2023 UPC December

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).

IPPT20231220, UPC CoA, OPPO v Panasonic

IPPT20231219, UPC CoA, OPPO v Panasonic

IPPT20231218, UPC CoA, OPPO v Panasonic 
Procedural order requests where no technical issues are at hand, can be adjudicated by three legally qualified judges of the Court of Appeal (Article 9 UPCA).  Request by Appellant for shortening the time period for filing the Statement of response by Respondent in appeal rejected; disproportionate to the time the Appellant has itself taken for the Statement of appeal (Rule 9 RoP, Rule 224 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 CoA, Ocado v Autostore 

Parties to address whether a third party requesting access to documents under Rule 262 RoP needs to be represented as a party before the UPC under Rule 8 RoP.

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).