2023 UPC October

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

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

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.

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.

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).