2024 UPC September

IPPT20240930, UPC CoA, Xiaomi v Panasonic
No discretionary review (R. 220.3 RoP) of refusal by Court of First Instance to grant leave to appeal of partial rejection of request for an extension of two months’ time limit (R. 29(d) RoP) by judge-rapporteur and panel (R. 333 RoP). The period by which a court extends a time limit in a particular case is at the court's discretion.

IPPT20240927, UPC CFI, LD Düsseldorf, Ortovox v Mammut
No further written pleadings following appeal (R. 9 RoP, R. 12 RoP). The order of the Court of Appeal dated 25 September 2024 provides no reason for the admission of further written pleadings in the main proceedings.

IPPT20240927, UPC CFI, CD Paris, Microsoft v Suinno
Suinno to provide security of € 300,000 for legal costs (Article 69(4) UPCA, R. 158 RoP). Undisputed that respondent’s business model is exclusively characterized by the enforcement of patents, namely the patent-in-suit, and asserting corresponding license claims; respondent does not generate sufficient income or other cash flow and no equity capital at all, does not maintain any other business, let alone has any physical assets, and does not even have an own office space.

IPPT20240927, UPC CoA, Volkswagen v NST
Information meant in R. 158.4 RoP – that if the party fails to provide adequate security within the time stated, a decision by default may be given in accordance with Rule 355 – does not necessarily have to be given in the Order to provide security for costs. In its Statement of appeal and grounds of appeal, Volkswagen had not requested that this information be included in the Order itself either. The Court thus does not see the necessity for rectification of the Order (R. 353 RoP). It therefore suffices that the information as meant in R.158.4 RoP is provided to NST by this separate order.

IPPT20240926, UPC CFI, LD Munich, Panasonic v Xiaomi
Judge-Rapporteur refers the possible suspension in the context of parallel pending actions for a declaration of a FRAND licence to the panel proposing that the panel will decide during or after the oral proceedings (R. 102(1) RoP)

IPPT20240926, UPC CFI, LD Düsseldorf, Dolby v HP
Withdrawal of action pursuant to party agreement with pro rata reimbursement of court fees (R. 265 RoP, R. 370 RoP).

IPPT20240925, UPC CFI, LD The Hague, DDT v Doytec
Ex parte order to preserve evidence (R. 197 RoP, Article 60(5) UPCA). Demonstrable risk of evidence being no more available once the SMT exhibition is over, for Doytec is based abroad and the technical and commercial documentation relating to C-1012 machine could easily be destroyed or otherwise ceasing to be available. The appointed expert (R. 196.5 RoP) shall lodge a written report, together with a full copy of all the documents acquired as a result of the execution of the measures, immediately and no later than two days after the completion of execution of the measures. The granting of an application for preservation of evidence or inspection of premises does not imply an unconditional order to disclose the evidence to the applicant (Article 60(1) UPCA). Pursuant to Article 60(1) UPCA the order must be subject to the protection of confidential information. Where the evidence may contain confidential information, this entails that the Court must hear the other party before deciding whether and to what extent to disclose the evidence to the applicant. In this context, the Court must give the other party access to the evidence and must provide that party with the opportunity to request the Court to keep certain information confidential and to provide reasons for such confidentiality.

IPPT20240925, UPC CFI, LD Munich, Hereaeus v Vibrantz - II
Leave to change claim granted following judgment of the Bundespatentgericht of 7 May 2024, except for claim II.2, which is not related thereto and could have been asserted as early as 12 March 2024 (R. 263 RoP). The amendment to the action almost three months later is no longer within the bounds of due diligence and must therefore be rejected. This also applies with regard to the subsequent claims referring to it. The plaintiff is free to assert these claims by filing a separate action.

IPPT20240925, UPC CoA, Mammut v Ortovox
Scope of appeal and proceedings (Article 73(4) UPCA, R. 222.1 RoP). The Court of Appeal decides at its discretion, taking into account all the circumstances, whether a submission that was rightly not admitted by the Court of First Instance is to be considered in the appeal proceedings. The court may not take into account in its decision written submissions that are submitted only after the conclusion of the oral proceedings on which the decision is based. (R. 195 RoP). Claim construction (article 69 EPC). Assessment of novelty within the meaning of Art. 54(1) EPC requires the determination of the entire content of the prior publication. It is relevant whether the subject-matter of the patent-in-suit is directly and unambiguously disclosed in the citation with all its features. Unreasonable delay in seeking provisional measures (R. 211.4 RoP). The decisive point in time is when the applicant has the necessary facts and evidence within the meaning of R.206.2d RoP or, having exercised due care, should have had them. Irreparable harm is not a necessary condition for ordering provisional measures (Article 62(2) UPCA, R. 211 RoP, Article 9 Enforcement Directrive) (see CJEU, judgment of 28 April 2022, C-44/21, Phoenix/Harting ECLI:EU:C:2022:309, para. 32). Art. 62(2) UPCA and R.211.3 RP only refer to the possibility of damage, which is to be taken into account when weighing up the interests. Even R.212.1 RP, which allows an ex parte order, does not necessarily require irreparable damage. Leave to change claims or to amend case (R. 263 RoP) also applies to requests for interim measures

IPPT20240925, UPC CFI, LD Munich, Hereaeus v Vibrantz - I
A counterclaim for revocation against a registered proprietor (R. 8.6 RoP) who is not entitled to be registered as proprietor (R. 8.5 RoP) is not manifestly bound to fail (R. 361 RoP) (R. 42 RoP, R. 25 RoP). In the event the registered proprietor and the person entitled to be registered as proprietor are not the same, the registered proprietor must file an application under Rule 305.1(c) RP as soon as possible. According to this provision, the court may, at the request of a party, order that one person replace another.

IPPT20240925, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Case management order regarding evidence during oral hearing in PI proceedings (R. 210 RoP). Evidence in PI proceedings is generally and primarily to be submitted in writing (R. 170.1 (a) and (b) RoP), with particular importance being attached to the submission of affidavits (R. 170.2 (h) RoP). In addition, the submission of physical objects, in particular devices, products, embodiments, exhibits and models (R. 170.1 (c) RoP), and of electronic files and audio/video files (R. 170.1 (d) RoP) may be an option. The Court does not summon witnesses in PI proceedings. 

IPPT20240925, UPC CFI, LD Düsseldorf, Sonic v Lenovo & Motorola
Stay of proceedings at joint request of the parties, with effect from 25 September 2024 until 15 November 2024 (R 295 RoP).

IPPT20240925, UPC CFI, LD Düsseldorf, Sonic v Lenovo & Motorola
Stay of proceedings at joint request of the parties, with effect from 25 September 2024 until 15 November 2024 (R 295 RoP).

IPPT20240924, UPC CoA, Guangdong OPPO v Panasonic
Appeal against order rejecting a request for production of evidence admissible (R. 220.1(c) RoP, Article 59 UPCA). It does not matter whether the impugned order grants or rejects the request for production of evidence. On a proper interpretation of R.220.1(c) RoP, it should be understood as: “orders on applications referred to in …”. Order to produce evidence is not only open to a claimant, but also to a defendant, such as in the present case, an order to produce (counter)-evidence. (Article 59 UPCA, Rule 190 RoP, Article 6 Enforcement Directive). In case of a FRAND-defence an order to produce evidence (R. 190 RoP) must strike a balance between the defendant’s interest in obtaining evidence which may be useful for its FRAND-defence, and the interest of the other party and its contracting parties in protecting confidential information. Disclosure of evidence to be limited to what - at the discretion of the court – is strictly relevant, proportionate and necessary. Margin of discretion includes decision-making on the request in accordance with what the judge-rapporteur, the presiding judge or the panel has decided on the order in which issues are to be decided pursuant to R.334(e) RoP. The assessment of a request for an order to produce evidence may depend on the stage of the proceedings. Such a request may be considered not to meet the criteria of necessity, relevance and proportionality at one stage of the proceedings, but could be considered to meet those criteria at a later stage. Decision on reimbursement of legal costs in the final decision (Article 69 UPCA, R. 242 RoP, R. 118.5 RoP). R.242.1 RoP is to be interpreted to mean that if the decision of the Court of Appeal is not a final order or decision concluding an action, the Court of Appeal, in the case at hand, will not issue an order for costs in respect of the proceedings at first instance and at appeal. 

IPPT20240924, UPC CFI, LD Paris, IGB v Unilever
Amended claims do not constitute change of claims (R. 263 RoP). No substantial amendments, which are of such a nature as to alter and prejudice the subject matter of the dispute and its scope, and relate only to the arrangements for implementing and enforcing any judgment.

IPPT20240924, UPC CFI, CD Milan, Eoflow v Insulet
Panel confirms order judge-rapporteur rejecting connection joinder (R. 340 RoP). The parallel handling of the two cases, alongside with the appointment of two judges in both proceedings, were sufficient measures to prevent the issuance of contradictory decisions.

IPPT20240923, UPC CFI, CD Paris, Meril v Edwards Lifesciences
Access based on general interest only – no specific interest as competitors or concern with the validity of the patent – outweighed by the protection of the ongoing proceedings (Rule 262 RoP)

IPPT20240920, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Access to Confidentiality club and demarcating confidential information (Rule 262A RoP) 

IPPT20240918, UPC CoA, Volkswagen v NST
Postponement of decision on Preliminary objection based on lack of jurisdiction for the claim for damages suffered in the UK and Northern Ireland  within the boundaries of the discretion of the Munich LD and not unreasonable (R.19.5 RoP, R. 20.2 RoP). NST’s new submissions in appeal in its Statement of response not disregarded (R. 222.2 RoP). If Volkswagens clarification in its Statement of appeal and grounds of appeal that Volkswagen clarified is to be taken into account the principles of fair trial require that NST must also be allowed to respond to that on appeal. No evidence of disputed valid power of attorney of a UPC representative required in the absence of any substantiated reasons why the actual existence thereof should be called into question (Article 48 UPCA, Rule 285 RoP). Deficiencies in the Statement of claim (R. 13 RoP) can be corrected. Claims and arguments may be further substantiated at a later stage of the main proceedings. This may in particular be the case when the claimant, after having made an argument in its Statement of claim, further substantiates this argument in the Reply to the Statement of defence its Statement (R. 29(a) or (b) RoP). Even though the UPC procedure is a front-loaded system, it is not required that the claimant envisage every possible line of defence and include all arguments, facts and evidence in, and submits it with, the Statement of claim and that nothing could ever be added thereafter. Actions “manifestly” bound to fail (R. 361 RoP) reserved for clear-cut cases and should not result in a full exchange of arguments and evidence. A Statement of claim (R. 13 RoP) that sets out in detail why one infringing embodiment, that is taken as an example, infringes the patent and that includes a list setting out further embodiments with a similar structure that are infringing for (essentially) the same reasons, does not with respect to the embodiments included in that list result in an action that is manifestly lacking any foundation in law as meant in R. 361 RoP). It remains to be seen what the approach of the UPC in this respect shall be, which is a matter to be dealt with in the main proceedings (and possibly followed by appeal proceedings). Order for costs (R.242.1 RoP, Article 69 UPCA)) is to be interpreted to mean that if the decision of the Court of Appeal is not a final order or decision concluding an action, such as the present order, the Court of Appeal will not issue an order for costs in respect of the proceedings at first instance and at appeal.

IPPT20240918, UPC CoA, Apple v Ona
On grounds of fairness to defendant Apple the language of the proceedings is changed from German to English, the language in which the patent was granted (Article 49(5) UPCA). In addition to the circumstances stated by the Court of Appeal in its order of 17 April 2024 [Curio Bioscience v 10x Genomics] the internal working language of the parties, the possibility of internal coordination and of support on technical issues are relevant circumstances.

IPPT20240918, UPC CFI, RD Nordic-Baltic, Edwards v Meril
Also the written procedure of the Court shall, in principle, be open to the public. However, access to the pleadings and evidence rejected at this point in time (Article 45 UPCA, R. 262 RoP). The protection of the integrity of the ongoing proceedings hereby outweighs the interest in information asserted by the applicant, so that the parties can present their arguments and evidence and so that the court can conduct the proceedings impartially and independently, without influence or interference from external parties in the public sphere. 

IPPT20240917, UPC CoA, Mala v Nokia
A request for a stay pursuant to Article 31 Brussels I recast is to be regarded as a preliminary objection (R. 19 RoP). A court is to decline jurisdiction only if the proceedings involve the same cause of action and the same parties (Articles 31 and 29 Brussels I recast).  Art. 31 requires that the second court seised establish the jurisdiction of the first court itself, rather than wait for the first court to establish jurisdiction in accordance with Art. 29. During the transitional period of Article 83 UPCA, the articles 29 to 32 and 71c Brussels I recast apply where proceedings are pending before the UPC and a national court, even if the proceedings before the national court were initiated prior to the transitional period. No need to refer a question on the interpretation of Art. 71c(2) or the applicability of Art. 29 to 32 of the Brussels I recast Regulation to the CJEU. Whether or not the Court of Appeal’s interpretation of Art. 71c(2) is correct and Art. 29 to 32 of the Brussels I recast Regulation apply, the result is the same.

IPPT20240917, UPC CoA, Audi v NST
Security for legal costs and expenses (Article 69(4) UPCA, R. 158 RoP) requires a legitimate and real concern to be substantiated and proven by the party making the request, while the relative financial position of the parties is not as such a criterion, especially where the (limited) level of funding provided to a special purpose patent enforcement entity is a deliberate business decision. 

IPPT20240917, UPC CoA, Volkswagen v NST.

Order set aside. NST as Claimant to provide security for costs to Volkswagen. (Art. 69(4) UPCA, R.158 RoP). Costs to be ordered when the financial position of the claimant gives rise to a legitimate and real concern that a possible order for costs may not be enforceable. Burden of substantiation and proof why an order for security for costs is appropriate is on the defendant making the request. Once reasons and facts have been presented in a credible manner, it is up to the claimant to challenge these in a substantiated manner.‘Precise evidence’ that NST ‘is or will be insolvent at the time a cost decision will be rendered’ is too high as standard of proof. NST’s argument that an SME should not be required to provide security for costs in favour of a massive automotive company such as Volkswagen is rejected. The relative financial position of the claimant as compared to that of the defendant is not as such a criterion under R.158 RoP. Existence of a patent portfolio does not prevent a legitimate and real concern that an order for costs may not be recoverable.

IPPT20240917, UPC CFI, LD Mannheim, Panasonic v Orope
Request after conclusion of interim conference to hear party expert as a witness at the oral hearing rejected (R. 110 RoP, R. 181 RoP). Moreover, the request fails to recognise that, according to the party's own submission, the person named is not to be heard as a witness. Witnesses provide information on facts that are disputed and relevant to the decision. There is also no reason at present to hear the party-appointed expert in accordance with Rule 181 RoP. Should the submission, if deemed admissible, be relevant and the court consider it necessary to examine the party-appointed expert, this will have to be discontinued as part of a decision pursuant to Rule 114 RoP.

IPPT20230917, UPC CFI, LD Brussels, OrthoApnea
Order following interim conference (R. 105 RoP). Parties need to indicate at the oral hearing how to balance the requested lifting of the seizure (of evidence) on counterfeiting (‘Order to Preserve Evidence’) under R 198(1) RoP, while making use of the findings in execution of the descriptive seizure. Value of the proceedings set at the lowest possible amount of € 250.000 in the absence of arguments or evidence of of a higher amount. (Rule 104 RoP). Whether or not a valuation is ‘sufficient’ in the light of possible recoverable costs (in application of R. 152(3) RoP) does not concern an element to be considered in assessing the valuation of the proceedings. Use of pleading notes and/or visual representations (including in the form of a PPT presentation) as (pleading) aids will be permitted (R. 112 RoP). However, these do not form part of the written argumentation (claim/defence). Indicated (pleading) aids can only serve to support the already formulated written argumentation. After all, the written phase of the proceedings has been concluded so that no additional/dissenting pleas can be submitted. Indicated (pleading) aids must be communicated in good time (i.e. 48 hours before the hearing) to the Registry (LD Brussels) and the opposing party. The parties are also free to use the jaw model mentioned in the Interim Conference during the pleadings, but again only to support the written arguments already formulated. In such a case, this model must be filed as an additional document at the Registry (LD Brussels) and communicated to the opposing party at the latest 14 days before the hearing as well as at the same time as it is filed at the Registry (LD Brussels). 

IPPT20240917, UPC CFI, LD The Hague, Abbott v Dexcom-I
Leave to amend counter claim for revocation and response to amended claim allowed (R. 263 RoP). At the time of the Statement of defence including a counter claim Abbott’s withdrawal of the claims against the G7-System with G7-Receiver could not yet be envisaged

IPPT20240917, UPC CFI, LD Hamburg, Ballinno v UEFA
Public access, subject to confidentiality order, after rejection of application for provisional measures with decision of 3 June 2024 (Article 45 UPCA, R. 262 RoP). Access granted based on claimed general interest in the work and processing of a case by the Court, but subject to confidentiality order regarding technical data and internal company information that is not being publicly available.

IPPT20240917, UPC CFI, CD Paris, Meril v Edwards Lifesciences
Retrospective extension of the time period for lodging counterclaim for infringement because of malfunction of CMS (R. 9(3) RoP, R. 49 RoP). The evidence shows that the respondent was not able to submit the written pleading in the proper CMS workflow due to circumstances that were beyond its reasonable control as the technical difficulties that its representatives experienced do not seem to be attributable to an operator error but rather to a malfunction of the CMS.

IPPT20240916, UPC CoA, ICPillar v ARM
Court may of its own motion disregard late filed requests, facts and evidence even if these were not objected to by the other party (Article 73(4) UPCA, R. 222.2 RoP). A party has a duty to provide available evidence (R. 172(1) RoP). Court has a discretionary power to request the production of evidence but is not obliged to do so (R. 172(2) RoP). Bank guarantee issued by a bank licensed in the US does not provide adequate security (R.158 RoP). As the reason for not allowing a bank guarantee to be issued by a US licensed bank is not solely based on nationality, but on substantive grounds, this is not contrary to any prohibition of discrimination, as ICPillar has suggested.

IPPT20240916, UPC CFI, CD Paris, BMW v ITCiCo Spain
Decision by default in revocation action (Article 65 UPCA, R. 355 RoP). It is the discretion of the court to issue a decision by default or not (R. 355 RoP), provided i) the relevant request is submitted by the claimant; ii) the defendant fails to take a step within the time limit foreseen in the Rules of Procedure or set by the Court, or the party which was duly summoned fails to appear at an oral hearing, or the time limit for the defence to the claim has expired and thus, it is established that the service of the claim was effected in sufficient time to enable the defendant to enter a defence; and iii) the facts put forward by the claimant justify the remedy sought and the procedural conduct of the defendant does not preclude to give such decision. In carrying out its discretion assessment, the Court has to consider that expeditious decisions are one of the aims of the Unified Patent Court Agreement and that the legal framework of the ‘UPC’ provides the defendant with appropriate tools to provide justification for the default and to appeal the decision where unfavourable.

IPPT20240916, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Procedural order regarding oral hearing in FRAND-case (Rule 108 RoP).First day technical, second day FRAND

IPPT20240916, UPC CFI, CD Paris, Microsoft v Suinno - II
Not considered independent for purpose of a valid representation (Article 48(5) UPCA, R. 333 RoP.) It is undebated that […] is the respondent’s managing director and main shareholder and that because of that he enjoys extensive administrative and financial powers within the body he represents. Confidential information (R. 262A RoP) as it is known only to a limited number of persons, its disclosure is liable to cause serious harm to the person who provided it or to third parties and the interests liable to be harmed by the disclosure of confidential information are, objectively, worthy of protection. Does not lose its confidential nature due to the fact that it is contained in another document not mentioned in the application for confidentiality order. Confidentiality obligation of members of confidentiality club is not extinguished by the fact that the same information is also present in another document submitted to the Court, even if not mentioned in the application for confidentiality order.  

IPPT20240916, UPC CFI, CD Paris, Microsoft v Suinno - I
Manifest inadmissibility of the action (Rule 361 RoP) implies that the inadmissibility must be clearly evident from the pleadings and its assessment does not require any particular in-depth analysis. Alleged lack of independence by the claimant’s representative does not appear to be ‘manifest’ and, therefore, could not lead to an assessment of manifest inadmissibility of the action. Requesting “the Court to determine and award past damages” is a sufficiently clear indication of the remedy sought with the infringement action and the fact that the damages asked is not indicate in a specific amount does not render the claim generic and does not constitute a violation of the requirement set by Rule 13(1)(k) RoP.

IPPT20240913, UPC CFI, LD Munich, Philips IP v Belkin
Claim interpretation (article 69 EPC). The skilled person reads the claim in a way that makes technical sense and that takes into account the entire disclosure of the patent and with a mind willing to understand the claim in context. The same applies to the description and the drawings, although their purpose must be taken into account, namely to describe or illustrate the basic concept of a claimed invention by means of detailed examples. Protection sought pursuant to the description and the drawings can only be protected when expressed in the claim. If several embodiments are presented in the description as being in accordance with the invention, the terms used in the patent claim are to be understood, in case of doubt, in such a way that all embodiments can be used to fulfil them. A patent infringer is the person who appears as the manufacturer or supplier or gives the impression to the targeted public that he is the person who manufactures and/or sells the goods in his own name and for his own account (Article 25 and 26 UPCA, EU Enforcement Directive). Intermediary. In case of a patent infringement by a corporation its directors may be liable for injunctive relief as intermediaries but not for damages (Article 63(1) UPCA). Late and inadmissible extension of submission of validity arguments in Reply to Defence to the Counterclaim constitutes an amendment of the counterclaim (R. 29 RoP). 

IPPT20240913, UPC CFI, LD Düsseldorf, Grundfos v Hefei Xinhu
Decided to hear both the action for infringement and the counterclaim for revocation prior to the closure of the written procedure (Article 33(3) UPCA, R. 37.2 RoP). 

IPPT20240913, UPC CFI, CD Paris, Qualcomm
Action closed after rectification by the EPO of contested decision in accordance with request (Rule 88 and 91 RoP). The submission of the Claimant doesn’t mention any particular circumstances justifying a decision of reimbursement.

IPPT20240911, UPC CFI, LD Munich, Headwater v Motorola
Change in parties: correction of the party designation from a non-existent person or a person who does not have the capacity to be a party by analogous application of R. 305 RoP. A distinction must be made between the incorrect designation of a defendant and the designation of a non-existent person or a person who does not have the capacity to be a party to legal proceedings as a defendant. 

IPPT20240909, UPC CFI, LD Munich, Philips IP v Belkin
Postponement  of oral hearing (R. 9 RoP, R. 108 RoP). Upon request of the parties and after consultation of the panel the date of the oral hearing is postponed from 11 September 2024 to 23 October 2024 because of postponement of the decision date in parallel proceedings from  6 September 2024 to 13 September 2024.

IPPT20240909, UPC CFI, LD Munich, Huawei v Netgear
Case management order regarding and following separate hearing (R. 334(d) RoP, R. 105.5 RoP, R. 106 RoP). The video conference of 19 February 2024 is to be regarded as a separate hearing in accordance with Rule 334.d RoP.

IPPT20240909, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Panel confirms case management orders judge-rapporteur (R. 333 RoP, R. 262A RoP, R. 29(d) RoP). Panel exercises its authority to order and extension of the time limit for lodging Reply to the Defence to the Counterclaim together with any Rejoinder to the Reply to the Statement of defence because of redacted versions of Defence in the Counterclaim (Part II – non-technical part) in the same way as the judge-rapporteur: two week extension from 14 August 2024 until 28 August 2024. The defendants in all three parallel proceedings have, when looked at in the light of the circumstances, almost seven weeks to prepare the replies to the reply to ‘Part II - non-technical part’ alone. This is more than the one-month period that would have been available without a nullity counterclaim for the statement in response to the infringement action with regard to the infringement action and the FRAND objection. No leave to appeal granted (R. 220.2 RoP). In issuing this order, the panel is not deviating from the cited orders of the Court of Appeal and the Düsseldorf Local Division.

IPPT20240909, UPC CFI, LD Hamburg, Roche Diabetes v Tandem Diabetes
Request to stay infringement proceedings dismissed (R. 295 RoP). There is currently no reason to suspend the infringement proceedings, even though the interim hearing on the revocation action will take place on 11 September 2024 and the oral hearing on 6 November 2024. The outcome of the proceeding is uncertain in terms of time - it is not possible to predict when the Central Division Paris will issue a written decision - and the substantive outcome. Regardless of this, the decision would not bind the Local Division. In addition to this, the parties to the action for revocation are not identical to those of the infringement action and the counterclaim of revocation, so that a uniform decision affecting all parties cannot be issued in this respect either. The Defendant’s interest to (potentially) save litigation costs does not weigh up to the legitimate interest of Claimant in pursuing the infringement action. 

IPPT20240909, UPC CFI, LD Hamburg, Philips IP v Shenzhen
Ex parte preliminary injunction and seizure of infringing oral cleansing system in connection with IFA 2024 trade fair in Berlin following earlier cease-and-desist-declaration (Article 62 UPCA, R. 209 RoP)

IPPT20240906, UPC CoA, Motorola v Ericsson
Request for discretionary review rejected (Rule 220.3 RoP). Motorola failed to demonstrate that a review of the impugned order is necessary to ensure a consistent application and interpretation of the RoP (point 8 of the Preambule of the RoP) or any other objective of the discretionary review procedure. Its contention that the impugned order is incorrect and does not provide a detailed interpretation and subsumption that would allow a generalization of the decision, is not sufficient.

IPPT20240906, UPC CFI, LD Düsseldorf, Sodastream v Aarke
Request for panel review of dismissal of security for costs by judge-rapporteur dismissed (R. 333.1 RoP, R. 158 RoP)The judge-rapporteur correctly held that, under these principles, neither a financial risk nor a likelihood of unenforceability is presented to the Court. The Claimant, as part of the PepsiCo group, is financially able to comply with a decision on costs. This has not, in any event not sufficiently, been contested by the Defendant. In fact, the Defendant confirms in its Application (par. 6 “no insolvency risk is at hand”.) The fact that the Pepsico group is not a party to these proceedings (par. 29-30 Application) does not mean that the Claimant is unable to comply with a possible decision on costs. 

IPPT20240906, UPC CoA, Meril v Edwards
Request for expedition of appeals rejected (Rule 9.3(b) RoP). Possibility that the Munich Local Division might grant an injunction on the basis of a patent that has been upheld by the Court of First Instance but may subsequently be revoked by the Court of Appeal, is not sufficient to justify expediting the appeals. The Munich Local Division has various means at its disposal to mitigate the risk of granting an injunction or the harm caused by such an injunction, in situations where the validity of the patent is subject to appeals. For example, the division can stay the infringement proceedings pending the appeals or render its decision under the condition subsequent that the patent is not held invalid by a final decision in the revocation proceedings (R. 118.2 RoP). Furthermore, the requested expedition cannot prevent the alleged harm to Meril from an injunction given that in the proposed expedited timetable the oral hearing in the appeal is scheduled for mid-January 2025 and the oral hearing in the infringement proceedings has been scheduled for 24 September 2024. 

IPPT20240906, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Order after interim conference (Rule 105.5 RoP). Leave to unconditionally limit claim and new auxiliary claim equal to the previous main claim (Rule 263.3 RoP). Request for stay and dismissal to be argued amd decided at oral hearing (Rule 295 RoP). Panel decided on 5 September 2024 that the oral hearing is not re-scheduled and that the question of a stay is to be argued and decided at the oral hearing. Requests to hear parties’ experts or appoint a court expert refused. 

IPPT20240906, UPC CFI, LD Düsseldorf, Novartis v Celltrion
Application for preliminary measures unfounded: Defendant’s conduct does not already constitute an imminent infringement, i.e. offering of infringing product (Article 62(1) UPCA) (Article 25(a) UPCA). In order for a patent infringement to be considered imminent, there must be concrete indications in the overall circumstances that an infringement is imminent. It is sufficient for an offer if the act in question actually creates a demand for the product which the offer is likely to satisfy. Competence of the Local Division Dusseldorf regardless of whether other defendants are located inside or outside the Contracting Member States because one of the Defendants is domiciled in Germany and all the Defendants have a commercial relationship and that the application concerns the same alleged acts of infringement against all Defendants in the present case (Article 33(1)(b) UPCA). The fact of belonging to the same group (legal entities) and having related commercial activities aimed at the same purpose (such as R&D, manufacturing, sale and distribution of the same products) is sufficient to be considered as “a commercial relationship” within the meaning of the Article 33 (1) (b) UPCA. Jurisdiction – Lis pendens. Main proceedings and provisional proceedings are not the same cause of action (Article 29 Brussels Ibis). Stay  of provisional measures proceedings because of pending related action is incompatible with their urgent nature (Article 30(1) Brussels Ibis). No stay of provisional measures proceedings pursuant to Rule 295 RoP. R. 295 RoP refers unambiguously to actions and is therefore not applicable to applications for provisional measures.  Request for security for costs rejected (Article 69(4) UPCA, Rule 158 RoP). No facts indicating an alarming financial situation of the Applicants. Interim award of legal costs by analogy with R. 211.1 (d) RoP. (Rule 118.5 RoP). Unintended regulatory gap in procedure by which the decision on costs is made (Rule 118.5 RoP) if the application for provisional measures is unsuccessful and the applicant refrains from filing an action on the merits. Claim interpretation is mandatory for the Court but also for the parties, who must submit their views on their proposed interpretation and were right to do so (Article 69 EPC). The skilled person will not stop its interpretation at the philological meaning but will always have in mind the technical function of the feature as such and the features in the context of each other. If a party necessarily considers that a technical argument must be substantiated by a party´s expert opinion, it is for the parties to present the technical argument to the Court in a concentrated and comprehensible form. This is not the case where mere reference is made to a party´s expert report, nor is it the case where a party´s expert report is copied verbatim into the brief. In particular, the technical arguments must be focused and precise for the Court in order to comply with the ambitious time limits set by the law. This applies to the main proceedings and, of course, even more so to PI proceedings. Cumulative liability defendants because they acted in a close and interdependent commercial relationship based on their structure as a large group of companies (Article 25 UPCA). Patent infringement of European bundle patents before the UPC is subject to uniform substantive law (article 25 UPCA) and uniform procedural law (article 62(1) UPCA) instead of different national laws.
 

IPPT20240905, UPC CFI, LD Düsseldorf, Bioletic v Light Guide
Rejection of application for provisional measures without a hearing (R. 209 RoP). If the court points out to the applicant the lack of prospects of success of his application for the ordering of interim measures and if the applicant then states in his subsequent statement that in the event that the court adheres to its previous opinion, the claimant does not consider it necessary to discuss the matter further in an oral hearing, the court may, at its discretion, reject the application for interim measures without an oral hearing. In addition to temporal circumstances, factual circumstances are also important for the ordering of interim measures. In this context, the applicant must specifically explain why its request for legal protection cannot already be sufficiently taken into account with an action on the merits and why the ordering of interim measures is therefore necessary.

IPPT20240905, UPC CoA, Advanced Bionics v Med-EL - II
Connection joinder only possible within the competence limits of the competence regime of the UPCA (Article 33 UPCA, Rule 340 RoP). Referral of an action for infringement from a local division to the central division only possible with the the agreement of the parties involved.

IPPT20240905, UPC CoA, Advanced Bionics v Med-EL - I
President rightly rejected request for a language change. The fact that the claimant and two of the three defendants are domiciled in countries where German is an official languageis an important factor in the decision on an application to use the language of the patent as the language of the proceedings (Art. 49(5) UPCA, R. 323.3 RoP). Application for change of language does not have to be included in the Statement of defence. The lodging of the application before the Statement of defence is not precluded.

IPPT20240904, UPC CFI, LD Milan, Insulet v Menarini
Confidentiality club (Article 58 UPCA, R. 262A RoP). Article 58 UPCA must be interpreted as meaning that it extends protection not only to trade secrets but also to confidential information. Club includes (a) authorised representatives and their assistants (b) any private expert upon request, and witnesses which require access to the Confidential Information for the purposes of these proceedings; (c) the following employees of the claimant […]; (d) Applicant’s legal representatives in the parallel US proceedings against EOFLOW before the United States District Court in the District of Massachusetts. 

IPPT20240903, UPC CoA, Aylo v Dish
UPC jurisdiction because of place of harmful event (Article 7(2) and 71(b(1) Brussels I recast). UPC has international jurisdiction in respect of an infringement action where the European patent relied on by the claimant has effect in at least one Contracting Member State and the alleged damage may occur in that particular Contracting Member State. Sufficient to establish the jurisdiction of the UPC that the patent at issue has effect in, inter alia, Germany, and (that) AYLO’s websites are accessible in, inter alia, Germany. The identification of the place where the harmful event occurred or may occur […], does not depend on criteria which do not appear in this provision and which are specific to the examination of the merits, such as the conditions for establishing an indirect infringement within the meaning of Art. 26 UPCA. Places of article 33(1(a) UIPCA and article 7(2) Brussels I Recast are the same. The place “where the actual or threatened infringement has occurred or may occur” as referred to in Art. 33(1)(a) UPCA must be interpreted in the same way as the place “where the harmful event occurred or may occur” of Art. 7(2) of the Brussels I recast Regulation is interpreted in relation to alleged patent infringements. No unwritten preliminary objections. The list of preliminary objections of R. 19.1 RoP must be regarded as exhaustive. The application of  R. 19 to 21 RoP therefore cannot be extended to other defences, such as abusive procedural conduct and manifest lack of foundation.

IPPT20240903, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Expansion of confidentiality restrictions for two additional third party licence agreement dismissed (Rule 9.2 RoP, Rule 262A RoP). A party must regularly seek an order for access restrictions for third-party licence agreements at such an early stage that it can unconditionally present its submission within the applicable deadlines.

IPPT20240902, UPC CFI, President, Valeo Electrification v Magna
Application for review of the allocation of technically qualified judge dismissed (Rule 9.1 RoP, Rules 33-34 RoP). The technically qualified judge is one of the judges of the panel as defined in Articles 19 and 20 UPCA (concerning the Court of First Instance) and the legal texts governing the UPC do not provide the opportunity for the parties to “make suggestion regarding (…) the technical or other relevant background” of one of the judges allocated to the panel, unlike in the case of the appointment of a court expert (R 185.2 RoP). 

IPPT20240902, UPC CFI, LD Munich, Panasonic v Guangdong OPPO
Application to add OTECH Germany as third defendant rejected as late filed (Rule 305 RoP). Plaintiff was aware in June 2023 that OTECH Germany GmbH had been found guilty of patent infringement by the Mannheim District Court. […] it could and should have used its knowledge of this judgement as an opportunity to conduct further investigations, especially since it had already taken legal action against the first and second defendants before the local chamber for patent infringement. If it had done so, it would have been able to access the annual report, which has been available online since 4 August 2023, at an earlier date than 18 February 2024 and, accordingly, file the motion to allow the extension of the action much earlier than 5 June 2024. If the extension of the action were allowed, OTECH Germany GmbH would be limited by Art. 33 (4) UPCA to doing so within the framework of a counterclaim for revocation. In this context, a further restriction to those invalidity attacks already presented by the first and second defendants in the context of their invalidity counterclaim would not appear to be fair.