2023 UPC September

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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. Same alleged infringement and permanent business relationship.


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)