2024 UPC November

IPPT20241129, UPC CFI, CD Paris, NJOY Netherlands v VMR Products
Revocation EP 740 dismissed (Article 65 UPCA). No alleged lack of inventive step. The validity of the independent claim 1 justifies validity of the dependent claims 2 – 6. Admissible late filed documents in the Reply to defence to revocation (R. 44 RoP). It must be concluded that the documents introduced by the Claimant in the Reply to defence to revocation – […] – are admissible, given that it contains arguments regarding the common general knowledge and the claim construction which are intended to contrast and react to the arguments raised by the Defendant in its Defence to revocation and […] opinion, filed in support of these latter arguments. Reply to Rejoinder to the Reply to the Defence to revocation inadmissible (R. 51 RoP, R. 52 RoP). Person skilled in the art  (Article 56 EPC) of electronic inhalable aerosol devices. The skilled person stands for the average expert who is typically active in the technical field of the invention, has had the usual prior training and has acquired average knowledge, skills and practical experience for routine work, but does not have inventive imagination, thinking and skills. When interpreting a patent claim, the person skilled in the art does not apply a philological understanding but determines the technical meaning of the terms used with the aid of the description and the drawings. Common general knowledge (‘CKG’) is not all publicly available knowledge (Article 56 EPC, Article 54 UPCA). Neither an individual product nor a patent application as such are a familiar source of information. In general common general knowledge is information which has been commonly known to the skilled person from written sources or from practical experience in the relevant technical field. The ‘CGK’ includes knowledge which is directly available from familiar sources of information relating to the specific technical field at the prior date but is not to be confused with publicly available knowledge, which may not be general and common. No lack of inventive step (Article 56 EPC). An assessment based on different starting points will be more complete and objective than problem-solution approach, which is only one possible way for assessment of the inventive step. There is no legal rule that requires its application or restricts the application of other approaches. This panel considers that an assessment based on different starting points as suggested by the Claimant will be more complete and objective. 

IPPT20241129, UPC CoA, Aarke v Sodastream
Criteria for security for costs of a party (R. 158 RoP) Failing any guarantees or other special circumstances […] it is not relevant whether the claimant belongs to a - financially sound - group of companies. It is only the financial position of the claimant itself that is relevant. Whether a claimant is willing to reimburse the defendant if a cost order would be issued in favour of the defendant is not relevant either. The relevant criterion is whether, if that were the case, enforcement would be possible without undue burden. Irrelevant whether a cost order in favour of the defendant is to be expected. The Court should not engage in evaluating the likelihood of the outcome of the case when deciding on a request for security for costs. Not required that it is proven that enforcement is impossible. It is sufficient for a defendant to establish that enforcement of a cost order is unduly burdensome.

IPPT20241129, UPC CFI, LD Düsseldorf, Fujifilm v Kodak - II
The Claimant may, at its own expense, engage an interpreter (into Japanese) who may, if necessary, use the equipment available in the courtroom for simultaneous interpretation. (Article 51 UPCA, R. 109 RoP, R. 150 RoP).

IPPT20241129, UPC CFI, LD Düsseldorf, Fujifilm v Kodak - I
Defendant’s submissions in the brief of 28 November 2024 will be disregarded (R. 36 RoP). The Defendants did not make a reasoned request and the judge-rapporteur did not allow further written submissions to be exchanged. 

IPPT20241128, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Additional confidentiality order (R. 262A RoP). If the Claimant’s representatives named in paragraph II. 1. above make use of the possibility of giving access to confidential information to other members of their team, it is their responsibility to ensure that their team maintains the confidentiality of the information.
 

IPPT20241128, UPC CoA, Amycel
Appeal closed by a decision by default against appellant because of failure to pay regular fee (R. 357 RoP, R. 378 RoP, R. 378A RoP). The request to waive the additional fee ordered in the Order issued on 7 November 2024 denied; The Application for legal aid denied; The Appellant bears the costs of the appeal proceedings. The Application for legal aid is inadmissible. According to R.378A RoP, to be admissible, the application must contain a statement regarding the economic and financial situation of the applicant. The documents named in R.378A.1 (a) to (d) RoP shall be attached. The appellant has limited himself to declaring that he is a farmer from […] and that he cannot bear the costs of court fees without incurring financial hardship

IPPT20241127, UPC CFI, CD Paris, NJOY Netherlands v VMR Products

Patent revoked in its entirety (Article 65 UPCA). Lack of inventive step (Article 56 EPC). Given this explicit guidance in ‘Lee’, the skilled person, in his attempt to solve the underlying problem of developing a vaporizer that allows a portion of a cartomizer receiving chamber of the shell to be visible from the outside, would have found the claimed invention on the basis of its knowledge and skills, namely by providing the shell in the device already known from ‘Pan’ to include a window provided at the cartomizer receiving segment, as an obvious modification. Patents as indications of common general knowledge of person skilled in the art (Article 56 EPC). While it is in general questionable that a particular published patent application or a patent specification can be considered as an indication of common general knowledge, however the statement of the author of the patent that a teaching is widely spread at the time can used as evidence of the fact that this teaching forms part of common general knowledge. Front loaded procedural system (R. 13 RoP) must be interpreted in the light of the principle of proportionality, which requires that the parties should not be burdened with tasks that are unnecessary to achieve the stated objective, and in the light of the principle of procedural efficiency, which is contrary to excessive and overly detailed allegations of facts and production of multiple documents in relation to matters that can be presumed to be known to the opposing party and not to be disputed by them. In revocation actions, the claimant is required to specify in detail the grounds of invalidity that allegedly affect the contested patent, as well as the prior art documents relied upon to support any allegation of lack of novelty or inventive step. Introduction of new grounds or new facts. The claimant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered novelty destroying or convincing starting points for the assessment of lack of inventive step in subsequent written acts. New facts in certain situations. in certain situations, following the defence raised by the defendant, the claimant may need to allege new facts, insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant. In this case, the need to respond to the defendant's defence, the terms of which cannot be foreseen ex ante by the claimant, justifies the introduction of such new facts in the reply to defence to revocation. Likewise, the need to produce new evidence may arise from the defendant's defence which disputes the facts alleged by the claimant or the probative value of the evidence already filed in Court

IPPT20241127, UPC CFI, LD Milan, Oerlikon v Himson
Interim conference held by video conference (R. 105 RoP)

IPPT20241127, UPC CoA, Total Semiconductors v Texas Instruments
Discretionary review of an order of judge-rapporteur on security for costs and denying leave to appeal granted because of an access to justice issue which has not yet been decided and which the Court of Appeal can raise of its own motion (R. 220.3 RoP, Article 69(4) UPCA, R. 158 RoP, R. 333 RoP)

IPPT20241126, UPC CFI, LD Paris, C-Kore Systems v Novawell
Order setting out decisions taken at interim conference (R. 105.5 RoP). Regarding execution of Saisie Order by court appointed expert (R. 196 RoP), confidentiality order (R. 262A RoP), dismissal of request to plead in French, notions regarding claim construction and validity, value of the case, time frame oral hearing.

IPPT20241126, UPC CFI, LD Munich, GXD-Bio v Myriad
Claimant to provide security of € 112,000 for legal costs and other expenses (Article 69(4) UPCA, R. 158.1 RoP). Based on the undisputed facts, there is legitimate and real concern that a possible cost order might not be recoverable and/or the likelihood that a possible cost order by the UPC may not, or in an unduly burdensome way, be enforceable. There are significant doubts as to whether the Claimant, in the event of losing the proceeding, has sufficient funds for covering Defendants´ recoverable costs of the current lawsuit

IPPT20241126, UPC CFI, CD Paris, Microsoft v Suinno
Unconditional reduction of damages sought in an infringement action is a limitation of the claim that must be granted (R. 263(3) RoP) if it is filed with due explanation and unconditionally and irrespective of the subjective intention underlying the application. No re-considering of already paid fees on an application lacking substantive argumentation

IPPT20241125, UPC CFI, LD Munich, Häfele v Kunstsoff
Application for provisional measures dismissed (Article 62 UPCA, Rule 211 RoP). Extraordinary damages caused by further distribution not submitted, lock-in effect cannot be established. Doubts as to the novelty of the patent in suit in spite of response of EPO Examining Division to the raised objections of third parties based on D8. Party: Irrebuttable presumption that registered proprietor of a unitary patent is also the actual proprietor (Rule 8(4) RoP). The general purpose of Rule 8(4) RoP (and similarly of Rule 8(5)(c) RoP) is to keep the proceedings before the UPC separate from the dispute as to the substantive ownership of a European patent, irrespective of whether or not ownership is relevant to the right to bring proceedings or to entitlement to claim. Claim interpretation (Article 69 EPC). In principle, the meaning of a dependent claim can contribute to the correct interpretation of the main claim. Dependent claims regularly do not narrow the subject matter of the main claim, but merely show – possibly in connection with an additional advantage – possibilities for its realisation, no differently than in the form of examples. In principle, the prosecution history does not constitute admissible interpretative material. A European patent cannot be interpreted on the basis of text passages that were deleted from the description during the grant procedure. At best, statements by the applicant or the granting authority to understand the feature of a patent claim to be interpreted could be regarded as an expert opinion. Weighing of party interests (Article 62(2) UPCA, R. 211(3) RoP). Above all, the weighing of interests must take into account the probability of an erroneous decision and also the objective urgency in terms of the necessity of provisional measures with regard to equally possible proceedings on the merits. Main proceedings are the rule, provisional measures the exception. Is it reasonable or unreasonable for the applicant to wait for a decision in the main proceedings? Doubts as to the novelty of the patent in suit carry additional weight in the weighing of interests. Unreasonable delay – objective urgency (R. 211(4) RoP) links the requirement of objective urgency with the subjective right of the applicant. The provision expresses that an applicant whose conduct already subjectively indicates that he is in no hurry cannot expect to receive assistance through the ordering of interim measures. However, the reverse conclusion, that interim measures are to be ordered simply because the applicant has acted quickly, does not apply. Rather, the ordering of interim measures must also be objectively urgent.

IPPT20241125, UPC CFI, LD Paris, Dexcom v Abbott
No justification to reopen the debate after the oral hearing because of decision of Munich Regional Court of 11 November 2024 (R. 334 and 336 RoP). This request made at a very late stage of the proceedings is not justified, since the decision in question does not concern the patent at issue in the present case, but its parent patent, which discloses another invention with similar but also different features. Moreover, the Regional Court of Munich, seized by an infringement action, did not examine the validity issue on the merits but in a context of a request for a stay with regard to the pending nullity proceedings before the Federal Patent Court. 

IPPT20241125, UPC CFI, LD Milan, Oerlikon v Bhagat
Order setting following interim conference  (R. 105 RoP)

IPPT20241122, UPC CFI, CD Milan, Insulet v Eoflow
Application for provisional measure rejected (R. 211 RoP). Doubts regarding patent validity appear to be preventing the issuance of the requested order. To encapsulate, the subject matter of claim 1 of ‘327 is unlikely to be considered novel in light of the prior art disclosed in US’994, as the fluid delivery device described in US’994 seem to incorporate all the features described in claim 1 of the patent at issue. While the assessment of possible infringement logically precedes in a PI proceeding the assessment of the validity of the patent, the Court deems it necessary and appropriate in this very case to first assess the validity of the patent. Amendments of the patent are subject to Rule 30 RoP. Rule 263 RoP refers only to amendments to pleadings. Auxiliary request to amend the patent pursuant to Rule 30.2 RoP is not admissible in the proceedings for provisional measures.

IPPT20241122, UPC CFI, LD Mannheim, Panasonic v Guangdong OPPO - II
Defendants unilateral request of 21 November to stay decision of 22 November rejected (R. 295(m) RoP).The defendants cannot invoke the requirement of the proper administration of justice […]. Rather, they have left the court in the dark, so to speak ‘until the last second’, as to whether a decision should be made or not

IPPT20241122, UPC CFI, LD Mannheim, Panasonic v Guangdong OPPO
Infringement of 4G standard essential patent: permanent injunction granted (Article 63 UPCA), Order to communicate information (Article 67 UPCA), Award of damages, provisional damages of € 250.000 (Article 68 UPCA). Given the interpretation of the patent claim (Article 69 EPC): The patent is valid, revocation dismissed. No added subject matter (Article 138(1)(c) EPC. Priorities are validly claimed (Article 87 EPC). The invention is sufficiently disclosed (Article 138(1)(b) EPC). The patent involves an inventive step (Article 56 EPC) Attack solely based on incorrect interpretation of the claim. Left open whether document was capable of being taken into account. In principle, the revocation claimant is required to raise its attack already with the revocation counterclaim  (R. 25.1 RoP). Permanent injunction granted (Article 63(1) UPCA). Risk of repetition due to the infringing acts committed by the defendant in the past in the contracting states asserted in the present case. An understanding of a SEP as a chipped title for the enforcement of injunctions, which only serves to enforce higher licence fees, is irreconcilable with European law (Article 11 Enforcement Directive). Injunctive relief not precluded by FRAND objection (Article 102 TFEU). While the Plaintiff has behaved in accordance with the ECJ's programme of obligations addressed to it as SEP holder, the Defendants have not behaved in a targeted manner and in accordance with the practices of a party seriously interested in taking a licence in the negotiations for a FRAND -compliant licence within the meaning of the negotiating programme developed by the European Court of Justice in Case C-170/13 – Huawei v. ZTE, ECLI:EU:C:2015:477. Claimant has a right to information needed to verify the information and to calculate the damage (Article 67 UPCA, Article 68 UPCA, R. 190 RoP)

IPPT20241122, UPC CFI, LD The Hague, Plant-e v Arkyne
Valid priority (Article 87 EPC). Requirement of ‘same invention’ in Article 87 EPC is met if the skilled person can derive the subject-matter of the claim of an invention directly and unambiguously, using common general knowledge, from the previous application as a whole (the so-called ‘gold standard’). No added matter (Article 123(2) EPC). The “gold standard” disclosure test is also to be applied […]. Scope of protection (Article  69 EPC and the Protocol) assessed in two steps as seems to be common ground in most contracting member states (including France, Germany, Italy, Belgium, The Netherlands). In a first step, ‘literal’ infringement of the features of (claim 11 of) the patent in view of the claim construction is evaluated. In case claim 11 of the patent is not judged to be literally infringed, equivalence is assessed in a second step. Equivalence (Article 2 Protocol) involves assessing whether, in the perception of the skilled person, the claims, read in the light of the description and drawings, leave room for equivalents, given, on the one hand, equitable protection for the patentee and, on the other hand, a reasonable degree of legal certainty for third parties. A variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative: (i) Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context? (ii) Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee: in view of his contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)? (iii) Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally? (iv) Is the allegedly infringing product novel and inventive over the prior art? (i.e. no successful Gillette/Formstein defence). Fair protection: the patent claims a new category of microbial fuel cells – a fairly broad scope of protection is therefore in line with the contribution of the art. Legal certainty requirement [...] is met if the skilled person understands that the patent claim leaves room for equivalents because the teaching of the patent is (clearly) broader than the wording of the claim and there is, still in the eyes of the skilled person, no good reason to limit the scope of protection of the claim to a (method using a) device as claimed. Indirect infringement method claim (Article 26 UPCA). Bioo has also provided Bioo Panels and Bioo Benches to third parties. In that case Bioo indirectly infringes claim 11 because it does not apply the method itself, yet it provides Bioo Panels or Benches, which are an essential part for applying the method of claim 11. Appropriate measures: the use of a specific text is ordered for a recall letter and/or for publication on a website deemed appropriate to ensure that the measure is effective and to avoid a situation in which unclear or confusing messages are spread (article 64 UPCA, Article 10 Enforcement directive). 

IPPT20241121, UPC CFI, LD Munich, Collomix v Lidl
Submission of evidence (R. 172 RoP). The Rules of Procedure do not contain any principle according to which evidence in support of factual allegations made by the claimant may no longer be submitted after the action has been filed.

IPPT20241121, UPC CFI, LD Dusseldorf, DexCom v Abbott
No bifurcation of the infringement action and the counterclaim for revocation. With consent of the parties (Rule 37.1 RoP, Article 33 (3) UPCA)

IPPT20241121, UPC CoA, Magna v Valeo
The effect of the impugned order is suspended (Article 74 UPCA, R. 223 RoP). On the basis of Magna’s submissions, the Standing Judge of the Court of Appeal considers that Magna’s interest in maintaining the status quo exceptionally outweighs Valeo’s interest in the immediate enforcement.

IPPT20241121, UPC CoA, Meril v Edwards
Court of First Instance erred in refusing to grant the requested stay solely on the basis of its finding that a final decision in the opposition proceedings could not be expected rapidly (Art. 33(10) UPCA, R. 295(a) RoP). New legal arguments may be submitted in appeal. The discretion of the Court of Appeal to disregard new “requests, facts and evidence”  does not apply to legal arguments (R. 222.2 RoP). Stays on the ground of parallel EPO opposition proceedings are governed by the more specific provisions of Art. 33(10) UPCA, R. 295(a), R. 295(g) and 118.2(b) RoP. This case therefore does not qualify as an “other case” within the meaning of R. 295(m) RoP. Discretion to stay infringement proceedings in case of parallel EPO opposition proceedings (Art. 33(10) UPCA, R. 295(a) RoP). Only required that it can be expected that a decision of the EPO may be expected rapidly, not a final decision. The Court has a discretionary power to stay, depending on the balance of interests of the parties and the specific circumstances of the case, such as the stage of the opposition proceedings, the stage of the infringement proceedings and the likelihood that the patent will be revoked in the opposition proceedings. 

IPPT20241121, UPC CoA, OrthoApnea
Not every new argument constitutes an “amendment of a case” (R. 263 RoP). An amendment of the case in the sense of R. 263 RoP only occurs when the nature and scope of the dispute changes such as through the introduction of a new patent or objection to a new product. A new basis for infringement (such as equivalence) merely concerns the extent of protection conferred under the art. 69 EPC and the corresponding protocol. If a new argument is not an amendment of the case, the CFI has discretion regarding a violation of the obligation under R. 13 RoP to set out the case as early as possible. R. 13 RoP sets limitations on what arguments may be raised after the Statement of claim because parties are required to set out their cases as early as possible. The CFI has discretion to hold that new argumentation does not violate R. 13 RoP.

IPPT20241120, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
No rectification of order (R. 353 RoP). Correct list of BMW models: no error or obvious slip: the model “2 Series Gran Coupé” was not introduced into the proceedings by the Defendants before their application for rectification of 6 November 2024. No slip of vindication action in France: omissions are not “clerical mistakes, errors in calculations and obvious slips”.  The statement in the Order is “With regard to the French part of the patent in suit, Defendant 1) filed a vindication action before the Paris Court of First Instance on 22 August 2024 (see Exhibits HRM 21a-1 – 21a-71).” Substituting a party’s understanding for the Court’s assessment: not an obvious slip. The Defendants substitute their understanding of the wording of the Nomination Letter referred to for the Court's assessment that it does not impose an obligation. This is not a valid argument for rectifying the Order. Written submissions outside any time limit set by the Court disregarded: submitted without having been given the opportunity to be heard by the Court, were not be taken into account (R. 9.2 RoP)

IPPT20241120, UPC CFI, LD Dusseldorf, DexCom v Abbott
Claimants’ time limit for filing Rejoinder to Counterclaim for revocation and the Reply to conditional application to amend extended on grounds of fairness and equity, since the previous time limit was, with the consent of the Claimant, extended to a similar extent in favour of the Defendants. (R. 9 RoP, R. 29(e) RoP , R. 32.3(1) RoP)

IPPT20241119, UPC CFI, LD Hamburg, Daedalus v Xiaomi
Confidentiality Club not limited to outside lawyers only (R. 262A RoP): Access to the confidential version of the statements on transfer of the patent suit and partially redacted Patent Transfer Agreement extended to legal counsel of Xiaomi. Local divisions of the UPC have not granted an “outside attorney’s eyes only” access without the consent of the parties involved. 

IPPT20241118, UPC CFI, LD Hamburg, Malikie v Nintendo
Rectification of the name of Defendant 1) granted (R. 9 RoP, R. 272 RoP). The date of service on Nintendo of Europe SE is determined to be effected 17 October. Based on the facts, there was no doubt that it had been clear to the Nintendo of Europe SE that the statement of claim was intended to be directed against it as the present and sole successor of Nintendo of Europe AG.

IPPT20241115, UPC CFI, LD Munich, Philips v Shenzen Yunding
Withdrawal of application for provisional measures: 60% of court fees reimbursed (R. 206 RoP), R. 370(9)(b)(i) RoP). Withdrawal of application for provisional measures one day after application was filed (i.e., before closure of written procedure). Application of R. 370.9(b)(i) RoP by analogy 

IPPT20241115, UPC CFI, LD Munich, Edwards Lifesciences v Meril - II
Direct literal infringement (Article 25 UPCA). Late filed request at the oral hearing to amend the claim by including Romania (R. 263.1 RoP). Romania effectively joined the system on 1 September 2024, so that the amendment could not have been made with the statement of claim. However, it should have been made prior to the date of the oral hearing (24 September 2024). The UPC has jurisdiction over acts of infringement committed before entry into force of the UPCA (Article 32(1)(a) UPCA). Munich Local Division has jurisdiction over defendants domiciled in Germany (Article 33(1)(b) UPCA). No stay of infringement proceedings pending appeal from (bifurcated) revocation decision (R. 295(c)(i) RoP, R. 295(m) RoP). In the context of a prior bifurcation decision where the patent had been upheld, the possibility of a stay is limited to instances where there are mitigating circumstances. This is because the agreement explicitly stipulates the possibility for a local or regional division to bifurcate and to stay or not to stay the action for infringement, respectively. Consequently, a decision on the infringement action can be rendered prior to the central division's resolution of the referred counterclaim. After a decision by the central division on the counterclaim referred to it, the local or regional division is required to proceed with the next case management step which regularly is a decision on the action for infringement. There are only a few instances in which one might deviate from this default next case management step. These instances occur when the aggrieved party can demonstrate that the decision made by the central division is manifestly and prima facie erroneous in a formal and/or material way. Infringement within the scope of the UPCA by defendant based in India (Article 25 UPCA). Companies that are members of a group and play a key role in a distribution network for the infringing product – such as a sole manufacturer or a European sales and marketing hub – may also be considered as infringers if they are located outside the Contracting Member  States but supply their products to other members of the group located in the Contracting  Member States, while these companies distribute these products on the European market,  including in at least one Contracting Member State where the patent in suit is valid. Rejection of proportionality defence (Articles 63(1) and 64(1) UPCA). Regarding procedures for implementing corrective measures, Article 64(4) of the UPCA explicitly mentions the interests of third parties. While the Agreement on a Unified Patent Court and the Rules of Procedure for the Unified Patent Court do not explicitly mention the interests of third parties or the public otherwise, these interests may also be considered when exercising the discretion stipulated by the "may" in Articles 63(1) and 64(1) UPCA. In considering the interests of third parties and the public interest, the court will give due consideration to the possibility of the infringer entering into a license agreement or initiating proceedings for a mandatory license. 

IPPT20241115, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Late filed request (R. 9.2 RoP). Defendants request of 16 October 2024 that the court asks questions to the European Commission rejected because it is late filed. After oral hearing held on 24 September 2024, without the court allowing any post-hearing submission

IPPT20241114, UPC CFI, LD Munich, Heraeus v Vibrantz
Confidentiality club regime (Rule 262A RoP). Since the defendant could have presented its argument regarding the right of prior use without the details of the ingredients, it does not appear necessary, in the context of a confidentiality regime that has nevertheless been ordered, to limit the plaintiffs' choice of the number and individuals entitled to access.

IPPT20241114, UPC CoA, Magna v Valeo
The effect of the impugned order is suspended (Article 74 UPCA, R. 223 RoP) until the Court of First instance has decided on the request for correction, insofar as the exception to the injunction issued therein does not include the “BMW 2 Series Gran Coupé” model.

IPPT20241113, UPC CFI, LD Paris, HP v Lama
Claim construction in language of the patent (Article 69 EPC). Appropriate in French language proceedings to examine all arguments raised in relation to the interpretation of the patent with reference to the patent application as filed in English. Novelty (article 54 EPC). To form part of the state of the art the invention must be found in its entirety and in a single prior art document with its constituent elements, in the same form, with the same arrangement and the same operation with a view to achieving the same technical result. No need to apply national law regarding acts of infringement occurring before 1 June 2023 (Article 25 and 26 UPCA). In the territories of the Contracting States that signed the UPCA of 20 June 2013, the acts referred to in Articles 25 and 26 UPCA were already considered to be infringements qualified as acts of infringement by European patent law (Article 69 EPC) or in the national laws of those States that were harmonised by Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights relating to infringements of existing European patents. No prior knowledge of infringement required (Article 25 UPCA). The text does not require the plaintiff to prove that the defendant had prior knowledge of the existence of the patent and the materiality of the alleged infringement. Exhaustion of rights and jurisdiction (Article 29 UPCA). It is therefore for the Court to consider whether the evidence adduced by HPDC is sufficient to show that the allegedly infringing HP cartridges were indeed placed on the market by LAMA in the territory of the EU after having been the subject of unauthorised parallel imports and therefore do not fall within the exception of exhaustion of rights provided for in Article 29 UPCA, that is to say that those cartridges were not first marketed by HP within the EU. No need to refer to the CJEU as the competition law defense is clearly ineffective (R. 266 RoP). 

IPPT20241112, UPC CoA, AIM Sport v Supponor
Entitled to withdraw opt-out, unless the earlier national litigation was brought during the transitional regime (Article 83(4) UPCA). Considering the wording, structure, object and purpose of Art. 83 UPCA as a whole, the Court of Appeal is of the opinion that the sentence “Unless an action has already been brought before a national court” in Art. 83(4) UPCA must be understood to refer to an action brought before a national court during the transitional regime. Rules of interpretation of the UPCA. The rules of interpretation laid down in Article 31(1) of the Vienna Convention: A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the term of the treaty and in the light of its object and purpose. The Rules of Procedure as a lower ranking instrument related to the UPCA may serve to fill a gap but cannot serve to overrule the clear meaning of a higher-ranking provision of the UPCA (R. 1(1) RoP). Preparatory work of the UPCA may be looked at only to confirm an interpretation, or to determine when the interpretation in accordance with the general rule of interpretation leaves the meaning ambiguous.

IPPT20241105, UPC CFI, CD Paris, NJOY v Juul - II
Revocation EP 911 dismissed. To provide legal certainty an objective approach to be applied to evaluation of inventive step (Article 56 EPC). The person skilled in the art is an element of this objective approach. Subjective considerations, a subjective motivation to make specific modifications to the prior art or the subjective knowledge and skill of the named inventor(s) (or the parties to the case), for example, are not to have an influence on the evaluation of inventive step. The state of the art is a further element of this objective approach. […]. Limiting the evaluation of inventive step to certain elements of the prior art, for example a document perceived to be “the closest prior art”, generally bears the risk of introducing subjective elements into the evaluation, for example if the reasons for disregarding certain elements of the prior art are of subjective nature. This said, for reasons of procedural efficiency it may be justified in a particular case to focus the debate on a certain element or on certain elements of the prior art and it may be justified in a particular case to reduce the evaluation of other elements of the prior art to a minimum. What is to be evaluated is an activity. An activity can be motivated by an underlying problem. Inventive to affix a heater, which comprises a heater chamber, to a first end of the cartridge and to affix a mouthpiece to a second end of the cartridge: (i) there is no suggestion in the state of the art; (ii) From the facts submitted it cannot be established that it belonged to the common general knowledge at the time of the earliest priority of the Patent.

IPPT20241105, UPC CFI, CD Paris, NJOY v Juul - I
EP 115 revoked. Added subject matter (Article 138(1)(c) EPC): No parts of the disclosure that would show the skilled person a preferred embodiment, in which the mouthpiece is affixed to a second end of the fluid storage compartment without enclosing the fluid storage compartment. Court may amend the patent, independent from auxiliary request (Article 65(3) UPCA). Independent of an application to amend the patent as may be filed by the patent proprietor (R 50 (2) RoP) the Court, according to Art. 65 (3) UPCA, limits the patent by a corresponding amendment of the claims and revokes it (only) in part. Article 65(3) UPCA only pertains to the granted not to an application to amend the patent. No obligation to the Court to evaluate, if an application to amend the patent filed by the patent owner can be allowed in part. Within an application to amend the patent a certain claim set is either allowable (as such; the complete claim set proposed) or not. Defendant’s request is unclear and for this reason unallowable. Defendant did not file any particular claim-sets that would indicate to the Court, which combinations of claims the Defendant would want the Court to examine under request (2) d. in which order. The clarity of the claim is a fundamental requirement for a claim to be considered allowable, especially in view of its function in defining the matter for which protection is sought. The necessity for claims within an application to amend under R. 50 RoP to pertain to the requirement of clarity is emphasized by the reference to Art. 84 EPC in R 50.2 RoP. RoP 50.2 (b) requires the application to amend to contain an explanation as to why the amendments satisfy the requirements of Article 84 EPC. 

IPPT20241105, UPC CFI, LD Milan, Pirelli v Sichuan Yuanxing Rubber
IPPT20241105, UPC CFI, LD Milan, Pirelli v Tianjin Kingtyre
Ex parte seizure at the EICMA trade fair and delivery up of disputed tyres and any promotional materials (Article 62(5) UPCA, R. 212 RoP)

IPPT20241104, UPC CFI, LD Milan, Oerlikon v Bhagat
Patent infringement uncontested. No basis for staying the action for infringement because of pending revocation proceedings, where the defendant has not contested the validity of the patent nor the infringement (R. 295 RoP, R. 171(2) RoP). Permanent injunction granted to prohibit repetition and prohibit future conduct (Article 63(1) UPCA). With respect to infringing conduct that has already been ascertained, it is up to the infringing defendant to prove that there is no risk of repetition; with respect to future conduct that has not yet been realised, the burden of proof lies with the claimant, by virtue of objective elements, such as the unambiguousness of the elements preparatory to the infringement, and subjective elements, with respect to the defendant's intention to proceed with the infringement. Recurring penalty (Article 63(2) RoP) allows for a better protection of the permanent injunction, considering that even after the execution of the measure ante causam there were indications to the market by the defendant of a willingness to market. Interim award of € 15.000 reputational damages because of exhibition at trade fair (Article 68 UPCA, R. 119 RoP). he ITMA trade fair was held for seven days and is the most important trade fair in the world, organised every four years, with the participation of more than 1,600 exhibitors from 44 countries and over 100,000 visitors. These circumstances are not contested and must therefore be deemed proven, pursuant to Rule 171(2) RoP. No publication of decision (Article 80 UPCA). Does not appear necessary because it is not proportionate in the light of the limited infringing phenomenon; the certain detriment to the defendant that would result from such publication appears in fact greater than that which the limited tort ascertained so far requires.

IPPT20241104, UPC CFI, CD Munich, Astellas v Healios
Access allowed to unredacted versions of documents (R. 262.3 RoP). The Court […] accepts that the Information is not confidential, at least not as regards the Applicant. It follows that the Claimant has not given legitimate reasons to withhold access to the Information by keeping the Information confidential vis-à-vis the Applicant.

IPPT20241101, UPC CoA, Scandit v Hand Held Products
Application to file a reply to the Statement of  response rejected (R. 36 RoP, R. 222.2(a) RoP). The fact that Hand Held Products defended the court's interpretation in the response to the appeal with reference to paragraph [0063] does not justify allowing the filing of a reply. Scandit has not substantiated why Hand Held Products' reference to this one paragraph of the patent description requires a new indepth discussion and is not merely a selective aspect of the overall interpretation of features 1.7 to 1.9 of patent claim 1. Scandit will have the opportunity to address this aspect at the oral hearing. Nor can Scandit be allowed to submit further prior art on appeal. In particular, it has not justified that the further prior art which it wishes to submit for the first time in the appeal proceedings could not reasonably have been submitted in the proceedings before the Court of First Instance, as provided for in R. 222.2(a) RoP.

IPPT20241101, UPC CFI, LD Hamburg, 10x Genomics v Vizgen
Order to produce evidence (R. 190 RoP): the documents disclosed to the defendant's US legal representatives in the discovery proceedings accompanying the parallel US proceedings under the respective production numbers.