20 November 2024
Local Division Düsseldorf, Valeo v Magna
Application for rectification R. 253 RoP
Background
- On 31 October 2024, the Local Division had issued an injunction against Magna. However, it had excluded from the injunction existing supply obligations of Magna to BMW for 5 BMW models. Extensive damage would be caused as BMW would be unable to produce and sell its cars, if it could not continue to install the injuncted products in (electric) cars that use these products.
- However, one model in which the injuncted product was used, was not mentioned in the list of excluded models.
- Magna asked the Court of First Instance for rectification.
- Valeo, confronted with the demand for rectification, immediately posted the guarantee required for the execution of the judgment. Magna requested and obtained from the standing judge of the Court of Appeal a suspension of the injunction with respect to the not excluded BMW model, until the Court of First Instance had decided on Magna’s request for rectification.
- Magna asked also for two rectifications of two other “obvious slips” in the considerations of the Court unrelated to the non-exclusion of the one BMW model.
Decision of the Court
- The Court states that “obvious slips” within the meaning of R. 353 RoP are all incorrect or incomplete statements of what the Court actually intended to say.
- Here, this was not the case, because before its request for rectification the non-excluded model had not been introduced by defendants.
- The applicant had only mentioned the 5 excluded models. The defendant had only referred to “installed in models such as the 1 and 2 Series, X1, X2 and Mini Country man”. According to the Court, these “Series” are in line with the specific models mentioned by the applicant.
- According to the Court, also the two other requested rectifications were not “a slip”.
Comment
- The Court gives a very strict definition of R. 353 RoP. It shows that according to the Court there is a clear difference between a decision which is wrong and/or incomplete because of an oversight of the Court and “an obvious slip”. The latter is only applicable if the Court intended to say something different than what is expressed in (the words or calculations of) the decision.
- I wonder if this very strict interpretation is correct. An “obvious slip” may be more than a clerical error or an error in calculation, which are mentioned in R. 353 RoP separately from “obvious slip”. It is very clear that the Court intended to exclude all the BMW models equipped with the injuncted product. Why then not say this (using general language) in the judgment, especially in the light of the “such as” language of the defendant which suggested that there were more models to be excluded. Is that not an “obvious slip”?
- I understand that a Court wants to justify itself, but in the end I think it is more important (if at all possible) to come to the right decision which does justice.
- The decision was followed the next day by a new order of the standing judge of the Court of Appeal, reported further below.
21 November 2024 (unpublished)
Court of Appeal, Magna v Valeo
Standing judge / suspension
Background
On 31 October 2024, the CFI (Local Division Düsseldorf) grants an injunction, but excludes Magna’s supply obligations to BMW, mentioning 5 models.
On 6 November 2024, Magna files an application for rectification as one model is not mentioned in the exclusion. The CFI gives Valeo 14 days to respond.
Valeo did not wait for the decision of the CFI with respect to the request for rectification, and executed the injunction on 13 November 2024.
Decision Court of Appeal
On 14 November 2024, the standing judge of the Court of Appeal suspends the injunction until the decision of the CFI as far as pertaining to the model for which rectification was requested.
On 20 November 2024, the CFI refused to rectify and include the missing model in the exclusion (discussed above).
On 21 November 2024, the standing judge of the Court of Appeal (again) suspends the injunction with respect to the missing model until a decision on the request for suspensive effect for the (whole) injunction (which was filed on 14 November 2024).
Comment:
An understandable decision of the standing, judge which basically does exactly what the CFI intended to do in its (first) decision, avoiding disproportionate harm to Magna (and BMW).
20 November 2024
Local Division Düsseldorf, Dexcom v Abbott
Extension of time
Decision
The Judge-Rapporteur (“JR”) grants the claimant an extension of the time limit for the Rejoinder to the counterclaim for revocation and for the Reply to the conditional application to amend the patent. The period of extension is the same as the Court had previously given the defendant with the consent of the claimant, for “grounds of fairness and equity”.
Comment:
- An understandable decision because the claimant consented to the extension of time and now the defendant (apparently) does not want to return the favor!
- I note that the UPC in normal cases promises a decision within 12 to 14 months (see preamble 7 and R. 118.6 RoP). In principle it is not up to the parties to decide about extensions and only good reasons justify extensions of time. Engaging in proceedings at the UPC should mean that the time limits of the Rules of Procedure should in principle be respected.
21 November 2024
Local Division Munich, Collomix v Lidl
Late evidence?
Background
On 18 October 2024, the Statement of Claim was served on the defendant. The complaint states that the Parkside water dosing unit (“the Product”) infringes the patent. On 24 October 2024, the claimant states in a written submission that it wants to produce a sample of the Product to the Court. The JR gives defendants the possibility to respond. The defendant asks not to allow the request because it violates R. 171.1 RoP, as the request to produce a sample should have been stated in the Statement of Claim.
Decision:
- The Court points to R. 172.2 RoP (which stipulates that at any time, the Court can order a party who makes a statement of fact, to produce evidence of that fact which is in his possession) to show that not all evidence has to be produced or announced in the Statement of Claim.
- There is no rule in the Rules of Procedure that obliges a party to put all his evidence already in the Statement of Claim.
- A distinction must be made between putting evidence in the proceedings and what evidence can be considered for making the decision.
Comment:
- In this case the decision is fully understandable, as the claimant made very clear in its Statement of Claim which product of the defendants was infringing and why, and the defendants of course know their own product. The defendant therefore had no interest to refuse the production of the product itself, announced well before the Statement of Defence was due.
- However, the general statement of the Court that the RoP has no rule that obliges a party to produce its evidence in the Statement of Claim is in my view incorrect and seems based on the custom in German national proceedings.
- R. 13.1 RoP states clearly that evidence where available should be “included in the Statement of Claim”. In my view, this means that available evidence, including evidence which can be available (such as expert reports and/or witness statements), should in principle be produced with the Statement of Claim. The Court of Appeal has softened this Rule to a certain extent in Sanofi v Amgen (UPC_COA_320/223), by allowing such evidence to submitted somewhat later, and at the same time extending the term for the Statement of Defence until three months after the submission of the evidence.
- The reference to R. 172.2 RoP is correct, but in my view cannot mean that a claimant, who did not include certain relevant and available evidence in the Statement of Claim, can be “saved” because the JR or the Court will at a later stage order the production of such evidence, thereby denying the defendant the right to discuss that evidence during the written proceedings. That would be contrary to the front-loaded character of UPC proceedings. Of course, all depends on the circumstances of the case (see also the general principles of the Rules of Procedure).
21 November 2024
Local Division Düsseldorf, Dexcom v Abbott
Early decision not to bifurcate
Decision
The Court decides in an early decision (before the end of the written proceedings) to deal with the revocation itself, because hearing the infringement and validity cases together is efficient. Appointing a technical judge in an early stage is also desirable because the technical judge can help with the management of the case. It makes planning easier, as a late appointment can cause considerable delays. Parties have been heard and agree.
Comment:
In fact, this early decision and nomination of a technical judge should have been the rule and not an exception for all the good reasons the Court mentions. It would be best if parties already in the Statement of Claim and Defence indicate whether they agree with the Court keeping the revocation case (if one is filed). In that way, the Court can immediately decide after the Statement of Defence and counterclaim for revocation.
21 November 2024
Court of Appeal, Ortho Apnea v respondent
Amendment of claim / new arguments
Background
After the Statement of Defence, the claimant introduces new infringement arguments and invokes for the first time the doctrine of equivalents.
The defendant objects, claiming that this is an amendment of the case (R. 263 RoP) and also contrary to R. 13 RoP.
The JR and – after review – the Court do not agree with the defendant, and grant leave for appeal.
The defendant asks for review by the Court of Appeal.
Decision by the Court of Appeal
R. 263 RoP (amendment of claim) only applies when the nature or scope of the dispute changes, e.g. if the claimant invokes a new patent or alleges infringement of a different product. It does not apply if the claimant with respect to the same product and the same patent, after having initially argued literal infringement, also invokes the doctrine of equivalents.
R. 13 RoP does not preclude that a claimant raises a new argument. Whether such an argument is admissible, depends on the circumstances of the case. The CFI has a certain discretion and the review by the Court of Appeal is therefore limited. The CFI may raise the inadmissibility ex officio. The CFI will hear the parties after an objection is raised and can defer a decision until the interim conference or the final decision.
Comment:
‘Front-loaded’ means that all arguments etc. you can reasonably foresee, should be made as early as possible. It does not mean that in general you cannot bring new arguments or even allege the doctrine of equivalence for the first time after you are confronted with the defence (or, in this case, the report of the expert who carried out an evidentiary seizure). However, if a defendant in prior correspondence has given reasons why in its opinion there is no infringement, it is prudent (not to say: necessary) to put the counterarguments in the Statement of Claim, including arguments on infringement by equivalence.
21 November 2024
Court of Appeal, Meril v Edwards
Stay of proceedings, new legal arguments on appeal
Background
Meril asks for stay of the proceedings, because of the pending opposition proceedings at the European Patent office (“EPO”).
The CFI rejected the request after holding:
- R. 118 RoP only applies during the oral procedure.
- R. 295(a) RoP cannot be applied, as the final decision of the EPO cannot be expected rapidly. With ‘final decision’, the CFI meant a decision by the Board of Appeal of the EPO, as parties were likely to appeal.
- R. 295(m) RoP is a general provision allowing the Court to stay proceedings. The Court must apply the more specific provision of R. 295(a) RoP.
- The Court must generally ensure that the hearing takes place within a year and the patentee has a fundamental right to effective remedies. Therefore, if the final decision of the EPO is not expected to come rapidly, the Court will give its decision even if there is a high likelihood that the relevant claims are invalid.
The Court of Appeal:
- On appeal, in principle, you cannot bring new facts. You can make new legal arguments based on facts already asserted in first instance.
- When the case is ready for a decision, the question whether the case should/could be stayed is governed by R. 118 RoP (the Court may give a conditional injunction or may stay if there is a high likelihood that patent is invalid).
- During other stages of the proceedings, the question of a stay because of pending opposition proceedings, limitation proceedings or proceedings before a national authority, is governed by R. 295(a) RoP (the Court may stay where a decision in such proceedings is expected to be given rapidly)
- R. 295(m) RoP is not applicable, as there are specific provisions such as R. 295(a) RoP.
- The decision referred to in R. 295(a) RoP does not have to be a final decision.
- These provisions should prevent conflicting decisions, e.g. if the UPC gives orders based on infringement (and its view about invalidity) while in opposition proceedings the patent is found invalid, even if that is only a decision by the Opposition Division.
- R. 295(a) RoP states that the Court may stay proceedings. The Court thus has discretion to weigh all the different circumstances of the case, such as a balance of interests of the parties, the stage of the opposition proceedings, the stage of the infringement proceedings and the likelihood that the patent will be revoked.
Decision:
The order of the CFI is set aside, and the case is referred to the CFI for new decision.
Comment:
- This decision clearly does away with the approach of the German national courts to only grant stays of infringement proceedings due to an invalidity defence if the patent is very clearly invalid (i.e. because of lack of novelty).
- The CFI decided that, even in case of a high likelihood that the relevant claims of the patent were invalid, it would not grant a stay, as it considered that in R. 295(a) RoP ‘final decision’ meant a final decision of the Boards of Appeal. That clearly showed this national German approach.
- The Court of Appeal has opted for a more balanced system, with the aim to avoid injunctions which later prove unjustified, while on the other hand the courts getting sufficient discretion to make sure that patents can be enforced.
22 November 2024
Local Division Milan, Insulet v Menarini
Background
- Insulet asks for a preliminary injunction (“PI”) against Menarini, the exclusive distributor for Europe for the EOPatch patch-insulin pump.
- Menarini argues that:
a. it is more likely than not that the patent is invalid, because the patent lacks novelty and inventive step;
b. there is no infringement;
c. there is no urgency;
d. a balancing of interests (especially also of the patients) should lead to refusal of the PI. - Insulet filed 4 auxiliary requests.
- Menarini objected against auxiliary requests on the basis of R. 263.2 RoP.
- Insulet limited its claim unconditionally to the auxiliary requests and applied for permission to amend its legal claim.
- Menarini stated among others: auxiliary requests are not possible in PI proceedings.
The Court:
- The Court interprets the claim in accordance with the Court of Appeal’s decision in Nanostring/Harvard (UPC_COA_335/2023).
- Based on a document not found by the examiner during prosecution, the Court concludes that it is more likely than not that claim 1 of the patent lacks novelty. On that basis the Court concludes that it is more likely than not that the patent is invalid.
- The Court rules that auxiliary requests in PI proceedings are not admissible prior to main proceedings (following the Local Division of Lisbon in UPC_CFI_317/2024).
- The Court gave as further reasons:
a. R. 30 RoP and R. 50 RoP must be interpreted in close connection with Art. 138 EPC;
b. within the UPC system, amendment of the patent is expressly admitted only in the defence to a counterclaim for revocation;
c. where the Court is not competent to decide on the validity of the patent, the proprietor has no right to limit the patent;
d. this interpretation is consistent with the need of expediency in provisional measures;
e. provisional measures cannot produce res judicata effects;
f. third parties other than litigants must have clarity and certainty regarding the scope of protection conferred by the patent. - R. 263.2 RoP is not applicable to the amendments of patents but to the requests of the claimant.
- The Court orders the claimant to pay the costs of the defendant, which are substantiated and undisputed.
Comment:
- It is not clear from the decision why the lack of novelty of claim 1 automatically leads to invalidity of the dependent claims.
- I wonder why auxiliary requests in PI proceedings would never be possible. Of course, PI proceedings should not offer the same room for auxiliary requests as main proceedings in view of the character of PI proceedings, but if e.g. an invalidity argument can easily be resolved with a straightforward auxiliary request, then that should be possible. Of course, in such a case, the defendant should have sufficient possibility to properly respond to an auxiliary request. In any event, the Court seems to have been of the view that there was insufficient possibility to do so.
- PI proceedings are about provisional measures. The grant of such measures is, as far as infringement and validity of the patent is concerned, solely based on a prediction of what the outcome of main proceedings will be: is it more likely than not that the claimant will prevail? If a patentee files an auxiliary request in such proceedings, because the defendant may establish that it is more likely than not that the patent as granted is invalid, that is nothing else than saying: “If I file such auxiliary request in main proceedings, it is more likely than not that I prevail, and the demanded measures are therefore justified.” Nothing happens to the patent itself in PI proceedings.
22 November 2024 (Unpublished)
Central Division Milan, Insulet v. Eoflow
UPC_CFI_380/2024
This is a PI request based on the same patent as in the case Insolet v Menarini of the same date. Eoflow is the Korean manufacturer of the product distributed by Menarini in Europe. Note that two of the judges (including the Technical Judge) were in the panel of both cases. It is then no surprise that the decisions are basically the same.
Comment:
See my comments under the decision of the Local Division (UPC_CFI_400/2024) above.
22 November 2024
Local Division The Hague, Plant-e BV v Arkyne
Infringement by equivalence; problem solution
Decision:
The patent is held valid and infringed by equivalence. The Court applied the following infringement test:
In a first step, after establishing the meaning of the features of the claim, the Court assessed whether there was literal infringement of these features. As there was no literal infringement, in a second step, the Court assessed equivalence.
The test to be applied was agreed between the parties. The Court states that the test “is based on the case law of various national jurisdictions”. A variation is equivalent to a feature specified in the claim, if the following four questions are answered in the affirmative:
- Technical equivalence: does the variation solve (essentially)the same problem that the patent solves and performs (essentially) the same function in this context?
- Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee in view of his contribution to the art, and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)?
- Reasonable certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
- Is the allegedly infringing product novel and inventive over the prior art?
The Court formulated the skilled person or team and held that the prosecution file of patents in general do not form part of the common general knowledge of the skilled person. With respect to (entitlement to) priority, added matter and novelty, the Court applies the so-called “gold standard”. With respect to inventive step, the Court applies the problem-solution-approach. The Court furthermore decided that it can impose the text to be used in the recall letter, even if that is not (explicitly) stated in Art. 64 UPCA.
Comment:
The Central Division in Paris ruled that the problem-solution-approach has the risk of hindsight and did not apply this (rather rigid) test. We will have to wait for guidance by the Court of Appeal.
The equivalence test is in my view so complicated and vague, that a Court can reach any result it desires. The Court states that this test is applied in several jurisdictions, but fails to identify these jurisdictions. Just like the problem-solution-approach, the Court simply seems to follow a Dutch test, of which the Dutch Supreme Court has stated that it does not violate Art. 69 EPC. Why not apply the simple US means-function test: “is (essentially) the same result reached in (essentially) the same way with (essentially) the same means?” Also with respect to that test, the Dutch Supreme Court ruled in the past it does not violate Art. 69 EPC. If that simple test is passed, it is hard to see why a patentee should not be entitled to protection and why a third party (assisted by a patent attorney) could believe that he is not using the invention. It goes without saying that if what the alleged infringer does was already known in the prior art or non-inventive over the prior art, there cannot be infringement. We must wait for the Court of Appeal to hopefully adopt a simpler test, leading to more consistent results among the different Divisions of the CFI.
22 November 2024
Local Division Mannheim, Panasonic v Oppo
SEP case, unwilling licensee, royalty setting (?)
Decision of the Court (Final version to be published later)
- The patent is held to be valid and infringed.
- Oppo is considered to be an unwilling licensee.
- A holder of a standard essential patent (“SEP”) is entitled to injunction, which also follows from Huawei v ZTE. The Court refers to decisions of the Court of Appeal in The Netherlands (with Ms Kalden as presiding judge) in Philips v Wiko and Philips v Asus, in which injunctions were granted against unwilling licensees. The EU law (see Huawei v ZTE) is clear and questions to the Court of Justice of the European Union are not necessary and opinions of the European Commission not binding.
- The rate-setting action in the UK in Panasonic v Xiaomi is irrelevant, since that decision did not pertain to the Oppo companies, as also explicitly noted in the recent decision of the UK Court of Appeal. The question whether the interim license discussed in that decision amounts to “antisuit relief by the backdoor” can therefore be left undecided.
- The claimant is entitled to full damages for past infringement. The damages are not restricted to a (FRAND) royalty.
- In its counterclaims, Oppo asked the Court to establish the FRAND (Fair, Reasonable And Non Discriminatory) conditions of a license agreement. Panasonic argued that the counterclaim should be rejected because Oppo has not been a “willing licensee”. The Court decides as follows:
a. the Court is competent with respect to such request: see Art. 32(1)(a) UPCA;
b. the primary claim must be refused because it asks to force Panasonic to accept a non-FRAND license. A license based on a lumpsum and not on the actual use of the patent is not FRAND;
c. also the subsidiary claims 1.2 and 1.3 are (partly) based on lumpsums;
d. further subsidiary claims based on only a license for EP countries are also not FRAND, because a FRAND license would not be limited to EP countries;
e. a claim to cooperate with the establishment of a license with conditions to be established by the Court is too vague;
f. the Court leaves open whether it can decide on the conditions of an agreement in a situation where both parties have offered (different) conditions which are both considered FRAND, as in this case defendant has not acted in conformity with Huawei v ZTE.
Comment:
- The decision seems fully in line with Huawei v ZTE and makes it unattractive for an implementer to not seriously engage in FRAND licensing negotiations. It will risk an injunction for all countries of the UPC where the EP’s are valid and full damages for the past.
- It follows from the decision that if the implementer is willing, the Court may be prepared to set the conditions for a FRAND license, certainly in case both parties have made serious FRAND offers.
- It is however clear that a claim to that end should not be too open-ended, as the CFI may reject it for being too vague.
22 November 2024
Local Division Mannheim, Oppo v Panasonic
On 4 November 2024, the Court had informed parties that judgment would be pronounced on 22 November 2024.
On 21 November 2024, Oppo asks the Court not to pronounce judgment on 22 November 2024, but to wait at least until 6 December 2024 (which was the originally scheduled date after the oral hearing, but the Court had indicated that it could be earlier).
Decision:
The Court decided not to postpone the judgment, as the request was not made by both parties. Furthermore, Oppo had not given any reasons why the judgment should be postponed at the last second.
Comment:
The parties were apparently negotiating a settlement, but apparently no agreement was reached in time. See for the consequences for Oppo the judgment of the LD Mannheim above!
– All comments above are Prof. Hoyng‘s personal opinions –
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