UPC CFI, CD Paris, 22 January 2025: Patent maintained in part, late filed auxiliary requests and admissible alternative request
05-02-2025 Print this page
EP 453 maintained in part based on claims 6, 7 and 8 in combination with claim 1 as granted (Article 65 UPCA).
Admissible new documents Claimant (R. 44 RoP, R. 263 RoP). The claimant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered novelty destroying or affecting inventive step in subsequent written acts. The claimant must specify in the statement of claim the facts that it considers necessary to prove in order to succeed in its claim, together with the relevant evidence. In certain situations, following the defence raised by the defendant, the claimant may need to allege new facts, insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant. In this case, the need to respond to the defendant's defence, the terms of which cannot be foreseen ex ante by the claimant, justifies the introduction of such new facts in the reply to defence to revocation. Likewise, the need to produce new evidence may arise from the defendant's defence which disputes the facts alleged by the claimant or the probative value of the evidence already filed in Court. The documents introduced by the Claimant in the Reply to defence to revocation – consisting of the declaration released by […] and of the documents referred to in that statement are admissible, given that it contains arguments regarding the common general knowledge and the claim construction which are intended to contrast and react to the arguments raised by the Defendant in its Defence to revocation and [….] opinion, filed in support of these latter arguments. The admissibility of these late filed documents shall also extend to arguments that, while not constituting a direct response to the Defendant’s arguments, are closely related to them.
Late filed auxiliary requests (R. 44 RoP. R. 263 RoP) Insufficient justification by change in strategy regarding coordination with EPO proceedings. The Defendant for the first time in the submission of 30. July 2024 indicated that it (now) wishes to coordinate its defence in both parallel proceedings. The Defendant had not indicated in the Defence to Revocation that the auxiliary requests filed at the time were filed with the aim to coordinate its defence in both parallel proceedings. The Court considers the reason provided with the submission of 30. July 2024 as a change of the strategy of the Defendant. For these reasons, the subsequent requests are inadmissible.
Alternative request to maintain the patent at suit with respect to one or more of its dependent claims is a sufficiently clear request (Article 65 UPCA), even if it does not specify a particular claim, and, as such, imposes on the Court the obligation to rule on the matter and decide which claims, if any, remain valid.
Common general knowledge (Article 56 EPC). The ‘CGK’, in general, is information which has been commonly known to the skilled person from written sources or from practical experience in the relevant technical field. The ‘CGK’ includes knowledge which is directly available from familiar sources of information relating to the specific technical field at the prior date but is not to be confused with publicly available knowledge, which may not be general and common. A familiar source of information typically is a source to which a skilled person regularly turns for guidance on standard design solutions that are generally applicable, such as standard textbooks, encyclopaedias, manuals, handbooks, dictionaries and databases which the skilled person knows and can use as a suitable and reliable source for the respective information in the respective technical field. A familiar source of information should not be confused however with all publicly available prior art documents. In any case, the ‘CGK’ is subject of evidence (Article 54 UPCA).
