2024 UPC March

IPPT20240327, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Confidentiality club membership rules are to balance (i) the right to have unlimited access to the file documents  against (ii) the interest to protect confidential information, on the facts of a particular case (Article 58 UPCA, Rule 262A RoP). Whereas certain guidelines how this balance can be struck may be developed, a schematic solution is not possible. Request, that employees from claimant’s R & D department must not be granted access, denied. Claimant sets out in detail with persuasive arguments why it is necessary to exchange with these employees exactly, who are in a position to comment on defendants’ allegations before the background of the technical expertise in and knowledge of the industry sector. In a dispute revolving around technical aspects it is of fundamental importance that a party may have resort to technically qualified employees in order to exercise its right to be heard. Only in rare circumstances where e.g. cutting-edge technical improvements are at stake, which put the proprietor in a significant pole position on the market, further restrictions may be considered to be proportionate. This is not the case here. Requests of the defendants to set out in further detail, in which way the claimant has to organize itself in order to prevent the breach of the court’s protective order have to be rejected. The information is sufficiently protected by the order of the court without such detailed measures to be ordered. A breach of the order will result in severe penalty payments. Rejected as manifestly disproportionate on the instant facts requests to impose upon the named employees to refrain from getting involved in research and development, pricing or any other competitive decision making, and shall not be involved in prosecution of patent applications for a period of 5 years after the end of the present proceedings (including potential appeal proceedings).

IPPT20240326, UPC CFI, LD Paris, C-Kore Systems v Novawell
Confidentiality club which with the consent of both parties does not include “one natural person from each party” (Article 58 UPCA, Rule 262A RoP). In view of all these facts, the Court notes that there is an agreement between the parties on the composition of the confidentiality club and that this proposal by the parties is in accordance with the principle of a fair trial. Even though Rule 262A RoP provides that the confidentiality club shall include at least one natural person from each party, the Court considers that it is possible for the parties to exclude access by a natural person by mutual agreement, provided that the principle of a fair trial is not affected. (UPC-CFI-239/2023, The Hague LD, Order of 4 March 2024 on confidentiality) [IPPT20240304]

IPPT20240322, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Party engaged interpreter (Article 51(2) UPCA, Rule 109(4)RoP). The aim of simultaneous interpreting is to enable parties who do not speak the language of the proceedings, or do not speak it well enough, to actively participate in the oral proceedings. The interpretation can be provided both into and from the language of the proceedings (see R. 109.1 VerfO). It is obvious that this must be the case. Only such simultaneous interpreting in both directions ensures that the person concerned understands the statements in the language of the proceedings (translation from the language of the proceedings) and can also articulate themselves if necessary (translation into the language of the proceedings). Insofar as the applicant nevertheless wants to force all parties on the defendant's side to attend a hearing in German, such an order would therefore run counter to the purpose of simultaneous interpreting and thus ultimately also to Art. 51 (2) UPCA. 

IPPT20240321, UPC CoA, Netgear v Huawei
Determination of the judge-rapporteur to deal with the Preliminary objection in the main proceedings is a case management decision that must be reviewed by the panel at the request of the defendant (Rule 333(1) 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 R.333.1 RoP. Judge-rapporteur not authorized to decide on application for review under Rule 333(1) RoP. Rule 333(4) RoP explicitly provides that the panel shall decide the Application for review. As can be inferred from Article 52(2) UPCA, case management during the written procedure and the interim procedure is mandated by the panel to the judge-rapporteur. In accordance therewith, Rule 331(1) RoP provides that case management is the responsibility of the judge-rapporteur subject to Rule 102 and Rule 333 RoP. If a Preliminary objection is rejected, as an exception to the general principle, leave to appeal may be given by the judge-rapporteur without prior panel review under Rule 333(1) RoP being required (Rule 21(1) RoP). If leave is granted, the unsuccessful party thus has the choice to either file an appeal or an application for review under R.333.1 RoP. If the judge-rapporteur did not grant leave to appeal, a party may apply for a panel review. The resulting panel decision may then subsequently be appealed if leave has been granted by the panel under R.220.2 RoP, or it may be subject to discretionary review under R.220.3 RoP. An Application under Rule 333(1) RoP in the event of a Rule 20(2) RoP notification is not inadmissible due to a lack of a justified interest. 

IPPT20240318, UPC CFI, CD Munich, Astellas v Healios
Order following interim conference (Rule 105(5) RoP): 1. Document D18 is admitted into the proceedings. The parties and the judge-rapporteur agreed that D18 was admitted into the proceedings on the condition that the Defendant has until 11 April 2024 to file a succinct reply to the submission and the declaration, possibly including a short reply expert report, of which the length should be similar to Claimant´s submissions and which should be strictly in reply to points raised in D18 and the Claimant´s submission. 2. The value of the proceedings for the purpose of applying the scale of ceilings for recoverable costs is set at 4,000,000 EUR (four million euros) (Rule 152 RoP). 3. Parties are allowed to file additional exhibits relating to costs until 11 June 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 24 June 2024. 4. The date and time for the oral hearing is confirmed for 25 June 2024, 09.30 CET. 

IPPT20240314, UPC CoA, Abbott v Dexcom
Inadmissible appeal (Rule 220(2) RoP). Under Rule 220.2 RoP an appeal from an order without leave is inadmissible from the outset and, as such, cannot be withdrawn. 

IPPT20240313, UPC CFI, LD Paris, Laser Components v Seoul Viosys
Request for extension of time limit for filing Statement of defense by Laser Components because of coordination of a joint defence with intervening party Photon Wave dismissed (Rule 9(3) RoP, Rule 316A RoP). The plaintiff must not suffer from the procedural choices made by the defendant who has decided to call the intervener into question. The parties before the Unified Patent Court are aware that the time limits are strictly limited and must be diligent in their approaches so that the Court's operation is both fair and efficient, in accordance with the principles of the preamble to the Rules of Procedure, in articles 2 and 4. Accordingly, the defendant cannot legitimately rely on the fact that an intervention is in progress; it is being conducted in parallel with the main action and there is no justification for it delaying the proceedings.

IPPT20240219, UPC CoA, Netgear v Huawei
Leave to amend case by adding new patent (Rule 263 RoP). The principle of due process requires that, where a new patent is added to an action already pending, the defendant should have the same time to respond to the new patent - and, where appropriate, to bring an action for revocation - as it would have had if a new action had been brought in respect of that patent.  Extension of time limit for Statement of defense to 18 April 2024 (three months after Order of 18 January 2024) (IPPT20240118)

IPPT20240311, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Confidentiality club membership rules (Rule 262A RoP): a)    should not be greater than necessary to ensure that the right of the parties to the proceedings to an effective remedy and a fair trial is respected, b)    must include at least one natural person from each party and the respective lawyers or representatives.  c)    Is, in principle, the responsibility of the respective party to name the persons for membership d)    the exclusion of a person cannot be justified solely on the grounds that the designated person is active in the technical field related to the patent in question. It is precisely for this reason that the person concerned is often only in a position to provide their company and its representatives with the information required for effective legal action. e)    members must comply with the confidentiality obligations imposed on them, which can be enforced, if necessary, by the imposition of fines or enforced in accordance with national law. f)    membership must always be subject to a case-by-case examination and, if necessary and appropriate, adapted to the requirements of the respective proceedings.

IPPT20240306, UPC CFI, CD Paris, Bitzer Electronics v Carrier
Request for access to documents rejected (Rule 262 RoP). The Rule has to be interpreted, according to the literal wording of the provision, meaning that it refers to only written pleadings and evidence lodged by the parties and that it does not include other documents which are uploaded in the CMS (see UPC_CFI_75/2023 CD Munich, order of 21 September 2023). Does not apply to communications between the registry and the parties and to evidence of activities carried out by the Registry (examination of formal requirements). The same can be said with regard to an order, issued by the Court regarding a request of stay of the proceedings, because it cannot be deemed as written pleadings or evidence lodged by one of the parties. It may be added that the interest of members of the public to know the status of a patent and, in particular, whether it is subject to an opt-out or not can be satisfied by accessing to the Register pursuant to Rule 37 of the Rules governing the Registry of the Unified Patent Court.

IPPT20240304, UPC CFI, LD The Hague, Plant-e v Arkyne
Possible for the parties by mutual agreement to establish an “attorneys’ eyes only’’ restricted-access group for confidential information and exclude access by a natural person from each party, provided that fair trial is not affected. (Article 58 UPCA, Rule 262A RoP, Article 9 Trade Secret Directive). Principle of fair trail not likely to be impaired where the confidential information is a side issue (providing security for costs of a party, Rule 158 RoP). Confidential Information:non-public financial information concerning sales and investments is information that is generally considered to be confidential, especially vis-à-vis a competitor.

IPPT20240301, UPC CFI, LD Paris, Novawell v C-Kore Systems
Ex parte order to perserve evidence (Article 60(5) UPCA, Rule 196 RoP, Rule 197 RoP). Timing: the execution of the measure to preserve evidence (saisie) in accordance with French law includes the service by the bailiff of the "procès-verbal de saisie" at the end of the operations, which is the procedural act that closes the seizure operations and informs the defendant of the content of the notice so it can request a review (Rule 197(3) RoP, Rule 330 RoP). Reasonable available evidence of infringement to support order to preserve evidence (article 60(1) UPCA). No reason for the Court to examine the validity of the patent in question at this stage. As C-Kore's patent is in force and there are no pending proceedings challenging its validity. For a matter of preserving evidence at an early stage of the proceedings, the Court rightly considered that the applicant had provided sufficient available reasonable evidence of the alleged infringement against Novawell by marketing the SICOM product, a very similar product to the “Cable Monitor”, C-Kore’s product which embodies the patent at issue. Ex parte measures can be based on any of the criteria mentioned in Rule 197 RoP; no conflict with non-exhaustive list of article 60(5) UPCA. Demonstrable risk of evidence otherwise ceasing to be available (Rule 197(1) RoP). Request for preservation of evidence (“saisie”) (Rule 192 RoP) and request for inspection ("descente sur les lieux") (Rule 199 RoP) are two different and distinct procedures. This means that there is no need to combine the two measures, even though the first obviously requires the right to enter a private place. Preservation of evidence by an expert appointed by the Court and assisted by a bailiff is not in conflict with French national law and in conformity with Rule 196(5) RoP..

IPPT20240301, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Request for simultaneous interpretation during oral hearings rejected (Rule 109 RoP).. Applicant opted for German language proceedings and objected to application to change the language of the proceedings to English. If request for simultaneous interpretation is rejected, the parties shall, as a rule, be authorised to engage a simultaneous interpreter at their own expense upon their timely request.