23 December 2024
Court of Appeal, Microsoft v Suinno
Change of claim
Background
The Central Division (“CD”) Paris granted Suinno’s request to change its claim reducing the request for damages, and rejected Suinno’s request to reconsider the fees already paid. The CD refused to grant leave for appeal to Microsoft.
In appeal
Microsoft argues:
1. that Suinno’s request is a request to change the value of the case, which is not an amendment of claim in the sense of R. 263 RoP. The request is inadmissible.
2. the reduction of the value discriminates against Microsoft and compromises its interests.
Court of Appeal
- The request for discretionary review is dismissed.
- The Court of Appeal refers to R. 263 RoP. A change of claim (here for damages) is always allowed if it is a limitation of claim.
- It is in the end the judge-rapporteur (“JR”) who during the interim procedure determines the value of the case, so that the change of claim by Suinno cannot affect the interests of Microsoft.
Comment
In my view, this was a useless appeal, if one knows the Rules of Procedure. Of course, Suinno tried – by lowering its demand for damages – to indirectly also reduce the value of the case. This would affect Microsoft’s (maximum) claim for costs, if it would prevail. However, it is very clear from the Rules of Procedure that Microsoft should argue its case during the interim conference before the JR.
23 December 2024
Court of Appeal, Suinno v Microsoft
Protection confidential information
Background
Microsoft filed for discretionary review on 19 December 2024 (see above) and included an exhibit for which it applied for protection of confidentiality (R. 262A RoP/R. 262.2 RoP).
Decision
The document – a license offer from Suinno to Microsoft – is known to Suinno, so a decision on R. 262A RoP is not necessary, but R. 262.2 RoP is justified (it should not be “accessible to the public”).
Comment
The standing judge simply rules “Confidentiality is granted”. That seems to mean that Suinno cannot make the content public (which is probably already under such obligation based on an NDA), that the public will not have or get access, and that the Court will not mention the document’s contents in a decision.
23 December 2024
Central Division Milan, Insulet v Menarini
Costs in intervention
Background
Insulet filed for a preliminary injunction (“PI”) against the Korean company EOFlow at the CD Milan. Insulet also filed for a PI against Menarini (EOFlow’s European distributor) on the basis of the same patent at the Local Division (“LD”) in Milan. The joinder of proceedings requested by EOFlow was rejected. Menarini subsequently filed a request to intervene in the PI proceedings. EOFlow supported the request, but Insulet opposed it.
On 1 October 2024, the CD refused the request for intervention. As Menarini was not a party to the proceedings, the CD held that R. 151 RoP would give Insulet the right to ask for a cost decision. Insulet then filed a request for a cost decision, seeking reimbursement of € 1,760.-.
Menarini argued:
- R. 151 RoP is not applicable, as Menarini is not a “party” to proceedings.
- According to R. 150 RoP et seq., an award regarding legal costs may only follow after a decision on the merits.
- The written submissions by Insulet were filed only on a voluntary basis.
- The amount of costs was not demonstrated.
Decision
The CD rejects these arguments.
Ad 1: Insulet is a party. Moreover, Menarini asserts a right and therefore is “a party”.
Ad 2: The CD sees no basis for this argument in the UPCA, also having regard to Art. 69 UPCA.
Ad 3: Art. 69 UPCA does not make a distinction between voluntary or involuntary submissions.
Ad 4: The amount is considered reasonable and proportionate.
Comment
- The CD states that Menarini sought intervention in the main proceedings. However, the arguments of the CD to refuse the intervention were based on intervention in the PI proceedings!
- Insulet claimed € 1760. Menarini did not want to go down without a fight, but its arguments were rejected.
- In the UPC, the loser pays (reasonable and proportionate) costs. If it is clear what costs are being claimed for what activities (here on the basis of “excerpt invoices”), then you do not have to submit invoices.
23 December 2024
Local Division Munich, Avago v Tesla
Costs
Background
On 30 August 2024, the LD revoked the patent and dismissed the infringement claim.
On 30 September 2024, Tesla filed cost proceedings.
Tesla then filed a request for withdrawal, arguing that a decision on costs was no longer necessary. For the event that the LD would give a cost decision in the cost proceedings anyway, it requested to order that each party bears its own costs.
Decision
The LD decides that hearing Avago is not necessary, allows the withdrawal and orders that each party bears its own costs.
Comment
- It looks as if parties (in the end) agreed about costs and therefore could avoid cost proceedings.
- As I said before, I still wonder why parties do not agree about costs before the oral hearing when parties are uncertain about the outcome, avoiding cost proceedings altogether.
- Although R. 265 RoP (regarding withdrawal) states that the other party should be heard, the LD is practical and states that this does not seem necessary. It is indeed hard to see what objection Avago could make!
23 December 2024
Local Division Munich, Panasonic v Oppo
UPC_CFI_208/2024; 221/2024; 225/2024
Settlement
Background
The written procedure has been closed and the date of the interim conference was set for 10 January 2025.
Settlement and requests for reimbursement court fee
The parties settled and agreed that each party bears its own costs.
They ask the Court:
- to allow withdrawal;
- to declare the case terminated;
- to have this registered in the Register;
- to declare that each party bears its own costs; and
- that parties get 40% reimbursed of the court fees (R. 370.9(b)ii RoP).
Decision
Court order as requested.
Comment
- On 22 November 2024, the LD Mannheim granted an injunction against Oppo under a standard essential patent (“SEP”), because it was an unwilling licensee.
- If a SEP holder has more patents reading on the same standard, you will have to invalidate them all to continue using the standard.
- Oppo had already been found an unwilling licensee by the LD Mannheim.
- It seems to me that if Oppo wanted to continue selling in the UPC area, it had few other choices than settling!
23 December 2024
Local Division Düsseldorf, Maxeon Solar v Aiko
UPC_CFI_336/2024; UPC_CFI_605/2024
Protection confidential information
Decision by the JR
- The claimant has not substantially disputed that certain information in the Statement of Defence/Counterclaim for Revocation constitutes trade secrets.
- The claimant did not name a natural person to which the information should be accessible. The claimant has to file a supplemental submission for this.
- It is not possible to exclude access to a natural person of the other party (see R. 262A.8 RoP), unless the parties agree to an external eyes only regime.
- Information which already has been exchanged with claimant in parallel proceedings are not confidential, also if third parties have not yet had access, because this information can be used during the oral hearing and in the judgment in these parallel proceedings.
- The members of the internal team and support staff also have access. The representatives are responsible for compliance of the confidentiality obligations by such team members and support staff.
Comment
Certain information was already disclosed by the defendants to the claimant in parallel proceedings without confidentiality measures. Understandably, the JR does not grant a confidentiality order for said information.
23 December 2024
Local Division Düsseldorf, Maxeon Solar v Aiko Energy
UPC_CFI_336/2024; UPC_CFI_607/2024
Confidentiality order
JR
- You cannot request a confidentiality order based on R. 262A RoP, if this is not done together with the filing of the document.
- However, R. 262.2 RoP (no access for the public) does not have that same requirement.
- The JR orders confidentiality of certain information under R. 262.2 RoP.
- The JR rules that each culpable breach can be sanctioned by a penalty determined by the Court.
Comment
- If you file pleadings or exhibits without at the same time asking for confidentiality, then the other party will have full access to such pleadings and exhibits.
- However, according to the JR, you can still invoke R. 262.2 which means that the other party cannot disclose the contents of the pleadings and exhibits that are considered confidential (and the public will not get access).
- If what the JR has done is indeed possible, it seems wise to ask with a R. 262A RoP order also an R. 262.2 order, to make sure that (also after the case has ended) the public has no access to the confidential information.
- Although a practical solution, I do not think that R. 262.2 RoP was intended for this situation. It was intended for requests based on R. 262.1(b) RoP. On the other hand, I do not see why a JR in such a situation could not simply give a management order with the same content without reference to R. 262.2 RoP.
27 December 2024
Local Division Düsseldorf, Apple v Ona
Request for security for costs
Apple asks for security for costs, as the share capital of Ona is only € 3,000.- and nothing else is publicly known about Ona’s finances. Ona basically argues that there is no reason to doubt its solvency.
Decision
JR applies the principles established by the Court of Appeal in Arke v Sodastream and refers to the CD Paris in Suinno v Microsoft with respect to NPE’s (Non-Practicing Entities). It grants the request for security, but refuses to order a decision by default if no security is provided within six weeks.
Comment
A logical decision, but I do not understand why the default order is refused. Certainly, this is a quite drastic consequence for not providing security, but a party who is demanded to provide security can make all its arguments against such a request, including the amount and the timing. If in the meantime there are unforeseen circumstances which make it impossible to (timely) provide the security, it can always go back to the Court (R. 9 RoP, R. 335 RoP).
27 December 2024
Google v Ona
Security for costs
Same decision as in Apple v Ona (UPC_CFI_ 99/2024) discussed above.
27 December 2024
Local Division Munich, Netgear v Huawei
Preparation for oral hearing
Facts
- Netgear requested that Huawei’s license agreement with Qualcomm, which had been produced in the infringement proceedings (UPC_CFI_9/2023) would also become part of the file in this case (UPC_CFI¬¬_152/2024).
- The JR had asked parties whether it would a good idea for reasons of procedural economy to ask to nominate Patrice Vidon as Technically Qualified Judge (“TQJ”), because the oral proceedings would be held together with the proceedings in case UPC_CFI¬_168/2024).
- Huawei had indicated to have no problem with Netgear’s request, as long as the already ordered confidentiality regime would also be applicable in the present proceedings. It also agreed with the nomination of Patrice Vidon.
Decision of the JR
- Netgear’s and Huawei’s confidentiality requests (R. 262.2 RoP and R. 262A RoP) are granted.
- The JR asks the President of the Court of First Instance (“CFI”) to nominate Patrice Vidon as TQJ.
Comment:
Vidon is already TQJ in the case for which the oral argument is scheduled on the same day.
27 December 2024
Court of Appeal, Sumi v Syngenta
Translation not necessary
Facts
Syngenta attached an exhibit in German to its Statement of Response, and requested to be allowed not to prepare a translation.
During the interim conference, Sumi Agro, when requested, left the issue to the discretion of the Court of Appeal.
Decision
The request is granted.
Comment
- In her reasoning, the JR makes clear that a party must provide translations of documents which are not filed in the language of the proceedings, unless the Court of Appeal accepts that no translation is necessary.
- Although the reasoning of the JR is fully in accordance with the Rules, it would be practical if the Court of Appeal would hold in a future case that a general exception exists for documents in English. All judges of the Court can read and understand English and the same may be expected from Representatives.
– All comments above are Prof. Hoyng‘s personal opinions –
📩 Want to stay updated? To receive our weekly overview directly in your inbox, subscribe here.