2024 UPC January

IPPT20240131, UPC CFI, CD Munich, Nanostring v Harvard

Order after interim conference (Rule 105(5) RoP). Later filed amendments, auxiliary requests (Rule 30(2) RoP, Rule 50(2) RoP). Nno legal basis for pre-emptively and categorically ruling out the submission of any further auxiliary requests or to order the Defendant to make the auxiliary requests more convergent. The judge-rapporteur emphasized the front-loaded character of UPC proceedings, also where it concerns auxiliary requests (with reference to 50.2 Rule in connection with Rule 30.2 RoP). Last-minute requests and submissions are not what is intended in UPC proceedings. Front loaded proceedings and late filing (Rule 263 RoP) Parties are hereby informed that any applications to change their case will be duly considered – without prejudice to whether such applications will be granted or not – until 15 March 2024. Amendments introduced after that date will be presumed to be in violation of the requirements of Rule 263.2(a) RoP. Document filed by the Claimant with the Reply to the Defence to Revocation not disregarded as late-filed, but admitted; it was agreed that the Defendant would get the opportunity to respond to the submissions of the Claimant based on document D46 within 6 weeks after the date of the interim conference, in a written submission having a maximum of 10 pages. Defendant subsequently withdrew its objection. Value of the proceeding for recoverable costs (Rule 104(j) RoP,  Rule 152.3 RoP). Parties were in agreement of the value of the proceedings being set at EUR 7,500,000 (seven and a half million euro). The Court did not have any objections. The value of the proceedings is set accordingly. Reasonable and proportionate legal costs (article 69 UPCA). In order for the parties and the Court to assess whether costs incurred are indeed reasonable and proportionate and whether or not equity requires otherwise, the 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. To this end, the Court will allow the filing of additional exhibits relating to costs until two weeks prior to the hearing (3 April 2024) for all costs incurred until that date. This submission may be updated by a further submission to be lodged at the latest noon CET on the day before the hearing (16 April 2024). The last submission may include an estimate of costs incurred for the hearing itself. 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.

IPPT20240130, UPC CFI, LD Paris, Abbott v Dexcom
One division is not bound by a decision in another division despite belonging to the same unified court.  Discrepancy in the fines (€ 50.000 v € 250.000) set by the Local Division Paris and the Local Division Munich for breach of confidentiality orders (Rule 262 RoP, Rule 262A RoP) in parallel proceedings between the same parties concerning the same protected confidential information regarding two different patents No justified need to harmonise the amount of the fine because one division is not bound by a decision in another division despite belonging to the same unified court. The Judge-Rapporteur was justified in considering that part of the confidential information had already been disclosed without a confidentiality restriction and that a lower amount of the fine would sufficiently protect the legitimate interests of the parties in the event of a breach. Therefore, a maximum fine amount of EUR 50,000 in case of breach is appropriate and proportionate in the contested confidentiality order and there is no need to set a higher maximum amount for the fine. No need for amendment of the order to avoid the potential risk of a double fine: it will be at the Court’s discretion, at the time of any breach, to decide on the appropriate amount of a fine to be paid, taking into account all elements in concreto, including any previous fine decided by the UPC Munich Local Division for the same breach. There is no grounds to bind the Paris Local Division, in case of breach and as requested by Dexcom, in cases where the Munich Local Division has already imposed a fine. 

IPPT20240129, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Request, with the consent of the parties, to assign an additional technically qualified judge to the panel  for provisional measures application (article 8(5) UPCA). Appropriate because of the requested provisional measures, which requires examining reasonable doubts as to the validity of the patent in the technically demanding field of genetic engineering. The ordering of provisional measures can only be considered if the legal validity of the patent in dispute is sufficiently secured (Article 62 (4) UPCA in conjunction with Rule 211(2) RoP. It is therefore incumbent on the panel to obtain a sufficient picture of the legal validity on the basis of the parties' submissions and, in particular, to examine whether any objections raised against the validity of the patent in suit are likely to give rise to reasonable doubts as to the validity of the patent in suit (UPC_CFI_452/2023 (LK Düsseldorf), order of 11 December 2023 [IPPT20231211]). Although the involvement of a technically qualified judge ex officio is only mentioned in the Rules of Procedure in Rule 34 RoP and thus in the provisions on the main proceedings, Article 8(5) UPCA grants the panel in general and thus also in summary proceedings the right, after hearing the parties, to involve such a judge on its own initiative if it considers this appropriate (see also UPC_CFI_2/2023 (LK Munich) [IPPT20230919], UPC_CFI_214/2023 (LK Helsinki [IPPT20231020]).

IPPT20240127, UPC CFI, LD Hamburg, 10x Genomics v Vizgen
Synchronisation of time limits for Reply to Statement of defence in infringement action and for filing Statement of defence in revocation action: start to run on 15 January 2024 (Rule 9 RoP). Plaintiffs were only able to discuss the statement of defence with the confirmed group of recipients without restriction at all from 15 January 2024 onwards due to the defendant's request for confidentiality. This information is undoubtedly an integral part of the statement of defence.

IPPT20240125, UPC CFI, LD Hamburg, Fives v Reel
A decision by the judge-rapporteur granting a preliminary objection that the UPC lacks competence cannot be reviewed by the full panel on the basis of Rule 333 RoP, but may be appealed to the Court of Appeal as a final decision of the Court of First Instance (Rule 21.1 RoP, Rule 220(1)(a) RoP) 
Rule 333.1 RoP does not apply directly. This is because Rule 333.1 of the Rules of Procedure only applies to "procedural decisions or orders". The decision whose review the applicant seeks is not procedural. It follows from the term "procedural" that the decision may not be a final decision and thus not "terminating the proceedings". Nor does an analogous application of Rule 333.1 RoP apply in the present case. There is neither an unintended loophole nor a comparable situation of interest. Nor does the legislative history of the RoP indicate otherwise. In this respect, the plaintiff refers to comments made by the persons involved in the preparation of the RoP. From these remarks, the plaintiff deduces that they were of the opinion that Rule 333.1 of the Rules of Procedure applies directly to a decision granting the objection. However, this cannot be inferred from the comments referred to by the plaintiff. The comments are very brief and do not make clear the specific context in which they stand. The decision of the Helsinki Local Chamber of 28 August 2023 - UPC_CFI_214/2023 - does not contradict this understanding.

IPPT20240124, UPC CFI, LD Paris, Abbott v Dexcom
Requested leave to appeal confidentiality order by judge-rapporteur not admissible, until that  order has first been reviewed by the panel in the pending review procedure (Rule 220(2) RoP, Rule 333(1) RoP). (See also: IPPT20240111, UPC CoA, Netgear v Huawei)  

IPPT20240125, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Request at panel’s initiative for a technically qualified judge in provisional measures proceedings (Rule 211(2) RoP, Article 8(5) UPCA, Article 62(4) UPCA). Sensible and advisable to also involve technically qualified judge already in the present proceedings because the respondents deal extensively with the legal status of the patent in dispute in support of their request for examination. 

IPPT20240124, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Separate CMS workflow for review of ex parte provsional measure. Defendant’s request for review of an ex parte provisional measure (Rule 212(3) RoP) is to be resubmitted in the appropriate separate workflow provided by the CMS. The re-upload is for purely technical reasons, without affecting the time of receipt of the pleadings.

IPPT20240124, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
No automatic right for Claimant to reply to Rejoinder by Defendant (Rule 12 RoP, Rule 43 RoP). Generally, fixed framework of written submissions and front-loaded character of the UPC proceedings designed to conduct UPC proceedings in an efficient, proportionate, fair and equitable way. Request allowable: a bona fide attempt to respond concisely to new points made for the first time in the last written submission. No right Defendant to react to reply: right to be heard does not entail that there should be yet another exchange between the parties. Defendant has the right to be heard at the oral hearing. 

IPPT20240123, UPC CFI, LD Munich, Krausmaffei v Troester

Order after interim conference ((Rule 104 RoP, Rule 105(5) RoP), held via video conference before the judge-rapporteur together with two other members of the panel: determining the date at which the written procedure ends, confirming the date of the oral hearing, setting deadlines for submissions, ordering the parties to submit a preliminary estimate of the costs (same date as end date of written procedure) and setting the value of the action at € 2 million. The recording of the interim hearing is stored [...] and can be listened to on the premises of the Local Chamber Munich in accordance with Rule 106 RoP.

IPPT20240122, UPC CFI, CD Paris, NJOY Netherlands v VMR Products

The judge-rapporteur is not to inform a party (even upon request) of the exact deadline provided for by statutory rules before its expires, nor to give the interpretation of statutory provisions or the assessment of facts during the course of a proceedings where it may be helpful to one of the parties. (Rule 9 RoP). Would lead to an advisory role, which is contrary to the principles of judicial impartiality (Article 17 UPCA) and of the right of a fair trial (Article 6 ECHR and Article 47 EU Charter of Fundamental Rights). All written pleadings, including the defence to revocation, are deemed to be served on the day when the relevant electronic message was sent (Rule 278(4) RoP; Rule 271(6)(a) RoP)

IPPT20240120, UPC CFI, LD Düsseldorf, Seoul Viosys v expert e-Commerce
Extending time periods  (Rule 9(3)(a) RoP) only to be used with caution and only justified in exceptional cases (see: UPC_CFI_475/2023 (LK Düsseldorf), Anordnung v. 19. Januar 2024). No exceptional case: that access to the CMS was not possible "over a longer period of time" is not a sufficient reason for an extension of the deadline for filing the statement of defence and the counterclaim as an exception . The statement of claim, including the annexes, was served on the defendants in paper form. Neither submitted nor apparent that the defendants were unable to upload their pleadings to the CMS in due time due to technical reasons.

IPPT20240119, UPC CFI, LD Düsseldorf, Dolby v HP
Extending time periods (Rule 9(3)(a) RoP) only to be used with caution and only justified in exceptional cases. Exceptional case: action directed against 15 defendants of which, to date, only three have been served; currently not possible to predict how much time serving others will take; willingness for defendants' representatives to be appointed for all defendants will considerably simplify the conduct of the proceedings and thus also in the interests of the plaintiff; slight extension of the opposition and defence periods requested [..] leads  to a uniform time limit and therefore appears appropriate; assurance by  defendants' representatives of agreement with extension of the time limit.

IPPT20240118, UPC CoA, Meril v Edwards Lifesciences
Application to order suspensive effect to appeal of order to bear the (to be assessed) costs of the proceedings up to a maximum of € 200.000 dismissed (article 74 UPCA, Rule 223 (1) RoP). Admissible application: A decision under Rule 360 RoP by which the court has dismissed an action because there is no need to adjudicate on the merits and includes the decision on the costs of the proceedings is to be be regarded as a final decision within the meaning of Rule 220.1(a) RoP and not as a decision within the meaning of Rule 223.5 RoP. Application unfounded: Interest of the plaintiff regarding further costs for cost assessment procedure does not generally outweigh the interest of the successful party within the meaning of Rule 151 RoP in a quick decision on the costs of the proceedings. Suspensive effect also not justified because if there are errors in the appealed order, they are in any case not errors that led to a manifestly erroneous order.

IPPT20240118, UPC CFI, LD Munich, Netgear v Huawei
Leave to amend the action to include claims of additional patent after the conclusion of limitation proceedings related thereto as granted by judge-rapporteur confirmed by the panel (Rule 263 RoP, Article 105a EPC). Rule 263 RoP leave to change claim or amend case is a procedural order to be made by the judge-rapporteur and subject to review by the panel (Rule 333 RoP and subsequent appeal (Rule 220 RoP). The request is unfounded. Assessment of the admissibility of the extension of the action is based solely on Rule 263 RoP and not on national law. The plaintiff could not reasonably be expected to assert the limited claims earlier before the conclusion of the limitation proceedings, also due to the risk of a further counterclaim for a declaration of invalidity of the second patent. In the context of the present proceedings or in the context of separate proceedings, the defendants must be granted the same time limits for their defence that would have been granted if they had filed a separate action, but no longer. 

IPPT20240117, UPC CFI, LD The Hague, Plant-e v Arkyne
Ex officio order judge-rapporteur to extend deadline to file Defence in the Counterclaim for revocation and to reunite the claim and counterclaim workflows (Rule 9(3 RoP, Rule 311(1) RoP, Rule 334(a) RoP). Defence to the counterclaim for revocation not filed together with Reply to defence in the claim as required by Rule 29(a) RoP. The apparent misunderstanding of the relevant deadline [for Statement of defence to counterclaim for revocation] by Plant-e Knowledge will in this situation not be held against her; the consequences would be disproportionate.

IPPT20240116, UPC CFI, President, Aarke v Sodastream
Language of proceedings (German) changed to language of the patent (English) (article 49 UPCA, Rule 323 RoP). It may be sufficient that – amongst all relevant circumstances also to be considered – the language initially chosen is significantly detrimental to the Applicant (UPC CFI 225/2023 LD The Hague, order of 18 October 2023). The respective position of both parties is likely to create a significant imbalance in the way they can organise their defense and access to the Court although they are equally confronted with a foreign language they don’t use in their respective daily activities. Application in English to change the language of the proceedings (from German to English) accepted. Court to decide on case-by-case basis whether an application pursuant to R. 323 lodged in a different language is to be rejected or not.  

IPPT20240111, UPC CoA, Netgear v Huawei

Request for discretionary review and appeal allowed of decision of the judge-rapporteur not to allow review of order by the panel that a preliminary objection is to be dealt within the main proceedings (Rule 220(3) RoP). As a general principle, unless provided otherwise, a case management decision or order made by the judge-rapporteur or the presiding judge can only be appealed if such decision or order has first been reviewed by the panel pursuant to Rule 333.1. Request for a discretionary review allowed of decision of judge-rapporteur on the admissibility of the application to have his decision reviewed by the panel pursuant to Rule 333.1 RoP, rather than have the panel decide on the admissibility of the application. Denying the request only justified if the underlying reasoning of the judge-rapporteur would be accurate. Under these circumstances, the standing judge considers it justified to allow the request for discretionary review to the extent that the applicant is allowed to appeal the decision of 11 December 2023.

IPPT20240110, UPC CoA, Ocado v Autostore
Application to intervene in appeal refused. Interest in the result of the action (Rule 313(1) RoP) means a direct and present interest in the grant by the Court of the order or decision as sought by the party, whom the prospective intervener whishes to support and not an interest in relation to the pleas in law put forward. It is necessary to distinguish between prospective interveners establishing a direct interest in the ruling on the specific request sought by the supported party, and those who can establish only an indirect interest in the result of the case by reason of similarities between their situation and that of one of the parties. A similiarity between two cases is not sufficient.

IPPT20240108, UPC CFI, CD Paris, Carrier v BITZER Electronics
Rejected stay of revocation proceeding pending opposition proceedings before EPO (Rule 295(1)(a) RoP, Article 33 (10) UPCA). Requirement of “rapid decision” not fulfilled in the absence of a concrete expectation for a EPO decision in the near future evaluated together with the expected date of the current proceedings, that can be estimated in approximately one year since the lodging of the claim.

IPPT20240103, UPC CFI, LD Munich, Philips IP v Edrich

IPPT20240103, UPC CFI, LD Munich, Philips v Edrich
Extension of time period for lodging Reply extended by one week until 15 January 2024 (Rule 9 RoP). The written reasons for the nullity judgment of the Bundespatentgericht of 9 August 2023 were only served on 22 December 2023 and a precise analysis of the reasons for the judgment was made difficult by the Christmas holidays. Furthermore, the shortening of the nullity rejoinder period by one week offered by the plaintiff will not result in any overall delay in the proceedings.

IPPT20240102, UPC CFI, LD Munich, Amgen v Sanofi-Aventis
Deadline for commenting on provisional dates for interim conference extended as the overall handling of the case will not be affected at all or not much by granting the extension. Rule 9 RoP workflow is to be used for request to extend time period.  Counsel for defendants used the main workflow for this request. He should have used a Rule 9 workflow (Rule 4.1 RoP). Consequence is that defendants can no longer comment on the provisional dates within the main workflow. The judge-rapporteur has therefore started this workflow.