UPC Court of First Instance - 2024 - 2nd half-year

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 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).
 

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. 

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 62 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, Phoenix v ILME
Public access granted while proceedings are still pending to opponent EPO opposition proceedings (R. 262 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. 

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 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)

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, 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.

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.

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). 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 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.

PPT20241202, 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.

IPPT20241129, UPC CFI, LD Düsseldorf, Fujifilm v Kodak - II
The Claimant may, at its own expense, engage an interpreter (into Japanese) who may, if necessary, use the equipment available in the courtroom for simultaneous interpretation. (Article 51 UPCA, R. 109 RoP, R. 150 RoP).

IPPT20241129, UPC CFI, LD Düsseldorf, Fujifilm v Kodak - I
Defendant’s submissions in the brief of 28 November 2024 will be disregarded (R. 36 RoP). The Defendants did not make a reasoned request and the judge-rapporteur did not allow further written submissions to be exchanged. 

IPPT20241129, UPC CFI, CD Paris, NJOY Netherlands v VMR Products
Revocation EP 740 dismissed (Article 65 UPCA). No alleged lack of inventive step. The validity of the independent claim 1 justifies validity of the dependent claims 2 – 6. Admissible late filed documents in the Reply to defence to revocation (R. 44 RoP). It must be concluded that the documents introduced by the Claimant in the Reply to defence to revocation – […] – are admissible, given that it contains arguments regarding the common general knowledge and the claim construction which are intended to contrast and react to the arguments raised by the Defendant in its Defence to revocation and […] opinion, filed in support of these latter arguments. Reply to Rejoinder to the Reply to the Defence to revocation inadmissible (R. 51 RoP, R. 52 RoP). Person skilled in the art  (Article 56 EPC) of electronic inhalable aerosol devices. The skilled person stands for the average expert who is typically active in the technical field of the invention, has had the usual prior training and has acquired average knowledge, skills and practical experience for routine work, but does not have inventive imagination, thinking and skills. When interpreting a patent claim, the person skilled in the art does not apply a philological understanding but determines the technical meaning of the terms used with the aid of the description and the drawings. Common general knowledge (‘CKG’) is not all publicly available knowledge (Article 56 EPC, Article 54 UPCA). Neither an individual product nor a patent application as such are a familiar source of information. In general common general knowledge is information which has been commonly known to the skilled person from written sources or from practical experience in the relevant technical field. The ‘CGK’ includes knowledge which is directly available from familiar sources of information relating to the specific technical field at the prior date but is not to be confused with publicly available knowledge, which may not be general and common. No lack of inventive step (Article 56 EPC). An assessment based on different starting points will be more complete and objective than problem-solution approach, which is only one possible way for assessment of the inventive step. There is no legal rule that requires its application or restricts the application of other approaches. This panel considers that an assessment based on different starting points as suggested by the Claimant will be more complete and objective. 

IPPT20241128, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Additional confidentiality order (R. 262A RoP). If the Claimant’s representatives named in paragraph II. 1. above make use of the possibility of giving access to confidential information to other members of their team, it is their responsibility to ensure that their team maintains the confidentiality of the information.

IPPT20241127, UPC CFI, CD Paris, NJOY Netherlands v VMR Products

Patent revoked in its entirety (Article 65 UPCA). Lack of inventive step (Article 56 EPC). Given this explicit guidance in ‘Lee’, the skilled person, in his attempt to solve the underlying problem of developing a vaporizer that allows a portion of a cartomizer receiving chamber of the shell to be visible from the outside, would have found the claimed invention on the basis of its knowledge and skills, namely by providing the shell in the device already known from ‘Pan’ to include a window provided at the cartomizer receiving segment, as an obvious modification. Patents as indications of common general knowledge of person skilled in the art (Article 56 EPC). While it is in general questionable that a particular published patent application or a patent specification can be considered as an indication of common general knowledge, however the statement of the author of the patent that a teaching is widely spread at the time can used as evidence of the fact that this teaching forms part of common general knowledge. Front loaded procedural system (R. 13 RoP) must be interpreted in the light of the principle of proportionality, which requires that the parties should not be burdened with tasks that are unnecessary to achieve the stated objective, and in the light of the principle of procedural efficiency, which is contrary to excessive and overly detailed allegations of facts and production of multiple documents in relation to matters that can be presumed to be known to the opposing party and not to be disputed by them. In revocation actions, the claimant is required to specify in detail the grounds of invalidity that allegedly affect the contested patent, as well as the prior art documents relied upon to support any allegation of lack of novelty or inventive step. Introduction of new grounds or new facts. The claimant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered novelty destroying or convincing starting points for the assessment of lack of inventive step in subsequent written acts. New facts in certain situations. in certain situations, following the defence raised by the defendant, 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. In this case, the need to respond to the defendant's defence, the terms of which cannot be foreseen ex ante by the claimant, justifies the introduction of such new facts in the reply to defence to revocation. 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

IPPT20241127, UPC CFI, LD Milan, Oerlikon v Himson
Interim conference held by video conference (R. 105 RoP)

IPPT20241126, UPC CFI, LD Paris, C-Kore Systems v Novawell
Order setting out decisions taken at interim conference (R. 105.5 RoP). Regarding execution of Saisie Order by court appointed expert (R. 196 RoP), confidentiality order (R. 262A RoP), dismissal of request to plead in French, notions regarding claim construction and validity, value of the case, time frame oral hearing.
 

IPPT20241126, UPC CFI, LD Munich, GXD-Bio v Myriad
Claimant to provide security of € 112,000 for legal costs and other expenses (Article 69(4) UPCA, R. 158.1 RoP). Based on the undisputed facts, there is legitimate and real concern that a possible cost order might not be recoverable and/or the likelihood that a possible cost order by the UPC may not, or in an unduly burdensome way, be enforceable. There are significant doubts as to whether the Claimant, in the event of losing the proceeding, has sufficient funds for covering Defendants´ recoverable costs of the current lawsuit

IPPT20241126, UPC CFI, CD Paris, Microsoft v Suinno
Unconditional reduction of damages sought in an infringement action is a limitation of the claim that must be granted (R. 263(3) RoP) if it is filed with due explanation and unconditionally and irrespective of the subjective intention underlying the application. No re-considering of already paid fees on an application lacking substantive argumentation

IPPT20241125, UPC CFI, LD Munich, Häfele v Kunstsoff
Application for provisional measures dismissed (Article 62 UPCA, Rule 211 RoP). Extraordinary damages caused by further distribution not submitted, lock-in effect cannot be established. Doubts as to the novelty of the patent in suit in spite of response of EPO Examining Division to the raised objections of third parties based on D8. Party: Irrebuttable presumption that registered proprietor of a unitary patent is also the actual proprietor (Rule 8(4) RoP). The general purpose of Rule 8(4) RoP (and similarly of Rule 8(5)(c) RoP) is to keep the proceedings before the UPC separate from the dispute as to the substantive ownership of a European patent, irrespective of whether or not ownership is relevant to the right to bring proceedings or to entitlement to claim. Claim interpretation (Article 69 EPC). In principle, the meaning of a dependent claim can contribute to the correct interpretation of the main claim. Dependent claims regularly do not narrow the subject matter of the main claim, but merely show – possibly in connection with an additional advantage – possibilities for its realisation, no differently than in the form of examples. In principle, the prosecution history does not constitute admissible interpretative material. A European patent cannot be interpreted on the basis of text passages that were deleted from the description during the grant procedure. At best, statements by the applicant or the granting authority to understand the feature of a patent claim to be interpreted could be regarded as an expert opinion. Weighing of party interests (Article 62(2) UPCA, R. 211(3) RoP). Above all, the weighing of interests must take into account the probability of an erroneous decision and also the objective urgency in terms of the necessity of provisional measures with regard to equally possible proceedings on the merits. Main proceedings are the rule, provisional measures the exception. Is it reasonable or unreasonable for the applicant to wait for a decision in the main proceedings? Doubts as to the novelty of the patent in suit carry additional weight in the weighing of interests. Unreasonable delay – objective urgency (R. 211(4) RoP) links the requirement of objective urgency with the subjective right of the applicant. The provision expresses that an applicant whose conduct already subjectively indicates that he is in no hurry cannot expect to receive assistance through the ordering of interim measures. However, the reverse conclusion, that interim measures are to be ordered simply because the applicant has acted quickly, does not apply. Rather, the ordering of interim measures must also be objectively urgent.

IPPT20241125, UPC CFI, LD Paris, Dexcom v Abbott
No justification to reopen the debate after the oral hearing because of decision of Munich Regional Court  of 11 November 2024 (R. 334 and 336 RoP). This request made at a very late stage of the proceedings is not justified, since the decision in question does not concern the patent at issue in the present case, but its parent patent, which discloses another invention with similar but also different features. Moreover, the Regional Court of Munich, seized by an infringement action, did not examine the validity issue on the merits but in a context of a request for a stay with regard to the pending nullity proceedings before the Federal Patent Court. 
 

IPPT20241125, UPC CFI, LD Milan, Oerlikon v Bhagat
Order setting following interim conference  (R. 105 RoP)

IPPT20241122, UPC CFI, CD Milan, Insulet v Eoflow
Application for provisional measure rejected (R. 211 RoP). Doubts regarding patent validity appear to be preventing the issuance of the requested order. To encapsulate, the subject matter of claim 1 of ‘327 is unlikely to be considered novel in light of the prior art disclosed in US’994, as the fluid delivery device described in US’994 seem to incorporate all the features described in claim 1 of the patent at issue. While the assessment of possible infringement logically precedes in a PI proceeding the assessment of the validity of the patent, the Court deems it necessary and appropriate in this very case to first assess the validity of the patent. Amendments of the patent are subject to Rule 30 RoP. Rule 263 RoP refers only to amendments to pleadings. Auxiliary request to amend the patent pursuant to Rule 30.2 RoP is not admissible in the proceedings for provisional measures.

IPPT20241122, UPC CFI, LD Mannheim, Panasonic v Guangdong OPPO - II
Defendants unilateral request of 21 November to stay decision of 22 November rejected (R. 295(m) RoP).The defendants cannot invoke the requirement of the proper administration of justice […]. Rather, they have left the court in the dark, so to speak ‘until the last second’, as to whether a decision should be made or not
 

IPPT20241122, UPC CFI, LD Mannheim, Panasonic v Guangdong OPPO
Infringement of 4G standard essential patent: permanent injunction granted (Article 63 UPCA), Order to communicate information (Article 67 UPCA), Award of damages, provisional damages of € 250.000 (Article 68 UPCA). Given the interpretation of the patent claim (Article 69 EPC): The patent is valid, revocation dismissed. No added subject matter (Article 138(1)(c) EPC. Priorities are validly claimed (Article 87 EPC). The invention is sufficiently disclosed (Article 138(1)(b) EPC). The patent involves an inventive step (Article 56 EPC) Attack solely based on incorrect interpretation of the claim. Left open whether document was capable of being taken into account. In principle, the revocation claimant is required to raise its attack already with the revocation counterclaim  (R. 25.1 RoP). Permanent injunction granted (Article 63(1) UPCA). Risk of repetition due to the infringing acts committed by the defendant in the past in the contracting states asserted in the present case. An understanding of a SEP as a chipped title for the enforcement of injunctions, which only serves to enforce higher licence fees, is irreconcilable with European law (Article 11 Enforcement Directive). Injunctive relief not precluded by FRAND objection (Article 102 TFEU). While the Plaintiff has behaved in accordance with the ECJ's programme of obligations addressed to it as SEP holder, the Defendants have not behaved in a targeted manner and in accordance with the practices of a party seriously interested in taking a licence in the negotiations for a FRAND -compliant licence within the meaning of the negotiating programme developed by the European Court of Justice in Case C-170/13 – Huawei v. ZTE, ECLI:EU:C:2015:477.

IPPT20241122, UPC CFI, LD The Hague, Plant-e v Arkyne
Valid priority (Article 87 EPC). Requirement of ‘same invention’ in Article 87 EPC is met if the skilled person can derive the subject-matter of the claim of an invention directly and unambiguously, using common general knowledge, from the previous application as a whole (the so-called ‘gold standard’). No added matter (Article 123(2) EPC). The “gold standard” disclosure test is also to be applied […]. Scope of protection (Article  69 EPC and the Protocol) assessed in two steps as seems to be common ground in most contracting member states (including France, Germany, Italy, Belgium, The Netherlands). In a first step, ‘literal’ infringement of the features of (claim 11 of) the patent in view of the claim construction is evaluated. In case claim 11 of the patent is not judged to be literally infringed, equivalence is assessed in a second step. Equivalence (Article 2 Protocol) involves assessing whether, in the perception of the skilled person, the claims, read in the light of the description and drawings, leave room for equivalents, given, on the one hand, equitable protection for the patentee and, on the other hand, a reasonable degree of legal certainty for third parties. A variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative: (i) Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context? (ii) Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee: in view of his contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)? (iii) Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally? (iv) Is the allegedly infringing product novel and inventive over the prior art? (i.e. no successful Gillette/Formstein defence). Fair protection: the patent claims a new category of microbial fuel cells – a fairly broad scope of protection is therefore in line with the contribution of the art. Legal certainty requirement [...] is met if the skilled person understands that the patent claim leaves room for equivalents because the teaching of the patent is (clearly) broader than the wording of the claim and there is, still in the eyes of the skilled person, no good reason to limit the scope of protection of the claim to a (method using a) device as claimed. Indirect infringement method claim (Article 26 UPCA). Bioo has also provided Bioo Panels and Bioo Benches to third parties. In that case Bioo indirectly infringes claim 11 because it does not apply the method itself, yet it provides Bioo Panels or Benches, which are an essential part for applying the method of claim 11. Appropriate measures: the use of a specific text is ordered for a recall letter and/or for publication on a website deemed appropriate to ensure that the measure is effective and to avoid a situation in which unclear or confusing messages are spread (article 64 UPCA, Article 10 Enforcement directive). 
 

IPPT20241121, UPC CFI, LD Munich, Collomix v Lidl
Submission of evidence (R. 172 RoP). The Rules of Procedure do not contain any principle according to which evidence in support of factual allegations made by the claimant may no longer be submitted after the action has been filed.

IPPT20241121, UPC CFI, LD Dusseldorf, DexCom v Abbott
No bifurcation of the infringement action and the counterclaim for revocation. With consent of the parties (Rule 37.1 RoP, Article 33 (3) UPCA)

IPPT20241120, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
No rectification of order (R. 353 RoP). Correct list of BMW models: no error or obvious slip: the model “2 Series Gran Coupé” was not introduced into the proceedings by the Defendants before their application for rectification of 6 November 2024. No slip of vindication action in France: omissions are not “clerical mistakes, errors in calculations and obvious slips”.  The statement in the Order is “With regard to the French part of the patent in suit, Defendant 1) filed a vindication action before the Paris Court of First Instance on 22 August 2024 (see Exhibits HRM 21a-1 – 21a-71).” Substituting a party’s understanding for the Court’s assessment: not an obvious slip. The Defendants substitute their understanding of the wording of the Nomination Letter referred to for the Court's assessment that it does not impose an obligation. This is not a valid argument for rectifying the Order. Written submissions outside any time limit set by the Court disregarded: submitted without having been given the opportunity to be heard by the Court, were not be taken into account (R. 9.2 RoP)
 

IPPT20241120, UPC CFI, LD Dusseldorf, DexCom v Abbott
Claimants’ time limit for filing Rejoinder to Counterclaim for revocation and the Reply to conditional application to amend extended on grounds of fairness and equity, since the previous time limit was, with the consent of the Claimant, extended to a similar extent in favour of the Defendants. (R. 9 RoP, R. 29(e) RoP , R. 32.3(1) RoP)

IPPT20241119, UPC CFI, LD Hamburg, Daedalus v Xiaomi
Confidentiality Club not limited to outside lawyers only (R. 262A RoP): Access to the confidential version of the statements on transfer of the patent suit and partially redacted Patent Transfer Agreement extended to legal counsel of Xiaomi. Local divisions of the UPC have not granted an “outside attorney’s eyes only” access without the consent of the parties involved. 

IPPT20241118, UPC CFI, LD Hamburg, Malikie v Nintendo
Rectification of the name of Defendant 1) granted (R. 9 RoP, R. 272 RoP). The date of service on Nintendo of Europe SE is determined to be effected 17 October. Based on the facts, there was no doubt that it had been clear to the Nintendo of Europe SE that the statement of claim was intended to be directed against it as the present and sole successor of Nintendo of Europe AG.

IPPT20241115, UPC CFI, LD Munich, Philips v Shenzen Yunding
Withdrawal of application for provisional measures: 60% of court fees reimbursed (R. 206 RoP), R. 370(9)(b)(i) RoP). Withdrawal of application for provisional measures one day after application was filed (i.e., before closure of written procedure). Application of R. 370.9(b)(i) RoP by analogy 

IPPT20241115, UPC CFI, LD Munich, Edwards Lifesciences v Meril - II
Direct literal infringement (Article 25 UPCA). Late filed request at the oral hearing to amend the claim by including Romania (R. 263.1 RoP). Romania effectively joined the system on 1 September 2024, so that the amendment could not have been made with the statement of claim. However, it should have been made prior to the date of the oral hearing (24 September 2024). The UPC has jurisdiction over acts of infringement committed before entry into force of the UPCA (Article 32(1)(a) UPCA). Munich Local Division has jurisdiction over defendants domiciled in Germany (Article 33(1)(b) UPCA). No stay of infringement proceedings pending appeal from (bifurcated) revocation decision (R. 295(c)(i) RoP, R. 295(m) RoP). In the context of a prior bifurcation decision where the patent had been upheld, the possibility of a stay is limited to instances where there are mitigating circumstances. This is because the agreement explicitly stipulates the possibility for a local or regional division to bifurcate and to stay or not to stay the action for infringement, respectively. Consequently, a decision on the infringement action can be rendered prior to the central division's resolution of the referred counterclaim. After a decision by the central division on the counterclaim referred to it, the local or regional division is required to proceed with the next case management step which regularly is a decision on the action for infringement. There are only a few instances in which one might deviate from this default next case management step. These instances occur when the aggrieved party can demonstrate that the decision made by the central division is manifestly and prima facie erroneous in a formal and/or material way. Infringement within the scope of the UPCA by defendant based in India (Article 25 UPCA). Companies that are members of a group and play a key role in a distribution network for the infringing product – such as a sole manufacturer or a European sales and marketing hub – may also be considered as infringers if they are located outside the Contracting Member  States but supply their products to other members of the group located in the Contracting  Member States, while these companies distribute these products on the European market,  including in at least one Contracting Member State where the patent in suit is valid. Rejection of proportionality defence (Articles 63(1) and 64(1) UPCA). Regarding procedures for implementing corrective measures, Article 64(4) of the UPCA explicitly mentions the interests of third parties. While the Agreement on a Unified Patent Court and the Rules of Procedure for the Unified Patent Court do not explicitly mention the interests of third parties or the public otherwise, these interests may also be considered when exercising the discretion stipulated by the "may" in Articles 63(1) and 64(1) UPCA. In considering the interests of third parties and the public interest, the court will give due consideration to the possibility of the infringer entering into a license agreement or initiating proceedings for a mandatory license. 
 

IPPT20241115, UPC CFI, LD Munich, Edwards Lifesciences v Meril - I
Late filed request (R. 9.2 RoP). Defendants request of 16 October 2024 that the court asks questions to the European Commission rejected because it is late filed. After oral hearing held on 24 September 2024, without the court allowing any post-hearing submission

IPPT20241114, UPC CFI, LD Munich, Heraeus v Vibrantz
Confidentiality club regime (Rule 262A RoP). Since the defendant could have presented its argument regarding the right of prior use without the details of the ingredients, it does not appear necessary, in the context of a confidentiality regime that has nevertheless been ordered, to limit the plaintiffs' choice of the number and individuals entitled to access.
 

IPPT20241113, UPC CFI, LD Paris, HP v Lama
Claim construction in language of the patent (Article 69 EPC). Appropriate in French language proceedings to examine all arguments raised in relation to the interpretation of the patent with reference to the patent application as filed in English. Novelty (article 54 EPC). To form part of the state of the art the invention must be found in its entirety and in a single prior art document with its constituent elements, in the same form, with the same arrangement and the same operation with a view to achieving the same technical result. No need to apply national law regarding acts of infringement occurring before 1 June 2023 (Article 25 and 26 UPCA). In the territories of the Contracting States that signed the UPCA of 20 June 2013, the acts referred to in Articles 25 and 26 UPCA were already considered to be infringements qualified as acts of infringement by European patent law (Article 69 EPC) or in the national laws of those States that were harmonised by Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights relating to infringements of existing European patents. No prior knowledge of infringement required (Article 25 UPCA). The text does not require the plaintiff to prove that the defendant had prior knowledge of the existence of the patent and the materiality of the alleged infringement. Exhaustion of rights and jurisdiction (Article 29 UPCA). It is therefore for the Court to consider whether the evidence adduced by HPDC is sufficient to show that the allegedly infringing HP cartridges were indeed placed on the market by LAMA in the territory of the EU after having been the subject of unauthorised parallel imports and therefore do not fall within the exception of exhaustion of rights provided for in Article 29 UPCA, that is to say that those cartridges were not first marketed by HP within the EU. No need to refer to the CJEU as the competition law defense is clearly ineffective (R. 266 RoP). 

IPPT20241105, UPC CFI, CD Paris, NJOY v Juul - II
Revocation EP 911 dismissed. To provide legal certainty an objective approach to be applied to evaluation of inventive step (Article 56 EPC). The person skilled in the art is an element of this objective approach. Subjective considerations, a subjective motivation to make specific modifications to the prior art or the subjective knowledge and skill of the named inventor(s) (or the parties to the case), for example, are not to have an influence on the evaluation of inventive step. The state of the art is a further element of this objective approach. […]. Limiting the evaluation of inventive step to certain elements of the prior art, for example a document perceived to be “the closest prior art”, generally bears the risk of introducing subjective elements into the evaluation, for example if the reasons for disregarding certain elements of the prior art are of subjective nature. This said, for reasons of procedural efficiency it may be justified in a particular case to focus the debate on a certain element or on certain elements of the prior art and it may be justified in a particular case to reduce the evaluation of other elements of the prior art to a minimum. What is to be evaluated is an activity. An activity can be motivated by an underlying problem. Inventive to affix a heater, which comprises a heater chamber, to a first end of the cartridge and to affix a mouthpiece to a second end of the cartridge: (i) there is no suggestion in the state of the art; (ii) From the facts submitted it cannot be established that it belonged to the common general knowledge at the time of the earliest priority of the Patent.

IPPT20241105, UPC CFI, CD Paris, NJOY v Juul - I
EP 115 revoked. Added subject matter (Article 138(1)(c) EPC): No parts of the disclosure that would show the skilled person a preferred embodiment, in which the mouthpiece is affixed to a second end of the fluid storage compartment without enclosing the fluid storage compartment. Court may amend the patent, independent from auxiliary request (Article 65(3) UPCA). Independent of an application to amend the patent as may be filed by the patent proprietor (R 50 (2) RoP) the Court, according to Art. 65 (3) UPCA, limits the patent by a corresponding amendment of the claims and revokes it (only) in part. Article 65(3) UPCA only pertains to the granted not to an application to amend the patent. No obligation to the Court to evaluate, if an application to amend the patent filed by the patent owner can be allowed in part. Within an application to amend the patent a certain claim set is either allowable (as such; the complete claim set proposed) or not. Defendant’s request is unclear and for this reason unallowable. Defendant did not file any particular claim-sets that would indicate to the Court, which combinations of claims the Defendant would want the Court to examine under request (2) d. in which order. The clarity of the claim is a fundamental requirement for a claim to be considered allowable, especially in view of its function in defining the matter for which protection is sought. The necessity for claims within an application to amend under R. 50 RoP to pertain to the requirement of clarity is emphasized by the reference to Art. 84 EPC in R 50.2 RoP. RoP 50.2 (b) requires the application to amend to contain an explanation as to why the amendments satisfy the requirements of Article 84 EPC. 
 

IPPT20241105, UPC CFI, LD Milan, Pirelli v Sichuan Yuanxing Rubber
IPPT20241105, UPC CFI, LD Milan, Pirelli v Tianjin Kingtyre
Ex parte seizure at the EICMA trade fair and delivery up of disputed tyres and any promotional materials (Article 62(5) UPCA, R. 212 RoP)

IPPT20241104, UPC CFI, CD Munich, Astellas v Healios
Access allowed to unredacted versions of documents (R. 262.3 RoP). The Court […] accepts that the Information is not confidential, at least not as regards the Applicant. It follows that the Claimant has not given legitimate reasons to withhold access to the Information by keeping the Information confidential vis-à-vis the Applicant.

 IPPT20241104, UPC CFI, LD Milan, Oerlikon v Bhagat
Patent infringement uncontested. No basis for staying the action for infringement because of pending revocation proceedings, where the defendant has not contested the validity of the patent nor the infringement (R. 295 RoP, R. 171(2) RoP). Permanent injunction granted to prohibit repetition and prohibit future conduct (Article 63(1) UPCA). With respect to infringing conduct that has already been ascertained, it is up to the infringing defendant to prove that there is no risk of repetition; with respect to future conduct that has not yet been realised, the burden of proof lies with the claimant, by virtue of objective elements, such as the unambiguousness of the elements preparatory to the infringement, and subjective elements, with respect to the defendant's intention to proceed with the infringement. Recurring penalty (Article 63(2) RoP) allows for a better protection of the permanent injunction, considering that even after the execution of the measure ante causam there were indications to the market by the defendant of a willingness to market. Interim award of € 15.000 reputational damages because of exhibition at trade fair (Article 68 UPCA, R. 119 RoP). he ITMA trade fair was held for seven days and is the most important trade fair in the world, organised every four years, with the participation of more than 1,600 exhibitors from 44 countries and over 100,000 visitors. These circumstances are not contested and must therefore be deemed proven, pursuant to Rule 171(2) RoP. No publication of decision (Article 80 UPCA). Does not appear necessary because it is not proportionate in the light of the limited infringing phenomenon; the certain detriment to the defendant that would result from such publication appears in fact greater than that which the limited tort ascertained so far requires.

IPPT20241101, UPC CFI, LD Hamburg, 10x Genomics v Vizgen
Order to produce evidence (R. 190 RoP): the documents disclosed to the defendant's US legal representatives in the discovery proceedings accompanying the parallel US proceedings under the respective production numbers.

IPPT20241031, UPC CFI, LD Düsseldorf, Sodastream v Aarke
Claim construction (Article 69 EPC). Skilled person will not stop at the literal meaning of a feature but will determine the meaning of the word ”flask“ in the context of the patent claim as a whole. In doing so, the skilled person will turn to the technical function of the flask given by the individual feature and in the context of the other features. 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. The claim must not be limited to the scope of preferred embodiments. The scope of a claim extends to subject-matter that the skilled person understands as the patentee's claim after interpretation using the description and drawings. A claim interpretation which is supported by the description and drawings as a whole is generally not limited by a drawing showing only a specific shape of a component. The Court does not find the fact that the claim is drafted in the so-called two-part form relevant. Apart from the fact that the Court does not rely on the grant procedure as interpretative aid because the procedure is not mentioned in Art. 69 EPC, the Defendant´s argument also fails on the merits. Whether or not the patentee chooses to claim the invention in a two-part form, this does not have any implication for the interpretation of the claim with respect to the scope of protection regarding infringement issues. As the claim must be interpreted as a whole, generally every feature – no matter where in the claim structure it appears – has to be taken into account. No additional room for a  Gillette defence understood in the way the Defendant presented it. Prior art is not mentioned in Article 69(1) EPC. The limitation to the description and the drawings as interpretation material serves the purpose of legal certainty, since the scope of protection can be conclusively determined from the patent itself. If prior art is discussed in the description of the patent in suit, the relevant considerations must be taken into account. If the patent in suit distinguishes itself from the prior art in a particular way, an interpretation that negates that distinction must be avoided. In the case at hand, as it can be seen above, in interpreting the claim, the Court took into account the discussed distinction from the prior art in detail. No publication of decision (Article 80 UPCA). The Claimant´s interests are already satisfied by the effects of the other orders made by this decision on the merits. The right of publication includes a further element of punishment. Publication should therefore only be granted if the protection of the Claimant is not provided effectively and sufficiently ensured by the other measures ordered. This is not the case here. Entitlement to damages on the merits (Article 68(1) UPCA). The Defendant should have been aware, through the exercise of due diligence, that its actions infringed the patent in suit. Provisional damages covering the expected costs of the proceedings for the award of damages and compensation of EUR 250.000 (R. 119 RoP.) 

IPPT20241031, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Provisional injunction granted for direct and literal infringement with carveout for BMW supplies (R. 211 RoP, Article 62 UPCA, Article 25 UPCA, Article 69 EPC). It is more likely than not that the patent in suit is infringed by the offer and distribution of the challenged embodiments in the territory of the Contracting Member States Germany and France (R. 211.2 RoP). Strong rebuttable presumption that the registered patent proprietor is the material patent proprietor entitled to bring actions (Article 47(1) UPCA, Article 138(1)(e) EPC). In PI proceedings – in which only a “sufficient degree of certainty that the applicant is entitled to commence proceedings pursuant to article 47 UPCA” is required (R. 211(2) RoP) – this presumption can only be rebutted if the title is manifestly erroneous. 

IPPT20241030, UPC CFI, LD Düsseldorf, Ortovox v Mammut
Request rejected to allow further written submissions regarding new product version (‘Barryvox S’) (R. 36 RoP). Time available until the date of the oral hearing (26 November 2024) clearly insufficient for (i) further legal classification and treatment thereof, as well as (ii) a reasonable period of time for the defendants response and (iii) sufficient time to prepare for the hearing.

IPPT20241030, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Further written pleading rejected (R. 36 RoP). Would lead to a delay in the proceedings. In view of the oral hearing, which is already scheduled for December, such a delay would be unacceptable to both the Court and the Defendants. The Claimant’s right to be heard is not unduly restricted by the rejection. New factual allegations in the Rejoinder may be rejected (R. 9(2) RoP). If accepted the Claimant will be given the opportunity to respond to the Defendants’ new allegations in the Rejoinder during the interim procedure, but at the latest during the oral hearing. IPPT20241029, UPC CFI, RD Nordic-Baltic, Texport v Sioen
Preliminary objection dismissed (R. 19 RoP). Parallel jurisdiction during the transitional period also includes actions for a declaration of non-infringement, although such actions are not explicitly mentioned in Article 83.1 UPCA. An action for a declaration of non-infringement is, after all, the mirror of an action for infringement (cf. e.g. ECJ, 6 December 1994, C-406/92, ECLI:EU:C:1994:400, Tatry). The Court finds that there are not sufficient reasons for staying the UPC infringement proceedings because of Belgian proceedings for a declaration of non-infringement and fot revocation (Article 30 Brussels I recast). The fact that a final decision by the UPC may include remedies also covering Belgium does not lead to a different conclusion.
 

IPPT20241029, UPC CFI, LD Düsseldorf, Dolby v HP
Suspension of the proceedings upon joint request of the parties (R. 295 RoP). The oral proceedings scheduled for 17 June 2025 (and, if necessary, 18 June 2025) shall be cancelled. 
 

IPPT20241025, UPC CFI, LD Brussels, Cretes v Hyler
No bifurcation: Local Division proceeds with both the action for infringement and the counterclaim for revocation (Article 33(3) UPCA, Rule 37 RoP). Such joint treatment allows parties to align their reasoning on the respective claims. Furthermore, it also points to a uniform interpretation of the relevant patents by the same panel which enhances legal certainty. Finally, it is indicated that, in the absence of exceptional circumstances, the parties requested the Judge-Rapporteur to hear main claim and counterclaim together.
 

IPPT20241024, UPC CFI, LD Munich, Tiroler Rohre v SSAB
Application for interim measures withdrawn after oral hearing (Article 69 UPCA, R. 265 RoP). No legitimate interest in a ruling on the interim measures. Applicant to bear the legal costs of the defendant.

IPPT20241024, UPC CFI, LD Hamburg, 10x Genomics v Vizgen
Confidentiality club arrangement in line with Outside Attorneys’ Eyes Only agreement before US court (R. 262A RoP)
 

IPPT20241024, UPC CFI, CD Paris, Qualcomm
No reimbursement of court fees following interlocutory rectification by EPO of contested decision after Court order that there was no reason for full or partial reimbursement of the fee for the action (R. 370 RoP, R. 91 RoP, R. 333 RoP, R. 220 RoP). Even if it is foreseen by R. 370.11 RoP that an application may also be filed at a later stage, it remains in the present case that the Court of First Instance cannot review its previous order on the same subject-matter and decide in a different way, considering – should it be a case management order – that the decision was taken by a single judge (without possible panel review) and the Order can be appealed.

IPPT20241022, UPC CFI, President, Visibly v Easee
Consequences of change of language of the proceedings by agreement from German into English (the language of the patent) (R. 324 RoP). It results from the above that, for reasons of both fairness and convenience, the Claimant should provide an English version of the Statement of Claim along with the four abovementioned exhibits on its costs. With regard to the circumstances mentioned above, a time limit of 10 (ten) days as from the date of the present Order shall be given for this purpose.
 

IPPT20241022, UPC CFI LD Hamburg, 10x Genomics v Vizgen
Panel review of order to produce documents which are the subject of parallel US proceedings (R. 333 RoP, Article 59 UPCA, R. 190 RoP). Defence of abuse of rights can be considered by the UPC. Production of emails allegedly showing that the first claimant had acted, including the acquisition of […], with the aim of securing a dominant position in the SST market, and that the second claimant was aware that the […] licence or its transfer to the first claimant would harm the defendant. Production of documents regarding specific instructions by first claimant of its employees to destabilise the market. Price-related abuse of a dominant position is not relevant either to the question of patent infringement or to any secondary claims arising from such infringement. The issue of an alleged restriction of competition resulting from a company’s pricing policy has no connection to a patent dispute. Order is proportionate, documents are covered by confidentiality regime (R. 262A RoP) and disclosure is necessary as defendant has no other means to obtain knowledge of the documents because of US protective order and lack of consent for cross-use. Defendant not required to conduct evidence gathering proceedings in the USA in lieu of its applications for evidence production under Article 59 UPCA

IPPT20241022, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
Access granted to (only) the written pleadings and evidence lodged and recorder in the register. Case has ended by way of a decision by the Court (R. 262(1) RoP).

IPPT20241020, UPC CFI, LD Mannheim, DISH v AYLO - I
A reasoned request for information under R. 191 RoP must sufficiently specify which information is requested and for what reasons. The requesting party may assert a fact that it believes to be true without fear of being accused of failing to furnish the court with truthful facts simply because the opposing party believes this to be false. It is the task of the court to assess whether a disputed fact is true by evaluating the mutual factual submissions and the evidence offered at the appropriate time. An application for transmission of information cannot be granted until the other party has been given an opportunity to respond to how the applicant intends to rely on the requested information. The Court must weigh up the interests of the parties and ensure that a requested order does not amount to unauthorized spying.

IPPT20241020, UPC CFI, LD Mannheim, DISH v AYLO - II
Order to produce a document  (R. 190 RoP) can only be granted if it has been established that this would be used to prove a disputed fact. If it remains unknown whether the opposing side will dispute the fact which the evidence aims to prove, no order can be given.

IPPT20241020, UPC CFI, LD Mannheim, DISH v AYLO - III
Before establishing infringement, an order to provide information (Art. 67 UPCA, R. 191(1) RoP) that is used to identify further infringers in the distribution and supply chain or to determine and calculate the damage caused by the patent infringement can only be granted under special circumstances.

IPPT20241018, UPC CFI, LD Dusseldorf, Bekaert v Siltronic
Order for inspection and preservation of evidence granted  (Article 60 UPCA , Rule. 192 , 199 RoP) . Applicant has credibly demonstrated that the patent may be infringed by the respondent (Art. 60 (1) UPCA). It is possible that the first respondent uses saw wires suspected of infringing the patent application in its production and that the second respondent stores said saw wires. The applicant found a wire from Sunnywell at a disposal site used by the first respondent.  The supplier, did not deny the use of the saw wires, but merely stated that that it would no longer use products from the Sunnywell company in future. The application is urgent and issued ex parte (Rule. 194.2 a),b),c)  197 RoP).Despite the pre-trial correspondence, the first respondent has neither issued a cease-and-desist declaration nor provided information about the manufacturer from whom it obtains the saw wires.  Without the application, the applicant will not be able to ascertain the origin of the wires that may infringe the patent. Once the stock of saw wires has been used up by the first respondent, the applicant will no longer be able to secure evidence and will not be able to examine the wires in question. It is not detrimental that the applicant has been aware of the wires since March 2024 and that the revocation of the opt-out was not registered until September 2025 however. Before the opt-out was revoked, the applicant was unable to file the application before the UPC. In view of the fact that the UPC is still a relatively new court system, the Chamber does not consider it detrimental to urgency at this stage if the party makes strategic considerations as to whether to submit a patent to the jurisdiction of the UPC and if these considerations take a certain amount of time.There is currently a risk that the respondent will transfer the remaining wires to one of its other production sites. It is not possible to waive the requirement to provide security for an ex parte order (R. 196.6 RoP).  Special circumstances to justify such an order do not exist in the present case, as the preliminary correspondence shows that the applicant has had time since June 2024 to prepare the provision of appropriate security.

IPPT20241017, UPC CFI, CD Munich, Nanostring v Harvard
Patent revoked in its entirety. Court to examine its international jurisdiction of its own motion. The parties are not the same for the purposes of Articles 29  and 31 Brussels I recast Regulation. The fact that both parties belong to the same group of companies and have the same parent company is insufficient to conclude that their interests are, even though they may be to a large extent aligned, identical and indissociable. The Court will not stay the related revocation action (Article 30 Brussel I recast, R. 295m RoP). The reasons listed, the interests of the parties and procedural economy outweigh the risk that UPC CoA and BGH proceedings may become pending in parallel (and the related risk of contradictory decisions). Assessment of novelty (Article 54 EPC) requires the determination of the whole content of the prior publication. It is decisive whether the subject-matter of the claim with all its features is directly and unambiguously disclosed in the prior art citation. Applying the above standard to the case at hand, the Central Division comes to the conclusion that the subject matter of claim 1 of the Patent as granted lacks novelty over document D10, Göransson et al. Inadmissible new auxiliary request maintaining all the auxiliary requests already proposed in the application to amend that was made in the Statement of Defence (R. 30 RoP, R. 50 RoP) Under the front-loaded system of UPC proceedings parties are under an obligation to set out their full case as early as possible (Preamble RoP 7, last sentence). The subsequent application to amend was filed late in the proceedings, after closure of the written proceedings and after the interim conference, less than 1.5 months before the (at the time scheduled) oral hearing. Auxiliary request 1 lacks inventive step (article 56 EPC). Starting from Göransson, it was in the view of the Central Division obvious for the skilled person at the priority date to transfer the method of Göransson to an in situ context, for instance in FISH, to detect e.g. RNA or proteins, thereby arriving at the claimed subject matter.

IPPT20241015, UPC CFI, LD Lisbon, Ericsson v Asustek
Application for provisional measures dismissed (Article 62 UPCA, R. 211 RoP). The allegation that no acts of infringement at all were committed is irrelevant in the assessment of territorial competence (Article 33(1)(a) UPCA) because it does not challenge the territorial connection to the Local or Regional Division. It should be considered as a defence based on the merits. Art. 33(1)(a) UPCA applies regardless of whether the defendant is an infringer or an intermediary. Temporal urgency (R. 211(4) RoP): The burden of proving urgency and due diligence in initiating proceedings is not satisfied if the Applicant fails to provide the Court with the exact date when it became aware of the infringement, particularly when the Court has no other factual or objective temporal indication beyond the date the infringement commenced. An auxiliary request to amend a patent claim in provisional measures is incompatible with the nature of such proceedings (Article 62 UPCA, R. 211. RoP). Requirements for preliminary injunctions (R. 211 RoP) are cumulative. The cumulative nature of the previously mentioned requirements allows the Court not to address all the requirements if one is not satisfied. […] In such cases, the Court may exercise discretion in assessing the other requirements presented by the parties. Owning the domain www.asus.com is infringing (Article 25(a) UPCA) as it is evident that through this domain and its sub-domains, products containing the accused Modules are offered and sold.

IPPT20241014, UPC CFI, CD Paris, Meril v Edwards
Unrestricted access granted to all pleadings and evidence in ended infringement proceedings and counterclaims for revocation (Article 45 UPCA, R. 262 RoP). Generic interest: the mere fact of operating in the same field as the patent in dispute is not sufficient to establish a specific interest in the proceedings’ documents on their part. Applicants’ requests may not be considered insufficiently reasoned, because the fact that the applicants are carrying out preparatory activities to possibly enter the market concerned by the patent at issue is adequate to establish an interest in accessing the requested documents.
 

IPPT20241014, UPC CFI, LD The Hague, Winnow v Orbisk
Request to produce evidence partially awarded (Article 59 UPCA, R. 190 RoP). Limited to evidence pertinent to the fulfilment of features 1.4 and 1.5 which has been disputed and thus far only has been supported by publicly available evidence. It is credible, and at any rate not really put into question, that such evidence exists and lies in control of Orbisk.

IPPT20241014, UPC CFI, CD Paris, Kinexon v Ballinno
Ballinno ordered to provide security for legal cost of claimant  Kinexon in revocation action (Article 69(4) UPCA, R. 158 RoP). It is not necessary that the party claiming security has the formal position of a defendant in the lawsuit in which it claims security. It only matters whether it reacts to a claim of the other party. Therefore, a party is also defendant in the sense of Art. 69 (4) UPCA if it responds with a revocation action against an application for provisional measures. Irrevocable commitment to the Claimant in the proceedings not to further pursue its infringement case unless and until the Court of Appeal provisionally rules that the method and system, which Kinexon provided to UEFA infringes a valid EP 067 […] does not alter the risk that a possible cost order against Ballinno might not be recoverable by Kinexon and does not change the fact that Kinexon has costs which arise in reaction to Ballinnos application for provisional measures.
 

IPPT20241011, UPC CFI, LD Düsseldorf, Truma v CAN
No extension of time period for lodging Preliminary objection or Statement of defence (R. 9(3) RoP, R. 19 RoP, R. 23 RoP). Not justified by an alleged ineffectiveness of the service of process at the trade fair: both the start of the time period for filing a Preliminary objection and the time period for filing a Statement of defence are linked to the service of the Statement of claim

 

IPPT20241011, UPC CFI, LD Munich, i-mop v Arcora
Default judgment, including injunction and provisional damages (Article 37 UPC Statute, R. 355 RoP). Express provision in Article 37(1) of the UPC Statute that failing to file written submissions in defence after having been served with a document  instituting proceedings is sufficient. Not necessary that this express provision is also present in the Rules of Procedure. The UPC Statute takes precedence over the Rules of Procedure.
 

IPPT20241011, UPC CFI, LD Hamburg, Daedalus v Xiaomi
Justified restriction of access to US-attorneys involved in parallel proceedings in the US with the intention to align the arguments and to provide the technical input to proceedings outside of the UPC System – and even outside of the EU (R. 262A RoP). Initially insufficiently blacked-out illustrations are part of the protection order (R. 262A RoP). The mere fact, that the Defendants insufficiently blacked-out these two illustrations in the redacted versions, though they were highlighted in grey in the redacted versions, cannot be considered as a waiver of the right to protection of what was requested at the same time. 
 

IPPT20241011, UPC CFI, LD Paris, Dexcom v Abbott
No leave granted to ABBOTT to amend case to cover new version of ABBOTT application (R. 263 RoP). Justified that ABBOTT could not have disclosed commercially sensitive information about  the launch of a new product to its competitor DEXCOM. The Amendment will unreasonably hinder DEXCOM in the conduct of is action given that the oral hearing is in ten days time and it put DEXCOM in a situation where it would not be able to appropriately prepare for the oral hearing due to the new scope of the litigation. ABBOTT may also be able to prove that its new version of the app does not infringe the patent at issue at the time of enforcement if infringement measures are ordered in the present case. 
 

IPPT20241011, UPC CFI, LD Munich, SES-imagotag v Hanshow 
Costs for the appeal instance rejected due to failure to comply with the time limit. (R. 151 RoP, R. 320 RoP, R. 9(3) RoP). Re-establishment of rights under R. 320 RoP, as a lex specialis, takes precedence over Rule 9.3 (a) RoP.
 

IPPT20241011, UPC CFI, LD Munich, MSG v EJP
Infringement action and revocation counterclaim after revocation of the patent by Technical Board of Appeal. Withdrawal of infringement action requires a decision on the allocation of legal costs and other expenses Article 69 UPCA, R. 150 RoP, R. 265.2(c) RoP). Unnecessary legal costs and other expenses within the meaning of Art. 69(3) UPCA are those that are caused by a measure that was not necessary and/or unsuitable for enforcing or defending a right and that can be separated as such. However, it does not include costs that are (ultimately) unnecessarily incurred due to unsuccessful enforcement or defence as a whole. These are already covered by the basic rule of Art. 69(1) UPCA […]. Whether a severable measure was unnecessary is to be assessed from the ex ante perspective of a reasonable and economically rational party. An objective standard is to be applied. Reimbursement of 60% of the Court fees for the infringement action (R.  370.9 (b) (i) RoP). No need to adjudicate revocation action (R. 360 RoP). Devoid of purpose because of the revocation of the patent in suit by the Technical Board of Appeal of the EPO of 4 July 2024. The costs of the revocation proceedings shall be borne by the plaintiff. The defendant is to be reimbursed 60% of the court fees paid for the counterclaim in analogous application of R. 370.9(b)(i) RoP.
 

IPPT20241010, UPC CFI, LD Düsseldorf, Seoul Viosys v epert e-Commerce - II
Patent revoked (Article 65 UPCA). Lack of inventive step (Article 56 EPC). On this basis, a person skilled in the art who approaches the embodiment shown in (prior art) Figures 23 to 26 on the basis of the description will come to the conclusion that the light-emitting diode forming the subject matter of this embodiment has several, but at least two electrodes (140).

IPPT20241010, UPC CFI, LD Düsseldorf, Seoul Viosys v epert e-Commerce - I
UPC has international competence regarding counterclaims for revocation of non-opted out (European) patents (Article 32(1)(e) UPCA, Article 83(3) UPCA, Article 24(4) Brussels I Recast). Claims brought against a plurality of defendants in one procedure (R. 303 RoP, R. 25.1 RoP) are to be treated as formally and substantively independent proceedings without the respective actions of one defendant having advantages or disadvantages for the other defendant. If individual defendants decide against filing a revocation counterclaim and the counterclaim is therefore expressly filed only by individual defendants, the validity argument is formally excluded for the defendants not involved in the revocation counterclaim. They cannot therefore successfully invoke the lack of validity in their proceedings. However, as long as the court refrains from separating the proceedings against several defendants, this has no practical effect. Direct literal infringement (Article 25 UPCA). Since the attacked embodiment makes literal use of the technical teaching of the patent in suit, the defendants infringe the patent in suit directly and literally by offering and distributing the attacked embodiment. Presumption of acts of infringement. By offering and marketing the challenged product, the Defendants have also committed acts of infringement within the meaning of Art. 25(a) UPCA. At the same time, offering and putting on the market also creates a rebuttable presumption that the defendants are also using the challenged product, importing or possessing it for the purposes of offering, putting on the market or using it. Orders and measures not made subject to security (R. 118.8 RoP). It is for the defendant to present facts and arguments as to why it appears appropriate in the specific case to make the order or measure subject to a security to be determined by the court […]. 
 

IPPT20241010, UPC CFI, LD Düsseldorf, Sodastream v Aarke
Request for adjournment of oral hearing because of outstanding order of the Court of Appeal concerning dismissed request for security for costs dismissed (Article 74(3) UPCA, R. 334 RoP). No indication that it may not be efficient and cost effective to hold the oral hearing at this stage. Contrary to the opinion of Defendant the Court must not await a final order of the Court of Appeal on the security of costs before making its own decision on the merits in this case.
 

IPPT20241008, UPC CFI, CD Paris, Edwards v Meril
Request rejected to extend deadline for lodging a Rejoinder (R. 52 RoP. R. 9.3 RoP) from 16 October to 25 October, the deadline for lodging a Reply. Granting the application would allow the applicant more time to prepare their written pleadings than is ordinarily provided for by the relevant provision and this would create an imbalance between the parties, given that the claimants have already complied with the shorter, standard deadline set forth in the Rules. Requests for allocation of concerning applications for time extension will be decided in the final decision on the merits (R. 118.5)
 

IPPT20241007, UPC CFI, RD Nordic-Baltic, Abbott v Dexcom
Order following interim conference (R. 105 RoP). Request to change claim dismissed (R. 263 RoP). Request should have been in the application, not in an annex; changes asked are not mere corrections, could have been formulated earlier and extend the cope of the injunction. No need for alternative claims as the Court may grant the relief in full or in part as requested (Article 76.1 UPCA). Application to provide information dismissed as disproportionate (Article 67 UPCA, Article 8 Enforcement Directive, Rule 191 RoP). The Court order has to be as precise as possible, so that the obligated person may understand without a doubt what kind of information one has to provide. Heller document dismissed as late filed ground for revocation (R. 44 RoP). The Heller document was submitted to the Court by Defendants on 12 August 2024 in its Reply to the Defence to Revocation. The Court is in the position that all the ground for revocation should have been presented in the counterclaim.

IPPT20241002, UPC CFI, LD Munich, NEC V TCL
Patent pool administrator admitted as intervener: has a direct and present legal interest in the outcome of the proceedings (R. 313 RoP). As pool administrator, Applicant is entitled to conduct license negotiations with implementers of the HEVC standard, to enter into license agreements for the patents included in the pool, to collect royalties, and to distribute the royalty income to the pool members. Intervention not precluded by the fact that it does not prevent a violation of Article 101 TFEU because the Applicant and the Claimant have the possibility to exchange sensitive information under competition law in their written submissions. The parties have the same opportunities to exchange information outside the proceedings and the intervention anyway. By admitting the intervention, the Applicant is a participant to the proceedings and is to be treated as a party in accordance with Rule 315 (4) RoP. As it must accept the proceedings at this stage, it must be allowed to inspect the files in order to conduct the proceedings appropriately. However, the Court has already classified certain parts of the FRAND Counterclaim of the Defendant 1) and of the Statement of defences briefs of the Defendant 1) – 6) and exhibits as confidential (R. 262A RoP) The Applicant can therefore not be granted unrestricted access to this information. 
 

IPPT20241001, UPC CFI, CD Milan, Eoflow v Insulet
Request for intervention admissible but rejected (R. 313 RoP). Due to lack of capacity on the part of CMS, the procedure for intervention can only be initiated in hard copy. Third party having a mere de facto interest in one of the parties being victorious to bolster a parallel case has no legitimacy to intervene.

IPPT20241001, UPC CFI, LD Milan, Insulet v Menarini
Request for intervention by EOFlow in summary proceedings for provisional measures rejected (R. 313 RoP, R. 206 RoP): the outcome of this proceedings only affects Eoflow indirectly: it is only the supplier and the potential negative effects (an economic impairment) at this stage appears only a side effect;

IPPT20240927, UPC CFI, CD Paris, Microsoft v Suinno
Suinno to provide security of € 300,000 for legal costs (Article 69(4) UPCA, R. 158 RoP). Undisputed that respondent’s business model is exclusively characterized by the enforcement of patents, namely the patent-in-suit, and asserting corresponding license claims; respondent does not generate sufficient income or other cash flow and no equity capital at all, does not maintain any other business, let alone has any physical assets, and does not even have an own office space.

IPPT20240927, UPC CFI, LD Düsseldorf, Ortovox v Mammut
No further written pleadings following appeal (R. 9 RoP, R. 12 RoP). The order of the Court of Appeal dated 25 September 2024 provides no reason for the admission of further written pleadings in the main proceedings.
 

IPPT20240926, UPC CFI, LD Munich, Panasonic v Xiaomi
Judge-Rapporteur refers the possible suspension in the context of parallel pending actions for a declaration of a FRAND licence to the panel proposing that the panel will decide during or after the oral proceedings (R. 102(1) RoP)

IPPT20240926, UPC CFI, LD Düsseldorf, Dolby v HP
Withdrawal of action pursuant to party agreement with pro rata reimbursement of court fees (R. 265 RoP, R. 370 RoP).

IPPT20240925, UPC CFI, LD The Hague, DDT v Doytec
Ex parte order to preserve evidence (R. 197 RoP, Article 60(5) UPCA). Demonstrable risk of evidence being no more available once the SMT exhibition is over, for Doytec is based abroad and the technical and commercial documentation relating to C-1012 machine could easily be destroyed or otherwise ceasing to be available. The appointed expert (R. 196.5 RoP) shall lodge a written report, together with a full copy of all the documents acquired as a result of the execution of the measures, immediately and no later than two days after the completion of execution of the measures. The granting of an application for preservation of evidence or inspection of premises does not imply an unconditional order to disclose the evidence to the applicant (Article 60(1) UPCA). Pursuant to Article 60(1) UPCA the order must be subject to the protection of confidential information. 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. In this context, the Court must give the other party access to the evidence and must provide that party with the opportunity to request the Court to keep certain information confidential and to provide reasons for such confidentiality.

IPPT20240925, UPC CFI, LD Munich, Hereaeus v Vibrantz - II
Leave to change claim granted following judgment of the Bundespatentgericht of 7 May 2024, except for claim II.2, which is not related thereto and could have been asserted as early as 12 March 2024 (R. 263 RoP). The amendment to the action almost three months later is no longer within the bounds of due diligence and must therefore be rejected. This also applies with regard to the subsequent claims referring to it. The plaintiff is free to assert these claims by filing a separate action.
 

IPPT20240925, UPC CFI, LD Munich, Hereaeus v Vibrantz - I
A counterclaim for revocation against a registered proprietor (R. 8.6 RoP) who is not entitled to be registered as proprietor (R. 8.5 RoP) is not manifestly bound to fail (R. 361 RoP) (R. 42 RoP, R. 25 RoP). In the event the registered proprietor and the person entitled to be registered as proprietor are not the same, the registered proprietor must file an application under Rule 305.1(c) RP as soon as possible. According to this provision, the court may, at the request of a party, order that one person replace another.

IPPT20240925, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Case management order regarding evidence during oral hearing in PI proceedings (R. 210 RoP). Evidence in PI proceedings is generally and primarily to be submitted in writing (R. 170.1 (a) and (b) RoP), with particular importance being attached to the submission of affidavits (R. 170.2 (h) RoP). In addition, the submission of physical objects, in particular devices, products, embodiments, exhibits and models (R. 170.1 (c) RoP), and of electronic files and audio/video files (R. 170.1 (d) RoP) may be an option. The Court does not summon witnesses in PI proceedings. 

IPPT20240925, UPC CFI, LD Düsseldorf, Sonic v Lenovo & Motorola
Stay of proceedings at joint request of the parties, with effect from 25 September 2024 until 15 November 2024 (R 295 RoP).

IPPT20240924, UPC CFI, CD Milan, Eoflow v Insulet
Panel confirms order judge-rapporteur rejecting connection joinder (R. 340 RoP). The parallel handling of the two cases, alongside with the appointment of two judges in both proceedings, were sufficient measures to prevent the issuance of contradictory decisions.

IPPT20240923, UPC CFI, CD Paris, Meril v Edwards Lifesciences
Access based on general interest only – no specific interest as competitors or concern with the validity of the patent – outweighed by the protection of the ongoing proceedings (Rule 262 RoP)

IPPT20240920, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Access to Confidentiality club and demarcating confidential information (Rule 262A RoP) 

IPPT20240918, UPC CFI, RD Nordic-Baltic, Edwards v Meril
Also the written procedure of the Court shall, in principle, be open to the public. However, access to the pleadings and evidence rejected at this point in time (Article 45 UPCA, R. 262 RoP). The protection of the integrity of the ongoing proceedings hereby outweighs the interest in information asserted by the applicant, so that the parties can present their arguments and evidence and so that the court can conduct the proceedings impartially and independently, without influence or interference from external parties in the public sphere. 

IPPT20240917, UPC CFI, LD Mannheim, Panasonic v Orope
Request after conclusion of interim conference to hear party expert as a witness at the oral hearing rejected (R. 110 RoP, R. 181 RoP). Moreover, the request fails to recognise that, according to the party's own submission, the person named is not to be heard as a witness. Witnesses provide information on facts that are disputed and relevant to the decision. There is also no reason at present to hear the party-appointed expert in accordance with Rule 181 RoP. Should the submission, if deemed admissible, be relevant and the court consider it necessary to examine the party-appointed expert, this will have to be discontinued as part of a decision pursuant to Rule 114 RoP.

IPPT20240917, UPC CFI, LD Brussels, OrthoApnea
Order following interim conference (R. 105 RoP). Parties need to indicate at the oral hearing how to balance the requested lifting of the seizure (of evidence) on counterfeiting (‘Order to Preserve Evidence’) under R 198(1) RoP, while making use of the findings in execution of the descriptive seizure. Value of the proceedings set at the lowest possible amount of € 250.000 in the absence of arguments or evidence of of a higher amount. (Rule 104 RoP). Whether or not a valuation is ‘sufficient’ in the light of possible recoverable costs (in application of R. 152(3) RoP) does not concern an element to be considered in assessing the valuation of the proceedings. Use of pleading notes and/or visual representations (including in the form of a PPT presentation) as (pleading) aids will be permitted (R. 112 RoP). However, these do not form part of the written argumentation (claim/defence). Indicated (pleading) aids can only serve to support the already formulated written argumentation. After all, the written phase of the proceedings has been concluded so that no additional/dissenting pleas can be submitted. Indicated (pleading) aids must be communicated in good time (i.e. 48 hours before the hearing) to the Registry (LD Brussels) and the opposing party. The parties are also free to use the jaw model mentioned in the Interim Conference during the pleadings, but again only to support the written arguments already formulated. In such a case, this model must be filed as an additional document at the Registry (LD Brussels) and communicated to the opposing party at the latest 14 days before the hearing as well as at the same time as it is filed at the Registry (LD Brussels). 

IPPT20240917, UPC CFI, LD The Hague, Abbott v Dexcom-I
Leave to amend counter claim for revocation and response to amended claim allowed (R. 263 RoP). At the time of the Statement of defence including a counter claim Abbott’s withdrawal of the claims against the G7-System with G7-Receiver could not yet be envisaged

IPPT20240917, UPC CFI, LD Hamburg, Ballinno v UEFA
Public access, subject to confidentiality order, after rejection of application for provisional measures with decision of 3 June 2024 (Article 45 UPCA, R. 262 RoP). Access granted based on claimed general interest in the work and processing of a case by the Court, but subject to confidentiality order regarding technical data and internal company information that is not being publicly available.

IPPT20240917, UPC CFI, CD Paris, Meril v Edwards Lifesciences
Retrospective extension of the time period for lodging counterclaim for infringement because of malfunction of CMS (R. 9(3) RoP, R. 49 RoP). The evidence shows that the respondent was not able to submit the written pleading in the proper CMS workflow due to circumstances that were beyond its reasonable control as the technical difficulties that its representatives experienced do not seem to be attributable to an operator error but rather to a malfunction of the CMS.

IPPT20240916, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Procedural order regarding oral hearing in FRAND-case (Rule 108 RoP).First day technical, second day FRAND

IPPT20240916, UPC CFI, CD Paris, BMW v ITCiCo Spain
Decision by default in revocation action (Article 65 UPCA, R. 355 RoP). It is the discretion of the court to issue a decision by default or not (R. 355 RoP), provided i) the relevant request is submitted by the claimant; ii) the defendant fails to take a step within the time limit foreseen in the Rules of Procedure or set by the Court, or the party which was duly summoned fails to appear at an oral hearing, or the time limit for the defence to the claim has expired and thus, it is established that the service of the claim was effected in sufficient time to enable the defendant to enter a defence; and iii) the facts put forward by the claimant justify the remedy sought and the procedural conduct of the defendant does not preclude to give such decision. In carrying out its discretion assessment, the Court has to consider that expeditious decisions are one of the aims of the Unified Patent Court Agreement and that the legal framework of the ‘UPC’ provides the defendant with appropriate tools to provide justification for the default and to appeal the decision where unfavourable.

IPPT20240916, UPC CFI, CD Paris, Microsoft v Suinno - II
Not considered independent for purpose of a valid representation (Article 48(5) UPCA, R. 333 RoP.) It is undebated that […] is the respondent’s managing director and main shareholder and that because of that he enjoys extensive administrative and financial powers within the body he represents. Confidential information (R. 262A RoP) as it is known only to a limited number of persons, its disclosure is liable to cause serious harm to the person who provided it or to third parties and the interests liable to be harmed by the disclosure of confidential information are, objectively, worthy of protection. Does not lose its confidential nature due to the fact that it is contained in another document not mentioned in the application for confidentiality order. Confidentiality obligation of members of confidentiality club is not extinguished by the fact that the same information is also present in another document submitted to the Court, even if not mentioned in the application for confidentiality order. 

IPPT20240916, UPC CFI, CD Paris, Microsoft v Suinno - I
Manifest inadmissibility of the action (Rule 361 RoP) implies that the inadmissibility must be clearly evident from the pleadings and its assessment does not require any particular in-depth analysis. Alleged lack of independence by the claimant’s representative does not appear to be ‘manifest’ and, therefore, could not lead to an assessment of manifest inadmissibility of the action. Requesting “the Court to determine and award past damages” is a sufficiently clear indication of the remedy sought with the infringement action and the fact that the damages asked is not indicate in a specific amount does not render the claim generic and does not constitute a violation of the requirement set by Rule 13(1)(k) RoP.

IPPT20240913, UPC CFI, LD Munich, Philips IP v Belkin
Claim interpretation (article 69 EPC). The skilled person reads the claim in a way that makes technical sense and that takes into account the entire disclosure of the patent and with a mind willing to understand the claim in context. The same applies to the description and the drawings, although their purpose must be taken into account, namely to describe or illustrate the basic concept of a claimed invention by means of detailed examples. Protection sought pursuant to the description and the drawings can only be protected when expressed in the claim. If several embodiments are presented in the description as being in accordance with the invention, the terms used in the patent claim are to be understood, in case of doubt, in such a way that all embodiments can be used to fulfil them. A patent infringer is the person who appears as the manufacturer or supplier or gives the impression to the targeted public that he is the person who manufactures and/or sells the goods in his own name and for his own account (Article 25 and 26 UPCA, EU Enforcement Directive). Intermediary. In case of a patent infringement by a corporation its directors may be liable for injunctive relief as intermediaries but not for damages (Article 63(1) UPCA). Late and inadmissible extension of submission of validity arguments in Reply to Defence to the Counterclaim constitutes an amendment of the counterclaim (R. 29 RoP). 

IPPT20240913, UPC CFI, LD Düsseldorf, Grundfos v Hefei Xinhu
Decided to hear both the action for infringement and the counterclaim for revocation prior to the closure of the written procedure (Article 33(3) UPCA, R. 37.2 RoP).

IPPT20240913, UPC CFI, CD Paris, Qualcomm
Action closed after rectification by the EPO of contested decision in accordance with request (Rule 88 and 91 RoP). The submission of the Claimant doesn’t mention any particular circumstances justifying a decision of reimbursement.

IPPT20240911, UPC CFI, LD Munich, Headwater v Motorola
Change in parties: correction of the party designation from a non-existent person or a person who does not have the capacity to be a party by analogous application of R. 305 RoP. A distinction must be made between the incorrect designation of a defendant and the designation of a non-existent person or a person who does not have the capacity to be a party to legal proceedings as a defendant. 

IPPT20240909, UPC CFI, LD Munich, Philips IP v Belkin
Postponement  of oral hearing (R. 9 RoP, R. 108 RoP). Upon request of the parties and after consultation of the panel the date of the oral hearing is postponed from 11 September 2024 to 23 October 2024 because of postponement of the decision date in parallel proceedings from  6 September 2024 to 13 September 2024.

IPPT20240909, UPC CFI, LD Munich, Huawei v Netgear
Case management order regarding and following separate hearing (R. 334(d) RoP, R. 105.5 RoP, R. 106 RoP). The video conference of 19 February 2024 is to be regarded as a separate hearing in accordance with Rule 334.d RoP.
 

IPPT20240909, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Panel confirms case management orders judge-rapporteur (R. 333 RoP, R. 262A RoP, R. 29(d) RoP). Panel exercises its authority to order and extension of the time limit for lodging Reply to the Defence to the Counterclaim together with any Rejoinder to the Reply to the Statement of defence because of redacted versions of Defence in the Counterclaim (Part II – non-technical part) in the same way as the judge-rapporteur: two week extension from 14 August 2024 until 28 August 2024. The defendants in all three parallel proceedings have, when looked at in the light of the circumstances, almost seven weeks to prepare the replies to the reply to ‘Part II - non-technical part’ alone. This is more than the one-month period that would have been available without a nullity counterclaim for the statement in response to the infringement action with regard to the infringement action and the FRAND objection. No leave to appeal granted (R. 220.2 RoP). In issuing this order, the panel is not deviating from the cited orders of the Court of Appeal and the Düsseldorf Local Division.

IPPT20240909, UPC CFI, LD Hamburg, Roche Diabetes v Tandem Diabetes
Request to stay infringement proceedings dismissed (R. 295 RoP). There is currently no reason to suspend the infringement proceedings, even though the interim hearing on the revocation action will take place on 11 September 2024 and the oral hearing on 6 November 2024. The outcome of the proceeding is uncertain in terms of time - it is not possible to predict when the Central Division Paris will issue a written decision - and the substantive outcome. Regardless of this, the decision would not bind the Local Division. In addition to this, the parties to the action for revocation are not identical to those of the infringement action and the counterclaim of revocation, so that a uniform decision affecting all parties cannot be issued in this respect either. The Defendant’s interest to (potentially) save litigation costs does not weigh up to the legitimate interest of Claimant in pursuing the infringement action. 

IPPT20240909, UPC CFI, LD Hamburg, Philips IP v Shenzhen
Ex parte preliminary injunction and seizure of infringing oral cleansing system in connection with IFA 2024 trade fair in Berlin following earlier cease-and-desist-declaration (Article 62 UPCA, R. 209 RoP)

IPPT20240906, UPC CFI, LD Düsseldorf, Sodastream v Aarke
Request for panel review of dismissal of security for costs by judge-rapporteur dismissed (R. 333.1 RoP, R. 158 RoP)The judge-rapporteur correctly held that, under these principles, neither a financial risk nor a likelihood of unenforceability is presented to the Court. The Claimant, as part of the PepsiCo group, is financially able to comply with a decision on costs. This has not, in any event not sufficiently, been contested by the Defendant. In fact, the Defendant confirms in its Application (par. 6 “no insolvency risk is at hand”.) The fact that the Pepsico group is not a party to these proceedings (par. 29-30 Application) does not mean that the Claimant is unable to comply with a possible decision on costs. 

IPPT20240906, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Order after interim conference (Rule 105.5 RoP). Leave to unconditionally limit claim and new auxiliary claim equal to the previous main claim (Rule 263.3 RoP). Request for stay and dismissal to be argued amd decided at oral hearing (Rule 295 RoP). Panel decided on 5 September 2024 that the oral hearing is not re-scheduled and that the question of a stay is to be argued and decided at the oral hearing. Requests to hear parties’ experts or appoint a court expert refused. 
 

IPPT20240906, UPC CFI, LD Düsseldorf, Novartis v Celltrion
Application for preliminary measures unfounded: Defendant’s conduct does not already constitute an imminent infringement, i.e. offering of infringing product (Article 62(1) UPCA) (Article 25(a) UPCA). In order for a patent infringement to be considered imminent, there must be concrete indications in the overall circumstances that an infringement is imminent. It is sufficient for an offer if the act in question actually creates a demand for the product which the offer is likely to satisfy  Competence of the Local Division Dusseldorf regardless of whether other defendants are located inside or outside the Contracting Member States because one of the Defendants is domiciled in Germany  and all the Defendants have a commercial relationship and that the application concerns the same alleged acts of infringement against all Defendants in the present case (Article 33(1)(b) UPCA). The fact of belonging to the same group (legal entities) and having related commercial activities aimed at the same purpose (such as R&D, manufacturing, sale and distribution of the same products) is sufficient to be considered as “a commercial relationship” within the meaning of the Article 33 (1) (b) UPCA. Jurisdiction – Lis pendens. Main proceedings and provisional proceedings are not the same cause of action (Article 29 Brussels Ibis). Stay  of provisional measures proceedings because of pending related action is incompatible with their urgent nature (Article 30(1) Brussels Ibis). No stay of provisional measures proceedings pursuant to Rule 295 RoP. R. 295 RoP refers unambiguously to actions and is therefore not applicable to applications for provisional measures.  Request for security for costs rejected (Article 69(4) UPCA, Rule 158 RoP). No facts indicating an alarming financial situation of the Applicants. Interim award of legal costs by analogy with R. 211.1 (d) RoP. (Rule 118.5 RoP). Unintended regulatory gap in procedure by which the decision on costs is made (Rule 118.5 RoP) if the application for provisional measures is unsuccessful and the applicant refrains from filing an action on the merits. Claim interpretation is mandatory for the Court but also for the parties, who must submit their views on their proposed interpretation and were right to do so (Article 69 EPC). The skilled person will not stop its interpretation at the philological meaning but will always have in mind the technical function of the feature as such and the features in the context of each other. If a party necessarily considers that a technical argument must be substantiated by a party´s expert opinion, it is for the parties to present the technical argument to the Court in a concentrated and comprehensible form. This is not the case where mere reference is made to a party´s expert report, nor is it the case where a party´s expert report is copied verbatim into the brief. In particular, the technical arguments must be focused and precise for the Court in order to comply with the ambitious time limits set by the law. This applies to the main proceedings and, of course, even more so to PI proceedings. Cumulative liability defendants because they acted in a close and interdependent commercial relationship based on their structure as a large group of companies (Article 25 UPCA). Patent infringement of European bundle patents before the UPC is subject to uniform substantive law (article 25 UPCA) and uniform procedural law (article 62(1) UPCA) instead of different national laws.
 

IPPT20240905, UPC CFI, LD Düsseldorf, Bioletic v Light Guide
Rejection of application for provisional measures without a hearing (R. 209 RoP). If the court points out to the applicant the lack of prospects of success of his application for the ordering of interim measures and if the applicant then states in his subsequent statement that in the event that the court adheres to its previous opinion, the claimant does not consider it necessary to discuss the matter further in an oral hearing, the court may, at its discretion, reject the application for interim measures without an oral hearing. In addition to temporal circumstances, factual circumstances are also important for the ordering of interim measures. In this context, the applicant must specifically explain why its request for legal protection cannot already be sufficiently taken into account with an action on the merits and why the ordering of interim measures is therefore necessary.

IPPT20240904, UPC CFI, LD Milan, Insulet v Menarini
Confidentiality club (Article 58 UPCA, R. 262A RoP). Article 58 UPCA must be interpreted as meaning that it extends protection not only to trade secrets but also to confidential information. Club includes (a) authorised representatives and their assistants (b) any private expert upon request, and witnesses which require access to the Confidential Information for the purposes of these proceedings; (c) the following employees of the claimant […]; (d) Applicant’s legal representatives in the parallel US proceedings against EOFLOW before the United States District Court in the District of Massachusetts. 
 

IPPT20240903, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Expansion of confidentiality restrictions for two additional third party licence agreement dismissed (Rule 9.2 RoP, Rule 262A RoP). A party must regularly seek an order for access restrictions for third-party licence agreements at such an early stage that it can unconditionally present its submission within the applicable deadlines.

IPPT20240902, UPC CFI, President, Valeo Electrification v Magna
Application for review of the allocation of technically qualified judge dismissed (Rule 9.1 RoP, Rules 33-34 RoP). The technically qualified judge is one of the judges of the panel as defined in Articles 19 and 20 UPCA (concerning the Court of First Instance) and the legal texts governing the UPC do not provide the opportunity for the parties to “make suggestion regarding (…) the technical or other relevant background” of one of the judges allocated to the panel, unlike in the case of the appointment of a court expert (R 185.2 RoP). 

IPPT20240902, UPC CFI, LD Munich, Panasonic v Guangdong OPPO
Application to add OTECH Germany as third defendant rejected as late filed (Rule 305 RoP). Plaintiff was aware in June 2023 that OTECH Germany GmbH had been found guilty of patent infringement by the Mannheim District Court. […] it could and should have used its knowledge of this judgement as an opportunity to conduct further investigations, especially since it had already taken legal action against the first and second defendants before the local chamber for patent infringement. If it had done so, it would have been able to access the annual report, which has been available online since 4 August 2023, at an earlier date than 18 February 2024 and, accordingly, file the motion to allow the extension of the action much earlier than 5 June 2024. If the extension of the action were allowed, OTECH Germany GmbH would be limited by Art. 33 (4) UPCA to doing so within the framework of a counterclaim for revocation. In this context, a further restriction to those invalidity attacks already presented by the first and second defendants in the context of their invalidity counterclaim would not appear to be fair.

IPPT20240830, UPC CFI, LD Munich, Huawei v Netgear
Case management order (Rule 101 RoP) following interim conference (Rule 105 RoP) in FRAND case regarding taking of evidence, submission of further documents, panel decision on appeal during oral hearing, objections to delay, non-technical defence, provision for security, preparation for oral hearing.
 

IPPT20240830, UPC CFI, LD Düsseldorf, Ona v Apple
Protected confidential information – trade secrets (Article 9 Trade secret directive, Article 58 UPCA, Rule 262A RoP). Information on profit margin can be classified as confidential if it is not available from publicly accessible sources.Information about the few employees having access to this financial information appears to be valuable and confidential in itself. Information that certain products do not support certain functionalities may also be confidential. The existence of a negative fact therefore does not per se exclude the need for secrecy. Information about the group of persons with relevant detailed knowledge of technical information classified a confidential. That information knowledge harbours the potential for targeted attacks in order to obtain confidential information concerning specific, secret functionalities.
 

IPPT20240830, UPC CFI, LD München, Avago v Tesla
Patent declared invalid for lack of novelty. Claim interpretation (Article 69 EPC). Interpretation of feature  ‘in at least one of ...’. All of the elements listed in feature 1.1.2 in conjunction with the other features 1.2.2 and 1.3.2 are necessarily and therefore cumulatively claimed. Lack of novelty (Article 54 EPC). The subject-matter of claims 1 and 7 and the auxiliary requests is anticipated by D3 ([…]) to the detriment of novelty. In order to be considered part of the prior art in this sense, an invention must be directly and unambiguously disclosed in a single prior art document. It must be identical in its essential components, in the same form, with the same arrangement and with the same features. The lack of novelty also requires that the subject matter of the invention is directly and unambiguously derived from the prior art. This applies to all claim features. The standard for the disclosure content of a publication is what an average person skilled in the relevant field can and may know and understand. 

IPPT20240827, UPC CFI, LD Munich, Syngenta v Sumi Agro
Provisional injunction: imminent danger that the Applicant's right will be infringed by the contested embodiment in the Contracting States, in particular in Germany and Bulgaria (Article 62 UPCA, R. 211 RoP). It is at least more likely than not that the contested embodiment, the 2023 version of KAGURA, makes literal use of the technical teaching of claim 1. In case of a product claim directed to a composition it is sufficient for the applicant to allege and prove that at the time of any act of use under Art. 25 UPCA by the respondent, the attacked composition had all the features of the patent claim or that there is an imminent danger that such an act of use directed to such a composition will be carried out by the respondent in the future. It is not on the applicant to plead and prove why the composition had all features of the patent claim. Risk of infringement in Contracting States by distributing the 2023 product outside the Contracting States, namely in the Czech Republic, and by advertising "KAGURA" within the Contracting States. The Respondents have in any event created a risk of first infringement that patent-infringing compositions will be manufactured, advertised and distributed by them in the territory of the Contracting States in the future (Art. 25(a), 62(1) UPCA). In the circumstances of this case, in order to eliminate the risk of first infringement, the Respondents should have offered a cease-and-desist declaration with a penalty clause in respect of the 2023 product. In proceedings for provisional measures the number of invalidity arguments must generally be reduced to the best three (R. 211(2) RoP). Temporal urgency, unreasonable delay (R 209(2)(b) RoP,  R 211(4) RoP). In view of the diverging case law on temporal urgency, which grants the applicant only one month, […] the Local Division Munich adheres to its case law granting two months.

IPPT20240827, UPC CFI, LD Munich, Hand Held Products v Scandit
Preliminary injunction for indirect infringement (Article 62 UPCA, R. 211.2 RoP). Sufficient degree of certainty for provisional measures regarding indirect infringement, not regarding direct infringement (Article 62(4) UPCA, Rule 211(2) RoP, Article 25 UPCA, Article 26 UPCA)). Urgency (Rule 209(2)(b) RoP, Rule 211(3) RoP). As soon as the applicant has all knowledge and documents that reliably enable a promising legal action, he must regularly file the application for interim measures within two months. Claim interpretation (Article 69 EPC). The person skilled in the art is a team. The possible applications of claim 1 are many. Indirect infringement (article 26 UPCA): it must regularly be assumed that the supplied party will use the means in the manner suggested to it in the supplier's advertising messages, instructions for use and other documents. Direct infringement (article 25 UPCA) uncertain with constellation. Validity. Burden of proof. It is the task of the defendant in the present case to present arguments based on the prior art that make the legal validity of the patent in dispute appear insufficiently secure (Article 54 UPCA). Due to the summary nature of the examination of the legal validity in proceedings for the adoption of interim measures, the number of arguments raised against the legal validity must generally be reduced to the best three.

IPPT20240826, UPC CFI, LD Copenhagen, Hybridgenerator v HGSystem
Ex parte order for preservation of evidence and inspection ogf property granted (Article 62 UPCA,  R. 211 RoP)

IPPT20240826, UPC CFI, LD Hamburg, Avago v Tesla
The infringement action is unfounded. The counterclaim for revocation is partially justified. Rebuttable presumption of entitlement to European patent (Rule 8.5 RoP). The entry in the patent register has a significant indicative effect when assessing the question of who is the substantive owner of the patent. The Division must assume a rebuttable presumption.  Insofar as the defendants criticise that the plaintiff has not become the proprietor of the patent in suit due to an inadmissible ‘dealing with oneself’ transaction, this objection is not able to shake the legal presumption. Formal requirements of Articles 71-74 EPC are met  with regard to the transfer of rights. Reply to revocation counterclaim filed in time within 2 months of service of the counterclaim, irrespective of the use of the official forms. Rule 4.1 sentence 2 RoP is only a directory provision (Rule 30 RoP, Rule 4 RoP) At least in the initial phase of the UPC - the present complaint was submitted on the first day of the UPC’s operation, 1 June 2023 - the Local Chamber considers it appropriate to apply a more generous standard. Claim interpretation (article 69 EPC). The local division assumes a functional interpretation of the patent in suit. In view of the fact that claim 3 in particular is not limited to semiconductor chips, the person skilled in the art is to be defined as a graduate engineer specialising in electrical engineering with a university degree and several years of experience in the development of power control systems. In the case in dispute, it does not matter under what conditions and to what extent the grant history is relevant for the interpretation of the claim before the UPC. No divergent  interpretation for infringement and validity. Inventive step (article 56 EPC). An invention is deemed to exist if it does not result from the usual approach of the person skilled in the art, but requires an additional creative effort on their part. Contrary to the view of the defendant, the expert would have had no reason to look for allocation solutions in the style of D 4 after reading D 1. A problem-solution approach would not lead to a different result. Partial revocation (Article 65(3) UPCA). In the opinion of the local division, a patent only be revoked in nullity proceedings before the UPC to the extent that the grounds for revocation are sufficient, so that a patent can also remain (partially) in force to the extent of individual independent patent claims within the scope of the complete set of claims filed as the main or auxiliary request, if this corresponds to the procedural concern of the patent proprietor.

IPPT20240823, UPC CFI, LD Lisbon, Ericsson v Asustek
Leave for an unconditional limitation of the scope of the initial claim (Rule 263(3) RoP). Defendant Arvato should no longer be considered to be infringing according to Art. 25(a) UPCA, but regarded as an intermediary according to Art. 62(1) UPCA, whose services are used by the other Defendants to infringe the Patent.

IPPT20240823, UPC CFI, President, Maxeon Solar v Aiko Energy 
Change of language from German to English (the language of the patent) granted (Article 49 UPCA). English language application to change the language of the proceedings from German to English declared admissible (Rule 7.1 RoP, Rule 14.4 RoP, Rule 323 RoP). According to R. 7.1 RoP, it is within the Court’s discretion to decide on a case-by-case basis whether an application lodged in a different language under R. 323 RoP should be rejected. If both parties are in a comparable situation, the position of the defendant (s) is the decisive factor. It appears that changing the language of the proceedings would greatly facilitate the coordination among the Defendants – especially those that are not German entities – while not posing any detriment to the Claimant which operates and communicates in English. 

IPPT20240822, UPC CFI, CD Munich, Astellas v Healios
Applicant granted access to the written pleadings and evidence (Rule 262 RoP). Once proceedings have come to an end the integrity of proceedings is no longer at stake and the balance of interests will normally be in favour of granting access to written pleadings and evidence pursuant to Rule 262.1(b) RoP, subject to the redaction of personal data and the redaction of confidential information pursuant to Rule 262.2 RoP).

IPPT20240821, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Certain information classified as confidential for confidentiality club (Article 58 UPCA, Rule 262A RoP, Article 9 Trade Secrets Directive). The fact that precisely the information now classified as confidential by the Defendants was publicly discussed in the Stuttgart proceedings has not been sufficiently demonstrated by the Applicant, nor is it apparent.

IPPT20240821, UPC CFI, CD Paris, Kinexon v Ballinno
Generally unjustified to stay revocation proceedings because of appeal against the denial of provisional measures (Rule 295(m) RoP). If the lodging of an appeal would suffice for a stay of proceedings, a party lodging an appeal against a decision rejecting provisional measures would have it in its hands to influence and alter the tight timeframe as provided for by the UPCA. Such a stay for an unpredictable time would be at odds with the aforementioned guideline of an oral hearing within one year and clashes with the Respondent’s legitimate interest in obtaining a decision by the UPC to determine its freedom to operate as soon as possible. 

IPPT20240821, UPC CFI, LD Paris, HP v Lama France
All parts of the Rejoinder to the Reply to the Statement of defence of HP, except point 3 and related exhibits, excluded as inadmissible: not limited to a response to the matters raised in the Reply to the Statement of defence (Rule 29(c) RoP). If HPDC considered that new arguments on the infringement claim justified an additional exchange, it was up to it to request this from the Judge-Rapporteur by means of a reasoned request on Rule 36 RoP. It is clear from R 12 RoP that the Rules of Procedure have divided the written procedure into several successive streams. These flows, accompanied by strict deadlines, have been designed to ensure the most efficient and economical procedure possible before the UPC, in accordance with point 4 of the preamble. Full repetition of arguments does not help the court make better decisions. Full repetition of the arguments is superfluous, tends to increase the number of pages of the pleadings (to date more than 1,760 pages […]) which does not help the judges to give a decision of the highest quality as provided for in point 6 of the RoP preamble.

IPPT20240820, UPC CFI, RD Nordic-Baltic, Edwards v Meril - II
Application for security for legal costs dismissed (Article 69 UPCA, Rule 158 RoP). No indication that the Claimant would lack assets or will to pay costs of the proceedings and other costs incurred (or to be incurred) by Defendants, which the Claimant may have to bear. Nor is there any evidence suggesting that a possible order for costs by the UPC would not, or only in an unduly burdensome way, be enforceable in the United States.

IPPT20240820, UPC CFI, RD Nordic-Baltic, Edwards v Meril - I
No stay of proceedings because a final decision in EPO opposition cannot be expected rapidly; notice of opposition filed on 7 March 2024 (Article 33(10) UPCA, Rule 295(a) RoP). Stay of proceedings because of pending EPO opposition is during the written procedure governed by Article 33(10) UPCA and Rule 295(a) RoP (containing the option to stay). Rule 118 RoP (containing an option to stay as well as an obligation to stay) only applies to the oral procedure. Although the general provision of Rule 295(a) RoP may in theory apply in certain situations where an EPO opposition is pending, Article 33(10) UPCA and Rule 295(a) RoP contain the more specific provisions. Stay of proceedings based on Article 33(3) UPCA in case of a counterclaim for revocation may be dismissed if bifurcation has not been proposed

IPPT20240816, UPC CFI, LD Lisbon, Ericsson v Asustek
The Statement of claim requirement to provide “information about any prior or pending proceedings relating to the patent concerned” of Rule 13.1(h) RoP specifically serves the purpose to limit the risk of contradictory decision and lis pendens situations, which can formally be avoided based on the requirements to inform the UPC of prior or pending proceedings relating to the patent concerned before the case is attributed to a panel. The Court further notes that, in case of a possible ex parte proceedings, R. 206.4 RoP demands even higher requirements – any pending proceedings and/or any unsuccessful attempt in the past to obtain provisional measures in respect of the patent. Rule 13.1(h) RoP requires only information, not any kind of Annexes or evidence.
 

IPPT20240816, UPC CFI, RD Nordic-Baltic, Edwards v Meril
Wide discretion of the Court to design how “time shall begin to run afresh” after the stay of proceedings comes to an end in accordance with the relevant general principles such as procedural economy and flexibility (Rule 296(3) RoP). In the court's view, this is essentially a situation in which the claimant has to bring a new action with clarified circumstances and the defendant has to put forward new defence accordingly, derived from the TBA decision. The Court is in the position, that the written procedure as such has to be repeated, but with shorter time limits.

IPPT20240814, UPC CFI, LD Munich, NEC v TCL
Confidentiality club (R. 262A RoP). Access granted to the representatives named as the Claimant’s representatives in the statement of claim. In order not to restrict the Claimant’s right to choose its legal representatives, the Court has granted these representatives the right to share the relevant information with their team working on the case. 

IPPT20240813, UPC CFI, LD Munich, NST v Texas Instruments
Withdrawal  only regarding some defendants possible (Rule 265 RoP). The withdrawal of the action is permitted because the Defendants 1) and 2) have declared their consent. There are no other reasons to continue the proceedings with regard to Defendant 1) and 2). The decision about costs follows the agreement of the Parties involved: Attorney’s fees, costs of court and expenses are borne by the party incurring the same. 

IPPT20240812, UPC CFI, LD Vienna, Swarco v Strabag
Petitioner’s request for access to the Statement of claim, the pleadings including the evidence rejected at the current stage of the proceedings (Article 45 UPCA, Rule 262 RoP). The general interest of justice includes the protection of the integrity of the proceedings. During pending proceeding the access requested by the applicant must have a significant impact on its circumstances and the interest must be concrete. In order to assess whether the applicant's product fulfils one or more features of the patent in suit, it does not need the statement of claim including the evidence of these ongoing proceedings. 

IPPT20240809, UPC CFI, LD Munich, Abbott v DexCom
Confidentiality club  (R. 262A RoP). Access granted to the representatives named as the Claimant’s representatives in the statement of claim. In order not to restrict the Claimant’s right to choose its legal representatives, the Court has granted these representatives the right to share the relevant information with their team working on the case. 

IPPT20240809, UPC CFI, CD Paris, Aiko Energy v Maxeon Solar
Withdrawal of Statement for Revocation before being served has the same legal effect as if it had not been lodged at all. No legitimate interest for the Defendant to participate (Rule 265 RoP). Reimbursement of 60% of Court fees (Rule 370(9) RoP).

IPPT20240809, UPC CFI, LD Hamburg, AGFA v Gucci
Confidentiality club protection for trade secrets and confidential information, restricting use or disclosure outside of the present court proceedings.  (Rule 262A RoP, Article 9 Trade Secrets Directive). The existence of a trade secret does not have to be established to the court's satisfaction, but it is sufficient if this is predominantly probable. The following information relating to the internal organization, the supply chain and sales data of the Gucci group are classified as confidential pursuant to R. 262A RoP. Restricting the use of confidential instead of limiting access thereto, does not endanger the right of the other party right to be heard and the right to argue its case successfully and does not does not require the same strict balancing of interest as a limitation of access within the proceedings.

IPPT20240808, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Confidentiality club membership (Rule 262A RoP). In general, there is no reason to limit the authorised representatives of a party to a certain number or even to UPC representatives and their internal assistants, who must also be named. However, it must be clear who is obliged to maintain confidentiality and who can be held responsible and legally liable in the event of a breach of the confidentiality order. (Rule 262A RoP). In principle, it is the responsibility of each party to identify the natural persons to be granted access to the confidential information. Once a party has done so and has identified the natural persons to whom it wishes to grant access to the confidential information, it is for the other party to state the reasons why, in its opinion, such access should not be granted in the particular case.

IPPT20240806, UPC CFI, LD Düsseldorf, Seoul Semiconductor v Amazon II

IPPT20240806, UPC CFI, LD Düsseldorf, Seoul Semiconductor v Amazon
Withdrawal because of out-of-court settlement (Rule 265 RoP). Reimbursement of 60% of  Court fees (Rule 370 RoP)

IPPT20240806, UPC CFI, LD Munich, Qufora v Sauer
No waiver translation requirements, given that the panel as a whole lacks the necessary language skills with regard to the original German-language documents (Article 51(1) UPCA, Article 42 UPCA, Rule 7(1) RoP). Art. 51 (1) UPCA is based on the idea of a flexible and efficient procedural organisation, whereby an appropriate balance must be struck between the interests of the parties, taking into account the principle of proportionality (recital 5 of the preamble to the UPCA; Art. 42 UPCA). Whether such a waiver is appropriate is determined by the specific circumstances of the individual case. A comprehensive balancing of interests must take place. In particular, the language skills of the parties and their representatives and the language skills of the panel must be taken into account. The volume, the length or the quantity and the nature of the documents in question and their relevance to the proceedings is also of relevance. Other aspects may also be relevant in individual cases. Opportunity to be heard: The person affected by an order must, in general, be granted a hearing before the order is issued (Rule 264 RoP)
 

IPPT20240806, UPC CFI, LD Munich, NEC V TCL
Service of Statement of claim on Defendant 2 (Rule 271 RoP). Defendant's statement of 30 July 2024 is deemed to be proof of service. There is no need to wait for further proof of service from the Chinese authorities.

IPPT20240806, UPC CFI, LD Munich, Motorola v Ericsson
Leave to change claim rejected (Rule 263(2)(a) RoP). If either condition is not met, the court's discretion is reduced to zero and it must refuse the application.The applications for injunctive relief and further corrective measures, i.e. recall, permanent removal and destruction of the allegedly infringing embodiments, could, with reasonable diligence, have been brought earlier than 06/05/2024. The statement of claim was served on the defendants on 17/02/2024. Therefore, the application for amendment could and should have been filed by mid-February at the latest. As this is a clear-cut case leave to appeal is not granted (Rule 220(2) RoP).

IPPT20240806, UPC CFI, LD The Hague, Winnow v Orbisk
Extension granted from 20 August 2024 to 6 September 2024 for filing response to Rule 190 RoP request (order to produce evidence). The Statement of defence and the reply to the R. 190 request so not (necessarily) have to be filed on the same date.

IPPT20240805, UPC CFI, LD Düsseldorf, Seoul Viosys v epert e-Commerce
Subsequent request to amend the patent requires permission of the Court, which permission can be postponed at the discretion of the Court, in which case admission of the auxiliary request is still possible depending on the further progress of the proceedings (Rule 30(2) RoP). Two month period of Rule 32(1) RoP for lodging a Defence to the Application to amend the patent does not apply to later subsequent requests to amend the patent of Rule 30(2) RoP.

IPPT20240805, UPC CFI, LD Düsseldorf, Sodastream v Aarke
Security for costs dismissed (Rule 158 RoP). Neither a financial risk nor a likelihood of unenforceability is presented to the Court. It is not disputed by the parties that the claimant, as part of the PepsiCo group, is financially able to comply with a decision on costs. The defendant's sole argument that it had doubts as to the claimant's compliance with a decision could not be substantiated by facts. 

IPPT20240805, UPC CFI, LD Düsseldorf, Ortovox v Mammut
Security (deposit) to be released when the period for requesting panel review has expired (Rule 333 RoP, Rule 352(2) RoP, Rule 45 Registry Rules). Double security – a deposit and a bank guarantee – can also be the reason and cause for a release decision.

IPPT20240802, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
An amendment of an application for amendment of a patent is not governed by Rule 263 RoP but to be classified as a subsequent request to amend the patent within the meaning of Rule 30(2) RoP, which is admissible only with the permission of the Court Territorial limitation of the amendment was inadmissible, in the absence objective reasons for it (Article 34 UPCA). The new applications, without territorial limitations, are ultimately only a clarification of the previous legal situation, is admissible and allowed under Rule 30(2) RoP. 

IPPT20240802, UPC CFI, LD Paris, HP v Lama France
Request for communication of invoices, relating to the allegedly infringing cartridges [..] which were imported by LAMA FRANCE outside the territory of the European Union, granted, subject to confidentiality club (Rule 191 RoP, Rule 262A RoP). The question […] is whether LAMA is a manufacturer, importer, and/or offers, places on the market the allegedly infringing products.

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 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).

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 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 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 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 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).

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 

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 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.

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.

IPPT20240708, 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].

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). 

PPT20240702, 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.