedings disregarded (R. 222.2 RoP). Sumi Agro has not justified that Exhibit SA17 could not reasonably have been made during those proceedings. The Court of Appeal decides to disregard the content of Exhibit SA17. Evidence relating to new version of contested embodiment will be regarded. Use of a different ingredient for a composition product marketed under one brand and under one set of marketing authorisations, cannot reasonably have been visible to Syngenta. Sample was bought within one month after Sumi Agro’s submission and subsequent analysis was ready after the order in the first instance 

IPPT20241219, UPC CFI, LD The Hague, Amycel
Steps already taken constitute good service of Statement of claim in proceedings on the merits (R. 275.2 RoP). Statement of claim is deemed served on 25 November 024, order to send a copy of this order to former representative, assuming he is still in touch with defendant.

IPPT20241219, UPC CFI, LD Paris, HP v Lama
Only the Court of Appeal has the power to suspend the execution of a decision (Article 74 UPCA, R. 223 RdP) and to date no appeal has been lodged against the decision on the merits. Confidentiality club (R. 262A RoP) for invoices and accounts of LMA France that will be communicated in the context of the execution of the decision of 13 November 2024. Security for enforcement rejected (R. 118.8 RoP). The Court notes that LAMA had not requested the provision of a security following HPDC's request for disclosure of information.

IPPT20241218, UPC LD Munich, Huawei v Netgear
Injunction regarding SEP patent. Effective cancellation of opt out (Article 83(4) UPCA, Rule 5.7 RoP). The effective date of a cancellation of an opt-out is the date of entry in the register if no correction is requested from the registry. The only required form for the cancellation is the corresponding CMS workflow. The provided template is not a required form within the meaning of R. 4.1 RoP.. No lis pendens. A nullification procedure in a contracting member state over the patent at issue concerning a different party does not give rise to lis pendens (Article 29 Brussels Recast I). Exhaustion (Article 29 UPCA) In the context of patent law, restrictions in a licence agreement regarding the right to use products placed on the market on the basis of the licence have no influence on the exhaustion the occurrence of the exhaustion effects. The burden of proof for placing on the market in the European Union with the consent of the patent proprietor lies with the implementer. Insofar as the objection of exhaustion relates to all the challenged embodiments, it must be dealt with immediately in the proceedings. If the objection is successful, the action must be dismissed. If the objection of exhaustion does not relate to all the challenged embodiments, it depends on the circumstances of the individual case whether and to what extent the objection is to be dealt with immediately or only in the context of enforcement. FRAND Defence  (Article 25 UPCA), Article 102 TFEU). A declaration of willingness to licence should be assessed solely on the basis of the content, and not on subsequent conduct, should contain a declaration to that effect, and should not be confused with an offer/a counter-offer. A counter-offer from the implementer must be accompanied by a security at least in the amount of the counter offer, and must be accompanied by a binding undertaking that the patentee will receive the security as a licence payment if his offer ultimately is legally affirmed. Implementer cannot claim a patentee has a dominant market position if it also claimed the patent is not standard essential. The defendant (relying on FRAND defence) has the burden of proving the dominant market position of the patentee. The patent cannot give the patentee a dominant market position if the defendant also relies on the argument that the patent is not standard essential.

IPPT20241218, UPC CFI, LD Hamburg, Visibly v Easee
Preliminary objection dismissed (R. 19 RoP). An alleged patent infringement is a matter of tort, delict or quasi-delict in the meaning of Art. 7 sub (2) of the Brussels I recast Regulation. Thus, the UPC has jurisdiction also for claims based on personal (director) liability with regards to an alleged infringement of a European patent under Article 32 UPCA. Whether the director of a company can be successfully sued before the UPC and held liable for the infringement of a patent is a liable is a question of the merits of the case which is not subject to the determination of jurisdiction and competence.

IPPT20241218, UPC CFI, CD Paris, Tandem Diabetes Care v Roche Diabetes Care
Revocation action dismissed; EP 231 maintained as granted (Article 65 UPCA). Action admissible in spite of breach of a standstill clause. A breach of a standstill clause does not necessarily divest the breaching party of the right to bring an action but it may only give rise to liability for breach of contract. Claimant in revocation action cannot introduce new grounds of invalidity or introduce new documents considered novelty destroying or affecting inventive step in subsequent written acts (R. 44 RoP, R. 263 RoP). Similarly, the claimant must specify in the statement of claim the facts that it considers necessary to prove in order to succeed in its claim, together with the relevant evidence. However, following the defence raised, the  the claimant may need to allege new facts, insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant. Likewise, the need to produce new evidence may arise from the defendant's defence which disputes the facts alleged by the claimant or the probative value of the evidence already filed in Court. Person skilled in the art (article 56 EPC) may be identified – lacking any indication from the parties – in a generic technical expert who understands the technical meaning of these features. No added matter (Article 123(2) EPC): the sentence in para. [0003] discloses a variant including only features A and C (and not B). Therefore, feature 1.5 of claim 1 – including features A and C – is supported by the description of the application as filed.

IPPT20241217, UPC CFI, LD Munich, Philips v Belkin
Information can be communicated in paper form or electronically (Article 67 UPCA) unless the judgement specifically determines otherwise. Penalty payment has both a deterrent and a punitive function (Article 82 UPCA). A penalty payment can therefore be imposed not only to enforce compliance with an order but also to punish non-compliance with a court order in the past

IPPT20241217, UPC CFI, LD Milan, Oerlikon v Himson
Order setting out decisions taken at the interim conference (R. 105(5) RoP)

IPPT20211217, UPC CoA, Curio v 10x
Application to the standing judge for suspensive effect of an appeal because of extreme urgency (R. 223.4 RoP) rejected regarding an order to the defendant to provide € 200.000 security for legal costs of the claimant (R. 158 RoP, Art. 69(4) UPCA). Within the discretion of the standing judge to dismiss the application without hearing the respondent. Extreme urgency under R 223.4 RoP is clearly distinct from, and does not require the impugned order to be “manifestly wrong”, but the Court is not convinced that the CFI was manifestly wrong and whether the CFI has given a correct interpretation of R 158 RoP regarding Art. 69(4) UPCA will have to be decided by the Court of Appeal at the end of the appeal proceedings.

IPPT20241217, UPC CFI, CD Munich, Nanostring v Harvard
Request to release the security rejected (R. 352(2) RoP). The Court has the power to release a security for legal costs and other expenses imposed under Rule 158 RoP on the basis of Rule 352.2 RoP. Despite the absence of a specific provision as part of Rule 158, the Court has the power to release a security on the basis of Rule 352.2 RoP, either directly or, if necessary, by way of analogy. Chapter 6 of the RoP (“Security for Costs”) – in which Rule 158 RoP is placed – does not contain a provision for the release of a security for legal costs and other expenses that has been imposed by the Court on a party. A security should be released when the reasons for imposing the security have ceased to exist. This will generally be the case where a final and non-appealable judgement has removed the possibility of the event for which security was ordered. Further, if the facts and circumstances that led to imposing the security order have materially changed so that the balance of interests is in favour of releasing a security, this can also be a reason to release the security.

IPPT20241213, UPC CFI, LD Paris, ICPillar v ARM
Withdrawal of infringement claim and counterclaim for revocation permitted (R. 265 RoP).The Court fees shall be reimbursed by the Court to the parties by 40% pursuant to R. 370.9 (b) and (e) RoP, i.e. the amount of 44,400 euros to ICPillar and the amount of 8,000 euros to ARM.

IPPT20241212, UPC CFI, LD Munich, Syngenta v Sumi Agro
Application to revoke provisional measures dismissed (R. 213(1) RoP, R. 15(2) RoP). As the respondents have started the main proceedings and paid the court fee in time the application is to be dismissed.

IPPT20241212, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Time period for lodging the Defence to the Counterclaim for Revocation and the Reply to the Statement of Defence is set on 14 January 2025 (R. 9 RoP). e Defendants have not objected to the harmonisation of the time limits for filing the Reply to the Statement of Defence and the Defence to the Counterclaim for Revocation. Such harmonisation of the time limits is in the interest of all parties and of the Court in the efficient conduct of the proceedings

IPPT20241212, UPC CFI, CD Paris, Microsoft v Suinno
Leave to appeal rejected (Article 73(2)(b)(ii) UPCA). The issue raised by the applicant is not the subject of different interpretations by Unified Patent Court judges and, anyway, is not able to affect the final decision on the merits that the Court shall issue.

IPPT20241212, UPC CFI, LD Hamburg, Hand Held Products v Scandit
Statement of claim of 6 November 2024 has been served on Swiss defendant on 20 November 2024 (R. 271.6 RoP, R. 274 RoP). Service on a defendant in Switzerland is subject to R. 274 RoP instead of R. 271.6 RoP as assumed by the CMS.

IPPT20241211, UPC CFI, LD Düsseldorf, Dolby v HP
Withdrawal of the actions in accordance with unanimous wishes of the parties (R. 265 RoP). Decision on pro-rata reimbursement of court costs (R. 370.11 RoP)

IPPT20241211, UPC CFI, LD Paris, DexCom v Abbott
EP 282 revoked (Article 138(1)(c) EPC, Article 65(2) UPCA). Inadmissible new added matter ground for revocation raised in Rejoinder to the reply to the Statement of Defence inadmissible (R. 9.2 RoP). Order by the judge-rapporteur allowing further written pleadings (R. 36 RoP) relates to adding some arguments to the debate related to some specific terms regarding claim interpretation, but it did not authorise ABBOTT to raise a new ground for revocation. The UPC procedure is a front-loaded system and the Court finds no legitimate reason to allow a new ground for revocation to be raised at a later stage of the proceedings concerning the validity of the patent as granted, even if such an order would have allowed the other party to respond to the new grounds. Claim interpretation (Article 69 EPC). The skilled person (article 56 EPC):is a group of persons, comprising persons skilled in the field of (physiological) analyte monitoring systems (such as Continuous Glucose Monitoring (CGM)) and persons skilled in the art of designing portable electronic systems, who are also familiar with the communication and data processing techniques involved in such systems. Strict literal interpretation of claim features relating to “the rules and the setting” in the present case (Article 1, Interpretation Protocol). Deviating from the wording of the claim would in the present case to the detriment of third parties not combine adequate protection for the patent proprietor with sufficient legal certainty for third parties. Lack of inventive step claim 1 as granted (article 56 EPC): the invention set out in claim 1 as granted does not involve an inventive step when considered in view of Valdes combined with Goodnow. Two aspects of the solution -  the presence of a server between the host and the remote devices, and an invitation scheme – are rendered obvious by Goodnow. Added matter auxiliary requests (Article 138(1)(c) EPC) claim 1 according to the auxiliary requests extends the subject-matter of the European patent beyond the content of the earlier application as filed. “Whole-content approach” must be adopted in the present case to determine added matter. Question to be addressed is whether the skilled person considering claim 1 would be confronted with new technical information based on what was derivable, directly and unambiguously, from the whole contents of the description, claims and figures of WO 631

IPPT20241211, UPC CFI, RD Nordic-Baltic, Edwards v Meril
No stay of proceedings (oral hearing at 16 January 2024) because of rapidly expected decision of EPO Opposition Division (17 January 2024) (Art. 33(10) UPCA, R. 295(a) RoP).It can be expected that the outcome of the opposition proceedings will be available before this Court issues its decision on the merits (even if the Court proceeds as planned with the oral hearing on 16 January 2025). Furthermore, it can reasonably be assumed that the future decision by the EPO Opposition Division will be subject to an appeal. 

IPPT20241210, UPC CFI, RD Nordic-Baltic, Edwards v Meril
Order setting out decisions taken at interim conference (R. 105.5 RoP) regarding Value of the case; Not rescheduling the oral hearing because of parallel proceedings at EPO (see also: IPPT20241211, UPC CFI, RD Nordic-Baltic, Edwards v Meril); Romanian ratification of UPCA; Claimant’s request to exclude/disregard certain attacks on inventive step (additional starting points as direct response to Claimant’s position, except for two documents (excluded as late filed); Claimant’s request to exclude/disregard some attacks based on added matter; Request to declare auxiliary requests inadmissible; Admissibility of arguments based on equivalence; Request to exclude/disregard a ground for non-infringement of claim 2; How to deal with Public Interest Defence; Request for a referral to the CJEU; Request for a court expert and “offer” to hear party experts; Practical aspects of hearing.

IPPT20241209, UPC CFI, LD Munich, Avago v Realtek
Anti-anti-suit and -anti-enforcement injunction granted (Article 62 UPCA) The UPC jurisdiction to issue interim measures to grant legal protection against imminent (foreign) prohibition regarding litigation and/or enforcement follows from Article 32(1)(a)(c) UPCA. A (foreign) prohibition on legal proceedings and/or enforcement violates the general European right to a fair trial (Art. 47 EU Charter). The prohibitions also contradict the German right to justice pursuant to Art. 2(1) and 19(4) of the German Basic Law (GG) and are to be classified as unlawful acts within the meaning of Section 823(1) of the German Civil Code (BGB). Special circumstances within the meaning of Rule 211.5 RoP cannot be justified solely by the (supposedly) long time required to obtain security. R. 213.1 RoP does not grant any discretion regarding the setting of a deadline for starting proceedings on the merits before the court

IPPT20241209, UPC CFI, LD Munich, air up v Guangzhou Aiyun
Service of Statement of claim deemed effective as of the date of this order. Steps taken constitute good service ((R. 271 RoP, R. 275 RoP). Service by alternative method or at alternative place service (Rule 275.1 RoP). Also applies if the foreign authority refuses service seriously and definitively […]. A serious refusal of service can also be assumed if a request for service is not processed for more than six months without any apparent reason. An attempt of alternative service can only be dispensed with if there is no legally and factually possible alternative for service. No other admissible alternative means of service; in particular, China has opposed to send judicial documents directly to persons in China by postal channels 

IPPT20241203, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Defendant to provide security for legal costs and other expenses to the Claimant in an amount of EUR 200,000. Defendant can also be ordered to provide security for legal costs (R. 158 RoP, Article 69 UPCA). It follows from the above that there is no conflict between Rule 158 RoP, in accordance with which a security may be imposed on a “party”, which includes a defendant, and the UPCA. In particular, there is no conflict with Article 69(4) UPCA, which does not exclude imposing a security on a defendant, and there is also no conflict with Article 56(1) UPCA as Article 69(4) provides the legal basis for a security, which may also be ordered against a defendant. In other words, the RoP comply with the UPCA (cf. Article 41(1) UPCA). Accordingly, the Defendant´s interpretation, on which its admissibility objections are based, is dismissed. In the absence of information on actual costs an amount of  EUR 200,000 is deemed adequate security 

IPPT20241211, UPC CFI, RD Nordic-Baltic, Edwards v Meril
No stay of proceedings (oral hearing at 16 January 2024) because of rapidly expected decision of EPO Opposition Division (17 January 2024) (Art. 33(10) UPCA, R. 295(a) RoP).It can be expected that the outcome of the opposition proceedings will be available before this Court issues its decision on the merits (even if the Court proceeds as planned with the oral hearing on 16 January 2025). Furthermore, it can reasonably be assumed that the future decision by the EPO Opposition Division will be subject to an appeal. 

IPPT20241211, UPC CoA, Scandit v Hand Held Products
Request for simultaneous interpretation from German into English rejected (R. 109.2 and 109.4 RoP). Applicant did not chose English as the language of the proceedings; mere fact that internal staff of the applicant who do not speak German will attend the hearing is no justification. However, applicant has the option, in accordance with R. 109.4 Rules of Procedure, to hire an interpreter at her own expense and to provide simultaneous interpretation herself. 

IPPT20241211, UPC CoA, Magna v Valeo
Suspension of provisional injunction to cover PI carveout for BMW supplies. The effect of the impugned order suspended insofar as the injunction covers the BMW 2 Series Gran Coupé car model (Article 74 UPCA, R. 223 RoP). From the Statements lodged by Magna it was therefore already clear that there were six car models already on the market or soon to be introduced on the market that were fitted with the attacked embodiment. The Court at First Instance could and should have deducted from the above mentioned documents – and if uncertain in the alternative should have asked Magna at the hearing which models should be included if such a list with exempted car models was going to be drawn up, and would thus have learned – that also the 2-series Grand Coupé should be on that list. It was obviously wrong not to correct the impugned order by adding the 2-series Grand Coupé to the list of exempted cars. 

IPPT20241210, UPC CoA, NanoString v 10x Genomics
As a general rule revocation in appeal affects penalty payments. Revocation in appeal of a first instance provisional injunction has, as a general rule, retroactive effect (Article 75(1) UPCA, R. 242.1 RoP, Article 3 Enforcement Directive). The order is revoked because it has been established by a final judgment of the Court of Appeal that the order should not have been made. A revoked order must therefore be regarded as never having had any legal effect. It follows that the revocation of an order granting a provisional injunction prohibiting the continuation of infringements subject to a recurring penalty removes the legal basis for any subsequent decision ordering the payment of a penalty, even if that decision relates to alleged breaches of the provisional injunction prior to the revocation.  

IPPT20241203, UPC CFI, CD Milan, Pfizer v GlaxoSmithKline
Milan Central Division competent for revocation action (Article 33(4) UPCA, R. 19 RoP)). CD Milan competent, partial overlap of parties. The revocation action does not concern the same parties as the infringement action. UPC lacks jurisdiction in infringement action before the grant of the patent (article 97(3) EPC). An infringement action that is inadmissible at the time it is lodged, and hence brought in the context of Art. 33 par. 4 UPCA, cannot challenge the competence of the Central Division concerning a revocation action based on the same patent. No hearing before decision on Preliminary objection (R. 19 RoP, R. 264 RoP). Where the parties have had many opportunities to discuss (legal) questions and the Court does not have further questions to the parties or need to discuss legal issues, the Court may desist from having an oral earing. In the present case, parties have submitted written statements in two proceedings. No stay of revocation action until final decision on Preliminary objection (R. 295 RoP). The question of the validity of the patent will have to be dealt with in the infringement action, so there is no disadvantage for the defendant to proceed with this revocation action.

IPPT20241203, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Defendant to provide security for legal costs and other expenses to the Claimant in an amount of EUR 200,000. Defendant can also be ordered to provide security for legal costs (R. 158 RoP, Article 69 UPCA). There is no conflict between Rule 158 RoP, in accordance with which a security may be imposed on a “party”, which includes a defendant, and the UPCA. In particular, there is no conflict with Article 69(4) UPCA, which does not exclude imposing a security on a defendant, and there is also no conflict with Article 56(1) UPCA as Article 69(4) provides the legal basis for a security, which may also be ordered against a defendant. In other words, the RoP comply with the UPCA (cf. Article 41(1) UPCA). Accordingly, the Defendant´s interpretation, on which its admissibility objections are based, is dismissed. In the absence of information on actual costs an amount of  EUR 200,000 is deemed adequate security 
 

IPPT20241203, UPC CoA, SharkNinja v Dyson
Provisional injunction lifted (Article 62 UPCA, R. 211 RoP). Not more likely than not that the patent is infringed. it is not more likely than not that the contested embodiments realise feature 1.3 of claim 1. No need to examine the other grounds brought forward by the parties, given the assessment in relation to feature 1.3 of claim 1. Claim construction feature 1.3: “cyclonic separating apparatus” (Article 69 EPC). The patent specification does not define what a cyclonic separating apparatus is. The Court of Appeal, as a first step, agrees with Dyson’s view that cyclonic separating apparatus is a functional claim element as understood by the skilled person at the priority date.

IPPT20241202, UPC CFI, LD Munich, Heraeus v Vibrantz
Panel review: Change of claim to include Romania allowed (R. 263 RoP, R. 333 RoP)).Change of claim to include Romania allowed (R. 263 RoP). The two extensions of the action shall be allowed because both parties have requested that the question of infringement and validity concerning Romania also be heard and decided. Amendment of claim to include process claim allowed: does not constitute a change of claim within the meaning of Rule 263 RoP. This is because, following the example of the Court of Appeal, no other patent is being asserted. The infringement allegation regarding the same product is merely supported by an additional patent claim. Accordingly, only Rule 13 in conjunction with point 7 of the preamble and Rule 9.2 Rules of Procedure are to be examined.