13 January 2025
Court of Appeal, Magna v Valeo
Withdrawal
Background
On 31 October 2024, the Local Division Düsseldorf granted a preliminary injunction (“PI”) at Valeo’s request. Magna appealed.
At Magna’s request, the Court of Appeal suspended the PI pending appeal to the extent that it covered the BMW 2 Series Gran Coupé.
On December 2024, Valeo filed for withdrawal of the action, to which Magna subsequently consented.
Court of Appeal
The Court of Appeal:
-
- permits the withdrawal of the action;
- declares the proceedings closed;
- orders to mention the decision in the register; and
- declares there is no need for a cost decision.
Comment
- The Court of Appeal does not mention R. 265 RoP and does not give a cost decision. This is different from the LD Munich, which feels obliged (because of R. 265.2 sub c RoP) to give a cost decision even if the parties have agreed that each party bears its own costs.
- As I have written before: in my opinion, R. 265 RoP is written for a withdrawal by one of the parties but does not have to be used when parties reach a settlement. If both parties inform the Court that the case is settled, the Court can simply declare the case closed and tell the registrar to put that in the register. Parties can use the R. 9 RoP workflow. If a party or parties would like to get court fees reimbursed, they can ask the Court (if that has not yet been done) to determine the value of the case, or to order the registrar to reimburse a sum to which the parties are entitled, and, if security by (one of) the parties is given by payment to the Court, to pay back the security amount. See also R. 11 RoP.
- For the development of UPC law it is a pity that this appeal (the oral argument was set for 16 January 2025) will not be decided. One of the (many) issues at stake was the question whether a party could ask for a change of the technical judge if that technical judge has no experience in the relevant technical field. The LD Düsseldorf decided that that is not possible. I think that is incorrect. Art. 8 (5) of the UPCA states clearly that the TQJ should have qualifications and experience in the field of technology concerned. If it is clear that the TQJ does not have these qualifications, you would of course expect him/her not to accept the appointment or withdraw in the first place. But if the TQJ does not do so, a party should be able to ask for a replacement. It would be completely against the purpose of having a TQJ on the Court, if it is just window-dressing.
13 January 2025
Local Division Munich, Huawei v Netgear
Settlement
Background
Parties settle and ask for withdrawal according to R. 265 RoP.
Decision of Presiding Judge acting as sole judge
- The request is granted.
- The case is declared closed.
- The decision has to be put in the register.
- Each party bears its own costs.
- Value of the case: € 3 million.
- The € 3 million paid by claimant as security for costs to the Court has to be paid back.
Comment
- The LD feels obliged to give a cost decision. See Court of Appeal of the same day: that is not necessary!
- I assume that the Court places the € 3 million paid as security in an interest-bearing account and that the claimant gets the € 3 million back with the accrued interest (?).
13 January 2025
Local Division Munich, Harvard and 10x Genomics v Nanostring
Auxiliary requests
Background
On 19 August 2024, Harvard filed 55 auxiliary requests (!) in an application to amend the patent.
The oral argument at the EPO is scheduled for 18-20 March 2025.
The parties agree to stay the proceedings until the decision of the Opposition Division of the EPO.
Requests of the parties
The defendant’s main request was:
1. to suspend the deadline for the answer to the request to amend the patent to two months after the final decision with respect to its requests;
2. to order the request to amend the patent as inadmissible (request II).
Decision of the Judge Rapporteur (“JR”)
- The proceedings are stayed until the decision of Opposition Division of the EPO.
- The defendant is ordered to limit the number of auxiliary requests to a one-digit number within 20 days after the decision of the Opposition Division.
- The two months period for claimant to answer to the auxiliary requests start after the service of the limited number of auxiliary requests.
Review by the panel
- As parties agreed to a suspension and the Court agreed, this means that they want the decision of the Opposition Division to have its possible effect on the outcome of the litigation. For that reason, it is better to order the defendant to file its auxiliary requests 20 days after the decision of the Opposition Division.
- Whether 55 requests is unreasonable depends on the circumstances of the case. It is noted that the present case is extremely complicated, also in view of the numerous attacks on the patent. Auxiliary requests which are subject to the parallel proceedings before the EPO at the time of the decision of the Opposition Division will be allowed also within the present proceedings.
Comment
This seems a reasonable decision given the fact that parties agreed to a suspension of the proceedings. In this case, there were more than 40 different invalidity attacks. If auxiliary requests are answers to the different attacks, then I agree that (in such an exceptional case) a high number may be acceptable.
14 January 2025
Court of Appeal, Total Semiconductor v Texas Instruments
Composition of the Court re security of costs
Background
- The JR of the Local Division Mannheim ordered Total Semiconductor to provide a security of € 600.000. If not provided within 8 weeks, a default judgment might be given. Leave for appeal was refused.
- Total Semiconductor asked for discretionary review (R. 220.4 RoP).
- The standing judge allowed the request to the extent it related to (i) the question whether the JR is competent to give a cost order and/or (ii) whether the JR is competent to refuse leave for appeal, but refused the appeal with respect to the substantive matter.
Court of Appeal
- In this case the JR himself, instead of the panel, decided not to grant leave for appeal. Therefore, this would prevent an appeal because there is no order of the panel. That is only acceptable if the JR is right that he himself can decide on the security request and the leave for appeal.
- This is a question concerning access to justice, which the Court of Appeal can raise on its own motion. The appeal is therefore admissible.
- 1.2(a) RoP provides that if an act of the Court is not exclusively reserved for the panel, the President or the JR can perform such an act.
- 158 RoP does not reserve granting security for the panel.
- The system of the Rules of Procedure implies a broad interpretation of “management decision”, which can be reviewed by the panel on its own motion or at the request of a party, and avoids unnecessary appeals.
- The case is sent back, so that the panel, after panel review, can decide about leave for appeal.
Comment
- This is a decision which confirms wide powers for the JR and the presiding judge. The Court of Appeal refers to R. 1.2(a) RoP.
- However, I wonder how broad “act of the Court” in R. 1.2(a) RoP has to be interpreted. For instance, R. 118 RoP (“decision on the merits”) does not refer to the panel. However, in my opinion, a decision on the merits has to be made by the whole panel.
- Another example is an order for a PI (R. 211 RoP). Until now, Local Divisions decide PI proceedings with a full panel. Under the present ruling of the Court of Appeal, this apparently can also be done by the President (or one judge)?
- The decision of the Court of Appeal is of course in general making an efficient handling of a case possible. Why would you need a full panel for a decision on security for costs? However, the provision of R. 158.3 RoP that an appeal may be lodged in accordance with R. 220.2 RoP is confusing. If the cost decision is made by the JR or the presiding judge, this in my opinion should be read as that it is indicated in the decision that review can be asked by the panel. I assume that if the presiding judge makes a cost decision, this is also considered to be a management decision.
- It is also interesting that the Court of Appeal states that the panel at its own motion can review the order. I do not see that possibility in R. 330 RoP but you find it with respect to decision by the JR during the interim proceedings in R. 102.1 RoP.
However, also I am all in favor of this possibility, although as we have seen panels do not like to contradict their colleagues! (Who in general, by the way, make correct decisions, considering that almost all appeals fail!) - If the Court of Appeal desires fewer appeals I think representatives should be far more selective, or an appeal of a management decision should be (further) restricted.
14 January 2025
Local Division Munich, Sanofi v Accord and others
UPC_CFI_145/2024; UPC_CFI_146/2024; UPC_CFI_147/2024; UPC_CFI_148/2024
Confidentiality request
Background
Sanofi requests a confidentiality regime based on R. 262A RoP for witness statement D4, with access restricted to only the representatives of the defendants.
The defendants argue that certain information is not confidential.
The judge agrees with respect to the personal data of the witness, but with respect to other information the judge has not seen any evidence that this is public.
According to the judge, each defendant is entitled have the information disclosed to one employee.
Decision by the presiding judge
- The contents of witness statement Exhibit D4 contains confidential information, except the personal details of the witness.
- The representatives of the parties (including patent attorneys, paralegals and administrators) for which access is demanded get access.
- Different companies belonging to the same group have been sued. As each defendant is entitled to (at least) one employee to whom the information has to be disclosed, several employees belonging to the same group get access.
- All mentioned employees of the defendant get access, as Sanofi has not raised specific objections against these persons.
Comment
- The defendants mentioned all the members of their legal teams, including non-representatives such as paralegals, patent attorneys, administrative personnel. The judge in his decision mentions all these persons by name.
- To me this does not seem very practical. In a law firm, associates, secretaries and paralegals may change. How do you deal with that? In my view, only the representatives on record should be named as entitled to access. They can use their secretaries, associates, IP personnel, patent attorneys (if they are not listed representatives), but they are responsible that these people keep the confidential information secret. If a member of the team would not keep the information secret, the representatives should be accountable and fined (apart from the fact that they have civil law responsibility for all damages caused).
- The result of this decision is that if you sue six subsidiaries of a group, at least six natural persons (of the group) get access to the confidential information. I wonder if that is not a too literal interpretation of R. 262A RoP. If one or two are sufficient for the defence, the Court should in my opinion nominate these one or two persons for all the group companies together.
15 January 2025
Court of Appeal, Avago v Tesla
UPC_CoA_629/2024; UPC_CoA_631/2024; UPC_CoA_632/2024
Settlement
Background
The LD Hamburg dismisses an infringement claim of Avago and, in the counterclaim for invalidity, declares the patent partly invalid.
Avago appeals against both decisions.
Proceedings in appeal
- Avago requests withdrawal of infringement action and (if necessary) that each party bears its own costs. It requests reimbursement of 60% of the appeal court fees and agrees with Tesla’s request to withdraw the invalidity action.
- Tesla agrees and requests withdrawal of the invalidity action. It does not ask for cost decision.
Court of Appeal
- The Court of Appeal can decide because the case is on appeal and there is no final decision.
- Although R. 265.2(2) RoP states that a cost decision is necessary, it is not necessary here as both parties do not ask for it.
- A withdrawal of the invalidity action makes the request for to amend the patent without subject.
- The request is made before the end of the written proceedings: reimbursement of 60% of the court costs is ordered.
Comment
- As I wrote earlier, it has now been confirmed by the Court of Appeal: it is not necessary to make a cost decision if parties agree about the costs (and not demand to put that in a decision).
- As indicated before, I do not think R. 265 RoP has to be followed (as parties do) for a settlement. See the special Rule for settlement in R. 11 RoP!
- As long as there is no final decision, the parties can settle, and the legal situation will be as before the litigation started. This also to the patent if during the litigation an amendment of the patent took place. Of course, this is different if during the litigation a patentee would file a central limitation action at the EPO, or limit its patent via a national action.
15 January 2025
Local Division Milan, Dainese v Alpinestars a.o.
Opposition; extension of time?
Background
Defendant 1 (of 6) requests an extension of the term for its answer in infringement proceedings, from 20 January to 27 February 2025, because of the oral hearing in appeal of its opposition on 13 February 2025.
Decision of the JR
The request is granted, because it results in far more efficient proceedings. If they ask for it, other parties will get the opportunity to comment on the EPO decision.
Comment
- It certainly seems efficient to grant this extension, already because if the patent is revoked lots of unnecessary work is avoided. In the event the patent is upheld, then at least the final version of the claims of the granted patent is known, as well as the opinion of the Board of Appeal with respect to (certain) prior art.
- The JR referred to R. 36 RoP, indicating that if requested other defendants and the claimant could comment on the decision of the Board of Appeal. R. 36 RoP gives the JR the right to grant a further exchange of pleadings (after the exchange provided for in the RoP during the written proceedings).
- Still, apart from the scenario in which the patent would be revoked by the Board of Appeal, it is questionable whether what has been decided is very efficient. After all, the reasons for the decision of the Board of Appeal will not be known at the hearing date. It may have been better to grant the request in case the patent is revoked, and if not, to stay the proceedings or grant the extension until 4 weeks after the written decision of the Board of Appeal (maybe indicating that the Court expects the Board of Appeal to issue the written decision within 6 weeks after the hearing).
16 January 2025
Local Division Hamburg, Daedalus v Xiaomi
UPC_CFI_169/2024: UPC_CFI_436/2024
Background
Revocation proceedings are pending in the Central Division in Paris regarding the same patent (EP 2 792 100) which is invoked in these infringement proceedings. In the revocation proceedings, an oral hearing is scheduled for 25 March 2025. The question in these proceedings is what has to happen with the revocation (bifurcate or not) and in case of bifurcation what has to happen to the infringement case.
Decision of the JR
- The parties agree on sending the revocation action to the Central Division in Paris and that seems the most efficient way of handling the case to the Court as well. Therefore, the revocation action is sent to the Central Division in Paris.
- The Court continues with the infringement action and reserves the right to suspend in the future and/or separate infringement actions against the different defendants.
Comment
- Although in the meantime all six Xiaomi defendants have been served with the Statement of Claim, this happened at very different times because service took longer in China and Taiwan. So, it makes sense that the Court continues with the infringement actions (which it may be able to streamline later).
- It remains to be seen if the Central Division in Paris could also hear this case on 25 March 2025. I refer to R .9 RoP which allows a Court also to shorten the time for written submissions. Let’s see.
16 January 2025
Local Division Vienna, Swarco v Strabag
Decision on infringement (EP 2 643 717)
The patent is for a color- and light-mixing convergent optical system, in particular as full-color pixels, for imaging display boards outside, for spotlights or signaling.
Decision of the Court
- The defendant did not file a counterclaim for revocation, so the invalidity arguments will not be discussed.
- The patent is infringed.
- The Court applies the case law of the Court of Appeal for the interpretation of the claim (10x Genomics v Nanostring, UPC_CoA_182/2024).
- The Court dismisses among others the non-infringement arguments of the defendant which argued a limited meaning of the word “Sammellinse” (converging lens) and a very literal interpretation of the fact that during the making of the “Lichtleiterstab” (light guide rod), the Lichtleiterstab (light guide rod) has been “hochglanzpoliert” (highly polished) and concludes that the infringing product has all the elements of claim 1.
- An injunction is granted, as the defendants did not raise any proportionality arguments.
- The Court grants the request for information (Art. 67 (1) UPCA) and for destruction, which only concerns products which are directly or indirectly in the possession or ownership of defendant.
- The Court orders that the defendants have to take back all the infringing products and to destroy all the products which it has taken back.
- The defendants have to pay the damages and costs.
- The demand for publication of the judgment is refused, because the claimant did not give reasons why this would be necessary to prevent further infringement.
Comment
- In the first paragraph of the decision, the Court mentions that the patent application was published on 26 January 2022. That is clearly not correct as that date was the date of grant.
- I would recommend Courts to mention the date when the case started in the final decision. The public then knows how long a case lasted.
- Two lessons for representatives:
- If you want to argue invalidity, you have to file a counterclaim for revocation. (Also when you argue non-infringement based on Gilette or Formstein?)
- With respect to further demands, you should argue why they are necessary. I think a Court should not grant further demands if a party does not make clear why the grant is necessary. Already for reasons of proportionality, this should be a requirement. So, in my view, the Court correctly refused to order publication of the decision.
- Although the Court ordered to take back infringing products (by offering to pay back the purchase price and reimbursing all further costs), this in my view cannot mean that penalty sums are forfeited if customers refuse to cooperate. Therefore, such an order should be phrased better, in that the defendant should request his customers to send back infringing products (indicating that all costs will be reimbursed).
16 January 2025
Local Division Hamburg, Tesla v Avago
Costs and settlement
Background
Parties have reached a settlement. The main case is pending in appeal, but the LD Hamburg is dealing with the cost procedure in first instance.
Decision
- Even if the case on appeal has been settled, the cost proceedings are still pending in first instance and have to be withdrawn with the application of R. 265 RoP.
- The JR is competent to decide on a request by the parties based on R. 265 RoP.
Comment
Is there no simpler way to settle a case! A simple letter signed by the representatives to the (registry of the) UPC should be sufficient. The registry mentions the closure in the register and if asked pays part of the court costs back and informs the different Divisions and/or Court of Appeal where the case is pending. At present, after parties settle a case, they can still expect an invoice for all the formalities! It reminds me of proceedings in the UK, in which after a settlement, QC, junior counsel, solicitors and patent agents still invoiced a considerable amount to my client (a small SME) for executing the settlement!
16 January 2025
Court of Appeal, Fives v Reel
Jurisdiction
Background
The Regional Court of Düsseldorf issued a final judgment on 9 August 2022, holding that Reel is obliged to pay damages for all infringements since 22 December 2016 and future infringements.
On 8 August 2023, Fives started damages proceedings at the Local Division of Hamburg. Reel lodged a Preliminary Objection, arguing that the UPC had no jurisdiction. The LD Hamburg rules that the UPC has no jurisdiction to determine damages.
Fives appealed.
The Court of Appeal
- This is a matter of interpretation of Art. 32(1)(a) UPCA which as such does not mention the establishment of damages, but from Art. 32(1)(f) UPCA it can be considered that the UPCA gives jurisdiction for a separate action for obtaining compensation for use of a patent application. It would then be strange not to accept jurisdiction for damages based on infringement of a patent.
- According to the Brussels Regulation, the UPC has to be considered as a court of a member state.
- Although the Rules of Procedure do not seem to consider an application for an award for damages as a separate action, this is not a reason to deny jurisdiction for such application based on a decision of a national court. The drafters have probably thought about a unitary patent, when drafting the provisions.
- Many member states know the possibility of first establishing infringement in an infringement action, followed by establishing the amount of damages in a separate action (or by settlement or arbitration etc.).
- The UPC is competent (if the patent was in force on 1 June 2023 to deal with infringements of also prior to 1 June 2023) and to award damages also with respect to infringements committed prior to 1 June 2023.
Conclusion
The UPC has jurisdiction, as the EP had not expired at the date the UPCA entered into force.
Comment
- There is much to say for both points of view (LD Hamburg v Court of Appeal). I prefer the decision (and reasoning) of the Court of Appeal (main points included above).
- For me, the best argument is that the UPC has to be considered as a court of a member state. During the transitory period, the patentee can choose which court he wants to use (national or UPC) and as practically speaking proceedings to establish damages have to be seen as separate proceedings (in the UPC to be started separately within one year) you should be able to choose.
- I point out that the Rules of Procedure, different from the suggestion by the Court of Appeal, also makes it possible to ask for damages (and not only an interim award) in the proceedings on the merits. That was at least the intention of the drafting committee of the Rules of Procedure. As far as I remember, the same drafting committee did not think about a case like the present one!
16 January 2025
President of the Court of First Instance, NVIDIA v BF exaQC
Proceedings in the Local Division Munich
Background
NVIDIA (a US company with a German subsidiary sued as a co-defendant) asked for a change of language from German to English. NVIDIA was sued by two companies based in Germany.
Decision of the President of the Court of First Instance
The President refuses the application, in particularly because of the nationality of the parties involved and the size of the companies.
Comment
I find this decision not convincing. The German claimants are certainly not SME’s that don’t speak English. They have chosen English as language of the patent. The fact that the US company has a German subsidiary should hardly be relevant, as litigation of such multinational companies is always managed by the parent company. As the defendant is de facto English-speaking and the defendants chose for a patent in English, in my opinion English should be the language of the proceedings. It may be easier for the German representatives and for the German Local Division, but that should be irrelevant.
17 January 2025
Paris Central Division, NJOY v Juul Labs
Electric vaping device (EP 3 430 921)
The case started on 13 September 2023, with a decision on 17 January 2025: 16 months!
Decision
- In its reply to the Statement of Defence, the claimant is allowed to present arguments in response to arguments raised by the defendant in its Statement of Defence. This is to be applied in a generous way (to secure fairness and equity).
- A submission not foreseen in the RoP is inadmissible.
- Further auxiliary requests, newly filed after the application to amend the patent, are inadmissible.
- Claim interpretation: the Court follows the Court of Appeal (in the Nanostring and Vision Group cases).
- Skilled person: a mechanical engineer with several years of experience with electronic inhalable aerosol devices, assisted by an electrical engineer. A skilled person is not a chemist or physicist as suggested by claimant.
- The claim elements “the heater is attached to a first end of the fluid storage compartment” and “the mouthpiece is attached to a second end of the fluid storage compartment” cannot be found in the (divisional) application as filed nor in the parent application.
- The patent is revoked because of extension of subject matter.
Comment
- This was not a complicated case. The period before the interim conference and the timing of the oral argument took quite long. It should be possible to decide such a case in 12 months.
- The Court applies the front-loaded character, claim interpretation, skilled person principles in a correct way.
- However, the approach to “added subject matter” is in my opinion too strict. The fact that claims 1 and 11 are not disclosed verbatim (as the Court mentions as heading above 9.4) is of course not decisive. As stated above, the Court holds that “the heater is attached to a first end of the fluid storage compartment” and “the mouthpiece is attached to the second end of the fluid storage compartment” are not disclosed. What was disclosed is “a cartridge for a device for generating an inhalable aerosol comprising a fluid storage compartment; a heater affixed to a first end, and a mouthpiece affixed to a second end”. The Court states that it is not clear to which object the first end second end belongs. The Court apparently means that it is not clear whether ‘first end’ refers to the end of the cartridge or the end of the fluid compartment. It is clear that it is (also) possible that the first end of the fluid storage compartment is meant. The question is therefore: would the skilled person (also) read that possibility, when confronted with the patent? If I look at figure 7B, I see a fluid compartment 32, with on one end a mouth piece 31 and on the other end a heater 36, which when the product is assembled are attached to the fluid compartment. So, in my view the Court is too strict with its linguistic literal approach.
- This is the second time that in my view the Central Division applies a rather literal approach (See Mala v Nokia; UPC_CoA_227/2024).
- The decision would have been more convincing if the Court would have come to the conclusion that the patent is invalid because of lack of novelty or inventive step but the Court did not deal with these arguments.
– All comments above are Prof. Hoyng‘s personal opinions –
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