9 December 2024,
Local Division Munich, Air Up Group v Guangzhou Aiyun Yanwu
UPC_CFI_508/2023 UPC_CFI_509/2023
Service of PI proceedings
Background and decision
- For a year, the Registry have tried all methods indicated in the The Hague Service Convention to serve the Statement of Claim in preliminary injunction (“PI”) proceedings on the Chinese defendants.
The Court refers to Art. 15 of the The Hague Service Convention, which provides that “Each Contracting State shall be free to declare that the judge […] may give judgement even if no certificate of service or delivery has been received, if all the following conditions are fulfilled:
a. the document was transmitted by one of the methods provided for in this Convention;
b. a period of time of not less than six months, considered adequate by the judge in the particular case, has elapsed since the date of the transmission of the document;
c. no certificate of any kind has been received, even though every reasonable effort has been made to obtain it through the competent authorities of the State addressed”. - The Court states that the Rules of Procedure require (at least) service by an alternative method (R. 275.1 RoP), but that such alternative service is not possible if that is contrary to the law of the state where service is to be effected (R. 275.4 RoP) which appears to be the case here.
- The Court refers to R. 275.2 (which would allow to declare steps for alternative service already undertaken as good service) and states that under that rule it is not possible to consider steps already taken to effect normal service as good service, and that therefore there is a gap (as the latter possibility is not provided for). The Court (nevertheless) gives an Order stating that the steps already taken to effect normal service are to be considered as good service and that the service is effective as of the date of the Order. The defendant is given 14 days to file an Objection against the application of provisional measures.
Comment
- It is by now clear that China is not willing to cooperate with the service of the Statement of Claim as provided for in The Hague Service Convention.
- However, I do not understand the parties, the Registry and the Court. There is absolutely no problem to effect very speedy service in PI proceedings under the The Hague Service Convention. Apparently, nobody has read the last paragraph of Art. 15, which reads as follows: “Notwithstanding the provisions of the preceding paragraphs the judge may order, in case of urgency, any provisional or protective measures.”
- So, what should happen is that the claimant asks the judge to set the conditions for a request for a PI. The Court would be wise to set as a condition that the Statement of Claim is sent (e.g. by email) to the Chinese company, and that furthermore the claimant convinces the Court that the Chinese company knows (or should know) about (i) the Statement of Claim and its contents (the case should be filed in English); (ii) the date on which the defendant has to respond; (iii) the date on which the oral hearing takes place; and (iv) that the defendant has to be represented by an UPC representative. Lastly. the Chinese company should be warned that in the event of non-appearance, the Court may issue a default decision.
- So, my conclusion is that in fact there is no problem!
10 December 2024,
Court of Appeal, Nanostring v 10x Genomics
Penalty sums after revoked PI
Background
- Relevant facts:
19 September 2023: the LD Munich grants a PI against Nanostring;
28 September 2023: 10x Genomics asks the LD to order Nanostring to pay penalty sums, because of violation of the PI;
5 December 2023: the LD imposes penalty of € 100.000;
26 February 2024: the CoA revokes the decision of 19 September 2023. - Nanostring also appealed the 5 December 2023 order, asking (also) for an order to pay back the € 100.000, arguing:
1) There was no basis for the 5 December order, because the PI decision has been revoked;
2) It did not violate the PI order of the LD;
3) The order did not distinguish between different Nanostring defendants;
4) The amount of € 100.000 is disproportional. - The parties agreed: no oral hearing (but a second round of written submissions).
Decision
- Revocation of PI has retroactive effect and therefore removes the legal basis for payment of the penalty.
- This interpretation of the UPCA (Art. 75(1)) and RoP (R. 242.1 RoP) is in accordance with the Enforcement Directive (2004/48/EC).
Comment
- This is an understandable decision, but it means that a defendant losing in PI proceedings can continue infringing if it expects to win the appeal. If the penalty sums are high enough, that is a more theoretical possibility than a practical one, because the risks associated with continuing the infringement will be too high.
- I am not so convinced that Art. 75(1) UPCA and R.242.1 and the reference to Enforcement Directive oblige the decision of the CoA. One could also reason that the justification for not getting back forfeited penalty sums lies in disobeying a court order. Of course, there would be an entitlement to damages suffered by obeying a court order (executed by the other party) if it is later revoked. On the other hand, however, not obeying would lead to forfeiture of penalty sums until such time that the order is revoked. Orders should be respected for the duration that they are not revoked.
- It remains to be seen what will happen when a defendant loses the PI proceedings (also) in appeal, but wins the case on the merits. In some UPC countries (such as The Netherlands), in such a situation, the penalty sums remain forfeited.
10 December 2024,
Nordic Baltic Regional Division, Edwards v Meril
Result interim conference
Decision of the JR
- The JR agrees with the parties with respect to value of the case: both the claim and the counterclaims (for all 6 defendants together) are set at €3,000,000 each.
- The JR refuses the defendants’ request for postponement of the oral hearing (see also the separate decision of the full panel of 11 December discussed below).
- The claimant confirmed that its claim was based on its patent with Unitary Effect. This means that the case does not cover Romania.
- The two additional lines of attack as to inventive step are not accepted because they could have been brought earlier and cannot be seen as a legitimate response to claimant’s position on the scope of general knowledge.
- The JR allowed some further exhibits of the claimant, as they were in response to arguments made by the defendants.
- The claimant filed 11 auxiliary requests. The defendant argued among others that this was too many. The Court allows the requests in view of the several different attacks (some directed to claim 1, others to different dependent claims) by the defendant.
- The claimant had argued in the Statement of Claim in general terms “equivalence” (in case there would be no literal infringement). After the Statement of Defence, the claimant had in response to arguments of the defendant argued equivalence in detail. The JR decides that this is allowed.
- The JR furthermore allows a rather limited modification of a non-infringement argument to which the claimant has reacted and can further react during the hearing.
- There is no need for a court-appointed expert.
- The JR refers to Art. 53 UPCA (the questioning of witnesses and experts shall be limited to what is necessary) and to the Rules of Procedure making clear that there is no obligation to hear experts. The JR decides that there are insufficient reasons to hear the experts.
Comment
- This is a good example of the use of an interim conference as envisaged by the UPCA and the RoP. Most procedural issues are resolved before the oral hearing.
- The JR follows and refers to the different decisions of the Court of Appeal with respect to the different procedural issues.
- It is again a warning for litigants regarding the front-loaded character of UPC proceedings, while on the other hand this principle must be applied in a reasonable way. See for instance in this case the decision with respect to the equivalence arguments.
- If parties have their own expert declarations and a technical judge is added to the panel, assuming of course that the technical judge is familiar with the relevant technology, it will be very rare that the Court will need a court-appointed expert and it is not surprising that the JR does not see the necessity for such expert.
- Although a formal (let alone UK style) hearing of experts it certainly not always necessary and the drafters of the Rules of Procedure had no intention to impose such hearing, it would in my opinion be useful if the JR would order the parties’ experts to be present during the oral hearing, so that the Court always has the possibility to ask questions.
- The apparent effort by the JR to avoid later proceedings on costs failed, because parties did not want to cooperate. I still hope that there comes a time when parties agree on costs before the oral argument. In the end, avoiding cost proceedings saves the clients money and the Court precious time.
11 December 2024,
Nordic Baltic Regional Division, Meril v Edwards
Request for stay
Background
The defendants’ request for stay was refused by the Regional Division on 20 August 2024.
The Court of Appeal revoked that decision and referred the case back for a new decision.
Decision (the new decision)
- As the Court of Appeal indicated, in accordance with R. 295(a) RoP, in conjunction with Art. 33 (10) UPCA, the Court may stay proceedings.
- The oral hearing in this case is set for 16 January 2025. This is already not within a year (the case started in October 2023). The expedited opposition proceedings by a third party are scheduled for a hearing on 17 January 2025. The Court does not want considerable further delays due to a rescheduling of the oral hearing. The parties will be invited to send the decision of the Opposition Division (“OD”) to the Court which then will decide what to do.
- The stay is refused.
Comment
- It is good that the Regional Division realizes the importance of speedy decisions, but you wonder in the first place why the case took so much time. If the Regional Division would have kept the schedule provided for in the Rules of Procedure, it would not have been difficult to have a hearing in September and the whole problem would not have existed.
- The Court states that the OD gives decisions on the day of the hearing. That is true, but it is still one day after the hearing by the Court, and the reasoning generally comes (much) later. How is the Court going to deal with that? Are they going to wait with their judgment for the full decision of the Opposition Division and then give parties the right to comment?
- I think that now things have gone out of hand anyway, the Regional Division should have better stayed and reschedule an oral argument in March, communicating that to the OD hoping for the OD to provide the grounds to the decision timely. At a hearing in March, the parties could then also comment on the decision of the OD.
11 December 2024,
Paris Local Division, Dexcom v Abbott
Infringement / revocation action
Background and decision
- The case started on 30 October 2023 and the decision was rendered on 11 December 2024, so in a timeframe of 13,5 months.
- On claim interpretation, the Court repeats the decisions of the Court of Appeal in Nanostring v 10x Genomics (UPC_CoA_335/2623) and SES v Hanshow (UPC_CoA_1/2024).
- The skilled person is a team of persons, with persons skilled in physiological analyte monitoring systems such as Continuous Glucose Monitoring (CGM) and persons skilled in the art of designing portable electronic systems which involve communication and data processing.
- Although the Court accepted that certain interpretations of claim features were justified based on the description, they were not accepted because of the language (literal wording?) of the claim.
- Abbott had argued lack of inventive step as the (only) invalidity ground in its Statement of Claim in the Revocation action. In its reply, it added extension of subject-matter. The Court rejected this, because in its R. 36 RoP order it had only allowed additional arguments regarding the meaning of certain claim features.
- The claims are not inventive.
- The three auxiliary requests are considered to suffer from extension of subject-matter.
- The patent is held invalid.
Comment
- For inventive step, the Court does not use the problem solution approach.
- Although not important because the patent was held to be invalid, the Court adopted in my opinion, in light of the disclosed invention and the description, a rather literal claim interpretation.
- As to extension of subject-matter, the Court applied the (correct) whole content approach.
11 December 2024,
Court of Appeal, Magna v Valeo
Suspension of Order
Background
- 31 October 2024: LD Düsseldorf grants a PI against Magna, but excludes the delivery of products to BMW for 5 BMW models, because of the very substantial damage that would be caused (BMW would not be able to manufacture and sell these cars without the Magna component).
- 6 November 2024: Magna asked the LD to rectify the order and add the BMW 2 series Gran Coupé model to the exemption, because that model was equipped with the same Magna component.
- 14 November 2024: The standing judge of the CoA suspended the order as far as this BMW model was concerned until LD had decided about the rectification.
- 20 November 2024: The LD dismissed the request for rectification. According to the LD, Magna had never referred to the 6th model, and therefore there was nothing to rectify. Magna again filed a request for suspensive effect.
- 21 November 2024: The standing judge of the CoA again suspended until the CoA would decide on the request for suspension during the appeal proceedings.
Decision
The CoA held the following:
- From the statements lodged by Magna during the proceedings, it was already clear that 6 BMW models were already on the market (or soon to be introduced) and equipped with the Magna component.
- It was thus obviously wrong not to rectify the order.
- Suspension of the PI with respect to this 6th model was ordered during the appeal proceedings.
Comment
- As the exemption to the order (exempting the BMW models) was given by the LD because of the extremely harmful effect of the order (BMW would have to stop manufacturing these models), it is hard to understand why the LD tried to justify its mistake in not adding the 6th model to the exemption. Or, as also the Court of Appeal states, why they did not simply ask during the oral argument to specify the BMW models concerned, if they were not sure which models were concerned.
- Even if the Court was correct that they had not made a mistake, then nothing would have prevented it to do justice and add the model to the exemption. Justice over formality!
11 December 2024,
Court of Appeal, Scandit v Hand Held Products
Simultaneous translation
Background
The claimant (defendant in appeal), who had chosen German as language of the proceedings (for its US client!), asks the Court of Appeal to order simultaneous translation to English during the oral hearing, because one of the client’s employees that wants to be present does not speak German.
Alternatively, it is requested that the claimant may arrange for it (at its own expenses).
Decision
Although the claimant referred to the wrong article in the Rules of Procedure, the JR allows the alternative request.
Comment
- It is quite obvious that if you choose the (wrong) language to start with, you cannot expect the UPC to pay for simultaneous translation.
- As also translation on own costs still requires cooperation and work of the Registry, the JR has been rather accommodating to grant the (alternative) request.
11 December 2024,
Local Division Düsseldorf, Dolby v HP
Settlement
Background and decision
The parties have settled and file for withdrawal of their Claim and Counterclaim for Revocation. The Court orders 60% reimbursement of court fees.
Comment
- The Court follows the schedule of R. 270.9(b) RoP with respect to the reimbursement of court costs
- The fact that cases settle (this week two settlement decisions are published) shows that there may be a useful role for the Patent Mediation and Arbitration Centre (UPCA Art. 35) and it is about time that this starts to function.
For the Centre to be a success, it will be important that the Centre can mediate and arbitrate worldwide patent disputes as long as also a patent (application) for a UPC country is concerned. In my opinion, that would be the required (and possible) interpretation of “patent disputes falling within the scope of this Agreement” in Art. 35 UPCA.
12 December 2024,
Local Division Düsseldorf, Valeo v Magna
UPC_CFI_459/2024 and UPC_CFI_657/2024
Extension of time limits
Decision by the Judge-Rapporteur
- The defendants have not objected against harmonisation of the time limits for filing the Reply to the Statement of Defence and the Defence to the Counterclaim for Revocation. Such harmonisation is in the interest of all parties and the Court in the efficient conduct of proceeding.
- The defendants object against a further extension, and correctly point out that the claimant does not mention exceptional circumstances which would justify such extension.
Comment
- R. 29 RoP in fact intends that the Reply to the Statement of Defence and the Defence to the Counterclaim for Revocation are lodged on the same day. If, for whatever reason, the two months period for these two submissions would end on different days, harmonisation of the days for lodging makes sense.
- Representatives should realise that before the UPC, holidays, workload etc. are no reasons for extension. In this case, the defendant objected but even if the defendant would have agreed the Court should have refused the request. The credibility of the UPC stands or falls with (in normal cases) an oral hearing within a year and a decision 6 weeks later.
12 December 2024,
Local Division Munich, Syngenta v Sumi Agro
Payment is not the same as payment received!
Background
- The LD Munich issued an order for preliminary measures (an order to preserve evidence and a preliminary injunction).
- The applicant asks for revocation of the orders, because no case on the merits was filed within 20 working days or 31 days (R. 213.1 RoP). According to the applicant, the (timely) filing on 27 September 2024 was only effective on 30 September 2024 when the court fee was received by the Registry.
- The respondent had paid on Friday 27 September 2024, but the Registry was credited on (Monday) 30 September 2024.
- The applicant referred to R. 15.2 RoP, which states that “The Statement of claim shall not be deemed to have been lodged until the fixed fee and, where applicable, the value based fee for the infringement action has been paid, unless otherwise provided.”
Decision of the JR
This concerns a false application of R. 15.2 RoP and the applicant gives it the wrong meaning.
a. R. 15.2 RoP does not require that the fee “has been received by the Court”. It is sufficient that the fees have been paid.
b. R. 213.1 RoP states that the applicant has “to start” proceedings on the merits. “Starting” means beginning with something, which here is filing the Statement of Claim in the CMS. Nothing in R. 213.1 RoP states or implies that for the start the court fees must have been received by the Court.
Comment
- Smart, smarter, smartest!
- Did the applicant seriously think that their application had any merit?
12 December 2024,
Central Division Paris, Microsoft v Suinno
Leave for appeal
Background
- On 10 October 2024, Suinno requested a change of claim, reducing the amount of damages requested to 2 million euros and requesting the Court to reconsider the fees already paid.
- On 26 November 2024, the Court accepts the reduction but rejected the reconsideration of fees already paid.
- On 6 December 2024, Microsoft asked for leave to appeal the order.
Decision
- Leave for appeal must be seen as an exception to the rule that one can only appeal these orders together with an appeal against the final decision, and only when the party who wants to appeal is also adversely affected by the decision.
- The purpose of leave for appeal is to have a controversial issue settled by the Court of Appeal.
- This proposed appeal is not to settle such controversial issue and is not even able to affect the final outcome of the case.
- The request for leave to appeal is rejected.
Comment
In my opinion a very sensible decision. The Court of Appeal should only be bothered if there is a controversial issue (e.g. different decisions by Divisions on the same Rule or a Rule which needs interpretation), or if a decision is clearly wrong (in which case also the Court of Appeal can – if refused by the Court of First Instance – grant leave for appeal).
13 December 2024,
Local Division Paris, ICT Pillar v ARM
Settlement / return of court fees
Background and decision
The parties have settled their case and file for withdrawal of the claim and counterclaim for revocation (R. 265 RoP). They request reimbursement of 60% of the court fees based on R. 370.9(b) RoP. The JR refers to R. 270.9(e) RoP, which allows the Court to deny or reduce the reimbursement of court fees in exceptional cases.
The Court cites 12 orders it has issued, the stage of written proceedings (all written submissions had been exchanged, the work done by the Technical Judge (a note of 28 pages on the validity questions) and the fact that the interim procedure at the time of the withdrawal requests was only three days away.
In view of this, the Court decides to reimburse only 40%.
Comment
The Court (which is – supposed to be – self-financed) is cost-conscious and its order seems fully justified.
– All comments above are Prof. Hoyng‘s personal opinions –
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