2024 UPC April

IPPT20240430, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Subsequent requests to amend the patent may be filed also after the closing of the written procedure with the permission of the Court however, the admission of this subsequent request must not prejudice the other party’s right to defence (Rule 30(2) RoP). An unconditional amendment and significantly reducing the number od amendment offers a meaningful contribution to the efficiency of the proceedings in term of simplifying the issues which the Court shall address and facilitating a more expeditious decision. Claimant is granted a reasonable time period, set in one month, to lodge an additional defence to defendant’s new set of amendments.

IPPT20240430, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Plaintiff is upon its own request ordered to submit redacted licence agreements, subject to further to be determined confidentiality regimes under Rule 262 and 262A RoP. Order is based on the extensive case management powers vested in the Court (Article 43 UPCA) and the judge-rapporteur (Rules 101, 111 and 331 et al. RoP), not Rule 172 RoP or Rule 190 RoP.

IPPT20240430, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Provisional cease and desist order, subject to Applicant providing € 2 million security (Article 62 UPCA, Rule 211 RoP).Non-compliance with the substantive requirements for an application for provisional measures (Rule 206.2(d) RoP) may be to the detriment of the Applicant. A possible infringement of R. 206.2(d) RoP does not therefore lead to the Application being inadmissible. Rebuttable presumption that a person registered as the patent proprietor in the respective national register is entitled to be registered (Rule 8.5(c) RoP, Rule 211.2 RoP, Article 47 UPCA,). Claim interpretation (article 69 EPC). Statements made by the applicant in the granting procedure are not admissible material for interpretation. They are therefore generally not to be taken into account in the context of patent interpretation. Sufficient certainty of the validity of the patent for the ordering of provisional measures (Article 62 (4) UPCA, Rule 211.2 RoP). No award of damages possible in proceedings for provisional measures (article 62 UPCA, Rule 211(1) RoP). The content of provisional measures is exhaustively regulated in Art. 62 UPCA in conjunction with R. 211(1) RoP. The awarding of damages is not mentioned there. Its assertion is therefore reserved for the main proceedings. No security for legal costs of Defendant in urgent proceedings (Article 69(4)) UPCA, Rule 158 RoP, Rule 211.1(d) RoP). No reason for a decision on costs in proceedings for the ordering of provisional measures if, as in this case, a main proceedings follows the urgent proceedings. Unintended regulatory gap: interim award of costs  in favour of Defendant not provided for in urgent proceedings (Rule 118.5 RoP, Rule 211.1 RoP)

IPPT20240429, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Change of language of the proceedings to the language in which the the patent was granted as agreed by the parties approved by the Court. (Article 49(3) RoP, Rule 321(1) RoP) 

IPPT20240426, UPC CoA, AIM Sport v Supponor
Infringement proceedings and Provisional measures proceedings are two different proceedings (Article 32.1(a) en (c) UPCA). The fact that the basis for both proceedings is the same – the same infringement – does not lead to a different conclusion. The “Information about appeal” in the decision should have distinguished between the separate proceedings, such that in the infringement proceedings (ACT_545571/2023) the time period of two months applied and in the provisional measure proceedings (ACT_551054/2023) the applicable time period was 15 days. Principle of the protection of legitimate expectations: excusable error about applicable appeal time period because of non-obvious incorrect information provided by Court of First Instance, but outcome inf future cases may be different now that the Court of Appeal has clarified the wording used in Rule 220.1(c) RoP.

IPPT20240425, UPC CFI, CD Paris, Toyota v Neo Wireless
Request to stay the proceedings rejected (Rule 295 RoP). Neither the fact that a Preliminary Objection has been lodged nor the likelihood of success of the appeal against the rejection of the Preliminary Objection are relevant factors for deciding whether the proceedings should be stayed. No rapid decision is expected from the EPO (Article 33(10) UPCA, Rule 295(a) RoP). In the current case, the date for the EPO opposition hearings has not even been set and is still unclear when the EPO will issue a decision. Claimant’s interest to continue the proceedings outweighs Defendant’s interest to stay the proceedings: (a) Defendant’s interest to (potentially) save litigation costs does not weigh up to the legitimate interest of Claimant in pursuing this revocation action; (b) The balancing of interests also strikes in favour of plaintiff because the patent expires on 27 January 2025; (c) The fact that there is a danger of differing results between the UPCA proceedings and in the EPO proceedings does not lead to a different result.

IPPT20240423, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
By way of exception the order of 30 April 2024 will be in German, accompanied by a certified English translation. (Article 49 UPCA, Rule 14(2)(c) RoP, Rule 118(8) RoP) After change of the language of the proceedings into English by the Court of Appeal at 17 April 2024, exceptional use is made of the possibility for German Local Divisions to issue and deliver an order in German together with a certified translation in order to make effective use of preparatory work and not to delay the proceedings unnecessarily.

IPPT20240411, UPC CFI, LD Hamburg, Daedalus v Xiaomi
Service by an alternative method (Rule 275 RoP) requires at least a first attempt of service in accordance with Rules 273 and 274 RoP. Since Defendants 1) and 2) as well as Defendant 5) are domiciled outside the territory of the contracting member states of the UPCA, service must be effected in accordance with Rules 273 and 274 RoP. These provisions demand at least a first attempt of service in accordance with Rule 274.1 (a) (ii) and (iii) RoP. 

IPPT20240417, UPC CoA, Curio Bioscience v 10x Genomics
Change of language of the proceedings into the language of the patent on grounds of fairness: all relevant circumstances shall be taken into account (Article 49 UPCA, Rule 323 RoP) These should primarily be related to the specific case and the position of the parties. If the outcome of balancing of interests is equal, the position of the defendant is the decisive factor. As a general rule and absent specific relevant circumstances pointing in another direction, the language of the patent as the language of the proceedings cannot be considered to be unfair in respect of the claimant. Appeal admissible despite Curio Bioscience’s cut-and-paste-mistakes in the heading of the Statement of claim (Rule 225 RoP). The correct information according to R.225(a) – (d) RoP was present later in Section 7 of the said appeal submission and there were no ambiguities as to who was the appellant and who was the respondent. No decision on the reimbursement of legal costs will be made in this appeal, since this order of the Court of Appeal is not a final order or decision, i.e. not an order or decision concluding the proceedings pending before the Court of First Instance. (Article 69 UPCA, Rule 118 RoP, Rule 242 RoP

PPT20240415, UPC CFI, President, Advanced Bionics v MED-EL
No disproportionate disadvantage necessary. The decision whether or not to change the language of the proceedings into the language in which the patent was granted (Article 49 UPCA, Rule 323 RoP) shall be determined with regard to the respective interests at stake that has to be weighted, without it being necessary to constitute a disproportionate disadvantage. As a result, it may be sufficient that – amongst all relevant circumstances also to be considered – the language initially chosen is significantly detrimental to the Applicant. A fairness issue can occur if one party compared to the other(s), is remarkably disadvantaged by the conditions in which it has to organize its defence due to the language of the proceedings. Factors resulting from strategic choices made by the Applicants and the existence of multiple related proceedings pending before national courts is not obviously affecting the conditions under which the defence is exercised in the present action. Request to change language of proceedings can be filed within the time-limit to lodge the Statement of Defence.

IPPT20240411, UPC CFI, LD Paris, ARM v ICPillar
Preliminary objections concerning competence of the Paris Local Division dismissed (Rule 19(1)(b) RoP, Article 33(1)(b) UPCA). The Claimant has demonstrated that one of the defendants is domiciled in France, that all the defendants have a commercial relationship and that the action relates to the same alleged infringement. The internal jurisdiction of the Paris Local Division under Article 33(1)(b) UPCA is justified. If in a case of multiple defendants one of the defendants has its residence within the territory of the local division seized, article 33(1)(b) UPCA applies regardless of whether the other defendants are based inside or outside the CMS or inside or outside the EU. Hence the only requirements to be met are: 1) the multiple defendants have a commercial relationship and 2) the action relates to the same alleged infringement. The requirement of a commercial relationship implies a “certain quality and intensity”. However, to avoid multiple actions regarding the same infringement and the risk of irreconcilable decisions from such separate proceedings, and to comply with the main principle of efficiency within the UPC, the interpretation of the link between the defendants should not be too narrow. The fact of belonging to the same group (of legal entities) and having related commercial activities aimed at the same purpose (such as R&D, manufacturing, sale and distribution of the same products) is sufficient to be considered as “a commercial relationship” within the meaning of the Article 33(1)(b). UPC has jurisdiction over infringement acts that began before 1 June 2023 and continued after this date and that are not covered by the period of limitations. This applies on the basis of Articles 3(c), 32(1)(a) and 72 UPCA. 

IPPT20240411, UPC CoA, Neo Wireless v Toyota
Time period for lodging appeal against procedural order’ (Rule 220(2) RoP, Rule 224(1)(a) RoP)
If an appeal is lodged against a ‘procedural order’ under Rule 220(2) RoP and leave (i) is granted in the impugned order itself, the Statement of appeal must be lodged within 15 days of service of that order containing the decision to grant leave. If the decision to grant leave to appeal (ii) is contained in a separate order on a request to that effect (which separate order must be issued within 15 days of the impugned order, cf R.220(3) RoP), the Statement of appeal has to be lodged within 15 days from the date of service of this separate order containing the decision to grant leave to appeal.

IPPT20240410, UPC CoA, Ocado v Autostore
Composition of the panel of the Court of Appeal. When an appeal does not concern a field of technology, the Court of Appeal does not have to assign technically qualified judges (in the field of technology concerned) (Article 9 UPCA). Public access to written pleadings and evidence (Article 45 UPCA, Rule 262 RoP). Appeal dismissed. Balance of interests in the present proceedings in favour of granting access to statement of claim based on an interest of a general nature after the proceedings had come to an end by a settlement. The general principle is that the register and the proceedings are open to the public, unless the balance of interests involved is such that they are to be kept confidential. Interests to be balanced. The interests of the parties or other affected persons include the protection of confidential information and personal data (’the interest of one of the parties or other affected persons’). The general interest of justice includes the protection of the integrity of proceedings. Public order is at stake e.g. when a request is abusive or security interests are at stake. A “reasoned request” R.262.1(b) RoP means a request providing all the information that is necessary to make the required balance of interest. General interest of a member of the public that written pleadings and evidence are made available allows for a better understanding and scrutiny. Interest of protection of the integrity of proceedings ensures that the parties are able to bring forward their arguments and evidence and that this is decided upon by the Court in an impartial and independent manner, without influence and interference from external parties in the public domain. The general interest of public access and the interest of protection of integrity of the proceedings are usually properly balanced and duly weighed against each other, if access is given after the proceedings of an instance have come to an end by a decision. The balance is usually also in favour of allowing access if proceedings have come to an end before a decision and the integrity of proceedings no longer plays a role. A direct interest, such as regarding validity or infringement, may be immediately present and, in weighing against the general interest of integrity of proceedings, the balance will generally be in favour of granting access. The Court may, however, for the purpose of appropriate protection of the integrity of proceedings, impose certain conditions on granting access, such as the obligation for that member of the public to keep the written pleadings and evidence he was given access to confidential as long as the proceedings have not come to an end. 

IPPT20240409, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Ex parte order of 11 December 2023 upheld, including the obligation to provide security in the amount of EUR 500,000.00. Claim interpretation and prosecution history. Prosecution history is in principle not admissible for claim interpretation. At most it may have indicative significance for how the skilled person understand a feature, if the applicant has commented on the meaning of a feature or term in the curse of the examination procedure (Article 69 EPC). Provisional measures do not require risk taking by applicant but reliable knowledge of relevant facts (Article 47 UPCA, Article 62 UPCA, Rule 213 RoP). The applicant only needs to call upon the court if he has reliable knowledge of all the facts that make legal action in the proceedings for an order for provisional measures promising and if he can make these facts credible: that the applicant is entitled to initiate the proceedings, that the patent in question is valid and that its right is infringed or threatened to be infringed. Front loaded UPC proceedings – late-filed submissions. The parties must co-operate with the court and present their arguments as early as possible (point 7, Preamble RoP). Submissions after the conclusion of the oral proceedings do not fulfil these requirements and must therefore generally be rejected as late. This applies in any case if the party concerned was not exceptionally granted the right to make additional submissions within a time limit set by the court during the oral hearing in response to a reasoned request. No interim award of costs (Article 69 UPCA, Rule 211(1)(d) RoP). There is no reason for a decision on costs in proceedings for interim measures if the summary proceedings are followed by proceedings on the merits. As a rule the applicant is to provide adequate security for appropriate compensation for any injury if the order for provisional measures is revoked, unless the specific case exceptionally requires otherwise (Rule 211(5) RoP).

IPPT20240409, UPC CoA, Panasonic v Xiaomi
If Rule 271(1) RoP – service of Statement of claim at an electronic address provided for service  – applied in the First Instance, it also applies in appeal. In appeal proceedings, Chapter 2 – Service (Rules 270 – 279) of the Rules of Procedure (RoP) applies mutatis mutandis. Consequently, if during the proceedings at the Court of First Instance, Rule 271.1 RoP applied (in short: an electronic address for service was provided by the defendant or his representative) and/or a representative of the respondent accepted service on behalf of the respondent, then pursuant to R.271.2 RoP further service – not only in the proceedings at first instance, but also in appeal proceedings - shall be effected within the closed electronic system of the UPC Case Management System (CMS).

IPPT20240409, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Extension of deadline to file Statement of Defence with three weeks rejected (Rule 9(3) RoP). Deadline to submit a written submission should not be extended lightly and should only be granted in circumstances that justify such extension. Defendants have failed to substantiate – other than with a general reference to ‘fair trial’– why the language change one month before the deadline for filing the SoD, in the circumstances of this case makes that the these defendants will not be able to meet the deadline of 26 April, 2024, or are actually hindered in that respect. 

IPPT20240408, UPC CFI, LD Milan, PMA v AWM
No access to written report and any other outcome of the measures to inspect premises and to preserve evidence and revocation of the measures to preserve evidence because applicant did not timely start proceedings on the merits (Article 60(8) UPCA, Rule 198 RoP, Rule 9(4) RoP). Restitution of all evidence gathered through the execution of the revoked measures is to take place from 05.06.2024 on, unless the Court of Appeal decides otherwise (Article 74 UPCA, Rule 223 RoP). It is quite clear that an appeal could not be effective if this Court’s order for the return of the evidence gathered were given immediate effect. Damages claim dismissed (Article 60(9) UPCA, Article 54 UPCA, Rule 198(2) RoP). AWM and Schnell failed to allege, identify, and prove what concrete damage would have been caused by the enforcement of the measures, resulting in the dismissal of the claim, since – as provided for in Art. 54 UPCA – the burden of the proof of facts lies with the party relying on those facts. € 10.000 in legal fees apportioned equitably (Article 69(2) UPCA). This decision is based on procedural grounds only, without any assessment of the infringement or the validity of the patent. It is also the first decision of the UPC concerning a specific legal issue for which no other case law is available. 

IPPT20240404, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Exceptional extension of time period to file Reply to the Statement of defence, Counterclaim for revocation and an amendment of the patent from 6 April 2024 until 28 May 2024. Due to restriction of access to pleading because of Protection of confidential information order access to the information in question to the party's employees with the relevant knowledge was granted for the first time on 27 March 2024 (Rule 9(3) RoP, Rule 262A RoP)

IPPT20240403, UPC CoA, Juul Labs v NJOY Netherlands
Appeal and the appellant’s request to set aside the orders of the Court of First Instance to rectify the name of the defendant (“Juul Labs, Inc”) to read “Juul Labs International, Inc.” rejected [Rule 9 RoP]. If the claimant has not correctly named the defendant in the statement initiating the proceedings, the Court may allow the claimant to rectify the error. The request can be granted if the defendant is not unreasonably prejudiced by the incorrect statement of name and its rectification. As a rule, there will be no unreasonable prejudice if, despite the incorrect statement of name, it must have been clear to the defendant and to the Court, based on the circumstances of the case, that the claimant intended the statement for revocation to be directed against the defendant. Direct appeal of order of judge-rapporteur admissible as explicitly provided for in Rule 21(1) RoP, no prior review by the panel required in this particular case. No decision on costs. Rule 242.1 RoP is to be interpreted to mean that if the decision of the Court of Appeal is not a final order or decision concluding an action, the Court of Appeal, in the case at hand, will not issue an order for costs in respect of the proceedings at first instance and at appeal. However, the outcome of the appeal must be considered when, in the final decision on the action at hand, the Court determines whether and to what extent a party must bear the costs of the other party because it was unsuccessful within the meaning of Article 69 UPCA.

IPPT20240403, UPC CFI, LD München, Avago v Tesla
The infringement claim and the two counterclaims for revocation will be heard together before the Munich Local Division (Article 33(3) UPCA, Rule 37 RoP). Both parties have argued that the action and the counterclaims should be heard together before the same court. The defendants have also agreed that everything should be referred to the central chamber. The plaintiff has not agreed to this, so that this option has been ruled out.

IPPT20240402, UPC CFI, LD Hamburg, Avago v Tesla
Finalisation of a confidentiality order under Rule 262A RoP. Defendant's forecast sales results are confidential information that must be treated as strictly confidential and may not be used or disclosed outside the present legal dispute, even after its conclusion. Access is limited to the plaintiff’s authorised representative and the following persons: a. ... ; Director and Managing IP Counsel, ... Inc.; b. ... , Master Engineer, ... Inc.; c. ... , Senior IP Counsel, ... Inc. The fact that these persons are not employed by the plaintiff itself is irrelevant.