UPC Court of Appeal - 2024

IPPT20241227, UPC CoA, Sumi Agro v Syngenta
Rule 13.1(q) RoP (request that document need not be translated in Statement of claim) applies mutatis mutandis for other submissions, although not explicitly for a Statement of response in appeal proceedings. (R. 236 RoP). A party in appeal proceedings will only be relieved from the duty to provide translations of documents filed first with the Court of Appeal if the Court of Appeal accepts this (R. 7 RoP).
 

IPPT20241223, UPC CoA, Microsoft v Suinno - II
A unconditional limitation of the damages claimed shall be regarded as an unconditional limitation of the claim  (R 263.3 RoP). The determination of the value of the action (at the time of filing the action) will be the responsibility of the judge-rapporteur during the interim procedure (R 22, 104 and 370.6 RoP)

IPPT20241223, UPC CoA, Microsoft v Suinno
Application for confidentiality of “Confidential Global Licence & Art 79 UPCA Settlement offer to Microsoft” granted under R. 262 RoP (to the public) instead of R. 262A RoP (intra parties). This document, in its original version, is obviously known by Suinno and its representative and, as a result, does not require a restriction of access to specific persons pursuant to R 262A RoP. Instead, considering the confidential nature of some information contained therein, its original confidential version shall be treated as confidential and shall not be available to the public.

IPPT20241220, UPC CoA, Alexion Pharmaceuticals v Amgen
Claim construction (Article 69 EPC). A linguistic error, a spelling mistake or any other inaccuracy in a patent claim can only be corrected by way of interpretation of the patent claim if the existence of an error and the precise way to correct it are sufficiently certain to the average skilled person on the basis of the patent claim, taking into account the description and the drawings and using common general knowledge. The Court of Appeal can leave open the question of whether the average skilled person, in the context of claim interpretation, can be expected to consult catalogues and databases to check how a perceived error in the claim should be corrected. Even if the average skilled person would do so, it would not be sufficiently certain that the signal peptide consists of 22 amino acids for the following reasons. Alexion’s assertion during the grant proceedings, and in particular the TBA’s endorsement thereof, can be seen as an indication of the view of the person skilled in the art at the filing date. Insufficient disclosure (Article 83 EPC). Claimed pharmaceutical composition comprises an antibody comprising a light chain consisting of SEQ ID NO: 4 including the first 22 amino acids is not suitable for formulation as a pharmaceutical composition and used as a drug.
 

IPPT20241219, UPC CoA, Sumi Agro v Syngenta
Additional pages from publication already submitted in first instance proceedings disregarded (R. 222.2 RoP). Sumi Agro has not justified that Exhibit SA17 could not reasonably have been made during those proceedings. The Court of Appeal decides to disregard the content of Exhibit SA17. Evidence relating to new version of contested embodiment will be regarded. Use of a different ingredient for a composition product marketed under one brand and under one set of marketing authorisations, cannot reasonably have been visible to Syngenta. Sample was bought within one month after Sumi Agro’s submission and subsequent analysis was ready after the order in the first instance 

IPPT20241217, UPC CoA, Curio v 10x
Application to the standing judge for suspensive effect of an appeal because of extreme urgency (R. 223.4 RoP) rejected regarding an order to the defendant to provide € 200.000 security for legal costs of the claimant (R. 158 RoP, Art. 69(4) UPCA). Within the discretion of the standing judge to dismiss the application without hearing the respondent. Extreme urgency under R 223.4 RoP is clearly distinct from, and does not require the impugned order to be “manifestly wrong”, but the Court is not convinced that the CFI was manifestly wrong and whether the CFI has given a correct interpretation of R 158 RoP regarding Art. 69(4) UPCA will have to be decided by the Court of Appeal at the end of the appeal proceedings.

IPPT20211217, UPC CoA, Curio v 10x
Application to the standing judge for suspensive effect of an appeal because of extreme urgency (R. 223.4 RoP) rejected regarding an order to the defendant to provide € 200.000 security for legal costs of the claimant (R. 158 RoP, Art. 69(4) UPCA). Within the discretion of the standing judge to dismiss the application without hearing the respondent. Extreme urgency under R 223.4 RoP is clearly distinct from, and does not require the impugned order to be “manifestly wrong”, but the Court is not convinced that the CFI was manifestly wrong and whether the CFI has given a correct interpretation of R 158 RoP regarding Art. 69(4) UPCA will have to be decided by the Court of Appeal at the end of the appeal proceedings.
 

IPPT20241211, UPC CoA, Magna v Valeo
Suspension of provisional injunction to cover PI carveout for BMW supplies. The effect of the impugned order suspended insofar as the injunction covers the BMW 2 Series Gran Coupé car model (Article 74 UPCA, R. 223 RoP). From the Statements lodged by Magna it was therefore already clear that there were six car models already on the market or soon to be introduced on the market that were fitted with the attacked embodiment. The Court at First Instance could and should have deducted from the above mentioned documents – and if uncertain in the alternative should have asked Magna at the hearing which models should be included if such a list with exempted car models was going to be drawn up, and would thus have learned – that also the 2-series Grand Coupé should be on that list. It was obviously wrong not to correct the impugned order by adding the 2-series Grand Coupé to the list of exempted cars. 

IPPT20241211, UPC CoA, Scandit v Hand Held Products
Request for simultaneous interpretation from German into English rejected (R. 109.2 and 109.4 RoP). Applicant did not chose English as the language of the proceedings; mere fact that internal staff of the applicant who do not speak German will attend the hearing is no justification. However, applicant has the option, in accordance with R. 109.4 Rules of Procedure, to hire an interpreter at her own expense and to provide simultaneous interpretation herself. 

IPPT20241210, UPC CoA, NanoString v 10x Genomics
As a general rule revocation in appeal affects penalty payments. Revocation in appeal of a first instance provisional injunction has, as a general rule, retroactive effect (Article 75(1) UPCA, R. 242.1 RoP, Article 3 Enforcement Directive). The order is revoked because it has been established by a final judgment of the Court of Appeal that the order should not have been made. A revoked order must therefore be regarded as never having had any legal effect. It follows that the revocation of an order granting a provisional injunction prohibiting the continuation of infringements subject to a recurring penalty removes the legal basis for any subsequent decision ordering the payment of a penalty, even if that decision relates to alleged breaches of the provisional injunction prior to the revocation.  

IPPT20241203, UPC CoA, SharkNinja v Dyson
Provisional injunction lifted (Article 62 UPCA, R. 211 RoP). Not more likely than not that the patent is infringed. it is not more likely than not that the contested embodiments realise feature 1.3 of claim 1. No need to examine the other grounds brought forward by the parties, given the assessment in relation to feature 1.3 of claim 1. Claim construction feature 1.3: “cyclonic separating apparatus” (Article 69 EPC). The patent specification does not define what a cyclonic separating apparatus is. The Court of Appeal, as a first step, agrees with Dyson’s view that cyclonic separating apparatus is a functional claim element as understood by the skilled person at the priority date.
 

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.
 

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 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)
 

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, 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, 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.
 

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.

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.

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.

IPPT20241029, UPC CoA, Belkin v Philips
Manifest error of law that managing directors of a company are intermediaries within the meaning of Art. 63(1) UPCA solely on the basis of their function as managing directors. A managing director of a patent infringing company represents that company. This company cannot therefore be a ‘third party’ within the meaning of Art. 63 UPCA and Art. 11 of the Directive 2004/48. Suspensive effect of the appeal regarding the enforcement against de defendant’s managing directors (Article 74 UPCA, R. 223.1 RoP). Suspensive effect may be considered in particular if the order against which the appeal is directed is manifestly erroneous or if the enforcement of the contested decision would render the appeal largely redundant. A manifest violation of law exists if the factual findings and legal considerations prove to be unsustainable in the summary examination to be carried out or in case of violation of fundamental procedural rights such as the right to a fair hearing.  A request for suspensive effect must by itself, enable the Court of Appeal to decide, if necessary without further information  (R. 223.1 RoP). References to written submissions and documents in the first-instance case file are admissible, provided that these are identified in a sufficiently specific manner. Making a decisions or order subject to providing security (R. 352 RoP) requires that the security is ordered at the time of decision or order.
 

IPPT20241021, UPC CoA, SharkNinja v Dyson
New submission disregarded; lack of relevance for the decision on the appeal (R. 222(2) RoP). Contrary to SharkNinja's view, submissions by the parties in other proceedings that contradict the submissions in the present proceedings do not mean that the submissions in the present proceedings must be regarded as contradictory and irrelevant. The submissions relate, incidentally, to a different patent, albeit with identical claim wording.

IPPT20241015, UPC CoA, Photon Wave v Seoul Viosys
Leave to appeal under R. 220.2 RoP must be expressly granted by the Court of First Instance and cannot be presumed. The phrase that the order "is subject to appeal under the conditions laid down by the provisions of R. 220.2 RoP" is for information purposes only and not a grant of leave to appeal (Article 73(2) UPCA).
 

IPPT20241015, UPC CoA, Microsoft v Suinno
“Action manifestly bound to fail” (R. 361 RoP, R. 220.3 RoP) must be reserved for clear-cut cases. It should not result in a full exchange of arguments and evidence, as is clear from the use of the words ‘manifestly inadmissible’, and should not require further in-depth analysis, as rightly pointed out in the impugned order. Microsoft has failed to demonstrate that a review of the impugned order on the requirement set under R. 361 RoP is necessary to ensure a consistent application and interpretation of the RoP or any other objective of the discretionary review procedure. Microsoft’s position that the impugned order is incorrect and does not provide a correct interpretation of Art 48(5) UPCA, R. 8.1 and R. 290.2 RoP, and Art. 2.4.1 of the Code of Conduct for Representatives who appear before the Unified Patent Court, is not sufficient for the Court to grant Microsoft’s application, in particular as the issue of independence of a UPC representative is also the subject matter of a R. 220.2 RoP appeal currently pending, during which both Microsoft and Suinno have the opportunity to address it thoroughly. 
 

IPPT20241009, UPC CoA, Suinno v Micrsoft
Request for discretionary review in appeal (R. 220.3 RoP) only admissible, if leave to appeal against the impugned order is required (R.220.2 RoP) and the Court of First Instance refused to grant leave within 15 days of the order (R.220.3 RoP). Failure to indicate in the order for security that an appeal may be lodged in accordance with Article 73 of the Agreement and Rule 220.2 as required by R. 158.3 RoP cannot be that the unsuccessful party is deprived of its right to request leave to appeal an neither can the absence be understood as an implied leave to appeal. Instead, the unsuccessful party can still ask the Court of First Instance to grant leave to appeal by a separate decision.
 

IPPT20241009, UPC CoA, SharkNinja v Dyson
Level of detail required to meet the standard of R 226 Rop for the Statement of grounds of appeal must be assessed on a case-by-case basis depending on, among other things, how detailed the impugned order is in the contested parts. General statement that all submissions from the pleadings submitted at first instance are maintained in  full is not enough as such. [...] From this, in conjunction with SharkNinja’s initial statement that all submissions from the pleadings submitted at first instance are maintained in full, it is clear that SharkNinja also want to include in the appeal their arguments from the Rejoinder to the Reply that they were not able to present at the hearing before the Local Division. New evidence FBD 27 and FBD 28 disregarded in appeal (R. 222.2 RoP). Relevancy of submission not convincingly argued and submitted over three and one month, respectively, after having been obtained

IPPT20241009, UPC CoA, Eoflow v Insulet
Request for expedition of the appeal admissible but unfounded (R. 9.3(b) RoP, R. 235 RoP). EOFlow has not sufficiently substantiated, and the Court of Appeal fails to see, why it was necessary for EOFlow to await the decision of the Central Division on Menarini’s request for intervention, before filing the present request. By nevertheless doing so and taking ten days to file its Statement of appeal and grounds of appeal and this request, an order of the Court of Appeal would only be possible prior to the aforementioned oral hearings if Insulet would be given substantially less time for filing its response. The Court of Appeal is of the opinion that EOFlow has thus by filing its request at an unnecessary late point of time, insufficiently taken into account the interests of Insulet.

IPPT20241004, UPC CoA, Meril v Edwards Lifesciences
Successful party in case of disposal of an action following a cease-and-desist-letter undertaking by the defendant (Article 69 UPCA, R. 360 RoP, Article 14 Enforcement Directive) must be determined on the basis of the specific characteristics of the case and in particular the requests of the parties and the content of the undertaking. As a general rule, the claimant must be considered the successful party. Grounds of equity may require that the claimant bear the costs where, in short, the claimant caused unnecessary costs by bringing proceedings against a defendant which did not give cause for action. No reasonable doubt that the Court of Appeal’s interpretation of Art. 69(1) UPCA is in conformity with Art. 14 of Directive 2004/48. The Court of Appeal will therefore not refer a question to the CJEU. Meril must be regarded as the unsuccessful party. Through Meril’s cease-and-desist undertaking, Edwards achieved the main purpose of its action for provisional measures, namely that Meril cease marketing products which Edwards considers to be covered by the patent at issue. Meril thus effectively placed itself in the position of the unsuccessful party.
 

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 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.

IPPT20240925, UPC CoA, Mammut v Ortovox
Scope of appeal and proceedings (Article 73(4) UPCA, R. 222.1 RoP). The subject matter of the appeal proceedings in proceedings for the review of interim measures is in principle limited to the submissions made in the proceedings for the grant of interim measures. In order to ensure legal certainty and the proper administration of justice, the statement of grounds of appeal must be sufficiently clear and specific to enable the respondent to prepare a defence of the judgment at first instance and to enable the court hearing the appeal to decide the appeal. 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. Whether a delay is unreasonably long within the meaning of R.211.4 Rules of Procedure depends on the circumstances of the individual case. 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

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. 

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.

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, 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 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. 
 

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.

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 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. 

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.

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.
 

IPPT20240826, UPC CoA, Ballinno v Kinexon Sports
Adequate security for legal costs and other expenses equally available in appeal (Article 69(4) UPCA, Rule 158(1) RoP, Rule 222(2) RoP). Ballinno ordered to provide security for legal costs in appeal in the (total) amount of € 25.000.  The provision of security for costs does not hamper access to justice. (Article 47 EU Charter)

IPPT20240822, UPC CoA, UPC Representative
Petition for review of rejection of application to be entered on the list of UPC representatives  dismissed (Article 48(2) UPCA). Representation requires both EPO qualification and an additional litigation qualification under Art. 48(2) UPCA. The qualifications are exhaustively defined in the EPLC Rules and must be proven by certificates

IPPT20240821, UPC CoA, Aylo v Dish - II
Application for discretionary review of confidentiality club order with no leave to appeal dismissed (Rule 220(3) RoP, Rule 262A RoP). No reasons set out that would justify allowing appeal against the order of the Local Division Mannheim of 22 July 2024, which is based on the principle that the abstract risk that an in-house counsel, if admitted to confidentiality club might breach the confidentiality obligation due to conflicts of interest is not sufficient to refuse admission, unless there are concrete circumstances justifying such a suspicion.

IPPT20240821, UPC CoA, Aylo v Dish - I
Request for discretionary review in the absence of leave to appeal (Rule 220(4) RoP). Parties cannot take procedural steps of their own motion (Rule 9(1) RoP; Rule 36 RoP). It follows from Rule 36 RoP that a reasoned request and authorisation by the judge is required. The written submissions provided for in R.220.4 of the Rules of Procedure are an application and, if the Permanent Judge hears the other party, a reply. Any further submissions must be authorised by the Standing Judge)

IPPT20240821, UPC CoA, Microsoft v Suinno
Inadmissible request for discretionary review by the Court of Appeal of an order rejecting – without leave to appeal – the ‘R.361 RoP request’ to declare the revocation action manifestly inadmissible (Rule 361 RoP). Leave to appeal as provided for in Rule 220.2 RoP required because the provision of Rule 363(2) RoP that a “decision  […] pursuant to Rules […] 361 […] is a final decision within the meaning of Rule 220.1(a)” (for which leave to appeal is not required) only concerns orders granting a ´R.361 RoP request´. An order denying a R.361 RoP request is a case management order as meant in R.333.1 RoP that cannot be directly appealed but can only be reviewed by the panel.
 

IPPT20240821, UPC CoA, Apple v Ona
Reply to Statement of response not taken into account. Further written pleadings may only be filed after a Rule 36 RoP request, filed before the closing of the interim procedure, has been granted (Rule 239 RoP). In appeal there is no provision for notification in accordance with Rule 35a RoP.

IPPT20240819, UPC CoA, Sibio v Abbott
Manifestly erroneous that Ireland is a Contracting Member State of the UPC (Article 84.2 UPCA) and  thus cannot be considered to be covered by Abbott’s request for a preliminary injunction. The Court of First Instance therefore awarded more than was requested for, which is contrary to Art. 76 UPCA. Suspensive effect granted insofar as the impugned order extends to the territory of Ireland. Application for suspensive effect admissible (Rule 223 RoP, Article 74 UPCA). Not a requirement that a request for suspensive effect is lodged in a separate workflow in the Court’s case management system

IPPT20240808, UPC CoA, Alexion Pharmaceuticals v Amgen
Service of written pleadings via other electronic systems than the CMS cannot be considered effective service under  Rule 278.1 RoP.

IPPT20240806, UPC CoA, 10x Genomics v Nanostring
Application for rehearing inadmissible; no fundamental procedural defects (Article 81 UPCA, Rule 247(e) RoP). Grounds for the decision not based on personal opinion of one or more of the judges but on evidence, including the patent specification, supporting Nanostring’s arguments. With the words "in the judgement of the technically competent court" only expressed that it was particularly equipped and qualified to assess the arguments and evidence presented in a technically complex matter. The assessment of the arguments and evidence presented by the parties is made by the appellate court hearing the case and is not subject to review on a motion for rehearing. Court of Appeal not precluded from cost decision in  appeal decision that concludes actions for provisional and protective measures (Rule 118(5) RoP, Rule 242(1) RoP, Article 62 UPCA). 

IPPT20240806, UPC CoA, Nera v Xiaomi
IPPT20240805, UPC CoA, Panasonic v Xiaomi
Statement of claim cannot be validly served on Xiaomi companies in China and Hong Kong at the business address of Xiaomi DE in Germany (Rule 273 - 274 RoP). No decision on costs by the Court of Appeal because the decision in appeal is not a final order or concluding an action (Rule 151 RoP, Rule 242(1) RoP)

IPPT20240730, UPC CoA, Alexion Pharmaceuticals v Samsung Bioepsis
No expedition of the appeal (Rule 9(3) RoP, Rule 220(1) RoP)(Rule 235 RoP) Due account must be given to the principles of due process, among which equality of arms. The Court of Appeal does not consider that the circumstances of the present case are so urgent that the interests of the appellant outweigh those of the respondent. The appellant’s arguments that it is seeking patent protection as soon as possible and that the appeal concerns a purely legal issue, are not sufficient to shorten the time limit for lodging the statement of response. This time period is already relatively short for appeals against orders referred to in R. 220.1(c) RoP, such as the present appeal, namely only 15 days. The fact that the appellant did not make use of the entire time period within which it could have lodged its statement of grounds of appeal, does not lead to a different assessment.

IPPT20240729, UPC CoA, NEC v TCL
Alternative method of service of Statement of claim requires a prior service attempt (Rule 275 RoP). There is no reason why the UPC should follow the practice of some German courts as suggested by NEC, since the UPC has its own procedural rules and furthermore the practice of some German courts does not create a precedent.
 

IPPT20240729, UPC CoA, Hanshow v VusionGroup
Application for determination of costs following an order or decision of the Court of Appeal relating exclusively or partially to the costs of the appeal must be submitted to the Court of First Instance and will be decided by the judge-rapporteur of that court. If the successful party wishes to apply for an order for costs following a decision in principle on the obligation to pay costs, it must submit an application within one month of notification of this decision (Rule 151 RoP).

IPPT20240726, UPC CoA, OrthoApnea
Request for suspensive effect of appeal, regarding a decision not to extend a time period and to allow amendment of infringement claim with equivalency, admissible but unfounded (Art. 74(1) UPCA, Rule 223 RoP, Rule 263 RoP). Parties submit their statements in the written procedure without knowing how their allegations will be assessed by the Court of First Instance or the Court of Appeal. That entails the risk that part of their allegations will not be relevant for the outcome of the case.

IPPT20240726, UPC CoA, ICPillar v ARM
Request ICPillar for confidentiality of insurance policy rejected on 23 July 2024 (Rule 262A RoP). ARM given the opportunity to amend its Statement of response regarding the unredacted version of Exhibit 4 by 2 August 2024. (Rule 263 RoP). ICPillar not given an opportunity to amend its Statement and grounds of appeal. ICPillar could bring – and should have brought – forward arguments in its Statement of appeal and grounds of appeal based on the unredacted version of Exhibit 4 when lodging the appeal and request confidentiality in relation to that document together with uploading a redacted version of its Statement of claim and grounds of appeal, as it has done with Exhibit 4 itself.
 

IPPT20240726, UPC CoA, Abbott v Sibio
Allowability of auxiliary requests to be argued and decided at the oral hearing (Rule 263 RoP). In view thereof, time extension for Statement of response reasonable, also taking into account the summer holiday period (Rule 9 RoP, Rule 235 RoP).

IPPT20240723, UPC CoA, PMA v AWM
Application to preserve evidence or inspect premises implies a request to disclose the outcome of the measures (evidence) to the applicant and the procedure aims not merely to preserve evidence but also to disclose the evidence to the applicant (Article 60 UPCA, Rule 192 et seq. RoP). Order to preserve evidence or inspect premises must be subject to the protection of confidential information (Rule 196 RoP). 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. The Court must hear the other party on the request for disclosure even if this party has decided not to file a remedy against the order to preserve evidence or inspect premises. For the revocation or otherwise ceasing to have effect of the measures (Article 60(8) UPCA) the Court must, as a general principle, specify in its order a time period that starts to run from the date of disclosure of the evidence to the applicant or from the date on which the Court has made a final decision not to grant the applicant access to the evidence.

IPPT20240712, UPC CoA, Ballinno v Kinexon Sports
Request for extension of time period to lodge Statement of grounds of appeal rejected (R. 224.2(b) RoP). Time period for filing the Statement of grounds of appeal starts only once the reasoned decision is served. An earlier appeal filed without reasons is treated as a Statement of appeal only. Uncertainty on how to upload the Statement of appeal (either in a new appeal against the reasoned order of 28 June 2024 or as a (final) Statement of grounds of appeal in the appeal proceedings already lodged), does not justify an extension of the time period of R.224.2(b) RoP. 
 

IPPT20240711, UPC CoA, Apple v Ona
Motion to expedite appeal denied (Rule 9(3)(b) RoP, Rule 235(2) RoP). No particular interest shown by Apple. Having regard to Ona's interests and the principles of proportionality, fairness and equity, and taking into account the above reasons and the time Apple has taken to file its statement of grounds of appeal - which is significantly longer than the time Ona is to be given to file its Statement of response - the Court of Appeal is unable to see any reason for shortening the time limit for Ona to file its statement of defence as requested by Apple.

IPPT20240707, UPC CoA, ARM v ICPillar
Deadline extension and confidentiality club. Time period for lodging Statement of response extended with 15 days after unredacted version of Exhibit 4 has been made available to ARM’s representatives (Rule 9 RoP, Rule 262A RoP, Rule 235).

IPPT20240705, UPC CoA, 10x v Curio
Withdrawal of appeal from provisional measure with consent (Rule 265 RoP, Rule 151(d) RoP).The Court of Appeal is of the opinion that in case of a withdrawal of an appeal, the appellant shall be considered to be the unsuccessful party who shall bear the costs (as referred to in R.151(d) RoP) incurred in relation to the appeal proceedings. The cost of the appeal incurred by Curio shall be borne by 10x , in an amount to be determined by the Court of First Instance (as requested by both parties) 

IPPT20240621, UPC CoA, Mala v Nokia
Reasoned request to stay proceedings must be in statement of appeal and lack thereof cannot be remedied at the interim conference (Rule 21.2 RoP). As a general rule, the main proceedings are not stayed pending an appeal because of the principle that proceedings before the Court of First Instance must as far as possible continue unhindered by any (procedural) appeals (Rule 223 RoP, Article 74 UPCA). A stay may be granted under exceptional circumstances, having regard to the relevant circumstances of the case, such as the stage of the revocation proceedings before the Court of First Instance, the stage of the appeal proceedings and the interests of the parties or if the impugned order were manifestly erroneous.

IPPT20240620, UPC CoA, Curio v 10x Genomics
No need for a new confidentiality order if the information or evidence is already protected by a confidentiality order but is only contained in another statement or document lodged in the appeal proceedings (Rule 262A RoP).

IPPT20240619, UPC CoA, ICPillar v ARM
No suspensive effect given to appeal from order to provide security (Rule 220 and 223 RoP, Article 74 UPCA) and request to expedite appeal rejected (Rule 9(3) RoP). Granting suspensive effect to an order pursuant to R.220.2 RoP, is possible under Article 74 UPCA notwithstanding  R.223.5 RoP. Suspensive effect only to be given under exceptional circumstances. An example of such exceptional circumstances would be where the appeal is devoid of purpose or would render the appeal largely ineffective if the impugned order were not given suspensive effect, because the consequences of enforcement of the impugned cannot be effectively reversed if the order is later set aside (see UPC_CoA_407/2023, order of 6 November 2023; UPC_CoA_177/2024, order of 2 May 2024). Other exceptional circumstances that could justify suspensive effect would be where the impugned order is manifestly wrong (See UPC_CoA_2/2024, order of 18 January 2024). No suspensive effect given to appeal from order to provide security for costs. ICPillar not unable to comply with the order, nor would it lead to extreme detriment if it complies. Request to expedite appeal rejected (Rule 9(3) RoP). The circumstances of the present case are not of such an urgent nature that the interests of ICPillar outweigh the interest of ARM and the principles of due process. 

IPPT20240617, UPC CoA, Audi v NST

IPPT20240617, UPC CoA, Volkswagen v NST
Further exchange of written pleadings in appeal proceedings allowed (Rule 36 RoP). The  Court of Appeal considers the request by Audi to be sufficiently reasoned. It wants to correct some facts submitted by NST in relation to its behavior in the market, together with written evidence. The Court of Appeal considers that Audi has a sufficient interest to do so and that the written procedure is the most convenient phase to do so. The Court of Appeal therefore allows the request. There is no need to consult NST about this request. NST will be given the opportunity to respond to the additional statement lodged by Audi within 14 days after the day on which this order is issued.

IPPT20240604, UPC CoA, Neo Wireless v Toyota
Opt out must be by all proprietors of all national parts of a European patent (Article 83(3) UPCA).  The object and purpose of Art. 83(3) UPCA make clear that the opt out Application must be lodged by or on behalf of all proprietors of all national parts if there are more validations. The legislator has expressly chosen that, as a default position, there is an automatic transition into the jurisdiction of the UPC and that the status quo prior to the establishment of the UPC is not maintained. The interpretation, whereby all proprietors of all national parts must file the opt out Application, is in accordance with the default position chosen by the legislator. If not all proprietors of all national parts of an European patent file the opt out Application, the ‘default position’ stays in place.

IPPT20240604, UPC CoA, Daedalus v Xiaomi
Application to withdraw appeal in relation to two (Xiaomi DE and Xiaomi NL) of several defendants rejected (Rule 265 RoP). The Court of Appeal will consider whether those respondents have already been served the Statement of grounds of appeal, whether they want the appeal to be adjudicated in relation to themselves as respondents and whether they have a legitimate interest in adjudication. Main consideration for legitimate interests is the content of the order under appeal and how a withdrawal affects the respondent. Part of the appeal is that Daedalus is requesting that service on Xiaomi Communications Co. Ltd. and Xiaomi Inc is made via Xiaomi DE. Xiaomi DE is a defendant before the Court of First Instance, has responded to the appeal, and will be affected by a reversal of the order of the Court of First Instance since, in that situation, it will be burdened by service on behalf of affiliate companies, which would result in internal responsibilities / liabilities, as it is supposed to inform the other companies of service having been made. Xiaomi NL, who owns all shares in Xiaomi DE, is a defendant before the Court of First Instance, has responded to the appeal, and will indirectly be affected by the outcome of the appeal since it will influence the course and length of proceedings before the Court. The latter aspect applies also in relation to Xiaomi DE. Question whether Rule 305 RoP allows a withdrawal of an appeal against one or more but not all defendants in the proceedings before the Court of First Instance in a case such as the one at hand is left aside. Rule 263.3 RoP is not applicable to withdrawal of an appeal against respondents in appeal proceedings since it allows for a an unconditional limitation of a claim in an action, while the present withdrawal is a matter of limiting not the claim but the respondents in the appeal proceedings.

IPPT20240528, UPC CoA, Carrier v BITZER Electronics
No stay of revocation proceedings pending EPO opposition, appeal rejected. (Article 33(10) UPCA; Rule 295(a) RoP). Oral proceedings in the opposition is 25 October 202; scheduled date for the oral hearing in the revocation proceedings before the UPC is 21 June 2024. As a general principle, the Court will not stay proceedings. The mere fact that the revocation proceedings before the UPC relate to a patent which is also the subject of opposition proceedings before the EPO is not sufficient to allow an exception to the principle that the Court will not stay proceedings. The principle of avoiding irreconcilable decisions does not require that the UPC always stay revocation proceedings pending opposition proceedings. The mere fact that the EPO has granted a request to accelerate the opposition proceedings is not sufficient to stay revocation proceedings before the UPC. Panel of three legally qualified judges (Article 9 UPCA). No reason for the Court of Appeal to depart from its case law that an appeal may be adjudicated by a panel of three legally qualified judges if the subject matter of the appeal proceedings is of a non-technical nature only and there are no technical issues at stake. No ground for requesting the CJEU to issue a preliminary ruling on the question of whether the Court of Appeal can determine its own composition.
 

IPPT20240522, UPC CoA, Volkswagen v NST

IPPT20240522, UPC CoA, Audi v NST

IPPT20240522, UPC CoA, Texas Instruments v NST
Request by the Appellants to expedite the appeal against an order in which an application for security for costs was dismissed and shorten any deadlines where possible is denied for being too unspecified and insufficiently substantiated. (Rule 9(3) RoP, Rule 224(2)(b) RoP).

IPPT20240513, UPC CoA, VusionGroup v Hanshow
Claim features must always be interpreted in the light of the claim as a whole (Article 69 EPC). These features teach the skilled person that the chip and antenna of the radio frequency device should not be placed in the same location in or on the case. Sufficient degree of certainty that the right is being infringed (Rule 211.2 RoP; Article 62(4) UPCA) […] requires that the Court consider it on the balance of probabilities at least more likely than not that the patent is infringed.
 

IPPT20240502, UPC CoA, PMA v AWM
Suspensive effect given to appeal of restitution order (that that shall take place from 5 June 2024) to ensure that there is time to decide on the appeal before the impugned order is enforced (Article 74 UPCA). No decision on the costs since this order is not a final order or decision concluding an action (Rule 242.1 RoP).

IPPT20240501, UPC CFI, LD The Hague, Keestrack v Geha Laverman
Withdrawal of proceedings pursuant to a settlement (Rule 265 RoP, Rule 11 RoP). Restitution of part of the court fee appropriate. With the case being terminated at an early stage, i.e. after the issuance of the summons and before the filing of a reply by the respondent, and therefore before the 'written proceedings' are concluded, 60% of the court fees paid will be refunded (Rule 370.9(b) RoP). Delay in response considered timely filed (Rule 9.2 RoP). The delay in the respondent's response is apparently due to problems with CMS, and does not affect the applicant's legal position (other than delay). The response is therefore considered timely filed in this case, also given the timely submission by email.

IPPT20240426, UPC CoA, AIM Sport v Supponor
Infringement proceedings and Provisional measures proceedings are two different proceedings (Article 32.1(a) en (c) UPCA). The fact that the basis for both proceedings is the same – the same infringement – does not lead to a different conclusion. The “Information about appeal” in the decision should have distinguished between the separate proceedings, such that in the infringement proceedings (ACT_545571/2023) the time period of two months applied and in the provisional measure proceedings (ACT_551054/2023) the applicable time period was 15 days. Principle of the protection of legitimate expectations: excusable error about applicable appeal time period because of non-obvious incorrect information provided by Court of First Instance, but outcome inf future cases may be different now that the Court of Appeal has clarified the wording used in Rule 220.1(c) RoP.

IPPT20240417, UPC CoA, Curio Bioscience v 10x Genomics
Change of language of the proceedings into the language of the patent on grounds of fairness: all relevant circumstances shall be taken into account (Article 49 UPCA, Rule 323 RoP) These should primarily be related to the specific case and the position of the parties. If the outcome of balancing of interests is equal, the position of the defendant is the decisive factor. As a general rule and absent specific relevant circumstances pointing in another direction, the language of the patent as the language of the proceedings cannot be considered to be unfair in respect of the claimant. Appeal admissible despite Curio Bioscience’s cut-and-paste-mistakes in the heading of the Statement of claim (Rule 225 RoP). The correct information according to R.225(a) – (d) RoP was present later in Section 7 of the said appeal submission and there were no ambiguities as to who was the appellant and who was the respondent.  No decision on the reimbursement of legal costs will be made in this appeal, since this order of the Court of Appeal is not a final order or decision, i.e. not an order or decision concluding the proceedings pending before the Court of First Instance. (Article 69 UPCA, Rule 118 RoP, Rule 242 RoP

IPPT20240411, UPC CoA, Neo Wireless v Toyota
Time period for lodging appeal against procedural order’ (Rule 220(2) RoP, Rule 224(1)(a) RoP)
If an appeal is lodged against a ‘procedural order’ under Rule 220(2) RoP and leave (i) is granted in the impugned order itself, the Statement of appeal must be lodged within 15 days of service of that order containing the decision to grant leave. If the decision to grant leave to appeal (ii) is contained in a separate order on a request to that effect (which separate order must be issued within 15 days of the impugned order, cf R.220(3) RoP), the Statement of appeal has to be lodged within 15 days from the date of service of this separate order containing the decision to grant leave to appeal.

IPPT20240410, UPC CoA, Ocado v Autostore
Composition of the panel of the Court of Appeal. When an appeal does not concern a field of technology, the Court of Appeal does not have to assign technically qualified judges (in the field of technology concerned) (Article 9 UPCA). Public access to written pleadings and evidence (Article 45 UPCA, Rule 262 RoP). Appeal dismissed. Balance of interests in the present proceedings in favour of granting access to statement of claim based on an interest of a general nature after the proceedings had come to an end by a settlement. The general principle is that the register and the proceedings are open to the public, unless the balance of interests involved is such that they are to be kept confidential. Interests to be balanced. The interests of the parties or other affected persons include the protection of confidential information and personal data (’the interest of one of the parties or other affected persons’). The general interest of justice includes the protection of the integrity of proceedings. Public order is at stake e.g. when a request is abusive or security interests are at stake. A “reasoned request” R.262.1(b) RoP means a request providing all the information that is necessary to make the required balance of interest. General interest of a member of the public that written pleadings and evidence are made available allows for a better understanding and scrutiny. Interest of protection of the integrity of proceedings ensures that the parties are able to bring forward their arguments and evidence and that this is decided upon by the Court in an impartial and independent manner, without influence and interference from external parties in the public domain. The general interest of public access and the interest of protection of integrity of the proceedings are usually properly balanced and duly weighed against each other, if access is given after the proceedings of an instance have come to an end by a decision. The balance is usually also in favour of allowing access if proceedings have come to an end before a decision and the integrity of proceedings no longer plays a role. A direct interest, such as regarding validity or infringement, may be immediately present and, in weighing against the general interest of integrity of proceedings, the balance will generally be in favour of granting access. The Court may, however, for the purpose of appropriate protection of the integrity of proceedings, impose certain conditions on granting access, such as the obligation for that member of the public to keep the written pleadings and evidence he was given access to confidential as long as the proceedings have not come to an end. 

IPPT20240409, UPC CoA, Panasonic v Xiaomi
If Rule 271(1) RoP – service of Statement of claim at an electronic address provided for service  – applied in the First Instance, it also applies in appeal. In appeal proceedings, Chapter 2 – Service (Rules 270 – 279) of the Rules of Procedure (RoP) applies mutatis mutandis. Consequently, if during the proceedings at the Court of First Instance, Rule 271.1 RoP applied (in short: an electronic address for service was provided by the defendant or his representative) and/or a representative of the respondent accepted service on behalf of the respondent, then pursuant to R.271.2 RoP further service – not only in the proceedings at first instance, but also in appeal proceedings - shall be effected within the closed electronic system of the UPC Case Management System (CMS).

IPPT20240403, UPC CoA, Juul Labs v NJOY Netherlands
Appeal and the appellant’s request to set aside the orders of the Court of First Instance to rectify the name of the defendant (“Juul Labs, Inc”) to read “Juul Labs International, Inc.” rejected [Rule 9 RoP]. If the claimant has not correctly named the defendant in the statement initiating the proceedings, the Court may allow the claimant to rectify the error. The request can be granted if the defendant is not unreasonably prejudiced by the incorrect statement of name and its rectification. As a rule, there will be no unreasonable prejudice if, despite the incorrect statement of name, it must have been clear to the defendant and to the Court, based on the circumstances of the case, that the claimant intended the statement for revocation to be directed against the defendant. Direct appeal of order of judge-rapporteur admissible as explicitly provided for in Rule 21(1) RoP, no prior review by the panel required in this particular case. No decision on costs. Rule 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. However, the outcome of the appeal must be considered when, in the final decision on the action at hand, the Court determines whether and to what extent a party must bear the costs of the other party because it was unsuccessful within the meaning of Article 69 UPCA.

IPPT20240328, UPC CoA, Curio v 10x Genomics
Confidentiality order remains in place after the legal proceedings have ended and encompasses appeal proceedings. Any limitation of a non-disclosure obligation must be explicit (Rule 262A RoP, Article 9(1) Trade Secrets Directive)

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. 

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. 

IPPT20240311, 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)

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

IPPT20240226, UPC CoA, Nanostring v 10x Genomics II

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

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

IPPT20240222, UPC CoA, Netgear v Huawei 
Request to shorten the time period for the Statement of response rejected (R.225 (e) RoP, R. 9.3(b) RoP). The applicant used the full deadline for filing its appeal before requesting expedition, but did not adequately consider the respondent’s need for sufficient preparation time. Shortening deadlines must respect principles of fairness, equity, and proportionality. Even though delay may affect parallel first instance proceedings, the respondent’s procedural rights prevail
 

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

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

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

IPPT20240111, UPC CoA, Netgear v Huawei

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

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