2024 - UPC Court of First Instance

IPPT20240510, UPC CFI, CD Paris, Cead v Bego
Request for simultaneous interpretations (Rule 109(1) RoP) rejected. The interests of the applicants are represented by three German-speaking representatives. In the course of the proceedings to date, they have made extensive submissions in German without the court becoming aware of any communication problems. The fact that the fourth legal representative does not speak German does not alter this assessment. Applicants' counsel is permitted to conduct the interim hearing and the oral hearing in English, optionally in Dutch, with simultaneous interpretation into German at their expense (Rule 109(2) RoP).

IPPT20240510, UPC CFI, CD Paris, Standstill Agreement
Preliminary objection rejected that UPC currently lacks jurisdiction because of violation of standstill agreement requiring a party has to inform the other party of the intention to file a lawsuit 90 days before the lawsuit is filed  (Rule 19 RoP). Jurisdiction – the ability of a specific court to hear and issue a decision on one or more specific disputes – has to respond to objective criteria which must not vary depending on the time of the filing of a claim or on the identity of the claimant.

IPPT20240506, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Separation of proceedings in two separate proceedings ordered (Rule 303 RoP). Separation between the defendants already represented by lawyers and the defendants regarding which foreign service is to be effected in accordance with the Hague Service Convention that is expected to take some time. 

IPPT20240506, UPC CFI, LD Paris, Photon Wave v Seoul Viosys
An intervening party may not develop claims contrary to those of the party it is supporting (Rule 313 RoP, Rule 9 RoP) and may not independently develop claims and procedural methods distinct from those offered to the party it is supporting. Consequently, an intervener who has not filed a counterclaim for invalidity within the time limit set for the party it is supporting cannot claim an extension of time to file an independent claim. No change of language of proceedings from French to the language of the patent (English) (Rule 322 RoP, Article 49 UPCA). Even though the European patent at issue was granted in English, the plaintiff, a Korean company, chose to bring its action in French, thereby respecting the rights of the defendant, a French company established in France. Neither the nationality of the representative of one of the parties, nor the nationality of the intervening company, constitute serious grounds for proposing a change in the language of the proceedings for reasons of convenience or fairness.

IPPT20240506, UPC CFI, LD Milan, Oerlikon v Bhagat
Lawyers only confidentiality club by consent with respect to a document filed in preparation for the Interim Conference in connection with the JR's invitation to document the costs (Article 58 UPCA, Rule 262A RoP)

IPPT20240502, UPC CFI, CD Paris, Nokia v Mala Technologies
Preliminary objection against jurisdiction of the UPC because of ‘lis pendens’ with German revocation action rejected (Rule 19.1(a) RoP, Article 71c Brussels I, Article 83 UPCA). Lis pendens rules of Article 71c(2) Brussels I Reg recast do not apply  to a case in which the lawsuit before the national German court was brought two years before the beginning of the transitional period. No stay of UPC revocation action possible because of pending German revocation proceedings. Article 30 (1) Brussels I Reg recast is not applicable and in accordance with Art. 33 (10) UPCA and Rule 295 RoP, the UPC may only stay its proceedings in cases involving EPO opposition proceedings when a swift decision is anticipated from the EPO. No time extension for lodging Statement of defence to revocation because of preliminary objection (Rule 49.1 RoP, Rule 9.3 RoP). 

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.

IPPT20240430, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Subsequent requests to amend the patent may be filed also after the closing of the written procedure with the permission of the Court however, the admission of this subsequent request must not prejudice the other party’s right to defence (Rule 30(2) RoP). An unconditional amendment and significantly reducing the number od amendment offers a meaningful contribution to the efficiency of the proceedings in term of simplifying the issues which the Court shall address and facilitating a more expeditious decision. Claimant is granted a reasonable time period, set in one month, to lodge an additional defence to defendant’s new set of amendments.

IPPT20240430, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Plaintiff is upon its own request ordered to submit redacted licence agreements, subject to further to be determined confidentiality regimes under Rule 262 and 262A RoP. Order is based on the extensive case management powers vested in the Court (Article 43 UPCA) and the judge-rapporteur (Rules 101, 111 and 331 et al. RoP), not Rule 172 RoP or Rule 190 RoP.

IPPT20240430, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Provisional cease and desist order, subject to Applicant providing € 2 million security (Article 62 UPCA, Rule 211 RoP).Non-compliance with the substantive requirements for an application for provisional measures (Rule 206.2(d) RoP) may be to the detriment of the Applicant. A possible infringement of R. 206.2(d) RoP does not therefore lead to the Application being inadmissible. Rebuttable presumption that a person registered as the patent proprietor in the respective national register is entitled to be registered (Rule 8.5(c) RoP, Rule 211.2 RoP, Article 47 UPCA,). Claim interpretation (article 69 EPC). Statements made by the applicant in the granting procedure are not admissible material for interpretation. They are therefore generally not to be taken into account in the context of patent interpretation. Sufficient certainty of the validity of the patent for the ordering of provisional measures (Article 62 (4) UPCA, Rule 211.2 RoP). No award of damages possible in proceedings for provisional measures (article 62 UPCA, Rule 211(1) RoP). The content of provisional measures is exhaustively regulated in Art. 62 UPCA in conjunction with R. 211(1) RoP. The awarding of damages is not mentioned there. Its assertion is therefore reserved for the main proceedings. No security for legal costs of Defendant in urgent proceedings (Article 69(4)) UPCA, Rule 158 RoP, Rule 211.1(d) RoP). No reason for a decision on costs in proceedings for the ordering of provisional measures if, as in this case, a main proceedings follows the urgent proceedings. Unintended regulatory gap: interim award of costs  in favour of Defendant not provided for in urgent proceedings (Rule 118.5 RoP, Rule 211.1 RoP)

IPPT20240429, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Change of language of the proceedings to the language in which the the patent was granted as agreed by the parties approved by the Court. (Article 49(3) RoP, Rule 321(1) RoP).

IPPT20240425, UPC CFI, CD Paris, Toyota v Neo Wireless
Request to stay the proceedings rejected (Rule 295 RoP). Neither the fact that a Preliminary Objection has been lodged nor the likelihood of success of the appeal against the rejection of the Preliminary Objection are relevant factors for deciding whether the proceedings should be stayed. No rapid decision is expected from the EPO (Article 33(10) UPCA, Rule 295(a) RoP). In the current case, the date for the EPO opposition hearings has not even been set and is still unclear when the EPO will issue a decision. Claimant’s interest to continue the proceedings outweighs Defendant’s interest to stay the proceedings: (a) Defendant’s interest to (potentially) save litigation costs does not weigh up to the legitimate interest of Claimant in pursuing this revocation action; (b) The balancing of interests also strikes in favour of plaintiff because the patent expires on 27 January 2025; (c) The fact that there is a danger of differing results between the UPCA proceedings and in the EPO proceedings does not lead to a different result.

IPPT20240423, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
By way of exception the order of 30 April 2024 will be in German, accompanied by a certified English translation. (Article 49 UPCA, Rule 14(2)(c) RoP, Rule 118(8) RoP) After change of the language of the proceedings into English by the Court of Appeal at 17 April 2024, exceptional use is made of the possibility for German Local Divisions to issue and deliver an order in German together with a certified translation in order to make effective use of preparatory work and not to delay the proceedings unnecessarily.
 

IPPT20240415, UPC CFI, President, Advanced Bionics v MED-EL
No disproportionate disadvantage necessary. The decision whether or not to change the language of the proceedings into the language in which the patent was granted (Article 49 UPCA, Rule 323 RoP) shall be determined with regard to the respective interests at stake that has to be weighted, without it being necessary to constitute a disproportionate disadvantage. As a result, it may be sufficient that – amongst all relevant circumstances also to be considered – the language initially chosen is significantly detrimental to the Applicant. A fairness issue can occur if one party compared to the other(s), is remarkably disadvantaged by the conditions in which it has to organize its defence due to the language of the proceedings. Factors resulting from strategic choices made by the Applicants and the existence of multiple related proceedings pending before national courts is not obviously affecting the conditions under which the defence is exercised in the present action. Request to change language of proceedings can be filed within the time-limit to lodge the Statement of Defence.

IPPT20240411, UPC CFI, LD Hamburg, Daedalus v Xiaomi
Service by an alternative method (Rule 275 RoP) requires at least a first attempt of service in accordance with Rules 273 and 274 RoP. Since Defendants 1) and 2) as well as Defendant 5) are domiciled outside the territory of the contracting member states of the UPCA, service must be effected in accordance with Rules 273 and 274 RoP. These provisions demand at least a first attempt of service in accordance with Rule 274.1 (a) (ii) and (iii) RoP. 

IPPT20240411, UPC CFI, LD Paris, ARM v ICPillar
Preliminary objections concerning competence of the Paris Local Division dismissed (Rule 19(1)(b) RoP, Article 33(1)(b) UPCA). The Claimant has demonstrated that one of the defendants is domiciled in France, that all the defendants have a commercial relationship and that the action relates to the same alleged infringement. The internal jurisdiction of the Paris Local Division under Article 33(1)(b) UPCA is justified. If in a case of multiple defendants one of the defendants has its residence within the territory of the local division seized, article 33(1)(b) UPCA applies regardless of whether the other defendants are based inside or outside the CMS or inside or outside the EU. Hence the only requirements to be met are: 1) the multiple defendants have a commercial relationship and 2) the action relates to the same alleged infringement. The requirement of a commercial relationship implies a “certain quality and intensity”. However, to avoid multiple actions regarding the same infringement and the risk of irreconcilable decisions from such separate proceedings, and to comply with the main principle of efficiency within the UPC, the interpretation of the link between the defendants should not be too narrow. The fact of belonging to the same group (of 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). UPC has jurisdiction over infringement acts that began before 1 June 2023 and continued after this date and that are not covered by the period of limitations. This applies on the basis of Articles 3(c), 32(1)(a) and 72 UPCA. 

IPPT20240409, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Ex parte order of 11 December 2023 upheld, including the obligation to provide security in the amount of EUR 500,000.00. Claim interpretation and prosecution history. Prosecution history is in principle not admissible for claim interpretation. At most it may have indicative significance for how the skilled person understand a feature, if the applicant has commented on the meaning of a feature or term in the curse of the examination procedure (Article 69 EPC). Provisional measures do not require risk taking by applicant but reliable knowledge of relevant facts (Article 47 UPCA, Article 62 UPCA, Rule 213 RoP). The applicant only needs to call upon the court if he has reliable knowledge of all the facts that make legal action in the proceedings for an order for provisional measures promising and if he can make these facts credible: that the applicant is entitled to initiate the proceedings, that the patent in question is valid and that its right is infringed or threatened to be infringed. Front loaded UPC proceedings – late-filed submissions. The parties must co-operate with the court and present their arguments as early as possible (point 7, Preamble RoP). Submissions after the conclusion of the oral proceedings do not fulfil these requirements and must therefore generally be rejected as late. This applies in any case if the party concerned was not exceptionally granted the right to make additional submissions within a time limit set by the court during the oral hearing in response to a reasoned request. No interim award of costs (Article 69 UPCA, Rule 211(1)(d) RoP). There is no reason for a decision on costs in proceedings for interim measures if the summary proceedings are followed by proceedings on the merits. As a rule the applicant is to provide adequate security for appropriate compensation for any injury if the order for provisional measures is revoked, unless the specific case exceptionally requires otherwise (Rule 211(5) RoP).

IPPT20240409, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Extension of deadline to file Statement of Defence with three weeks rejected (Rule 9(3) RoP). Deadline to submit a written submission should not be extended lightly and should only be granted in circumstances that justify such extension. Defendants have failed to substantiate – other than with a general reference to ‘fair trial’– why the language change one month before the deadline for filing the SoD, in the circumstances of this case makes that the these defendants will not be able to meet the deadline of 26 April, 2024, or are actually hindered in that respect. 

IPPT20240408, UPC CFI, LD Milan, PMA v AWM
No access to written report and any other outcome of the measures to inspect premises and to preserve evidence and revocation of the measures to preserve evidence because applicant did not timely start proceedings on the merits (Article 60(8) UPCA, Rule 198 RoP, Rule 9(4) RoP). Restitution of all evidence gathered through the execution of the revoked measures is to take place from 05.06.2024 on, unless the Court of Appeal decides otherwise (Article 74 UPCA, Rule 223 RoP). It is quite clear that an appeal could not be effective if this Court’s order for the return of the evidence gathered were given immediate effect. Damages claim dismissed (Article 60(9) UPCA, Article 54 UPCA, Rule 198(2) RoP). AWM and Schnell failed to allege, identify, and prove what concrete damage would have been caused by the enforcement of the measures, resulting in the dismissal of the claim, since – as provided for in Art. 54 UPCA – the burden of the proof of facts lies with the party relying on those facts. € 10.000 in legal fees apportioned equitably (Article 69(2) UPCA). This decision is based on procedural grounds only, without any assessment of the infringement or the validity of the patent. It is also the first decision of the UPC concerning a specific legal issue for which no other case law is available. 

IPPT20240404, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Exceptional extension of time period to file Reply to the Statement of defence, Counterclaim for revocation and an amendment of the patent from 6 April 2024 until 28 May 2024. Due to restriction of access to pleading because of Protection of confidential information order access to the information in question to the party's employees with the relevant knowledge was granted for the first time on 27 March 2024 (Rule 9(3) RoP, Rule 262A RoP)

IPPT20240403, UPC CFI, LD München, Avago v Tesla
The infringement claim and the two counterclaims for revocation will be heard together before the Munich Local Division (Article 33(3) UPCA, Rule 37 RoP). Both parties have argued that the action and the counterclaims should be heard together before the same court. The defendants have also agreed that everything should be referred to the central chamber. The plaintiff has not agreed to this, so that this option has been ruled out.

IPPT20240402, UPC CFI, LD Hamburg, Avago v Tesla
Finalisation of a confidentiality order under Rule 262A RoP. Defendant's forecast sales results are confidential information that must be treated as strictly confidential and may not be used or disclosed outside the present legal dispute, even after its conclusion. Access is limited to the plaintiff’s authorised representative and the following persons: a. ... ; Director and Managing IP Counsel, ... Inc.; b. ... , Master Engineer, ... Inc.; c. ... , Senior IP Counsel, ... Inc. The fact that these persons are not employed by the plaintiff itself is irrelevant.

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

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

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

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

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

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

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

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

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

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

IPPT20240228, UPC CFI, LD Paris, ICPillar v ARM
Court orders that steps already taken to bring the Statement of claim to the attention of the defendants by an alternative method or at an alternative place is good service (Rule 275(2) RoP). The Statement of Claim to Arm Limited, Apical Limited, Simulity Labs Limited and SVF Holdco, is deemed to be served on 7 February 2024.

IPPT20240227, UPC CFI, LD Paris, Seoul Viosys v Laser Components
Request to change language of proceedings from French to the language of the patent (English) rejected (Rule 322 RoP, Article 49 UPCA). The plaintiff, a Korean company, chose to bring its action in French, which is respectful of the rights of the defendant, a French company established in France. Neither the nationality of the representative of one of the parties, nor the nationality of the company intervening in the proceedings, which it has not been proven at this stage will participate in the proceedings, constitute serious grounds, either for reasons of convenience or for reasons of fairness, for proposing a change in the language of proceedings to the parties. 

IPPT20240227, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
Interim report after interim hearing in relation to combing actions (Rule 9 RoP, Rule 101 RoP). Request for interim conference after interim hearing rejected in view of the opportunity to be heard in relation to its requests and the combining of both actions at the present hearing. Case management instructions in relation to combining the actions in preparation for oral procedure to provide that all parties are “on the same page” where it concerns the grounds for revocation, arguments, facts and evidence. Value of proceedings set at 100 million euro in accordance with agreement between the parties (article 36 UPCA). Reasonable and proportionate costs recoverable up to a ceiling of 2 million euro in accordance with table published by the Administrative Committee (article 69 UPCA). Court and parties must have access to information showing at least a detailed description of the number of hours spent working on this particular case, by whom, what for and at what rate. The same applies to any expenses incurred. The judge-rapporteur informed the parties that the Court will, in principle, respect an agreement between the parties on the amount of costs that is deemed reasonable and proportionate. Use of slides during oral hearing of 4 June 2024 (Rule 9 RoP, Rule 112 RoP). Use of reasonable number of slides as demonstratives, which may not introduce any new facts or substance to the case, permitted; to be submitted by all parties by 7 May 2024 at the latest. Both parties are to include with the slides a table indicating exactly where in the pleadings/evidence already on file the contents of the slides can be found.

IPPT20240227, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Subsequent request to change original request to amend the patent rejected because of insufficient justification  (Rule 30(2) RoP). Leave to change claim or amend case and application to amend patent can be filed simultaneously in one pleading, especially in a situation, where strict time periods come into play (Rule 263 RoP, Rule 30 RoP) in accordance with the principles of flexibility, fairness and equity, mentioned in the preamble 2, 4 and 5 of the Rules of Procedures, as well as of the principle of procedural efficiency. A request to replace the original application to amend the patent with a new set of amendments is not governed by Rule 263 RoP but falls under Rule 50(2) RoP and pursuant to Rule 30(2) RoP such a subsequent request requires the permission of the Court. Justification of a request to change the original request to amend the patent required in order to enable the Court to strike a fair balance between the opposed interests involved in the request to amend the patent (Rule 30(2) RoP). The development in Munich LD proceedings does not justify the subsequent request to amend the patent: not suitable to fulfil the declared purposes of consistency and procedural economy. Request to hear the revocation action together with the counterclaims in the Munich Local Division proceedings rejected (Rule 340(1) RoP). The application of that Rule does not appear to be actual, as no hearing seems to have been set in the two proceedings. Leave to appeal rejected (Article 73 UPCA, Rule 220 RoP). In the absence of any precedents from the UPC on the disputed issue, there is no concrete need for a ruling on the meaning of the relevant rules; In case of a possible immediate appeal to this order a decision by the Court of appeal may intervene after that the oral hearing in the current proceedings has taken place and, therefore, would be of no practical use to the parties.

IPPT20240226, UPC CFI, President, 10x Genomics v Curio Bioscience
Application to change the language of the proceedings between two US litigants from German to the language of the patent (English) not granted  (Article 49 UPCA, Rule 323 RoP). No detailed information or relevant data in support of the assertion that Applicant is entitled to calcification as an “SME”. No particular circumstances by Applicant put forward that suffice to raise a fairness issue affecting possibility of organising efficiently its defence despite the timeframe of an application for provisional measures – which instead, may be undermined by the requested change – as both parties are equally confronted with a foreign language and the relating inconvenience in terms of translation and interpretation needs. Mere interest of the Court itself – although concurring with those of the users – cannot prevail in the event where none of the other circumstances of the case at hand call for the requested change.

IPPT20240223, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Because of article 9(2) Trade Secrets Directive and Rule 262A(6) RoP at least one natural person from a party must have access to confidential information, even though such is not provided for in article 58 UPCA. In the interest of effective protection of “confidential information” protection the requirement to invite written comments prior to secrecy order only applies to the final secrecy order and access restriction (article 58 UPCA, Rule 262A RoP). With regard to “trade secrets” access can be further restricted to party representatives until a final order is issued (Article 9 Trade Secrets Directive). Discussion of the confidentiality application with the party is possible with the redacted versions of the documents concerned. Generally, a preliminary limitation to four lawyer representatives (two partners and two associates to support them), two patent attorney representatives and three representatives of the client appears appropriate, whereby this group of persons can be extended by two paralegals if necessary (Rule 262A(6) RoP). In order to take into account the special features of summary proceedings, the group of persons required for a fair trial (Rule 262A.6 RoP) must be selected in such a way that the party affected by the provisional secrecy protection order is fully capable of working and in a position to comment on the merits of each point raised by the opposing party, taking into account the confidentiality interests of the opposing party. Since the group of persons who are granted access to the (allegedly) confidential information must not exceed the scope necessary to ensure compliance with the right of the parties to the proceedings to an effective legal remedy and a fair trial (Rule 262A(6) RoP,) the group of persons entitled to access must always be subject to a case-by-case examination, taking into account the above considerations, and, if necessary and appropriate, adapted to the requirements of the respective proceedings.

IPPT20240223, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience II
Set time limit of 1 March 2024 for replying to defendant’s statement of objection not extended to the conclusion of the confidentiality procedure of Rule 262A RoP (Rule 9(3) RoP). The redacted version of the statement of objection was already available to all representatives of the applicant as well as to the applicant itself on 15 February 2024. Only access to the unredacted version was restricted. The information classified as confidential by the defendant only concerns a very limited part of the statement of objection. Moreover, it is exclusively of a non-technical and purely commercial nature. It is not apparent from the grounds for the request for an extension of the time limit that, and if so for what reasons, the applicant is not in a position to reply to the statement of objection within the time limit set.

IPPT20240222, UPC CFI, LD Mannheim, MED-EL v Advanced Bionics
Request for joint hearing of revocation and infringement actions rejected (Rule 340 RoP, article 33 UPCA). Inadmissible because it conflicts with jurisdictional regime of article 33(1) and (4) UPCA. Even if the plaintiff had been granted a right to choose between the local and the central division when bringing the infringement action pursuant to Art. 33(5), first sentence, UPCA, the exercise of this right to choose in favour of the local division may not be subsequently overridden by a joinder pursuant to R. 340.1. In any case the discretion provided in Rule 340 RoP because it does not serve the interest of a proper administration of justice. The nullity proceedings before the Central Division are already at an  more advanced stage and a referral toe the Central Division a requested would be accompanied by a change in the language of the proceedings. 

IPPT20240221, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Claimants’ requests for a decision by default against the defendants in the main proceedings pursuant to Rule 355 (1)(a), 277 RoP and for a rejection of the Counterclaims for revocation is rejected. Time limits for filing the Statement of defence and the Counterclaim for revocation extended to 7 February 2024, as it was not possible to upload the Counterclaim for revocation on 6 February 2024 for internal technical reasons (Rule 9(3) RoP, Rule 25(1) RoP). Although the Statement of defence shall include a Counterclaim for revocation, the parties shall make use of the official forms available online (Rule 4(1) RoP). In practice, this means that the Counterclaim for revocation must also be filed in the workflow provided for this purpose by the CMS. Only when this requirement has been met is the Counterclaim for revocation properly filed. Where the defendant has filed a Statement of defence in due time in accordance with the requirements of Rule 25.1 RoP, the time limit for filing the Counterclaim for revocation in the dedicated workflow of the CMS may be extended retrospectively upon request (Rule 9.3 (a) RoP) and subject to the following conditions: Firstly, the defendant must have already made a first attempt to file the Counterclaim for revocation in due time in the workflow provided for this purpose before the expiry of the time limit. Secondly, the defendant must have uploaded the Counterclaim for revocation to the correct workflow without culpable delay after the expiry of the deadline.

IPPT20240220, UPC CFI, CD Paris, Roche Diabetes Care v Tandem Diabetes Care
No extension of deadline (Rule 9(3) RoP): no objective impossibility to meet deadline. No allegation, nor let alone evidence, of a difficulty in arranging a proper defence, rather the possibility that the submissions of pleadings in due time may be useless in case the Court will allow the preliminary objection. The power to extend the time limit should only be used with caution and only in justified exceptional cases (see UPC CFI 412/2023 CD Paris, order of 9 February 2024). It follows that the Court may extend a deadline set by the Rules of Procedures only in case a party alleges and gives evidence that it will not be able or was not able to meet it because of a fact that makes the submission of a document or the arrangement of an adequate content of a pleading in the due time objectively impossible or very difficult. 

IPPT20240219, UPC CFI, LD Munich, Huawei v Netgear
Interim decisions following separate case management hearing (Rule 334(d) RoP, Rule 336 RoP, (Rule 105(5) RoP): Reserving right to schedule an interim conference (Rule 35(b) RoP). Allowing pleadings until the conclusion of the written procedure, which in addition to the topics addressed in the Rules of Procedure, may also address topics that have been raised at the hearing, provided that they do so immediately in the earliest written submission. Setting end date for written procedure. Setting date for oral hearing at 18 June 2024. The language of the hearing will be English (language of the proceedings is German). . Setting value of infringement action at € 1 million, of the three nullity counterclaims at € 1 million and of the proceedings at € 2 million. 

IPPT20240215, UPC CFI, LD The Hague, Plant-e v Arkyne
No bifurcation. Panel decides to hear both the infringement action and the counterclaim for revocation (Art. 33(3)(a) UPCA).Such a joint hearing of the infringement action and the counterclaim seems to be appropriate in particular for reasons of procedural expediency and avoids the risk of delay that might be involved with bifurcating. It is also preferable because it allows both issues – validity and infringement – to be decided on the basis of a uniform interpretation of the patent by the same panel composed of the same judges.

IPPT20240214, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Submission of SEP Patent Licenses. There is typically a recognisable need for confidentiality of business-related information contained in licence agreements and only permit submission upon a court order, which may require involving the respective license agreement partner in the proceedings. Incremental 13-step procedure enables the parties to obtain comprehensive protection of secrets and allows the parties to submit the documents in the protected proceedings even without a court order to produce them (Rule 262A RoP, Rule 190 RoP). The confidentiality regime (Rule 262 RoP, Rule 262A RoP) is organised in the following 13 steps [....] (see also the order of the Düsseldorf Local Chamber of 14 February 2024 [[in 10x Genomics v Curio Bioscience, IPPT20240214]..Against the background of this regime, a decision on the requests pursuant to Rule 190 of the Rules of Procedure is not intended for the time being. 

IPPT20240214, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Incremental procedure for protection of confidential information in the Rule 262A CMS workflow, grants provisional secrecy protection. Both a redacted and unredacted version of the documents concerned need to be uploaded in the CMS and at the same time file a secrecy protection request for these documents via the workflow provided for this purpose in accordance with Rule 262A RoP. If this option is used, only the redacted version is initially visible to the opposing party until the unredacted version is released by the sub-registry of the local division on the explicit instruction of the judge. Prior to this release, the CMS gives the rapporteur the opportunity within the R. 262A workflow to issue orders for the provisional protection of the (allegedly) confidential documents. As a rule, the judge-rapporteur will follow the applicant's initially unilateral assessment of the confidential nature of the document and, by means of such an order, restrict the group of persons authorised to access the document until the final decision on the application for secrecy protection. In a first step, the document is initially only released to the opposing party's representative, unless the applicant himself authorises the release to other persons yet to be named by the opposing representative. Because of principles of fairness and fairness (Preamble (5) RoP) , the party seeking confidentiality will be informed and given opportunity to comment, if on the basis of the content of the application for protection of confidential information, the judge-rapporteur considers such a provisional secrecy protection order to be dispensable in exceptional cases. The opportunity to comment, which must be granted at the same time, offers the party concerned the opportunity to react to the threat of unprotected disclosure of the information it considers to be confidential and, if necessary, to declare that the documents in question should not be made the subject of the proceedings, or not in their entirety. As a result, all documents submitted together with an application for secrecy protection pursuant to Rule 262A RoP are subject to provisional secrecy protection.

IPPT20240213, UPC CFI, LD The Hague, Plant-e v Arkyne
Defendant’s request for security for costs (“cautio iudicatum solvi”) rejected (Article 69(4) UPCA; Rule 158 RoP, Article 24 UPCA). Protecting the rights of the defendant should be balanced against the right of the claimant to enforce its patent rights. The main rationale for the cautio is to secure the enforceability of a potential cost order. If such order is directly enforceable after it is granted, it can serve as grounds not to allow a cautio at the start of or during the proceedings. UPC decisions and orders are directly enforceable in the Netherlands in accordance with Art. 82 UPCA, Art. 71d Brussels and R. 354.1 RoP. A cautio in this case is hence not justified because of the risk that a possible cost order in favour of Bioo will not be directly enforceable. This contrasts with the situation decided by the CD Munich [IPPT20231030]  – [....] – on which Bioo relies. In that case the relevant claimant was domiciled outside the EU and no treaty regarding the execution of judgments was in place. As a rule, the court finds that a cautio based solely on (expected) material unenforceability should be awarded in exceptional circumstances only. The court agrees that under the circumstances in the present situation, which involves two competing SMEs with limited finances, the financial strain on the claimant can be a serious impediment to enforcement of its rights and to access to justice, and hence for granting a cautio. Lastly the court takes into consideration that according to Dutch national procedural law it is not possible to give a cautio vis-a-vis plaintiffs domiciled or residing in the Netherlands (and hence in the EU) under any circumstances, and also if there is good reason to doubt the possibility of recovery of a potential cost order due to the financial situation of the claimant.
 

IPPT20240212, UPC CFI, LD Paris, Laser Components v Seoul Viosys
Forced intervention admissible for defendant Laser Components regarding its supplier, which is liable to indemnify Laser Components and should be bound by the decision in the infringement action (Rule 316A RoP).

IPPT20240212, UPC CFI, LD Paris, Dexcom v Abbott

IPPT20240212, UPC CFI, LD Paris, Abbott v Dexcom
Extension and alignment of deadline for filling Statement of Defence by multiple defendants in accordance with agreement between the parties at case management hearing, which is considered reasonable by the judge-rapporteur (Rule 9(3) RoP, Rule 23 RoP, Rule 334 RoP).

IPPT20240209, UPC CFI, CD Paris, ITCiCo Spain v Bayerische Motoren Werke
Request to extend time limit for filing Defence to revocation rejected (Rule 9 RoP, RoP 49 RoP). An impossibility or an extreme difficulty to meet the deadline which is attributable to the party requesting the extension of the deadline or its representative does not come into consideration, as it may not be deemed as objective. Principle of fair trial obliges a party to submit a request for time extension as soon as it appears clear that the meeting of the deadline will not be possible. Difficulties with smart card verification device and illness of patent attorney devoid of evidence. A party's representative waiting for the smart card verification device after the service of the statement of claim (and the reception of the information concerning the lodging of the revocation action) is expected to seek a solution in an appropriate time and act accordingly (for example, by submitting requests to the Court or the Registry)

IPPT20240212, UPC CFI, LD Paris, ICPillar v ARM
Alternative method of service of Statement of Claim (Rule 275(1) RoP). As regards Poland service under section 1 or 2 could not be effected. Court authorizes three alternative methods, which appear to be good service and comply with the law of the country where service is to be effected (Rule 275(4) RoP), as they comply with the EU Service Regulation (EU 2020/1784). The date on which the Statement of Claim is deemed to have been served is the date of effective delivery of the letter to this defendant at his legal address.  As regards service in the United Kingdom the criteria under Rule 275(1) RoP […] are not met at this stage of the procedure. Service under Rule 274(1)(ii) ROP (Hague Service Convention) is still in progress and the delay of 10 days from the date of sending the registered letter is still reasonable. Therefore, the request under Rule 275(1) regarding service on the UK entities will be dismissed. 

IPPT20240205, UPC CFI, LD Munich, NEC V TCI
Alternative method of service of Statement of claim requires an unsuccessful attempt (Rule 275 RoP). Court cannot designate someone as a person authorised to accept service for a defendant. Alternative method of service of a statement of claim always requires an actual (“real”) but unsuccessful attempt of service, not sufficient that service is presumptively not possible or cannot be effected because of known deficiencies of service according to the Hage Convention in certain countries. The claimant's auxiliary request refers to RoP 275.1. According to RoP 275.1, the court may permit service by an alternative method or at an alternative place if service in accordance with Section 1 or 2 could not be effected. (see: Local Division Mannheim, 8 Becember 2023, CFI_219/2023, IPPT20231208)  Potential breach of FRAND obligation irrelevant in the context of Rule 275 RoP. 

IPPT20240202, UPC CFI, LD Munich, Amgen v Renegeron
Bifurcation by unanimous request (Rule 37 RoP). Unanimous requests by all parties directed to a Local or Regional Division to refer a counterclaim for revocation to the Central Division for decision will be granted unless strong counterarguments require a different decision. Provisional decision to proceed with the infringement proceedings (article 33(3) UPCA). In the exercise of its discretion, the Panel decides to proceed with the infringement proceeding, but reserves the right to consider the possibility of suspending the infringement proceeding pursuant to Art. 33.3.c UPCA or to suspend the proceedings for any other reason put forward by the Defendants. […]. If defendants 1-3 had wished to have the Local Division Munich decide exclusively on the validity arguments, they could have filed counterclaims for revocation pursuant to Rule 75 of the Rules of Procedure together with their Statement of Defence, in addition to the independent revocation actions already filed. If they had done so, the Local Division Munich would have been able to decide on all four counterclaims. The Central Division would have been obliged to stay the proceedings on the individual revocation actions pursuant to Rule 75(3) of the Rules of Procedure. 

IPPT20240131, UPC CFI, CD Munich, Nanostring v Harvard

Order after interim conference (Rule 105(5) RoP). Later filed amendments, auxiliary requests (Rule 30(2) RoP, Rule 50(2) RoP). No legal basis for pre-emptively and categorically ruling out the submission of any further auxiliary requests or to order the Defendant to make the auxiliary requests more convergent. The judge-rapporteur emphasized the front-loaded character of UPC proceedings, also where it concerns auxiliary requests (with reference to 50.2 Rule in connection with Rule 30.2 RoP). Last-minute requests and submissions are not what is intended in UPC proceedings. Front loaded proceedings and late filing (Rule 263 RoP) Parties are hereby informed that any applications to change their case will be duly considered – without prejudice to whether such applications will be granted or not – until 15 March 2024. Amendments introduced after that date will be presumed to be in violation of the requirements of Rule 263.2(a) RoP. Document filed by the Claimant with the Reply to the Defence to Revocation not disregarded as late-filed, but admitted; it was agreed that the Defendant would get the opportunity to respond to the submissions of the Claimant based on document D46 within 6 weeks after the date of the interim conference, in a written submission having a maximum of 10 pages. Defendant subsequently withdrew its objection. Value of the proceeding for recoverable costs (Rule 104(j) RoP,  Rule 152.3 RoP). Parties were in agreement of the value of the proceedings being set at EUR 7,500,000 (seven and a half million euro). The Court did not have any objections. The value of the proceedings is set accordingly. Reasonable and proportionate legal costs (article 69 UPCA). In order for the parties and the Court to assess whether costs incurred are indeed reasonable and proportionate and whether or not equity requires otherwise, the Court and parties must have access to information showing at least a detailed description of the number of hours spent working on this particular case, by whom, what for and at what rate. The same applies to any expenses incurred. To this end, the Court will allow the filing of additional exhibits relating to costs until two weeks prior to the hearing (3 April 2024) for all costs incurred until that date. This submission may be updated by a further submission to be lodged at the latest noon CET on the day before the hearing (16 April 2024). The last submission may include an estimate of costs incurred for the hearing itself. The judge-rapporteur informed the parties that the Court will, in principle, respect an agreement between the parties on the amount of costs that is deemed reasonable and proportionate.

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

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

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

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

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

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

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

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

IPPT20240123, UPC CFI, LD Munich, Krausmaffei v Troester

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

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

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

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

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

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

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

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

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

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

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

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