2024 UPC February

IPPT20240228, UPC CFI, LD Paris, ICPillar v ARM
Court orders that steps already taken to bring the Statement of claim to the attention of the defendants by an alternative method or at an alternative place is good service (Rule 275(2) RoP). The Statement of Claim to Arm Limited, Apical Limited, Simulity Labs Limited and SVF Holdco, is deemed to be served on 7 February 2024.

IPPT20240227, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
Interim report after interim hearing in relation to combing actions (Rule 9 RoP, Rule 101 RoP). Request for interim conference after interim hearing rejected in view of the opportunity to be heard in relation to its requests and the combining of both actions at the present hearing. Case management instructions in relation to combining the actions in preparation for oral procedure to provide that all parties are “on the same page” where it concerns the grounds for revocation, arguments, facts and evidence. Value of proceedings set at 100 million euro in accordance with agreement between the parties (article 36 UPCA). Reasonable and proportionate costs recoverable up to a ceiling of 2 million euro in accordance with table published by the Administrative Committee (article 69 UPCA). Court and parties must have access to information showing at least a detailed description of the number of hours spent working on this particular case, by whom, what for and at what rate. The same applies to any expenses incurred. The judge-rapporteur informed the parties that the Court will, in principle, respect an agreement between the parties on the amount of costs that is deemed reasonable and proportionate. Use of slides during oral hearing of 4 June 2024 (Rule 9 RoP, Rule 112 RoP). Use of reasonable number of slides as demonstratives, which may not introduce any new facts or substance to the case, permitted; to be submitted by all parties by 7 May 2024 at the latest. Both parties are to include with the slides a table indicating exactly where in the pleadings/evidence already on file the contents of the slides can be found.

IPPT20240227, UPC CFI, LD Paris, Seoul Viosys v Laser Components
No change of language of proceedings from French to the language of the patent (English) rejected (Rule 322 RoP, Article 49 UPCA). The plaintiff, a Korean company, chose to bring its action in French, which is respectful of the rights of the defendant, a French company established in France. Neither the nationality of the representative of one of the parties, nor the nationality of the company intervening in the proceedings, which it has not been proven at this stage will participate in the proceedings, constitute serious grounds, either for reasons of convenience or for reasons of fairness, for proposing a change in the language of proceedings to the parties. 

IPPT20240227, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Subsequent request to change original request to amend the patent rejected because of insufficient justification  (Rule 30(2) RoP). Leave to change claim or amend case and application to amend patent can be filed simultaneously in one pleading, especially in a situation, where strict time periods come into play (Rule 263 RoP, Rule 30 RoP) in accordance with the principles of flexibility, fairness and equity, mentioned in the preamble 2, 4 and 5 of the Rules of Procedures, as well as of the principle of procedural efficiency. A request to replace the original application to amend the patent with a new set of amendments is not governed by Rule 263 RoP but falls under Rule 50(2) RoP and pursuant to Rule 30(2) RoP such a subsequent request requires the permission of the Court. Justification of a request to change the original request to amend the patent required in order to enable the Court to strike a fair balance between the opposed interests involved in the request to amend the patent (Rule 30(2) RoP). The development in Munich LD proceedings does not justify the subsequent request to amend the patent: not suitable to fulfil the declared purposes of consistency and procedural economy. Request to hear the revocation action together with the counterclaims in the Munich Local Division proceedings rejected (Rule 340(1) RoP). The application of that Rule does not appear to be actual, as no hearing seems to have been set in the two proceedings. Leave to appeal rejected (Article 73 UPCA, Rule 220 RoP). In the absence of any precedents from the UPC on the disputed issue, there is no concrete need for a ruling on the meaning of the relevant rules; In case of a possible immediate appeal to this order a decision by the Court of appeal may intervene after that the oral hearing in the current proceedings has taken place and, therefore, would be of no practical use to the parties.

IPPT20240226, UPC CoA, AIM Sport v Supponor
Parties requested to comment on non-compliance with Rule 224.1(b) RoP, providing that a Statement of Appeal of an order has to be filed within 15 days of service of an order referred to in Rule 220.1(c) RoP. Under “Information about Appeal” the CFI has indicated that the decision could be appealed within two months of the date of notification of the decision, referring to Article 73(1) UPCA and Rule 220.1(a) and Rule 224.1(a) RoP concerning an appeal against a decision, such as a decision in an infringement action, while in one of the two actions AIM sought a preliminary injunction order pursuant to Article 62 UPCA.

IPPT20240226, UPC CoA, Nanostring v 10x Genomics II

Preliminary injunction revoked. It is, on the balance of probability, more likely than not that the subject-matter of claim 1 in the version of the main request will prove to be obvious (article 56 EPC) Likely that for a person skilled in the art at the priority date of the patent at issue, after successful application of an in vitro multiplex method for the detection of ASMs, the next step was to consider transferring the method to an in situ environment. Reasonable expectation of success from a technical point of view. Arguments regarding lack of inventive step auxiliary request, although only presented at oral hearing, are in the present case part of the subject-matter of the proceedings before the Court of Appeal (Rule 222 RoP). Applicants defence not unduly disadvantaged. Standard of proof regarding order for provisional measures. Burden of proof. Facts giving rise to the entitlement to initiate proceedings and the infringement or imminent infringement of the patent, as well as other circumstances favourable to the infringement action, are to be presented and proven by the rightholder, whereas the burden of presentation and proof with regard to the facts from which the lack of validity of the patent is derived and other circumstances favourable to the invalidity or revocation lies with the opponent. Claim interpretation principles in accordance with article 69 EPC and the Protocol on its Interpretation. These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent. Munich Local Division had jurisdiction for provisional measures because attacked embodiments had been offered in Germany (Article 33(1)(a) UPCA). A distinction must be made between the formal requirements of Rule 206(2)(a) RoP (checked by the Registry) and the substantive requirements of Rule 206(2)(b) to (e) RoP (checked by the court). 

IPPT20240226, UPC CoA, Nanostring v 10x Genomics
Stay of proceedings because of insolvency not justified (Article 41(3) UPCA, Rule 311(1) RoP). Party is declared insolvent only after the conclusion of the oral proceedings and the legal dispute is ready for decision. At this stage of the proceedings, the parties have already taken all procedural steps and all costs have already been incurred by the parties. If the decision or order affects the bankruptcy estate, it does not differ from the effect that a decision or order issued before the declaration of bankruptcy would have had. Furthermore, the interest in a timely order weighs particularly heavily in proceedings for interim relief, as is the case here. Furthermore, it leads to a fair balance between the legitimate interests of the parties if events that only occurred after the conclusion of the oral hearing are no longer to be taken into account in the decision-making process. Confirmed by comparable provisions in the national civil procedural law of several contracting member states of the Convention. 

IPPT20240226, UPC CFI, President, 10x Genomics v Curio Bioscience
Application to change the language of the proceedings between two US litigants from German to the language of the patent (English) not granted  (Article 49 UPCA, Rule 323 RoP). No detailed information or relevant data in support of the assertion that Applicant is entitled to calcification as an “SME”. No particular circumstances by Applicant put forward that suffice to raise a fairness issue affecting possibility of organising efficiently its defence despite the timeframe of an application for provisional measures – which instead, may be undermined by the requested change – as both parties are equally confronted with a foreign language and the relating inconvenience in terms of translation and interpretation needs. Mere interest of the Court itself – although concurring with those of the users – cannot prevail in the event where none of the other circumstances of the case at hand call for the requested change.

IPPT20240223, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Because of article 9(2) Trade Secrets Directive and Rule 262A(6) RoP at least one natural person from a party must have access to confidential information, even though such is not provided for in article 58 UPCA. In the interest of effective protection of “confidential information” protection the requirement to invite written comments prior to secrecy order only applies to the final secrecy order and access restriction (article 58 UPCA, Rule 262A RoP). With regard to “trade secrets” access can be further restricted to party representatives until a final order is issued (Article 9 Trade Secrets Directive). Discussion of the confidentiality application with the party is possible with the redacted versions of the documents concerned. Generally, a preliminary limitation to four lawyer representatives (two partners and two associates to support them), two patent attorney representatives and three representatives of the client appears appropriate, whereby this group of persons can be extended by two paralegals if necessary (Rule 262A(6) RoP). In order to take into account the special features of summary proceedings, the group of persons required for a fair trial (Rule 262A.6 RoP) must be selected in such a way that the party affected by the provisional secrecy protection order is fully capable of working and in a position to comment on the merits of each point raised by the opposing party, taking into account the confidentiality interests of the opposing party. Since the group of persons who are granted access to the (allegedly) confidential information must not exceed the scope necessary to ensure compliance with the right of the parties to the proceedings to an effective legal remedy and a fair trial (Rule 262A(6) RoP,) the group of persons entitled to access must always be subject to a case-by-case examination, taking into account the above considerations, and, if necessary and appropriate, adapted to the requirements of the respective proceedings.

IPPT20240223, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience II
Set time limit of 1 March 2024 for replying to defendant’s statement of objection not extended to the conclusion of the confidentiality procedure of Rule 262A RoP (Rule 9(3) RoP). The redacted version of the statement of objection was already available to all representatives of the applicant as well as to the applicant itself on 15 February 2024. Only access to the unredacted version was restricted. The information classified as confidential by the defendant only concerns a very limited part of the statement of objection. Moreover, it is exclusively of a non-technical and purely commercial nature. It is not apparent from the grounds for the request for an extension of the time limit that, and if so for what reasons, the applicant is not in a position to reply to the statement of objection within the time limit set.
 

IPPT20240222, UPC CFI, LD Mannheim, MED-EL v Advanced Bionics
Request for joint hearing of revocation and infringement actions rejected (Rule 340 RoP, article 33 UPCA). Inadmissible because it conflicts with jurisdictional regime of article 33(1) and (4) UPCA. Even if the plaintiff had been granted a right to choose between the local and the central division when bringing the infringement action pursuant to Art. 33(5), first sentence, UPCA, the exercise of this right to choose in favour of the local division may not be subsequently overridden by a joinder pursuant to R. 340.1. In any case the discretion provided in Rule 340 RoP because it does not serve the interest of a proper administration of justice. The nullity proceedings before the Central Division are already at an  more advanced stage and a referral toe the Central Division a requested would be accompanied by a change in the language of the proceedings. 

IPPT20240221, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Claimants’ requests for a decision by default against the defendants in the main proceedings pursuant to Rule 355 (1)(a), 277 RoP and for a rejection of the Counterclaims for revocation is rejected. Time limits for filing the Statement of defence and the Counterclaim for revocation extended to 7 February 2024, as it was not possible to upload the Counterclaim for revocation on 6 February 2024 for internal technical reasons (Rule 9(3) RoP, Rule 25(1) RoP). Although the Statement of defence shall include a Counterclaim for revocation, the parties shall make use of the official forms available online (Rule 4(1) RoP). In practice, this means that the Counterclaim for revocation must also be filed in the workflow provided for this purpose by the CMS. Only when this requirement has been met is the Counterclaim for revocation properly filed. Where the defendant has filed a Statement of defence in due time in accordance with the requirements of Rule 25.1 RoP, the time limit for filing the Counterclaim for revocation in the dedicated workflow of the CMS may be extended retrospectively upon request (Rule 9.3 (a) RoP) and subject to the following conditions: Firstly, the defendant must have already made a first attempt to file the Counterclaim for revocation in due time in the workflow provided for this purpose before the expiry of the time limit. Secondly, the defendant must have uploaded the Counterclaim for revocation to the correct workflow without culpable delay after the expiry of the deadline.

IPPT20240220, UPC CFI, CD Paris, Roche Diabetes Care v Tandem Diabetes Care
No extension of deadline (Rule 9(3) RoP): no objective impossibility to meet deadline. No allegation, nor let alone evidence, of a difficulty in arranging a proper defence, rather the possibility that the submissions of pleadings in due time may be useless in case the Court will allow the preliminary objection. The power to extend the time limit should only be used with caution and only in justified exceptional cases (see UPC CFI 412/2023 CD Paris, order of 9 February 2024). It follows that the Court may extend a deadline set by the Rules of Procedures only in case a party alleges and gives evidence that it will not be able or was not able to meet it because of a fact that makes the submission of a document or the arrangement of an adequate content of a pleading in the due time objectively impossible or very difficult. 

IPPT20240219, UPC CFI, LD Munich, Huawei v Netgear
Interim decisions following case management hearing (Rule 334(d) RoP, Rule 336 RoP, (Rule 105(5) RoP): Reserving right to schedule an interim conference (Rule 35(b) RoP). Allowing pleadings until the conclusion of the written procedure, which in addition to the topics addressed in the Rules of Procedure, may also address topics that have been raised at the hearing, provided that they do so immediately in the earliest written submission. Setting end date for written procedure. Setting date for oral hearing at 18 June 2024. The language of the hearing will be English (language of the proceedings is German). . Setting value of infringement action at € 1 million, of the three nullity counterclaims at € 1 million and of the proceedings at € 2 million. 

IPPT20240215, UPC CFI, LD The Hague, Plant-e v Arkyne
No bifurcation. Panel decides to hear both the infringement action and the counterclaim for revocation (Art. 33(3)(a) UPCA).Such a joint hearing of the infringement action and the counterclaim seems to be appropriate in particular for reasons of procedural expediency and avoids the risk of delay that might be involved with bifurcating. It is also 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.

IPPT20240215, UPC CoA, Meril v Edwards Lifesciences
Court fee of € 11.000 is payable for appeal under Rule 220(1)(a) RoP against an order determining which party is to bear the costs of the proceedings in the context of the dismissal of an application for interim measures under Rule 360 RoP. (Rule 228 RoP). In the absence of a specific fee, the fee is to be paid for the case that is most comparable to the present case according to the system of the table of fees. The Table of Fees determines the fee for an appeal under Rule 220.1(a) RoP based on the nature of the action or application decided by the Court of First Instance. Under this system, the provision providing for a fee of €11,000 for an appeal under Rule 220.1(c) RoP concerning a request for provisional measures under Article 62 UPCA applies mutatis mutandis to the present appeal proceedings. This is because these appeal proceedings also concern an appeal against an order terminating proceedings relating to a request for provisional measures under Article 62 UPCA. 

IPPT20240214, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Submission of SEP Patent Licenses. There is typically a recognisable need for confidentiality of business-related information contained in licence agreements and only permit submission upon a court order, which may require involving the respective license agreement partner in the proceedings. Incremental 13-step procedure enables the parties to obtain comprehensive protection of secrets and allows the parties to submit the documents in the protected proceedings even without a court order to produce them (Rule 262A RoP, Rule 190 RoP). The confidentiality regime (Rule 262 RoP, Rule 262A RoP) is organised in the following 13 steps [....] (see also the order of the Düsseldorf Local Chamber of 14 February 2024 [[in 10x Genomics v Curio Bioscience, IPPT20240214]..Against the background of this regime, a decision on the requests pursuant to Rule 190 of the Rules of Procedure is not intended for the time being. 

IPPT20240214, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Incremental procedure for protection of confidential information in the Rule 262A CMS workflow, grants provisional secrecy protection. Both a redacted and unredacted version of the documents concerned need to be uploaded in the CMS and at the same time file a secrecy protection request for these documents via the workflow provided for this purpose in accordance with Rule 262A RoP. If this option is used, only the redacted version is initially visible to the opposing party until the unredacted version is released by the sub-registry of the local division on the explicit instruction of the judge. Prior to this release, the CMS gives the rapporteur the opportunity within the R. 262A workflow to issue orders for the provisional protection of the (allegedly) confidential documents. As a rule, the judge-rapporteur will follow the applicant's initially unilateral assessment of the confidential nature of the document and, by means of such an order, restrict the group of persons authorised to access the document until the final decision on the application for secrecy protection. In a first step, the document is initially only released to the opposing party's representative, unless the applicant himself authorises the release to other persons yet to be named by the opposing representative. Because of principles of fairness and fairness (Preamble (5) RoP) , the party seeking confidentiality will be informed and given opportunity to comment, if on the basis of the content of the application for protection of confidential information, the judge-rapporteur considers such a provisional secrecy protection order to be dispensable in exceptional cases. The opportunity to comment, which must be granted at the same time, offers the party concerned the opportunity to react to the threat of unprotected disclosure of the information it considers to be confidential and, if necessary, to declare that the documents in question should not be made the subject of the proceedings, or not in their entirety. As a result, all documents submitted together with an application for secrecy protection pursuant to Rule 262A RoP are subject to provisional secrecy protection.
 

IPPT20240213, UPC CFI, LD The Hague, Plant-e v Arkyne
Defendant’s request for security for costs (“cautio iudicatum solvi”) rejected (Article 69(4) UPCA; Rule 158 RoP, Article 24 UPCA). Protecting the rights of the defendant should be balanced against the right of the claimant to enforce its patent rights. The main rationale for the cautio is to secure the enforceability of a potential cost order. If such order is directly enforceable after it is granted, it can serve as grounds not to allow a cautio at the start of or during the proceedings. UPC decisions and orders are directly enforceable in the Netherlands in accordance with Art. 82 UPCA, Art. 71d Brussels and R. 354.1 RoP. A cautio in this case is hence not justified because of the risk that a possible cost order in favour of Bioo will not be directly enforceable. This contrasts with the situation decided by the CD Munich [IPPT20231030]  – [....] – on which Bioo relies. In that case the relevant claimant was domiciled outside the EU and no treaty regarding the execution of judgments was in place. As a rule, the court finds that a cautio based solely on (expected) material unenforceability should be awarded in exceptional circumstances only. The court agrees that under the circumstances in the present situation, which involves two competing SMEs with limited finances, the financial strain on the claimant can be a serious impediment to enforcement of its rights and to access to justice, and hence for granting a cautio. Lastly the court takes into consideration that according to Dutch national procedural law it is not possible to give a cautio vis-a-vis plaintiffs domiciled or residing in the Netherlands (and hence in the EU) under any circumstances, and also if there is good reason to doubt the possibility of recovery of a potential cost order due to the financial situation of the claimant.

IPPT20240212, UPC CFI, LD Paris, Laser Components v Seoul Viosys
Forced intervention admissible for defendant Laser Components regarding its supplier, which is liable to indemnify Laser Components and should be bound by the decision in the infringement action (Rule 316A RoP)

IPPT20240212, UPC CFI, LD Paris, Dexcom v Abbott

IPPT20240212, UPC CFI, LD Paris, Abbott v Dexcom
Extension and alignment of deadline for filling Statement of Defence by multiple defendants in accordance with agreement between the parties at case management hearing, which is considered reasonable by the judge-rapporteur (Rule 9(3) RoP, Rule 23 RoP, Rule 334 RoP).

IPPT20240212, UPC CFI, LD Paris, ICPillar v ARM
Alternative method of service of Statement of Claim (Rule 275(1) RoP). As regards Poland service under section 1 or 2 could not be effected. Court authorizes three alternative methods, which appear to be good service and comply with the law of the country where service is to be effected (Rule 275(4) RoP), as they comply with the EU Service Regulation (EU 2020/1784). The date on which the Statement of Claim is deemed to have been served is the date of effective delivery of the letter to this defendant at his legal address.  As regards service in the United Kingdom the criteria under Rule 275(1) RoP […] are not met at this stage of the procedure. Service under Rule 274(1)(ii) ROP (Hague Service Convention) is still in progress and the delay of 10 days from the date of sending the registered letter is still reasonable. Therefore, the request under Rule 275(1) regarding service on the UK entities will be dismissed. 

IPPT20240209, UPC CFI, CD Paris, ITCiCo Spain v Bayerische Motoren Werke
Request to extend time limit for filing Defence to revocation rejected (Rule 9 RoP, RoP 49 RoP). An impossibility or an extreme difficulty to meet the deadline which is attributable to the party requesting the extension of the deadline or its representative does not come into consideration, as it may not be deemed as objective. Principle of fair trial obliges a party to submit a request for time extension as soon as it appears clear that the meeting of the deadline will not be possible. Difficulties with smart card verification device and illness of patent attorney devoid of evidence. A party's representative waiting for the smart card verification device after the service of the statement of claim (and the reception of the information concerning the lodging of the revocation action) is expected to seek a solution in an appropriate time and act accordingly (for example, by submitting requests to the Court or the Registry)
 

IPPT20240208, UPC CoA, Ocado v Autostore
Public access to register requires representation (Rule 8 RoP, Rule 262 RoP, Article 47 UPCA, Article 48 UPCA). ‘Parties’ requiring representation pursuant to Rule 8(1) RoP encompasses also (i) a third party affected by an order or decision such as a third party under Rule 190 RoP and (ii) a member of the public under Rule 262.1(b) RoP. Opt-out applicants are expressly exempted in Rule 5(4) RoP..Members of the public requesting access to the register pursuant to Rule 262 RoP are in an adversarial situation where representation is called for.

IPPT20240205, UPC CFI, LD Munich, NEC V TCI
Alternative method of service of Statement of claim requires an unsuccessful attempt (Rule 275 RoP). Court cannot designate someone as a person authorised to accept service for a defendant. Alternative method of service of a statement of claim always requires an actual (“real”) but unsuccessful attempt of service, not sufficient that service is presumptively not possible or cannot be effected because of known deficiencies of service according to the Hage Convention in certain countries. The claimant's auxiliary request refers to RoP 275.1. According to RoP 275.1, the court may permit service by an alternative method or at an alternative place if service in accordance with Section 1 or 2 could not be effected. (see: Local Division Mannheim, 8 Becember 2023, CFI_219/2023, IPPT20231208)  Potential breach of FRAND obligation irrelevant in the context of Rule 275 RoP. 

IPPT20240202, UPC CFI, LD Munich, Amgen v Renegeron
Bifurcation by unanimous request (Rule 37 RoP). Unanimous requests by all parties directed to a Local or Regional Division to refer a counterclaim for revocation to the Central Division for decision will be granted unless strong counterarguments require a different decision. Provisional decision to proceed with the infringement proceedings (article 33(3) UPCA). In the exercise of its discretion, the Panel decides to proceed with the infringement proceeding, but reserves the right to consider the possibility of suspending the infringement proceeding pursuant to Art. 33.3.c UPCA or to suspend the proceedings for any other reason put forward by the Defendants. […]. If defendants 1-3 had wished to have the Local Division Munich decide exclusively on the validity arguments, they could have filed counterclaims for revocation pursuant to Rule 75 of the Rules of Procedure together with their Statement of Defence, in addition to the independent revocation actions already filed. If they had done so, the Local Division Munich would have been able to decide on all four counterclaims. The Central Division would have been obliged to stay the proceedings on the individual revocation actions pursuant to Rule 75(3) of the Rules of Procedure.