Rule 222 – Subject-matter of the proceedings before the Court of Appeal

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1. Requests, facts, evidence and arguments submitted by the parties under Rules 221, 225, 226, 236 and 238 shall, subject to paragraph 2, constitute the subject-matter of the proceedings before the Court of Appeal. The Court of Appeal shall consult the file of the proceedings before the Court of First Instance.

2. Requests, facts and evidence which have not been submitted by a party during proceedings before the Court of First Instance may be disregarded by the Court of Appeal. When exercising discretion, the Court shall in particular take into account:

(a) whether a party seeking to lodge new submissions is able to justify that the new submissions could not reasonably have been made during proceedings before the Court of First Instance;

(b) the relevance of the new submissions for the decision on the appeal;
(c) the position of the other party regarding the lodging of the new submissions.

Relation with Agreement: Article 73(4)

 

Case Law

 

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. 

 

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.

 

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.

 

IPPT20241009, UPC CoA, SharkNinja v Dyson
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

 

IPPT20240918, UPC CoA, Volkswagen v NST

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. 

 

IPPT20240925, UPC CoA, Mammut v Ortovox

Scope of appeal and proceedings (Article 73(4) UPCA, R. 222.1 RoP). The Court of Appeal decides at its discretion, taking into account all the circumstances, whether a submission that was rightly not admitted by the Court of First Instance is to be considered in the appeal proceedings. The 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). 

 

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). 

 

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)