2023 UPC

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Court of Appeal


IPPT20231106, UPC CoA, Ocado
Suspensive effect given to an appeal of an order on access to documents under R. 262.1(b) RoP, an order which would otherwise have been enforceable soon, to ensure that there is time to adjudicate the appeal on the merits.


IPPT20231013, UPC CoA, Amgen v Sanofi-Aventis

Valid date of service of statement of claim with Annexes (Rule 271 RoP). A Statement of claim, even if it refers to or announces the later submission of Annexes, can be validly served on a defendant, provided that the Statement of claim without the Annexes enables the defendant to assert its rights in legal proceedings before the courts of the UPC. A Statement of claim must therefore at least state with certainty the subject matter and cause of action. Only annexes that are indispensable for the understanding of the subject matter and the cause of action must be served (and where necessary translated) on a defendant, together with the Statement of claim. Extension of terms for Preliminary objections and Statement of defense because of unavailability of Annexes (Rules 13, 19 and 23 RoP). If a claimant did not upload the Annexes simultaneously with the Statement of claim in the CMS, and thus did not comply with Rule 13.2, and as a consequence these have not been available when the representative of the defendant accessed the CMS with the Access Code contained in the Notice, this in itself is sufficient to constitute a reasoned request by a defendant for an extension of the terms mentioned in Rules 19.1 and 23 RoP for lodging a Preliminary objection and the Statement of defense, regardless of the nature and/or content of the Annexes. Failing any specific circumstances of an individual case which calls for another term, which have to be brought forward by the claimant, the extension of the terms mentioned in Rules 19.1 and 23 shall compensate for and thus be equal to the period during which the Annexes have not been available after service of the Statement of claim contrary to Rule 13.2 RoP.


Court of First Instance


IPPT20231103, UPC CFI, LD Munich, Amgen v Sanofi-Aventis

Change of the language of the proceedings from German to English, the language of the patent, subject to the agreement of both parties and the other members of the panel (Rule 322 RoP, article 49 UPCA).

IPPT20231103, UPC CFI, LD Hamburg, Avago v Tesla 

Confidentiality order and restriction of access (Rule 262A RoP, Article  58 UPCA). Prima facie evidence of trade secrets. 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. 


IPPT20231030, UPC CFI, CD Munich, Nanostring v Harvard

Relevant factors when considering security for legal costs and expenses (Article 69(4) UPCARule 158 RoP). A 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.  Order to provide security for legal costs and other expenses pursuant to Rule 158.1 RoP to the amount of EUR 300,000. 


IPPT20231027, UPC CFI, LD Hamburg, 10x Genomics v Vizgen

Extension of time to file Statement of Defense with the period of time that the plaintiffs allowed to elapse with the subsequent submission of the annexes.


IPPT20231020, UPC CFI, LD Helsinki, AIM Sport Vision v Supponor

UPC lacks competence because withdrawal of opt-out on 5 July 2023 is ineffective due to national infringement and invalidity proceedings brought before German national courts, which were pending on 1 June 2023 (Article 32 UPCA, Article 83 UPCA, Rule 5 RoP). Irrelevant whether same parties are involved in the national actions. Article 71c(2) Brussels I Regulation (recast) only concerns a situation of parallel jurisdiction and is not applicable where the competence of the UPC has been opted out. The reading used by the Court of Article 83(4) UPCA is also in line with the principle of non-retroactivity of treaties as stipulated under Article 28 VCLT. No security for costs (Rule 158 RoP)


IPPT20231018, UPC CFI, President, Plant-e v Arkyne

Language of the proceedings changed from Dutch into English, the language in which the patent was granted (Article 49 UPCA, Rule 323 RoP). Both parties have a good command of English, which is one of their working languages and also the language in which the exchanges prior to the infringement action have been conducted. Consequently, the use of English would not affect the interests of the Respondents, who have already provided a translation of the statement of claim which was served on 10 August 2023. It follows from Art. 49 (5) UPCA that it may be sufficient that - amongst all relevant circumstances also to be considered - the language initially chosen is significantly detrimental to the Applicant.


IPPT20231018, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

€ 26.500 awarded in recurring penalty payment to the UPC because of non-compliance with ex parte provisional injunction (article 82(4) UPCA). Offering a product which is the subject matter of the patent (article 25(a) UPCA). The term "offer" within the meaning of article 25(a) UPCA is to be understood in purely economic terms. In the case of a product, it includes any act committed within the scope of the European patent which makes the subject-matter of the demand available. 


IPPT20231017, UPC CFI, RD Nordic-Baltic, Ocado v Autostore

Availability to the public of pleadings or evidence. Article 45 UPCA means that the written procedure of the Court shall, in principle, be open to the public unless the Court decides to make it confidential, to the extent necessary, in the interest of one of the parties or other affected persons, or in the general interest of justice or public order. If a person has made an application under Rule 262.1(b) for access to pleadings or evidence and provided a credible explanation for why he/she wants access, the application shall be approved unless it is necessary to keep the information confidential.


IPPT20231011, UPC CFI, CD Munich, Astellas v Healios

Parties are under an obligation to use the CMS and the dedicated workflows in the CMS to file their submissions (see e.g. Rule 4.1 RoP). It is the sole responsibility of the parties that this is done properly and timely. The Court will try to be helpful where possible in resolving CMS related issues. Submissions and correspondence outside of the CMS should be limited to an absolute minimum.The notification generated by the system is the “means of electronic communication” as meant in Rule 278.1 RoP or, as the case may be, the “relevant electronic message” as meant in Rule 271.6 RoP.


IPPT20231004, UPC CFI, LD Hamburg, AGFA v Gucci

Extension and alignment of deadline for lodging Statement of Defence granted as agreed. Extension and alignment of deadline for lodging Preliminary Objection because of procedural advantage and representative for defendants helping to make a prompt and successful service  of the Statement of Claim possible though risking a shortening of the relevant deadlines. Extension in alignment with UPC system (two months before Statement of Defence).


IPPT20231004, UPC CFI, CD Munich, Nanostring v Harvard

Objections based on articles 29 and 30 Brussels I bis Regulation may be the subject of a Preliminary objection under Rule 48 in connection with 19.1(a) RoP. Preliminary objection is to be dealt with in the main proceedings for reasons of procedural economy and efficiency (Rule 20.2 RoP). The Court in its Preliminary Order also expressed its understanding that the Preliminary objection relates to the Court´s jurisdiction only in respect of the German part of the European Patent. In view of the limited scope of the objection raised by the Defendant and in view of the different auxiliary requests submitted by the Claimant in response, the parties seem to agree that the UPC at least has jurisdiction for the non-German parts of the patent and that proceedings should continue in any event in relation to these parts. This understanding has been confirmed by the parties in their submissions following the Preliminary Order.


IPPT20231004, UPC CFI, LD Hamburg, Avago v Tesla

Protection of confidential information (Rule 262A RoP). Pursuant to Rule 262A(4) RoP, the representative of the other parties must be invited to submit written comments prior to making any order. However, in the interest of effective protection of secrets, the requirement to be heard before issuing an order only applies to the final order of a secrecy order and access restriction. In the interest of effective protection of secrets under Directive (EU) 2016/943 access may be further restricted until a final order is issued, namely to the person of the claimant's representative. The discussion of the confidentiality application with the party is possible with the redacted versions of the documents concerned. In substance, the information on the product-specific design of the contested embodiment, the purchase prices of individual chips and the information on the sales result to be forecast are probably business or trade secrets. With regard to the information in Annex B 4, the details of the disclosure to the plaintiff are likely to be decisive. The competence of the judge-rapporteur for the present order in the written procedure follows from Rule 331(1) in connection with 334 and 335 of the Rules of Procedure.


IPPT20230929, UPC CFI, LD Munich, Edwards Lifesciences v Meril

Use of official forms available online, which also include separate workflows within the CMS, required (Rule 4(1) RoP).  No security for the legal costs and other expenses (Rule 158 RoP) ordered. It requires a showing that the financial circumstances of the other party give rise to fears that any claim for reimbursement of costs cannot be served or that, despite sufficient financial resources, enforcement of a decision on costs appears to be impossible or fraught with particular difficulties. Such a request cannot be made the subject of Preliminary objection (Rule 19 RoP). The possible subjects of a Preliminary objection are exhaustively listed in Rule 19(1) RoP. Motions pursuant to Rule 158(1) RoP are not listed. The same applies to referring certain issues to the Court of Justice of the EU or of suspending the proceedings due to pending parallel proceedings. The objections will be dealt with by the Division in the main proceedings. Jurisdiction of the UPC. In the view of the judge-rapporteur the Unified Patent Court has jurisdiction over infringement acts committed before the entry into force of the Agreement on a Unified Patent Court on 1 June 2023. This follows from article 3(c) UPCA and article 32(1)(a) UPCA and the absence of transitional provisions to the contrary.


IPPT20230927, UPC CFI, LD Munich, Philips v Edrich

Valid service Statement of claim on 4th defendant via 1st defendant, who is one of its directors. In the opinion of the Local Division, knowledge may be presumed pursuant to Rule 275(2) RoP if either a legal relationship exists after which knowledge may be imputed or concrete circumstances exist which establish knowledge.


IPPT20230927, UPC CFI, LD Milan, Oerlikon v Himson

Availability of written pleadings and evidence to the public. Rule 262(1) RoP requires that the application be made by a third party - private or public - with respect to the parties to the proceedings. A lawyer who declares himself to be the defendant's advocate, asserting that he only has the power of attorney to access the documents of the proceedings but not to enter an appearance, and asks for access to the file before the service of the writ of summons in order to obtain prior knowledge of the documents, is not a third party.


IPPT20230925, UPC CFI, LD Milan, PMA v AWM

Ex parte order to inspect premises and to preserve evidence; confidentiality (articles 58 and 60 UPCA, Rules 196, 197 and 199 RoP). Urgency, Reasons for ex parte, Experts, Confidentiality, Security.


IPPT20230922, UPC CFI, LD Düsseldorf, Nutricia v Nestlé

Request for the allocation of a technically qualified judge postponed until the statement of defence has been lodged (article 8 UPCA, Rule 33 RoP). The submission should take place at a stage in the written procedure where the judge-rapporteur could possibly have a first rough assessment of whether an additional technically qualified judge is needed or not. […]. By its very nature, the earliest point at which such an assessment could be made is after the filing of the statement of defence.


IPPT20230921, UPC CFI, LD Brussels, Nelissen v OrthoApnea

Ex parte order to preserve evidence at symposium (article 60 UPCA). Urgency and irreparable because evidence may soon no longer be available in the territory. Ex parte (Rule 197(1) RoP): The applicant has sufficiently explained that irreparable damage may be caused to if the defendant is heard, because it is feared that in that case the infringing products will no longer be available at the symposium (Rule 192(3) RoP). No reason for a confidentiality regime as no seizure of confidential materials is sought and seizure will be made of materials publicly available at a symposium. No legal basis for order that the defendant has to cooperate. Counsel and a technical adviser of applicant allowed to be present.


IPPT20230920, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
Availability of written pleadings and evidence to the public requires a legitimate reason. Rule 262(1)(b) RoP requires a concrete, verifiable and legally relevant reason, i.e. more than just any (fictitious) reason. In other words: a legitimate reason is required for making available written pleadings and evidence to a member of the public. Otherwise, this provision and the distinction made would seem to be moot and without substance. The mere “wish” from a natural person to form “an opinion” on the validity of a patent out of a “personal and a professional interest” cannot be accepted as a sufficiently concrete, legitimate reason to make available all pleadings and evidence in this case. 


IPPT20230919, UPC CFI, LD Munich, 10x Genomics v Nanostring

Provisional measure (article 62 UPCA, Rule 211 RoP). Sufficient degree of certainty that the patent is valid. Prevailing likelihood (“überwiegende Wahrscheinlichkeit”) – more likely than not – is required and sufficient. No unreasonable delay in seeking provisional measures. Applicants filed the request for an injunction on June 1, 2023, the earliest possible date for requesting provisional measures regarding a unitary patent with the UPC. The enforcement of a European patent without unitary effect must be carried out separately in all member states concerned and is therefore not an equivalent means of enforcing rights in the case of infringement compared to the enforcement of a unitary patent before the UPC. Interests of and potential harm for either of the parties. The Local Board considers that the interest of the right holder in not having his rights infringed outweighs the interest of the potential infringer in securing market shares now through the continuation of the infringement, which he can no longer obtain later through a possible licence agreement. The damage potentially suffered by the applicants as a result of a continuation of the infringing acts by the defendants is also difficult to compensate financially, as the acquisition transactions have a long-term effect; their reversal is much more difficult for the applicants than for the defendants who are contractually involved in these transactions.


IPPT20230908, UPC CFI, RD Nordic-Baltic, Ocado v Autostore

Withdrawal of action prior to final decision because of settlement (Rule 265 RoP). Since the action has been withdrawn even before all defendants formally have been served the statement of claim, the Claimant shall be reimbursed court fees by 60 % of EUR 31.000, which is EUR 18.600. (Rule 370(9) RoP)


IPPT20230828, UPC CFI, LD Helsinki, AIM Sport Vision v Supponor
Procedural order in main proceedings and provisional measures proceedings concerning issues to be addressed in written submissions, invitation to an oral hearing in front of the whole panel, including a technically qualified judge, and instructions regarding oral hearing.


IPPT20230824, UPC CFI, CD Munich, Sanofi-Aventis v Amgen

Preliminary objection against competence of Central Division in revocation action rejected because revocation action was already brought before the Central Division (article 33(4) UPCA). Statement of Revocation in revocation action was lodged in hard-copy on 1 June 2023 at 11.26, prior to the Statement of Claim in the infringement action at 11.45. The Registry is the Registry of the entire UPC (article 10 UPCA, Rule 4 RoP). The Registry, being the Registry of the Court, including therefore being the Registry of the CD Munich, functions as a ‘receiving mailbox’ for the entire UPC, especially under the circumstances of Rule 4.2 RoP.

IPPT20230823, UPC CFI, LD Munich, Edwards Lifesciences v Meril

Rule 9 RoP: An intended harmonisation of the time-limit regime as such does not constitute a reason for an extension of the time-limit that runs for the opponent who was successfully served at an earlier point in time. Rather, harmonisation can also be achieved by shortening the time limit for the opponent who was only served at a later point in time. Working with the new procedural law and the CMS poses considerable challenges for all parties involved. Therefore, in the initial period, a practicable handling of the challenges that arise is required. The judge-rapporteur therefore exercises the discretion granted by the Rules of Procedure to grant the request by way of exception. Moreover, the defendant (= applicant) has agreed to the request for an extension of time.


IPPT20230822, UPC CFI, LD Hamburg, Avago v Tesla

Rule 9 RoP: No convincing reasons for extending three months time period for lodging statement of defence. The time limit for filing oppositions under Rule 23 of the Rules of Procedure is already calculated in such a way that, for international patent disputes falling within the jurisdiction of the Unified Patent Court, it allows for a clarification of the facts and an internal coordination of the proceedings and internal coordination, even during holiday periods. Moreover, in the present case, the time limit for filing the statement of opposition already amounts to three months and six days for the first defendant and three months and eight days for the second defendant without the requested extension of the time limit due to the calculation of the time limit pursuant to Rule 271.6(b) in conjunction with 271.4(a) of the Rules of Procedure. Reference is made to the calculation of the time limit communicated by the judge-rapporteur in his order of 10 August 2023. The fact that certain central contact persons at the defendants and the suppliers could not be reached during the vast majority of the deadline period due to holidays is neither apparent nor asserted by the defendants.


IPPT20230814, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Successful service under Rule 271.1.c of the Rules of Procedure on one of several defendants also constitutes, in the circumstances of the main proceedings, effective alternative service on another defendant under Rule 275.2 of the Rules of Procedure.


IPPT20230810, UPC CFI, LD Munich, Edwards Lifesciences v Meril

The prevention of a divergence of the deadlines for lodging a preliminary objection (Rule 19) is not necessary per se. On the one hand, an extension of the opposition period is not necessarily accompanied by an extension of the time limit for filing a statement of defence. This is because, as Rule 19.6 shows, the running of the time limit for filing a statement of opposition is not even affected by the filing of the statement of opposition, unless the reporter decides otherwise. Secondly, the opposition alone concerns the issues of the jurisdiction of the court, the use of the exception under Rule 5 of the Rules of Procedure, the jurisdiction of the Chamber and the language of the proceedings. These issues per se can be answered quickly and also differently for different defendants. Furthermore, a legal interest of the other party to have certainty on these issues, also in relation to individual defendants, as soon as possible must also be recognised. However, it should be noted that working with the new procedural law and case management system (CMS) poses significant challenges to all parties involved. Therefore, a practicable handling of the challenges that arise is required in the initial period. The Rapporteur therefore exercises the discretion granted by the Rules of Procedure to grant the application by way of exception.


IPPT20230802, UPC CFI, LD Den Haag, Plant-e v Arkyne

Rule 7 RoP decision: No need to submit Dutch translations of English documents. The [foreign] defendant has not yet appeared, but one cannot see that it could have any interest in a Dutch translation. The request is therefore granted: there is no need to file translations of English-language documents.


IPPT20230630, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

Unsuccessful application for rectification under Rule 353 of order so as to include Austria in the  countries covered by provisional injunction. Application admissible under Rule 353. Obiter dictum: Since Rule 353 only allows for purely formal corrections without an examination of the substance of the matter, it is not necessary for the panel to decide in the same composition as when the order was issued. No obvious inaccuracy. Obvious inaccuracies includes all incorrect or incomplete statements of what the court actually intended in the order or decision. The declaration of the judicial intention in the decision or order must deviate from the intention present when the decision was made. Order for provision measures was issued on the basis of the application where in the auxiliary request Austria was not explicitly mentioned. The fact that the more general main request, seeks the grant of an interim injunction in respect of all member states of the Unified Patent Court in which the patent for invalidity is in force does not give rise to a different assessment, as the applicant only deals with Germany, the Netherlands, France and Italy in connection with the justification of an act of infringement. Conflict with the territorial scope provided in article 34 UPC Agreement does not justify a rectification under Rule 353.


IPPT20230629, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
Deemed day of service on the Defendant ((Rule 271 and Rule 49 Rules of Procedure). Application to file exhibits to statement of claim granted. In view of the access to the case that Defendant obtained on today’s date and the exhibits becoming available to the Defendant also today, the Court would like to clarify that the Statement of revocation is deemed to be served on the Defendant today, i.e. on 29 June 2023.


IPPT20230626, UPC CFI, LD Milan, Ocado v Autostore

Withdrawal of action prior to final decision because of settlement (Rule 265 RoP). Ocado reimbursed the amount of EUR 37,800, equal to 60% of the Court fees paid by it in these proceedings (Rule 370(9) RoP).


IPPT20230626, UPC CFI, LD Milan, Ocado v Autostore

Service of the Statement of claim without sending a copy of the documents (approximately 2.000 pages) attached to the claimant, as in any case listed on pages 47 et seq. of the Statement of claim and in any case summarily described in their content in the body of the same document.


IPPT20230622, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

Ex parte provisional injunction regarding Germany, the Netherlands, France and/or Italy and seizure of goods suspected of infringement.(article 62 and 29 UPC Agreement, Rules 206, 207, 209, 211 and 212 Rules of Procedure). Direct and literal infringement of the patent by the contested embodiment not substantially disputed in the protective letter. No exhaustion because respondent is not licensed to create from components supplied by Fairy Bike a combination falling within the scope of protection of the patent. Urgency of the action due to the already running leading European trade fair "Euro Bike 2023" and no earlier knowledge of detailed technical design of contested embodiment evident. Only provisional award of court costs, since the applicant did not explain in detail the amount of its costs quantified at EUR 16.000. Provisional measures granted without hearing the defendant because of likelihood of irreparable harm. It is obvious that the exhibition of the contested embodiment at this trade fair can lead to a hardly reversible loss of sales or market shares of the applicant. The products of both parties are substitutable, direct competitors.


IPPT20230616, UPC CFI, CD Paris, Astellas v Healios

Action referred to Central Division, Munich Section. The first classification mentioned by the patent at issue is C 12N 5/079 (Rule 17 RoP)