Rule 29 – Lodging of Defence to the Counterclaim for revocation, Reply to the Statement of defence and Rejoinder to the Reply

Print this page

(a) Within two months of service of a Statement of defence which includes a Counterclaim for revocation, the claimant shall lodge a Defence to the Counterclaim for revocation together with any Reply to the Statement of defence and any Application to amend the patent pursuant to Rule 30, if applicable.

(b) Within two months of service of a Statement of defence which does not include a Counterclaim for revocation, the claimant may lodge a Reply to the Statement of defence.

(c) Within one month of service of a Reply to the Statement of defence which does not include a Counterclaim for revocation the defendant may lodge a Rejoinder to the Reply to the Statement of defence. The Rejoinder to the Reply to the Statement of defence shall be limited to a response to the matters raised in the Reply to the Statement of defence.

(d) Within two months of service of the Defence to Counterclaim the defendant may lodge a Reply to the Defence to the Counterclaim together with any Rejoinder to the Reply to the Statement of defence and any Defence to an Application to amend the patent pursuant to Rule 32, if applicable.

(e) Within one month of the service of the Reply to the Defence to the Counterclaim, the claimant may lodge a Rejoinder to the Reply together with any Reply to the Defence to an Application to amend the patent pursuant to Rule 32, if applicable. The Rejoinder to the Reply to the Statement of defence shall be limited to a response to the matters raised in the Reply to the Statement of defence.

(f) Where the claimant is not the proprietor of the patent, all references to the claimant in this Rule 29 regarding an Application to amend the patent shall be read as including the proprietor.

 

Case Law:

 

IPPT20240710, UPC CFI, LD Munich, Panasonic v Orope
Lodging written pleadings and confidentiality club. Inadmissible lodging of a redacted “unredacted version” of the Reply (Rule 9(2) RoP, Rule 29 RoP, Rule 262A RoP). An exception be made because the problem is being addressed by the Unified Patent Court for the first time. Time limit for filing a rejoinder in the infringement action does not start to run until the defendants have been served with a fully unredacted Reply to the Statement of defence (Rule 29(c) RoP). Time limits for the counterclaim and the (alternative) amendment of the patent must be considered separately and have started running. Extension denied.  

 

IPPT20240709, UPC CFI, LD Mannheim, Panasonic v Orope II
Confidentiality club and deadline extension from 17 July to 14 August 2024 (Rule 262A RoP, Rule 29 RoP). The extension is necessary but also sufficient to make a final statement on the FRAND aspect of the dispute. 

 

IPPT20230708, UPC CFI, LD Brussels, OrthoApnea
Amendment of case in Statement of Reply in response to the Statement of Defence with new facts, infringement arguments (equivalence) and claim permitted (Rule 263 RoP, Rule 13 RoP): consistent with the normative purpose of R. 13 RoP and, fitting into the procedurally-evolutive course of a judicial dispute. Deadline extension for Rejoinder to Statement of Reply with 2 weeks proportionate, reasonable and equitable (Rule 9(3)(a) RoP, Rule 29)(c) RoP). Extended period does not affect Claimant's rights, nor does it affect the further procedural calendar already determined in this case (specifically, the dates of the interim conference and pleading date).

 

IPPT20240704, UPC CFI, LD Munich, Xiaomi v Panasonic II
Confidentiality regime (Rule 262A RoP) and extensions for filing pleadings (Rule 9(3) RoP, Rule 29 RoP). The time limit for filing a Rejoinder shall only run from the date on which the defendants have been served with a completely unredacted Reply. This shall not affect the running of the time limits for the submission of pleadings relating to the Counterclaim for revocation and relating to the (auxiliary) requests for amendment of the patent.

 

IPPT20240704, UPC CFI, LD Munich, Xiaomi v Panasonic I
Confidentiality club rules (Rule 262A RoP). Disclosure limited to authorised representatives in the present proceedings, parallel proceedings before the Landgericht München and the Landgericht Mannheim, the UPC Local Divisions in München and Mannheim and before the High Court of Justice of England & Wales.Penalty payment only in case of of a culpable violation. Time limit for filing Rejoinder to the Statement of Reply  does not start to run until the fully unredacted Reply is available (Rule 9(3) RoP, Rule 29 RoP, Rule 262A RoP). Time limits regarding the revocation counterclaim and the (alternative) amendment of the patent run independent therefrom. Revocation is independent from FRAND-defence.

 

IPPT20240627, UPC CFI, LD Düsseldorf, Dolby v HP
Time limit for filing reply to Statement of defence which includes a Counterclaim for revocation extended to two months from the date of access to unredacted information under confidentiality regime (Rule 9(3) RoP, Rule 29(a) RoP, Rule 262A RoP). Need to consult with employees of patent pool related to FRAND objections that relate to a definable part of a statement; interest of effective proceedings and preventing a permanent divergence of time limits if the conduct of the oral hearing is not jeopardised by an extension of the time limit relating to the entire statement.

 

IPPT20240624, UPC CFI, LD Düsseldorf, Dolby v Asus
Time limit for filing reply to Statement of defence which includes a Counterclaim for revocation extended to within two months of access to unredacted information under confidentiality regime (Rule 9(3) RoP, Rule 29(a) RoP, Rule 262A RoP).

 

IPPT20240613, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Confidentiality regime (Rule 262A RoP) and extension of deadlines for filing Rejoinder to the Reply in infringement proceedings and Reply to the Defence in the revocation proceedings (Rule 29(d) RoP): rejected for the technical aspects of the case (legal facts and infringement facts); granted for FRAND aspects of dispute (plaintiff's submission contained in the pleadings designated as "Supplement Replica Part II Non-Technical Part" together with annexes on the FRAND aspect of the dispute).

 

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.

 

IPPT20231214, UPC CFI, LD Düsseldorf, Nutricia v Nestlé

The provisions of the Brussels 1-bis Regulation do not apply to a counterclaim for revocation, which is to be included in the Statement of defence (Rule 25(1) RoP, Rule 270 RoP). At the request of the claimant, the Court clarifies that the time limit for filing the Defence to the Counterclaim for revocation and any Application for the amendment of the patent is 20 December 2023 (Rule 29 RoPRule 30 RoPRule 32 RoP).

 

IPPT20231128, UPC CFI, LD Hamburg, Avago v Tesla

The start of time limit of two months for responding to the Statement of Defence which includes a Counterclaim for revocation (Rule 29a RoP) is to be set on the date of the conclusion of the R. 262A proceedings, i.e. 8 November 2023. Opposing party to be heard on synchronizing time limit for replying to the nullity counterclaim with the time limit for replying to the Statement of Defence (Rule 264 RoP).