2023 - UPC Court of First Instance

IPPT20231228, UPC CFI, CD Munich, Astellas v Healios
The Court will wait for the outcome of the Appeal Proceedings on the application of Rule 262 RoP before proceeding with the present Application for access to written pleadings and evidence. The Applicant is to submit the final Court of Appeal decision in the Appeal Proceedings (´the Court of Appeal decision´). No legal basis for request to have the judge-rapporteur inform the Court of Appeal of the order staying the present proceedings to ensure that the Court of Appeal is aware of that order. Moreover, the judge-rapporteur has no access to the Court of Appeal (CMS) file. 

IPPT20231227, UPC CFI, LD Munich, KrausMaffei v Troester
Protection of confidential information (Rule 262A RoP). The protection of confidential information contained in pleadings and annexes can only be requested within a workflow pursuant to Rule 262 and/or 262A of the Rules of Procedure at the same time as the initial filing or within 14 days. These requests must be repeated when further pleadings and annexes are filed. In exceptional cases, limited protection under Rule 262A of the Rules of Procedure may be provided within a workflow under Rule 9 of the Rules of Procedure. Insofar as the need for protection of the information is undisputed between the parties, no further judicial review of the need for protection is required in the context of an application under Rule 262A of the Rules of Procedure. The amount of a penalty payment under Rule 354.3 of the Rules of Procedure is limited by request.

IPPT20231220, UPC CFI, LD Munich, SES-Imagotag v Hanshow
Provisional measure rejected: no sufficient certainty (“ausreichender Sicherheit”) that the products infringe the patent (article 62 UPCA). If the antenna can be assigned to at least a significant part of the rear housing surface, a violation cannot be established. Costs caused by a protective letter as costs of the proceedings (article 69 UPCA). The Munich Local Division has competence in respect of a request for provisional measures based on alleged infringement of the patent, inter alia, in Germany (article 33(1)(a) UPCA). Claim interpretation (article 69 EPC).The original version of the claims and amendments thereof during the application procedure can be used for claim interpretation. It follows from the spatial delimitation [...] that a component to be assigned to the side of the front surface of the electronic label cannot at the same time be assigned to the side of the rear surface of the housing - and vice versa. The applicant of an unsuccessful application for interim measures must generally also bear the costs incurred by the defendant as a result of a protective letter. This results from the fact that the filed protective brief has become part of the proceedings for the adoption of interim measures through its transmission in accordance with Rule 207.8 RoP. 

IPPT20231219, UPC CFI, LD Düsseldorf, Nutricia v Nestlé
Procedural order to hear both the infringement action and the counterclaim for revocation   (Article 33(3)(a) UPCA; Rule 37 RoP). Appropriate in particular for reasons of efficiency and preferable because it allows both issues – validity and infringement – to be decided on the basis of a uniform interpretation of the patent by the same panel composed of the same judges. Although validity and infringement issues in the chemical/pharmaceutical field can be demanding, the panel is composed of judges who are very experienced in patent law and familiar with difficult issues in this context. The assignment of the TQJ, who is experienced in the technical field in question, ensures that the Local Division is undoubtedly capable of deciding both matters.

IPPT20231219, UPC CFI, LD Paris, Abbott v Dexcom
Protection of confidential information (Rule 262 RoP, Rule 262A RoP). Redacted commercial information in the Statement of Defence, shall be kept confidential and excluded from public access (Rule 262 RoP). the Statement of Defence contains information regarding notably sales figures and revenues, which are indeed sensitive information, the Court considers that there are sufficient reasons not to disclose the Confidential information in the public register pursuant to R. 262.2 RoP. Considering the competitive relationship between the parties, the Respondent accepts the principle of a Redacted SoD, provided that the access to the information offered to the Respondent is broad enough to ensure a fair trial (Rule 262A RoP). Access restricted on the Respondent’s side to the representatives of the Respondent as identified in the Statement of claim and their “Legal team” as designated in the CMS in charge of these proceedings (further to them having signed a Non-Disclosure Agreement to comply with this confidentiality order), the representatives of the Respondent as identified in the Statement of claim and their “Legal team” as designated in the CMS in charge of the UPC parallel proceedings involved in another action pending before the Paris LD (n° 583778/2023) and the pending proceedings before the Munich LD (n° 583791/2023 and 547520/2023) (further to them having signed a NDA to comply with this confidentiality order), the three natural persons named by the Claimant, that is to say [XXXXXXXXX], as well as experts and witnesses (further to them having signed a Non-Disclosure Agreement to comply with this confidentiality order). Respondent accepts that a breach of confidentiality should be subject to a fine to ensure the efficiency of the confidentiality order. Fine of 50.000 euros is reasonable.

IPPT20231219, UPC CFI, LD Munich, Edwards Lifesciences v Meril

The provision of Rule 360 RoP (settlement of the main proceedings) applies mutatis mutandis to applications for interim measures. There is an unintended regulatory gap in this respect; the consequences of the settlement of proceedings concerning the adoption of interim measures are not expressly regulated in the Rules of Procedure. Settlement of application for preliminary measures. Under the circumstances it is equitable to order the defendant to pay the entire costs, irrespective of the prospect of success of the application for interim measures (Article 69 UPCA; Rule 118.5 RoP). Irrespective of the question of whether the applicant's request was fully admissible and justified at the time of the final event, the defendants could have submitted the declaration and undertaking of discontinuance in a much more cost-saving manner and have caused the applicant unnecessary costs in the form of the costs of the legal dispute and the applicant's other costs. Only obligation to reimburse costs can at present be determined, any further claims dismissed as currently premature. A specific amount to be reimbursed has not yet been named and it has not been submitted that the costs incurred by the applicant will certainly exceed the upper limit of reimbursable costs of € 200.000, only the obligation to reimburse can be determined on the merits at present. Any further claims must therefore be dismissed as currently premature (Rule 118.5 RoP; Rule 151 RoP).

IPPT20231218, UPC CFI, LD Paris, Hewlett-Packard v Lama
Request for extension of time limit for filing Statement of defence of 3 months rejected (Rule 25 RoP). Defendant cannot legitimately invoke its own negligence in that it did not open the documents in support of the statement of claim on the CMS until 4 weeks after the date of communication of the access code in order to be granted its request for an extension of the statutory time limit of 3 months for submitting its statement of defence.

IPPT20231214, UPC CFI, LD Düsseldorf, Nutricia v Nestlé

The provisions of the Brussels 1-bis Regulation do not apply to a counterclaim for revocation, which is to be included in the Statement of defence (Rule 25(1) RoP, Rule 270 RoP). At the request of the claimant, the Court clarifies that the time limit for filing the Defence to the Counterclaim for revocation and any Application for the amendment of the patent is 20 December 2023 (Rule 29 RoP, Rule 30 RoP, Rule 32 RoP).

IPPT20231211, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Ex parte provisional injunction. Direct use of the invention (article 25 UPCA). Element of suppression (“Unterdrückung”) is fulfilled. The prosecution history is in principle not to be taken into account when interpreting the patent. Indirect use of the invention (article 26 UPCA). Obvious from the circumstances that the defendants know that the accused embodiment is objectively suitable for being used in a patent-infringing manner, and also that the customers of the accused embodiment use it to carry out the patent-compliant process. Validity of the patent is sufficiently certain (article 62(4) UPCA, Rule 211(2) RoP). The fact that the patent in suit has not yet survived any adversarial legal validity proceedings does not preclude this. Urgency of the action (Rule 209(2)(b) RoP) Ex parte provisional measures (Rule 212 RoP) Credible that applicant is threatened with irreparable damage without the issuance of an ex parte order due to the delay associated with the involvement of the opposing party. With regard to the legal validity, the Local Board has before it both the action for revocation brought by the respondent 1) before the Federal Patent Court of Switzerland and the petitioner's reply in this regard. Enforceability of the order subject to providing security for appropriate compensation ordered (Rule 211(5) RoP). Set at amount in dispute, given that enforcement damage are at this time difficult to estimate for the local division

IPPT20231211, UPC CFI, LD Munich, Huawei v Netgear – separate workflow

After leave granted to amend the case by Order of 11 December 2023 by including a second patent, the defendants may comment on the question whether the two patents  are to be heard in separate proceedings (Rule 302(1) RoP). The legal hearing to be granted to the defendants can be granted most clearly within the CMS by separating the subject matter of the extension of the action. This is because a separate workflow is then available for the action and for further possible defence submissions (objection; action for annulment; etc.). 

IPPT20231211, UPC CFI, LD Munich, Huawei v Netgear - Leave

Leave to amend the case by including a second (related) patent (EP 3678321) (Rule 263 RoP). The requirements for a refusal of admission are not met. The court is convinced that the amendment in question could not have been made earlier with due diligence. If both patents are jointly managed within the same infringement proceedings, the court is obliged to grant the defendant largely the same defence options in relation to the second patent as in the case of a new, further action. This can be done by granting or extending deadlines for comments. In the case of separation of the subject matter of the extension of the action, this would even be simplified. The parties will be heard in a separate workflow on the question of whether the subject matter of the extension of the action can or should be separated.

IPPT20231211, UPC CFI, LD Munich, Huawei v Netgear

Notification by the judge-rapporteur (Rule 20(2) RoP)  that a Preliminary objection is to be dealt with in the main proceedings is not subject to review by the panel (Rule 333(1)) RoP). The judge-rapporteur decides on this inadmissible application because of the objective of procedural economy, in particular the conservation of the time resources of the other members of the panel.

IPPT20231208, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Alternative method of service of Statement of claim (Rule 275 RoP). Contrary to the opinion of the Munich Local Court, Rule 275.2 RoP cannot be interpreted in principle as permitting service without first having attempted service in accordance with the provisions applicable to service abroad.

IPPT20231205, UPC CFI, LD Hamburg, Avago v Tesla 

Procedural order (Rule 9 RoP, Rule 262A RoP). The start of the plaintiff’s time period for lodging the Defence to the counterclaim for revocation is set for 8 November 2023 in line with the time limit for the Reply to the Statement of defence in the infringement action. This request had to be complied with, as such concurrence not only appears to be procedurally economical, but is also necessary with regard to the right to be heard, since the content of the statement of defence, including the protected information contained therein, is significant for the drafting of the Defence to the revocation action. 

IPPT20231205, UPC CFI, LD Munich, 10x Genomics v Nanostring

Recurring penalty payments not subject to enforcement requirements under national law nor notification by the claimant (Article 82(4) UPCA, Rule 118(8) RoP, Rule 354 RoP). See also Local Division Düsseldorf,  IPPT20231018, myStromer v Revolt Zycling). Dual purpose penalty payment: coercive function and penalty-like sanction. € 100.000 penalty payment for which the defendants are jointly liable. “Offering” (Article 25 UPCA). Defendants have to pay the full costs (Article 69 UPCA, Rule 354(4) RoP).

IPPT20231204, UPC CFI, LD Düsseldorf, Seoul Viosys v expert e-Commerce 

Separate infringement proceedings ordered for two different patents (Rule 302 RoP), no separate proceedings for the two different defendants (Rule 303 RoP). The patents in dispute can each be challenged in terms of their legal status. As a result, a different course of proceedings is possible and not unlikely. The parties have therefore rightly not opposed such a separation of proceedings. In the view of the local division, such a separation of proceedings should take place as early as possible to facilitate handling. In contrast, the Local Chamber currently sees no reason for a separation in accordance with R. 303.2 VerfO. Even if the action is directed against two defendants, it concerns the same contested embodiment. Therefore, there are considerable synergy effects with regard to both the interpretation and the answer to the question of infringement. For this reason alone, it is justified to refrain from separating the proceedings with regard to the defendants. 

IPPT20231204, UPC CFI, LD Munich, Panasonic v Xiaomi

Final order based on agreement by the parties regarding Service of Statement of claim by alternative method deemed accepted (Rule 275 RoP); Extension of time to file Statement of defence granted (Rule 9 RoP). The agreement between the parties on the […] procedural issues is procedurally efficient and reasonable and should therefore be implemented.

IPPT20231201, UPC CFI, LD Düsseldorf, Kaldewei v Bette

The local division proceeds with both the action for infringement and with the counterclaim for revocation (article 33(3)(a) UPCA). Such a joint hearing of the infringement action and the counterclaim for a declaration of invalidity appears to make sense for reasons of efficiency alone. It is also advantageous in terms of content, as it allows a decision to be made on both the legal status and the question of infringement on the basis of a uniform interpretation by the same panel of judges in the same composition. Such a uniform approach is all the more justified if the complexity of the technology in dispute - as here - is rather moderate in the known spectrum of patent disputes and the number of attacks on the legal validity is also manageable.

IPPT20231201, UPC CFI, LD Milan, PMA v AWM
Access given to a representative before the UPC to application for preserving evidence and inspection filed on 23.8.2023 after redaction of personal data (Rule 262 RoP).

IPPT20231128, UPC CFI, LD Hamburg, Avago v Tesla

The start of time limit of two months for responding to the Statement of Defence which includes a Counterclaim for revocation (Rule 29a RoP) is to be set on the date of the conclusion of the R. 262A proceedings, i.e. 8 November 2023. Opposing party to be heard on synchronizing time limit for replying to the nullity counterclaim with the time limit for replying to the Statement of Defence (Rule 264 RoP).

IPPT20231127, UPC CFI, LD Munich, Panasonic v Xiaomi

Preliminary order : Service of Statement of claim by alternative method (Rule 275 RoP); Extension of time to file Statement of defence (Rule 9 RoP). The Court is of the opinion that the most efficient and economically sensible course of action in the present case would be for the present counsel for Defendants 3,4,5,6,9,10 to accept service for Defendants 1, 2, 7, 8 on Defendant 3 in the context of the motion under (Rule 275.2 RoP). As a concession, the time limit for responding to the action could - subject to a statement by the plaintiff - be set uniformly until 31 January 2024. The application for an extension of time for defendants 3,4,5,6,9,10 would then be interpreted as also including an application for an extension of time for defendants 1, 2, 7,8.

IPPT20231122, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

Ordered before the conclusion of the written procedure to hear both the infringement action and the counterclaim for a declaration of invalidity and to request the President of the Court of First Instance to assign a technically qualified judge (article 33(3)(a) UPCA, Rule 37 RoP). The joint hearing of infringement and revocation counterclaims can be useful for reasons of efficiency alone. It is also advantageous in terms of content, as it allows a decision to be made on both the legal status and the question of infringement on the basis of a uniform interpretation by the same panel in the same composition. This applies all the more if the complexity of the technology in dispute is rather moderate in the known spectrum of patent disputes and the number of validity attacks is also manageable.

IPPT20231120, UPC CFI, CD Munich, Astellas v Healios

Revocation action currently not stayed because of rapid decision expected from the EPO, but continued at least until the interim conference which is to be held on 14 March 2024 (article 33(10) UPCA, Rule 295(a) RoP)). The Court finds that the Claimant has credibly established that it has a legitimate interest in pursuing this revocation action with the aim of obtaining (at least some degree of) commercial certainty in view of the Patent. Rapid decision expected from the EPO requires that there should be a concrete expectation (i.e. a known date in time) for a decision which date should be in the near future such that it is clearly expected to be delivered before an expected decision by the UPC. Decision not limited to final decisions of the EPO.

IPPT20231117, UPC CFI, CD Munich, Astellas v Healios

Inter parties restricted access to confidential commercial information (Rule 262A RoP). Unrestricted access to specific document containing commercially sensitive information not necessary to understand Claimant’s legal position. Access restricted to specific natural persons, at least natural party form each party (not limited to employees) and the respective lawyers, or other representatives of those parties to the legal proceedings. Public access to confidential commercial information restricted (Rule 262 RoP). The Court grants request to keep the information in the Confidential Annex confidential for third parties, provided a redacted version thereof is submitted (Rule 262(2) RoP).

IPPT20231117, UPC CFI, LD Hamburg, Fives v Reel

Article 32(a) UPCA confers competence on the UPC to determine damages only after a prior action for patent infringement has been brought before a chamber of the UPC. The UPC does not have competence for actions for the determination of damages on the basis of patent infringement proceedings that have become final before a national court. Preliminary objection granted (Rule 19(1)(a) RoP)

IPPT20231114, UPC CFI, LD Paris, C-Kore Systems v Novawell
Ex parte measure granted to preserve evidence, detailed description, physicial seizure of product and technical and promotional documentation an a written report by expert appointed by the Court (Article 58 UPCA, Article 60 UPCA, Rule 196 RoP, Rule 197 RoP)

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

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

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) UPCA,  Rule 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.

IPPT20231026, UPC CFI, LD München, 10x Genomics v Nanostring
Withdrawal of application for interim measures allowed (Rule 265 RoP)

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

It follows from Article 49(5) UPCA that it may be sufficient that the language initially chosen is significantly detrimental to the Applicant. 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. 

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

Recurring penalty payments are imposed on the basis of article 82(4) UPCA and not governed by provisions of national enforcement law (Article 82(4) UPCA, Rule 354 RoP). Provision of article 82(3) UPCA is superseded by Art. 82 (4) UPCA in conjunction with R. 354.3 and .354.3 RoP. € 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.

IPPT20231003, UPC CFI, LD Munich, Huawei v Netgear

Workflows.  According to Rule 4.2 RoP, the parties are required to use official forms provided online, including the various workflows, such as, for instance, for the main proceedings, for Rule 262 RoP or Rule 262A RoP. Within these workflows, no further applications are to be submitted that are assigned to other workflows and/or require different handling. Automatic provisional protection against public access. In the workflow in accordance with Rule 262.2 RoP, a party can apply for protection against third party access. Inter parties protection of confidential information requires hearing the other party. In the workflow pursuant to Rule 262A RoP, a party may request protection for confidential information from another party to the proceedings. Before the order is issued, this other party to the proceedings must be heard (Rule 262A.4 RoP). he exclusion of the public from the interim hearing and the oral proceedings is governed by Rules 105.2 and 115 RoP. Separate workflows are not available in this respect. Consequently, applications relating to this must be submitted in the workflow of the main proceedings (here: infringement proceedings).

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.

IPPT20230921, UPC CFI, CD Munich, Astellas v Healios
Public access to letter for service rejected (Rule 262.1(b) RoP). A concrete and verifiable, legitimate reason is required for making available written pleadings and evidence upon a request by a member of the public. To be informed of the proceedings before the Unified Patent Court for the purposes of education and training is not a legitimate reason as required by Rule 262.1(b) RoP. It is also insufficiently concrete and verifiable. No legal basis to give access to letter for service.

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.

IPPT20230913, UPC CFI, LD Vienna, CUP&CINO v Alpina Coffee
The scope of protection of a European patent is to be interpreted on the basis of Article 69 (1) EPC including its interpretative protocol in conjunction with Article  24(1)(c) UPCA. Accordingly, the scope of protection of the patent is determined by the content of the patent claims, for the interpretation of which the description and the drawings must also be taken into account. In this respect, the interpretation of the patent claims serves not only to eliminate any ambiguities, but also to explain the technical terms used therein and to clarify the meaning and scope of the invention described therein. The patent description is the source material for determining the technical teaching that is protected by the patent claim. This form of interpretation combines adequate protection for the patent proprietor with sufficient legal certainty for third parties. The aspect of legal certainty requires that interested third parties are able to recognise whether a contemplated, planned or already realised specific embodiment falls within the scope of protection of the patent claim. In proceedings for interim measures, the successful defendant can be finally awarded procedural costs upon application (Article 69 UPCA, Rule 150 RoP). The applicant cannot successfully claim the costs of these proceedings as the unsuccessful party, even if the proceedings on the merits are successful. 

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)

IPPT20230829, UPC CFI, LD Munich, Amgen v Sanofi-Aventis
Service of Statement of claim (Rule 13 RoP, Rule 271 RoP). Pursuant to Rule 13 of the Rules of Procedure, an action can be validly filed and served without annexes if the submission of these annexes is merely announced at a later date in the statement of claim.The requirement to grant the defendant a sufficient right to be heard, also with regard to attachments submitted at a later date, may need to be met by fine-tuning the time limit regime.

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.

IPPT20230825, UPC CFI, LD München, Tesla v Avago
Service of Statement of claim by registered letter (Rule 271(6) RoP). Posting within the meaning of Rule 271(6) RoP is regularly to be expected at the Local Court of Munich one to two days after the handover to the postal service of the Higher Regional Court of Munich.  Consequently, the Munich Local Court is in the habit of accepting a posting two days later

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.

IPPT20230721, UPC CFI, LD Milan, Oerlikon v Bhagat
Service of the Statement of claim (Rule 6 RoP, Rule 271 RoP) without sending a copy of the documents attached to the claimant, as in any case listed on pages 41 et seq. of the Statement of claim and in any case summarily described in their content in the body of the same document.

IPPT20230705, UPC CFI, CD Paris, Bitzer v Carrier

Rule 16(3) RoP correction of deficiencies in the Statement of Claim is not an urgent action as mentioned in Rule 345(5) RoP that requires a standing judge. The abovementioned R. 16-5 RoP is not applicable in the present situation, as the claimant did not fail to correct the deficiencies within 14 days of service of the Registry’s notification but was only asked to amend the statement of claim according to the relevant correction provided in a separate document. The claimant is at the time of the present order allowed to lodge an amended statement of claim pursuant to R. 16-3 RoP.

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. (Rule 6 RoP)

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).

IPPT20230613, UPC CFI, LD Milan, Oerlikon v Himson II
Ex parte order to preserve evidence at trade fair (Article 60 UPCA, Rule 192 RoP). Extreme urgency exists considering that the international trade fair where the offending conduct is taking place started on 8.6.2023 and ends, tomorrow, on 14 June 2023. The prerequisites of Articles 197(1) RoP and 60(5) UPCA for the ex parte granting of the measure are met, since (a) time constraints do not allow the parties to be convened before the end of the trade fair tomorrow; (b) there is a risk that the evidence will no longer be accessible to the claimant once the exhibition is over, since the defendant is based abroad and the documents indicated are easy to conceal and/or destroy. Payment of fees (Rule 192(5) RoP, Rule 371(1) RoP: The Tribunal notes that pursuant to Section 371(3) RoP, in cases of urgency, when advance payment is not possible, the applicant's counsel must pay the fixed contribution within the time limit set by the Tribunal: in light of this limitation, the applicant must be ordered to pay this contribution by 15 June 2023.

IPPT20230613, UPC CFI, LD Milan, Oerlikon v Himson
No extreme urgency requiring standing judge to decide on application to preserve evidence (Rule 194(4) RoP, Rule 345 RoP). The claimant argues that the order for preserving evidence is extremely urgent due to the end of the fair in Milan, which will end on the 14th of June. The application has been lodged on the 12th afternoon. At this stage, it is still possible for the presiding judge in the local division of Milan to make an urgent decision before the end of the fair.