2024 UPC July

IPPT20240731, UPC CFI, LD Paris, Abbott v DexCom
Request for information regarding distribution chain admissible but dismissed (Article 67 UPCA, Rule 191 RoP, Article 8 Enforcement Directive). Rule 191 RoP can be invoked at different stages of the procedure: during the proceedings, in order to compel parties to submit information with regard to submissions to be made, or at the stage of the final decision. Furthermore, the Court notes that it is appropriate to apply the same reasoning in relation to the right to information under EU Enforcement Directive 2004/48 (Art. 8), which allows a request to be made at any stage of the procedure. Request for information dismissed: not sufficiently justified as the applicant fails to demonstrate that the requested information is reasonably necessary for the purpose of advancing that party’s case. Disclosure of the entire distribution chain of the allegedly infringing products, in a situation where ABBOTT has deliberately chosen to act only against certain distributors, would be disproportionate and not sufficiently directly related to the present case. Moreover, as suggested as an alternative by DEXCOM in its written comments, ABBOTT would still have the possibility of requesting the disclosure of targeted information on the role of each of the defendants in the infringement established by a decision on the merits, in order to determine the damages owed by each of the defendant entities.

IPPT20240731, UPC CFI, LD The Hague, Amycel
Provisional injunction granted. No unreasonable delay between the finding of the Cayene at the end of July 2023 in the Netherlands and the filing of the Application on 3 May 2024. (Rule 211(4) RoP). Novelty arguments rejected (Article 54 EPC, Article 54 UPCA). Both novelty arguments raised by Defendant are unsubstantiated whereas the burden of presentation and proof for facts concerning the lack of validity of the patent and other circumstances allegedly supporting the Defendant's position lies with the Defendant. Mushroom varieties/strains are not excluded from patentability as plant varieties (article 53(b) EPC). The exclusion […]  does not encompass organisms other than plants and animals, such as mushrooms which belong to the fungi kingdom that is taxonomically distinct from the plant and animal kingdoms. Claim construction (Article 69 EPC). Genetical identity can be assumed to exist also in case the sequencing results show a similarity of 99,88 % or above (with a standard deviation of +/- 0,0235). In fact, in view of the inevitable sequencing errors 100% identity will likely not be found even between identical samples (i.e. samples for the same strain) with the present techniques. Provisional injunction granted (Rule 211(1) RoP, Rule 118.5 RoP, Rule 213.1 RoP). A cost decision (including the height of the costs to be reimbursed) is to be taken in the proceedings on the merits, that will have to follow these proceedings. The court shall specify the date pursuant to R. 213.1 RoP relevant for starting these proceedings in the order.

IPPT20240731, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Order replacing service (Rule 275.2 RoP). Ordered that the steps already taken as described above constitute legally valid service. Otherwise, service would be impossible due to the defendant's refusal to mandate the legal representatives in the main proceedings, although it was easily able to do so in the parallel cases before the Local Chamber in Munich, as well as the refusal of the national receiving authority responsible under the HZÜ, which is contrary to international law. If such steps are not promising for the reasons mentioned above, Rule 275.2 of the Rules of Procedure is also applicable if, after an attempt at formal service in accordance with Rules 270-274 of the Rules of Procedure, no further alternative attempt at service in accordance with Rule 275.1 of the Rules of Procedure has previously been made.

IPPT20240731, UPC DFI, LD Munich, DexCom v Abbott
Standard for novelty review (Article 54 EPC). In order to be considered part of the state of the art (Art. 54 (1) EPC), an invention must be found clearly integrally, directly and unambiguously in one single piece of prior art and in its existing form, it must be identical in its constitutive elements, in the same form, with the same arrangement and the same features. For lack of novelty to be found, the subject-matter of the invention must be derived directly and unambiguously from the prior art. This applies to all claim features. The standard for the disclosure content of a publication is what can and may be expected from the knowledge and understanding of an average person skilled in the relevant art. Lack of inventive step (Article 56 EPC). On the basis of Berman, the skilled person is faced with the task of selecting a communication protocol for on-demand data transfer from the list disclosed in Berman, after having selected, for example, BLE as the communication protocol for broadcasts. In doing so, the skilled person will consider all the advantages and disadvantages attributed to the respective protocols, which are common general knowledge. In order to optimize the energy consumption and other resources of a CGM system, the skilled person receives from Berman the suggestion to use a nearfield communication protocol to generate and transmit a request in order to initiate an on-demand data transfer (see paragraph [0103] last sentence), which he knows to be significantly less energy-intensive than any of the other protocols (Bluetooth or Wi-Fi) listed for periodic data transfer. Nor does Berman teach against combining different communication protocols. On the contrary, Berman teaches that a combination is possible. This choice would not require drastic changes to the system known from Berman, in which the display device can typically be a smartphone

IPPT20240730, UPC CoA, Alexion Pharmaceuticals v Samsung Bioepsis
No expedition of the appeal (Rule 9(3) RoP, Rule 220(1) RoP)(Rule 235 RoP) Due account must be given to the principles of due process, among which equality of arms. The Court of Appeal does not consider that the circumstances of the present case are so urgent that the interests of the appellant outweigh those of the respondent. The appellant’s arguments that it is seeking patent protection as soon as possible and that the appeal concerns a purely legal issue, are not sufficient to shorten the time limit for lodging the statement of response. This time period is already relatively short for appeals against orders referred to in R. 220.1(c) RoP, such as the present appeal, namely only 15 days. The fact that the appellant did not make use of the entire time period within which it could have lodged its statement of grounds of appeal, does not lead to a different assessment.

IPPT20240730, UPC CFI, CD Paris, Cead v Bego
No confidentiality club for expected litigation costs, including working hours of lawyers and patent attorneys and resulting fee claims, but confidential treatment vis-à-vis the public granted (Rule 262A RoP, Rule 262(2) RoP). A restriction of access to information for parties to proceedings pursuant to Rule 262A always includes an exclusion of the public from access to the information pursuant to Rule 262 RoP as a ‘minus’. While the parties to the proceedings who would be affected by a possible confidentiality order pursuant to Rule 262A RoP are particularly affected by the fundamental right to be heard and their right to a fair trial, only the general public interest in information must be taken into account when deciding on the request pursuant to Rule 262.2 RoP. The requirements for granting a restriction on publication are therefore lower.

IPPT20240730, UPC CFI, LD Düsseldorf, Dolby v HP
Intervener entitled to protection of confidential information. Unless otherwise ordered by the court, the intervener is to be treated as a party (Rule 315(4) RoP). Just like a party, he therefore has the option of filing an application for protection of confidential information with regard to the information contained in the pleadings submitted by him (Rule 262A RoP).

IPPT20240730, UPC CFI, LD Vienna, Swarco v Strabag
Intervention admissible on the condition that the intervener deposits a security for costs in the amount of EUR 134.000 with the UPC by 20 August 2024 ((Rule 314 RoP). While Article 69(4) UPCA only provides for the provision of a security for costs by the plaintiff, Rule 158 RoP extends the circle of addressees of such an order to "the parties" and thus also to the intervener if it is admitted. Legal interest in the result of the action requires a direct and present interest in the issuance of the order or decision requested by the supported party, which in any case can be affirmed if it is alleged that the product purchased from the intervener infringes the patent in suit (Rule 313(1) RoP).

IPPT20240730, UPC CFI, LD Wien, Swarco v Strabag
Intervention admissible on the condition that the intervener deposits a security for costs in the amount of EUR 134.000 with the UPC by 20 August 2024 ((Rule 314 RoP). While Article 69(4) UPCA only provides for the provision of a security for costs by the plaintiff, Rule 158 RoP extends the circle of addressees of such an order to "the parties" and thus also to the intervener if it is admitted. Legal interest in the result of the action requires a direct and present interest in the issuance of the order or decision requested by the supported party, which in any case can be affirmed if it is alleged that the product purchased from the intervener infringes the patent in suit (Rule 313(1) RoP).

IPPT20240729, UPC CoA, NEC v TCL
Alternative method of service of Statement of claim requires a prior service attempt (Rule 275 RoP). There is no reason why the UPC should follow the practice of some German courts as suggested by NEC, since the UPC has its own procedural rules and furthermore the practice of some German courts does not create a precedent.

IPPT20240729, UPC CFI, LD The Hague, Powell Gilbert v Abbott and Sibio
Public access to the register granted, applying criteria set forth in IPPT20240410, UPC CoA, Ocado v Autostore (Rule 262 RoP). No specific interest required; interest of better understanding and scrutiny of decisions outweighs any interests of the parties involved once the proceedings have ended; in case of an appeal the purpose of protection of integrity withholding access to the documents in first instance no longer serves that purpose; No annex was filed while applying for confidentiality under R. 262A and Abbott also did not provide any specific reasons for confidentiality of (any of) those annexes. Leave to appeal granted. From R. 220/224 RoP and 73 UPCA it might not be totally clear if and when an appeal of this order can be lodged, while it appears this should at any rate be made possible. To prevent an appeal to become meaningless, a term of 15 days before access is granted is to be observed (and unless no appeal is filed within that period).

IPPT20240729, UPC CoA, Hanshow v VusionGroup
Application for determination of costs following an order or decision of the Court of Appeal relating exclusively or partially to the costs of the appeal must be submitted to the Court of First Instance and will be decided by the judge-rapporteur of that court. If the successful party wishes to apply for an order for costs following a decision in principle on the obligation to pay costs, it must submit an application within one month of notification of this decision (Rule 151 RoP).

IPPT20240729, UPC CFI, LD Munich, Amgen v Sanofi-Aventis
Infringement proceedings stayed at unanimous party request, pending appeal against the decision to revoke the patent in its entirety upon unanimous request of the parties (Rule 37(4) RoP, Rule 295(m) RoP).

IPPT20240729, UPC CFI, CD Paris, Mathys & Squire v Bitzer and Carrier 
Access to all written pleadings and evidence granted (Rule 262 RoP, Article 45 UPCA). The interest of integrity of proceedings usually only plays a role during the course of the proceedings.  Having this in mind, it must be considered that the current proceedings have come to an end that the interests opposing the publication of the proceedings, as outlined in Article 45 ‘UPCA’, do not seem substantial enough to override the requester's interest in gaining access to the related documents and evidence. 

IPPT20240729, UPC CFI, CD Paris, Bitzer v Carrier Corporation
Claim 1 of EP ‘708 maintained as amended by auxiliary request II. Partial inadmissibility of request to amend patent (Rule 30 RoP, Rule 50 RoP). It must be clarified that if […] a request for patent amendment also concerns nonchallenged claims, such request will not be considered entirely inadmissible, as argued by the claimant, but will instead be considered admissible, and addressed, only with regard to the challenged claims. Furthermore […] the patent proprietor is entitled to propose amendments to the challenged claims also by inserting features, omitted in the original claims, mentioned in the non-attacked claims. Inadmissible late-filed grounds for invalidity (Rule 44 RoP, Rule 30 RoP). New grounds for invalidity (novelty and lack of inventive step) raised in Reply to defence to revocation and Defence to the application to amend the patent, not submitted in the statement for revocation and which did not relate to the amended version of the patent are inadmissible as they are not permitted by the Rules of Procedure and, in general, are contrary to the front-loaded character of the ‘UPC’ proceedings. No added subject matter by amending “at least one” into “a plurality” (Article 123(2) EPC). This amendment is supported by the application as originally filed in original claim 1 (‘at least one…’), paras. 28 and 37 and figure 1 of the application as originally filed. It should also be noted that the expression ‘at least one’ comprises ‘a plurality’, as it means one or more. Enabling disclosure of a “user induced event” (Article 83 EPC) in view of what the description teaches and provides as examples and of what is general common knowledge. No lack of clarity of the term “temperatures” (Article 84 EPC). A person of ordinary skill in the art, applying a natural reading to the phrase ‘a plurality of sensors to monitor temperatures’, would understand this to mean a plurality of environmental sensors, each monitoring temperature. This conclusion is supported by the general meaning of the expression in question, as well as by para. [0011] and Fig. 2. Auxiliary request II. No lack of inventive step (Article 56 EPC). The teachings contained in these prior art documents do not provide any motivation to solve the technical problem by adjusting the sampling rate based on at least one of the environmental altering events and the user induced event and, therefore, to change the energy-intensive process step of transmitting data to the controller on the basis of changing needs. Additionally, it should be noted that, according to Article 56 ‘EPC’, the state of the art relevant for the assessment of the inventive step does not include the content of European patent applications as filed if their dates of filing are prior to the date of filing of a European patent but their dates of publication are on or after that date. 

IPPT20240726, UPC CoA, OrthoApnea
Request for suspensive effect of appeal, regarding a decision not to extend a time period and to allow amendment of infringement claim with equivalency, admissible but unfounded (Art. 74(1) UPCA, Rule 223 RoP, Rule 263 RoP). Parties submit their statements in the written procedure without knowing how their allegations will be assessed by the Court of First Instance or the Court of Appeal. That entails the risk that part of their allegations will not be relevant for the outcome of the case.

IPPT20240726, UPC CoA, ICPillar v ARM
Request ICPillar for confidentiality of insurance policy rejected on 23 July 2024 (Rule 262A RoP). ARM given the opportunity to amend its Statement of response regarding the unredacted version of Exhibit 4 by 2 August 2024. (Rule 263 RoP). ICPillar not given an opportunity to amend its Statement and grounds of appeal. ICPillar could bring – and should have brought – forward arguments in its Statement of appeal and grounds of appeal based on the unredacted version of Exhibit 4 when lodging the appeal and request confidentiality in relation to that document together with uploading a redacted version of its Statement of claim and grounds of appeal, as it has done with Exhibit 4 itself.

IPPT20240726, UPC CFI, LD Paris, Cane v France Development Electronique
Settlement confirmed by the Court; request to publish a redacted version granted (Rule 11 RoP, Rule 365 RoP). Application to withdraw exhibits by party agreement from the proceedings granted. Reimbursement of 60% of Court fees (Rule 370(9) RoP). Case was assigned to a single judge at the request of the parties, and the settlement was reached on 20 June 2024, before the close of the written procedure. 

IPPT20240726, UPC CoA, Abbott v Sibio
Allowability of auxiliary requests to be argued and decided at the oral hearing (Rule 263 RoP). In view thereof, time extension for Statement of response reasonable, also taking into account the summer holiday period (Rule 9 RoP, Rule 235 RoP).

IPPT20240726, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna

The scope of R. 263 RoP is not limited to the main proceedings. It also applies to applications for provisional measures. The applicant may also apply for leave to change its claim or to amend its case. If the applicant adds a feature which was previously only “alternatively” claimed, this narrows the scope of a possible preliminary injunction. Embodiments which satisfy all the other features but not the now added feature are no longer covered by a possible preliminary injunction. If this limitation is unconditional, R. 263.3 RoP applies.
 

IPPT20240725, UPC CFI, LD Hamburg, Xiaomi v Daedalus
No convincing reasons for time limit extensions (Rule 9.3(a) RoP)(Rule 262A RoP). Necessary coordination with suppliers based outside Europe is not a convincing reason for an exceptional extension of the time. Neither that  exchange of technical information is subject to very restrictive confidentiality obligations imposed on the defendants 3) and 4). this does not justify the requested extension. The RoP do provide especially for that purpose a possibility for the protection of confidential information in R. 262A RoP, which can be used parallel with the lodging of the statement of defence. Counterclaim for revocation concerns technical questions that are most likely independent of any possible confidentiality obligations.

IPPT20240725, UPC CFI, LD Hamburg, Tandem Diabetes Care

When deciding on a request to change the language of the proceedings to the language in which the patent was granted, all relevant circumstances relating to the case and to the position of the parties shall be taken into account. If the outcome of balancing of interests is equal – here both parties being international companies operating worldwide – the position of the defendant is the decisive factor.

IPPT20240724, UPC CFI, LD Paris, Seoul Viosys v Laser Components
Application to stay infringement proceedings pending a decision of the Paris Central Division in the revocation procedure rejected as unjustified (Article 33(4) UPCA, Rule 118(2)(b) RoP, Rule 295 RoP). Only partial identity of the parties, highly likely that the Central Division will not retain jurisdiction, state of the respective proceedings before the two divisions. The concept of "same parties", to be interprtetated by analogy with the rules of jurisdiction under the Brussels Regulation I bis Regulation 

IPPT20240724, UPC CFI, LD Mannheim, Hurom v NUC
Video recordings exceeding the maximum size for exhibits to be uploaded to the CMS can be submitted on a USB stick as so-called “physical exhibit” (with a detailed ‘how to’-instruction by the judge-rapporteur) (Article 53 UPCA, Rule 4 RoP, Rule 9 RoP).

IPPT20240723, UPC CoA, PMA v AWM
Application to preserve evidence or inspect premises implies a request to disclose the outcome of the measures (evidence) to the applicant and the procedure aims not merely to preserve evidence but also to disclose the evidence to the applicant (Article 60 UPCA, Rule 192 et seq. RoP). Order to preserve evidence or inspect premises must be subject to the protection of confidential information (Rule 196 RoP). Where the evidence may contain confidential information, this entails that the Court must hear the other party before deciding whether and to what extent to disclose the evidence to the applicant. The Court must hear the other party on the request for disclosure even if this party has decided not to file a remedy against the order to preserve evidence or inspect premises. For the revocation or otherwise ceasing to have effect of the measures (Article 60(8) UPCA) the Court must, as a general principle, specify in its order a time period that starts to run from the date of disclosure of the evidence to the applicant or from the date on which the Court has made a final decision not to grant the applicant access to the evidence.

IPPT20240723, UPC CFI, CD Munich, Astellas v Healios
Three ways to terminate proceedings. Parties may at any time conclude their action by way of settlement, which may be confirmed by the Court (Rule 11 RoP, Rule 365 RoP), by way of agreement to withdraw the action (Rule 265 RoP) or by application to dispose of the action for having become devoid of purpose (Rule 360 RoP).

IPPT20240723, UPC CFI, LD Milan, Oerlikon v Himson
Confidentiality order (Rule 262A RoP). Document no. 37 (license agreement) excluded from evidence as it cannot be used by any of the parties

IPPT20240722, UPC CFI, LD Mannheim, AYLO v DISH
Application for panel review of Rule 262A RoP case management order admissible but unsuccessful on the merits (Rule 333 RoP). The three persons named by the applicants were rightly not excluded in the order of 3 July 2024 from access to the information to be classified as confidential on the functioning of the contested embodiments.

IPPT20240722, UPC CFI, LD Düsseldorf, Dolby v HP
Intervener to be treated as a party and entitled to have at least one natural person, in addition to his legal representatives, have access to classified confidential information (Rule 315 RoP, Rule 262A RoP). 

IPPT20230719, UPC CFI, LD Brussels, OrthoApnea
Panel review of case management order judge-rapporteur (Rule 333 RoP) is of a marginal nature in the sense that it is limited to ascertaining whether the Judge-Rapporteur relied on the correct facts, whether he assessed them correctly and whether he made his decision within the bounds of reasonableness. No suspension of the predetermined deadlines written procedure granted (Rule 9 RoP, Rule 29 RoP). The Rules of Procedure do not provide for a suspension of the predetermined deadlines during the written procedure either after the submission of a Procedural Request, or after the submission of a Request for Review by the panel or after the initiation of an appeal against such review by the panel. A request for suspension can further only be granted if it is proportionate and the balancing of interests of the parties warrants it. This may be the case, for example, if the Defendants' rights of defence are seriously impaired and this is weighed against the Plaintiff's interests, in particular its interest in proceeding expeditiously. Amending infringement claim with equivalence arguments after receiving defendant’s defense in line with procedural evolutive course of the dispute and does not affect subject matter of the proceedings (Rule 263 RoP, Rule 13 RoP).  Leave to appeal granted (Rule 220.2 RoP)

IPPT20240719, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Patent maintained as amended by auxiliary request II. Connection joinder and competence of the Central Division (Rule 340 RoP, Article 33 UPCA). Coordination of revocation action and counterclaims for revocation through consolidation through consolidation before the local division is not possible. Admissibility of application to amend the patent (Rule 30 RoP, Rule 50 RoP). If an application to amend the patent is found to be inadmissible, any subsequent request to amend the patent must also be considered inadmissible. The number of the amendments originally filed [9 conditional amendments and 84 auxiliary requests] considered to be extremely high, potentially hindering the efficiency of the ‘UPC’ proceedings and the goal of delivering expeditious decisions, it does not appear that that number is ‘unreasonable’. Main Request invalid because of undue extension of divisional application – added matter (Article 76 EPC, Article 123(2) EPC). Intermediate generalisation as a consequence of the isolation of a non-optional feature. Auxiliary request II - priority right not validly claimed (Article 87 EPC, Article 4 Paris Convention). Rebuttable presumption of the entitlement to priority in favour of the subsequent applicant, provided the latter can demonstrate the acquisition of the right to the title. Later application does not cover the "same invention".  Inventive step. Technical effect Auxiliairy request II (Article 56 EPC): Burden of proof: The party asserting the invalidity of the patent must prove the relevant constituent facts in order to rebut the presumption of validity accorded to the granted patent. It is necessary to determine whether, given the state of the art, a person skilled in the art would have arrived at the technical solution claimed by the patent using their technical knowledge and carrying out simple operations. Inventive step is assessed in terms of the specific problem encountered by the person skilled in the art. Problem-solution-approach does not appear to mandatory. Regardless, applying the “problem-solution approach” to the present proceedings would not lead to a different conclusion.

IPPT20240716, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
Patent revoked because of lack of inventive step (Article 56 EPC). Starting from Lagace the skilled person having the aim to provide a treatment or way of prevention of […] would as a next step have pursued the route of developing antibodies that block the interaction between PCSK9 and LDLR as explicitly suggested by Lagace [….] [and] would have ended up with antibodies as defined in the claims without inventive skill.. Patent’s own lexicon. The description and the drawings may show that the patent specification defines terms independently and, in this respect, may represent a patent´s own lexicon. Claim interpretation of a medical use product claim (Article 69 EPC). Skilled person is a team set out to solve a problem. Interpretation of the claims (Article 69 EPC). The meaning of the term “catalytic domain” is not explicitly defined in the Patent. The catalytic domain is understood by the skilled person as the region consisting of amino acid residues 123 to 419 of human PCSK9 (SEQ ID NO: 1). Based on wording of the claim and the description. It follows from the above that Figure 26 does not contain the “sole definition” of the catalytic domain. Feature F.3 should not be considered in isolation; its meaning must be determined in light of the claim as a whole and the underlying problem. Priority: “same invention” requirement (Article 87 EPC). Claimed subject matter is obvious and does not involve an inventive step (Article 56 EPC). An objective approach must be taken to the assessment of inventive step. Any starting point that has the same underlying problem as the claimed invention is a realistic starting point. In general, a claimed solution is obvious if, starting from the prior art, the skilled person would be motivated (i.e. have an incentive or in German: “Veranlassung”, see the CoA in NanoString/10x Genomics, p. 34) to consider the claimed solution and to implement it as a next step (“nächster Schritt”, CoA in NanoString/10x Genomics, p. 35, second par.) in developing the prior art. Application to amend (auxiliary requests): Rule 30 RoP applies mutatis mutandis in a revocation action based on Rule 50 RoP.

IPPT20240712, UPC CoA, Ballinno v Kinexon Sports
Request for extension of time period to lodge Statement of grounds of appeal rejected (R. 224.2(b) RoP). Time period for filing the Statement of grounds of appeal starts only once the reasoned decision is served. An earlier appeal filed without reasons is treated as a Statement of appeal only. Uncertainty on how to upload the Statement of appeal (either in a new appeal against the reasoned order of 28 June 2024 or as a (final) Statement of grounds of appeal in the appeal proceedings already lodged), does not justify an extension of the time period of R.224.2(b) RoP. 

IPPT20240712, UPC CFI, LD Düsseldorf, Seoul Viosys v epert e-Commerce
Inappropriate to order simultaneous translation into English in this case. (Article 49 UPCA, Rule 109 RoP, Rule 14 RoP). Costs of ordered translation are procedural costs which the other party may have to bear depending on the outcome of the proceedings. Plaintiff was free to decide in favour of conducting the proceedings in English when the action was filed.Plaintiff authorized to hire an interpreter at its own expense.

IPPT20240711, UPC CFI, LD Munich, KrausMaffei v Troester
Withdrawal of claim after settlement – 20% of court fees refunded (Rule 370.9(b)(iii) RoP). The oral proceedings were not yet concluded even after the oral hearing on 16/04/2024. Proceedings not yet ready for a decision.

IPPT20240711, UPC CoA, Apple v Ona
Motion to expedite appeal denied (Rule 9(3)(b) RoP, Rule 235(2) RoP). No particular interest shown by Apple. Having regard to Ona's interests and the principles of proportionality, fairness and equity, and taking into account the above reasons and the time Apple has taken to file its statement of grounds of appeal - which is significantly longer than the time Ona is to be given to file its Statement of response - the Court of Appeal is unable to see any reason for shortening the time limit for Ona to file its statement of defence as requested by Apple.

IPPT20240710, UPC CFI, LD Mannheim, MED-EL v Advanced Bionics
By way of exception: revocation counterclaim and plaintiff’s application for amendment of the patent are referred to the Paris Central Division, because almost all attacks against the patent in suit contained in the nullity counterclaim are also already asserted in the previously filed central nullity action (Article 33(3)(b) UPCA)

IPPT20240710, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Confidential information and confidentiality club rules in a FRAND case (Article 58 UPCA, Rule 262A RoP). Confidential information (Rule 262A RoP). Not accepted that the circumstances of the negotiations between the parties,  which are naturally already known to the defendants, are to be fully protected under Rule 262A RoP. A subsequent restriction of access on the part of the defendant is out of the question. Rather, this information can generally only be restricted in its intended use and be subject to protection against disclosure to uninvolved third parties in accordance with Rule 262 RoP. Likewise, the plaintiff's view that the very fact that the plaintiff enquired with the third-party licence agreement partners on the basis of the court's instructions and requested their consent to the submission must be kept secret cannot be accepted. This is because it is a procedural step ordered by the court, which must also be reflected in the court's orders. Confidentiality club rules (Rule 262A RoP, Article 48 UPCA). In the present case, the extension of access to the information in need of protection to three employees of the defendant is necessary, but also sufficient. Access to the information in need of protection in proceedings before the UPC is to be granted exclusively to authorised representatives pursuant to Art 48 UPCA who are authorised to represent the parties in the specific proceedings. 

IPPT20240710, UPC CFI, LD Munich, Panasonic v Orope
Lodging written pleadings and confidentiality club. Inadmissible lodging of a redacted “unredacted version” of the Reply (Rule 9(2) RoP, Rule 29 RoP, Rule 262A RoP). An exception be made because the problem is being addressed by the Unified Patent Court for the first time. Time limit for filing a rejoinder in the infringement action does not start to run until the defendants have been served with a fully unredacted Reply to the Statement of defence (Rule 29(c) RoP). Time limits for the counterclaim and the (alternative) amendment of the patent must be considered separately and have started running. Extension denied. 

IPPT20240709, UPC CFI, LD Mannheim, Panasonic v Orope
Confidentiality and confidentiality club rules (Rule 262A RoP). Disclosure limited to authorized representatives (article 48 UPCA) in proceedings before UPC Local Divisions in Mannheim and Munich. The issuance of a secrecy protection order is not excluded simply because the plaintiff inadvertently uploaded her reply in a workflow relating to another parallel proceeding before the Mannheim Local Court without redaction and thus without further restrictions visible to the defendant. The conclusion of a non-disclosure agreement (NDA) does not eliminate the need for secrecy protection under Rule 262A RoP. Defendant’s view that - insofar as third-party licence agreements submitted in the proceedings are concerned - only the mere name of the contractual partners is in need of protection is not convincing. Plaintiff's view that the circumstances of the negotiations between the parties, which are naturally already known to the defendants, are to be fully protected under Rule 262A RoP, cannot be accepted. Likewise, plaintiff’s view that the very fact that the plaintiff enquired with the third-party licence agreement partners on the basis of the court's instructions and requested their consent to the submission must be kept secret cannot be accepted. In the present case, the extension of access to the information in need of protection to three employees of the defendants is necessary, but also sufficient.

IPPT20240709, UPC CFI, LD Mannheim, Panasonic v Orope II
Confidentiality club and deadline extension from 17 July to 14 August 2024 (Rule 262A RoP, Rule 29 RoP). The extension is necessary but also sufficient to make a final statement on the FRAND aspect of the dispute. Case management (Rule 101 RoP) With regard to the further organisation of the parties' work, it should be noted that as things stand at present - subject to the outstanding written submissions - no interim hearing is intended to be held now that extensive preparation of the subject matter of the proceedings to date has already taken place in the written proceedings. Rather, a written decision on any questions to be clarified in the interim proceedings should be sufficient.

IPPT20230708, UPC CFI, LD Brussels, OrthoApnea
Amendment of case in Statement of Reply in response to the Statement of Defence with new facts, infringement arguments (equivalence) and claim permitted (Rule 263 RoP, Rule 13 RoP): consistent with the normative purpose of R. 13 RoP and, fitting into the procedurally-evolutive course of a judicial dispute. Deadline extension for Rejoinder to Statement of Reply with 2 weeks proportionate, reasonable and equitable (Rule 9(3)(a) RoP, Rule 29)(c) RoP). Extended period does not affect Claimant's rights, nor does it affect the further procedural calendar already determined in this case (specifically, the dates of the interim conference and pleading date). Leave to appeal dismissed for lack of appealable subject-matter (Rule 333(1) RoP). [case management order is to be reviewed by the panel] UPC_CoA_486/2023 APL_595643/2023 Decision (Order) of the UPC Court of Appeal issued on 21 March 2024, [IPPT20240321].

IPPT20240707, UPC CoA, ARM v ICPillar
Deadline extension and confidentiality club. Time period for lodging Statement of response extended with 15 days after unredacted version of Exhibit 4 has been made available to ARM’s representatives (Rule 9 RoP, Rule 262A RoP, Rule 235).

IPPT20240705, UPC CoA, 10x v Curio
Withdrawal of appeal from provisional measure with consent (Rule 265 RoP, Rule 151(d) RoP).The Court of Appeal is of the opinion that in case of a withdrawal of an appeal, the appellant shall be considered to be the unsuccessful party who shall bear the costs (as referred to in R.151(d) RoP) incurred in relation to the appeal proceedings. The cost of the appeal incurred by Curio shall be borne by 10x , in an amount to be determined by the Court of First Instance (as requested by both parties) 

IPPT20240704, UPC CFI, LD Paris, DexCom v Abbott 

Patent revoked because of lack of inventive step. Reasons for validity dependent claims to be presented by patentee (Article 65(2) UPCA). It is not for the Court to provide reasons why any of the grounds for revocation referred to in Art. 65(2) UPCA, as presented by ABBOTT, would not apply to dependent claims 2 to 9. Claim construction (article 69 EPC): “portion” cannot be construed as meaning “all” measurement data. This corresponds to the usual meaning of a “portion” and is in line with the description of the patent in suit, which distinguishes a portion from all data (Patent at issue, paragraph [0020]: “send a portion or all of the stored data”). Added subject-matter (article 138(1)(c) EPC). No added subject matter: Omitting from claim 1 as granted features related to estimated analyte values allowable because the skilled person understands that the steps of calculating and transmitting estimated analyte values are distinct from receiving and sending portions of the data indicative of analyte levels. Added subject-matter in Auxiliary request 2:  there is no basis for a broadening or a generalisation to any use of the second protocol that would be suitable for achieving the effect of facilitating pairing. Novelty (Article 54 EPC). In order to be considered part of the state of the art, an invention must be found integrally, directly and unambiguously in one single piece of prior art and in its existing form it must be identical with its constitutive elements, in the same form, with the same arrangement and the same features. Lack of inventive step (Article 56 EPC). In order to assess inventiveness, it is necessary to determine whether, given the state of the art, a person skilled in the art would have obtained the technical solution claimed by the patent using their technical knowledge and carrying out simple operations. Inventive step is defined in terms of the specific problem encountered by the person skilled in the art. Patent in suit does not involve an inventive step when considered in view of D1 combined with common general knowledge. Obvious for the skilled person to continue using the same protocol when confronted with the task of carrying out D1, which lists four candidates (NFC, Bluetooth, BLE and Wifi). Not any particular or surprising effect ascribed to choosing NFC (or RFID), beyond the well-known advantages of low power consumption and security due to the low range. Scope of the counterclaim for revocation of the patent is unrestricted; not limited to the scope of the infringement claim (Article 33(3)(a) UPCA). Brussels Ibis applies to UPC irrespective of article 71c as the UPC is a “common court” (Article 71a Brussels Ibis, Article 31 UPCA). Lis pendens. The Court uses its discretion in case of “related actions” (Article 30(2) Brussels Ibis) to maintain jurisdiction to rule on the validity of the entire European patent EP 866, including its German part: not in the interests of the proper administration of justice either to decline jurisdiction in favour of the German national court or to stay proceedings pending the decision of the national court.

IPPT20240704, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Case management order (Article 43 UPCA, Rule 9(1) RoP, Rule 101(1) RoP). Incorporation by reference of the instructions in parallel proceedings regarding the same patent Incorporation by reference of the instructions in parallel proceedings regarding the same patent (IPPT20240627, UPC CFI, LD Mannheim, Panasonic v Orope). Instructions regarding issues to be discussed related to added subject matter, priority and inventive step. Application to amend the patent and a reservation to respond with further amendments? (Rule 30(2) RoP). The question of whether a new amendment will be allowed will have to take into account whether the new amendment would have been necessary at an earlier stage in response to the arguments already submitted by the plaintiff for revocation and whether the late request for amendment will cause delays in the proceedings. In particular, the patent proprietor must provide detailed reasons as to why the later amendment is necessary.

IPPT20240704, UPC CFI, LD Munich, Xiaomi v Panasonic II
Confidentiality regime (Rule 262A RoP) and extensions for filing pleadings (Rule 9(3) RoP, Rule 29 RoP). The time limit for filing a Rejoinder shall only run from the date on which the defendants have been served with a completely unredacted Reply. This shall not affect the running of the time limits for the submission of pleadings relating to the Counterclaim for revocation and relating to the (auxiliary) requests for amendment of the patent.

IPPT20240704, UPC CFI, LD Munich, Xiaomi v Panasonic I
Confidentiality club rules (Rule 262A RoP). Disclosure limited to authorised representatives in the present proceedings, parallel proceedings before the Landgericht München and the Landgericht Mannheim, the UPC Local Divisions in München and Mannheim and before the High Court of Justice of England & Wales.Penalty payment only in case of of a culpable violation. Time limit for filing Rejoinder to the Statement of Reply  does not start to run until the fully unredacted Reply is available (Rule 9(3) RoP, Rule 29 RoP, Rule 262A RoP). Time limits regarding the revocation counterclaim and the (alternative) amendment of the patent run independent therefrom. Revocation is independent from FRAND-defence.

IPPT20240703, UPC CFI, LD Mannheim, Dish v Aylo
Confidentiality club membership rules considerations Rule 262A RoP). Number of persons having access to be determined on a case by case basis with the number of persons not being greater than necessary to ensure the right to an effective legal remedy and a fair procedure, including at least one natural person from each party and the respective layers of representatives of these parties. Access for three natural persons is generally not objectionable in terms of numbers in case of complex technical matter. In the absence of indications to the contrary, persons who are professionally familiar with the handling of confidential information, can generally be assumed to be reliable without the need for further explanations by the nominating party. The fact that the designated persons are active in a technical field related to the patent in suit does not preclude suitability in a specific individual case. No reason to restrict access on the part of the plaintiffs' authorised representatives to a certain number or even to named EPG representatives and their named internal assistants. If authorised representatives wish to use external assistants with regard to confidential information, they must name them in advance so that a court decision can be made on this. It may be necessary to deviate from these principles, particularly in urgent proceedings for interim legal protection, in order to meet the requirements of the proceedings. The plaintiffs' interest alone in ensuring that their respective legal representatives in the present proceedings and the parallel proceedings before the High Court of Justice exchange information extensively for effective and coordinated litigation does not justify making the confidential information available to the plaintiffs' representatives from the London proceedings. This would undermine the legitimate expectation of effective protection of confidentiality in the proceedings conducted before the Unified Patent Court on the basis of the UPC's Rules of Procedure.

IPPT20240703, UPC CFI, LD Düsseldorf, Abbott v Sibio
Confirmation of settlement reached between the parties (Article 79 UPCA, Rule 365 RoP). Reimbursement of 20% of the court fees paid in connection with the application for provisional measures (Rule 370 RoP). Such reimbursement is not precluded by the fact that the present proceedings concern an Application for provisional measures. Although the wording of the English version of Rule 370.9 (c) RoP speaks of an “action”, the German version is more sophisticated (“Verfahren”). The same applies to the French version (“affaire”). In addition, the possibility of partial reimbursement of court fees is intended to motivate the parties to end the proceedings as early as possible by concluding a settlement. This intention is present not only in proceedings on the merits but also in an Application for provisional measures. The fact that R. 370.9 (c) (ii) RoP also provides for an amount for the interim procedure does not justify a different assessment. 

IPPT20240703, UPC CFI, LD Düsseldorf, Kaldewei v Bette
Direct (undisputed) infringement (Article 25 UPCA) and indirect infringement (Article 26 UPCA). Indirect infringement requires a double territorial connection. Not necessary to decide the question whether in case of a European (bundle) patent subject to the UPCA without unitary effect, it is sufficient that the offer/supply takes place in one of the contracting member states in dispute and is intended for direct use of the invention in the other protected states, or whether, it must be required that the unlawful act is directed to the same Contracting Member State in which the direct patent infringement is realised by the supply. Burden of proof invalidity (article 54 UPCA). The burden of presentation and proof for facts relating to an attack on the novelty and/or inventive step of the patent in dispute lies with the defendant. Novelty: direct and unambiguous disclosure (Article 54 EPC). Findings that a skilled person only obtains on the basis of further considerations or by consulting other publications or uses are not prior art. The mere fact that the skilled person has two options for understanding the information speaks against the existence of a direct and unambiguous disclosure. Inventive step (Article 56 EPC). An inventive solution begins beyond the area which, based on the state of the art, is defined by what the skilled person with average knowledge, skill and experience can routinely develop and find in the relevant technical field. No prior use rights in each Contracting Member State (article 28 UPCA). No obligation to lay open books in infringement proceedings (Article 68 UPCA, Rule 131 RoP, Rule 141 RoP). Recall and definitive removal from the channels of commerce are two separate measures (Article 64(2)(b) and (d) UPCA). Retroactive extension of deadline from 13 May 2024 to 15 May 2024 for submission of sketches or documents to refer to at the hearing of 16 may 2024 rejected (Rule 9(3)(a) RoP). 

IPPT20240702, UPC CFI, CD Paris, Nokia v Mala Technologies
Application to amend the patent not inadmissible because Defendant failed to initiate the correct workflow in the CMS (Rule 4.1 RoP, Rule 49.2(a) RoP). The arguments underlying the Application to amend were brought to the attention of the court and Plaintiff within the 2-month time limit of R 49 (1), (2) RoP. No disadvantage arose for Plaintiff because Defendant failed to open a separate workflow. The Rules of Procedure have to be interpreted with reference to the principles of fairness and proportionality (Preamble No. 2 RoP).

IPPT20240702, UPC CFI, CD Paris, Microsoft v Suinno
Request rejected to declare the infringement action manifestly inadmissible (Rule 361 RoP) because (a) the claimant was not duly represented according to Article 48 of the Unified Patent Court Agreement (‘UPCA’) and Rule 8 (1) ‘RoP’ or (b) the content of the statement of claim was insufficient, as it lacked the requirements provided for by Rule 13 (1) (k) ‘RoP’. On due representation (Article 48 UPCA, Rule 8 (1) RoP, Rule 290(2) RoP): The mere fact that […] also carries out active administrative tasks on behalf of the represented party and that he may be directly interested in the outcome of the case is not decisive in order to consider that the representative is not independent for the purposes of interest here. Possible violation of the obligation of independence can only be asserted by the represented party, not by the counterparty. On the statement of claim being insufficiently concrete and specific not meeting the requirements set forth by Rule 13 (1) (k) ‘RoP’. The relief sought by the claimant is an injunction to the defendant to cease and desist the importation and sales of the alleged infringing embodiment in some specific national markets. […] the ‘nature’ of the order of the remedy sought is clearly indicated. The same can be said with regard to claimant’s request to determine and award past damages with interest. Indeed, in the statement of claim the claimant assumes ‘April 2019 and later years in Finland, Germany, and France for the period of infringement’. Therefore, the period of the infringement appears to be determined in a sufficient clear manner.