14 October 2024
Local Division The Hague, Winnow vs Orbisk
ACT_36388/2024 UPC_CFI_327/2024
R. 190 RoP (request for an order to produce evidence)
Request and decision
- An R. 190 RoP request to get all kinds of documents, including manuals and source code etc.. in order to further prove infringement of two claim features, which request is filed together with Statement of Claim.
- Court had refused a request for extension of term for a response to the R. 190 request.
- The Statement of Defence had to be filed before the outcome R190 RoP decision.
- The Court rules that a prima facie case of infringement exists. The arguments of non-infringement forwarded by Orbisk relate to the points for which evidence has been requested. The patent is granted, which means there is a presumption of validity. Orbisk has not argued that there is a clear-cut case of invalidity.
- The JR grants request in limited form.
Comment
- As the JR remarks, an order to produce evidence must satisfy the requirements of proportionality, equity and fairness.
- The court does not look in any detail to non-infringement and validity arguments, but this means that disclosure may granted while there is a clear risk that the patent is invalid, certainly when there have not been any opposition proceedings. The statistics show that after opposition only about 1/3 of the granted patents survive in the granted version.
- An R. 190 RoP request is an invasive measure, certainly in a dispute between competitors.
- Should that not mean that it should be clear that the information sought is clearly necessary for proving infringement?
- In my opinion, it would have been better to decide on such a request during the interim proceedings. At that time, it is far easier for the judge to determine if such a request is necessary and/or justified.
- However, if such request is granted, as is the case here, I think that the defendant in the main proceedings should at least get an extension of time for filing its Statement of Defence until claimant has supplemented its claim on the basis of the information it has received as a result of the R. 190 RoP request. This would be in conformity with the frontloaded character of the UPC proceedings and it would enable the defendant to know and reply to the full case of the claimant. I realize that this may lead to a certain delay in the proceedings, but that is due to the strategy chosen by the claimant who could have filed his R. 190 RoP request before starting proceedings.
20 October 2024
Local Division Mannheim, Dish vs Aylo
UPC_CFI_471/2023 ORD_47058/2024
R. 191 RoP (request for an order to provide information)
The request
The claimant requests the Court to order the Aylo companies (based in Cyprus) and Brockwell and Bridgemaze (both US companies) to provide information regarding the source code for the coding of the videos accessible via their streaming service in the period from the grant of the patent until the present.
In the main proceedings, the Claimant claims indirect infringement in the UPC area because of these streaming services. The defendants argue that the patent is invalid and/or not infringed.
The claimant seeks this information because, in their defense, the defendants restricted themselves to the current source code, but it is possible that a different code was used in the past.
The decision of the JR
- The JR refers to the decision of the Court of Appeal of 24 September 2024 re Oppo vs Panasonic (UPC¬_CoA_298/2024) and to the Enforcement Directive (Art. 6.1).
- The applicant must specify which concrete facts it wants to prove, with what means of evidence and why.
- An application with respect to uncontested or irrelevant facts is not proportional.
- The Court has discretion, and any decision must be proportionate, considering the specific circumstances of the case, the interests of both parties and the objective of efficient proceedings.
- The discretion also allows the Court to decide the order in which contested issues are dealt with.
- It is possible that an earlier fully reasoned R. 190 RoP request becomes relevant during the oral hearing and will lead to an adjournment.
- The above leads to a refusal of the request because:
a. it is not clear if the defendant will contest what is stated in the Reply about the source code;
b. it is not clear if the source code is relevant for the infringement decision;
c. the production of the non-public source code is a considerable burden for the defendants;
d. moreover, the claimants have not exhausted all possibilities to obtain evidence;
e. the claimant should have made clear which parts of the source code they need for which concrete facts, especially if it is true that in the UK proceedings they have already researched the source code;
f. the state of the proceedings as to infringement and invalidity do not justify the sought Order.
Comment
- The decision of the JR seems to reflect the attitude of the German national courts after the introduction of Art. 6.1 of the Enforcement Directive.
- Although these decisions are highly fact-specific, there seems to be a contrast with for instance the (unpublished) decision of the JR of the Local Division of The Hague (see below) who granted a request which was submitted at the same time as the filing of the Statement of Claim. There had not been any discussion about the real necessity of such evidence for the infringement question and, as to validity, the Court seemed to primarily rely on the presumption of validity of a granted patent.
- The Court of Appeal in the above-cited decision emphasized understandably the discretion of the Court with respect to such requests, but this may (as we already see) lead to quite different attitudes of the Local Divisions, from rather restrictive to rather liberal!
21 October 2024
Court of Appeal, Shark Ninja vs Dyson
UPC_CoA_297/2024 ORD_55853/2024
New facts in appeal (R. 220.2 RoP)
Relevant facts and arguments
- The oral argument on appeal is set for 23 October 2024.
- On 10 October 2024, Shark Ninja submits two exhibits which Dyson produced in US proceedings and which the Representative of Shark Ninja received on 21 September.
- In these exhibits, Dyson gives an interpretation of the same wording as used in a claim feature of the patent. It would mean, according to Shark Ninja, that that claim feature was known in the prior art. This would then be very important with respect to the question if two prior art publications would render the patent not novel or obvious.
- Dyson, in its reply, asks the court not to accept the new documents because:
a. the exhibits are irrelevant for the decision;
b. the exhibits could have been produced earlier. The fact that the present Representative knows this only since 21 September 2024 is irrelevant. The “internal” delay is at the risk of Shark Ninja;
c. finally, the US proceedings concern a different patent in a different case and in a completely different legal context.
Court of Appeal
The Court of Appeal cites the three conditions of R. 222.2 RoP which it should in particular take into account:
a) the documents could not reasonably have been produced in first instance;
b) the relevance for the decision on appeal;
c) the position of the other party regarding the lodging of the new documents.
The Court of Appeal states that Shark Ninja has not made sufficiently clear why it would serve a purpose to allow these documents so late (a few days before the oral hearing) in the proceedings.
The interpretation of a patent is a question of law which must be decided by the Court. The Court has, before all, to consider the understanding of the skilled person and the submissions of the parties. Statements in other proceedings which contradict statements in the present proceedings do not mean, different from what Shark Ninja thinks, that what has been stated in the present proceedings can be ignored. Moreover, the statements refer to a different patent although with the same wording.
The Court uses its discretion and refuses to allow the exhibits.
Comment
- The decision shows how important coordination is in international litigation.
- The UPC does not apply ‘litigation estoppel’, in the sense that a party is bound to statements made in litigation in other jurisdictions. So, statements made in a different context are not decisive for the outcome of the litigation.
- If one assumes that Shark Ninja in these proceedings already argued the claim interpretation which it now says was accepted by Dyson in the US proceedings, then that claim interpretation will anyway be considered by the Court of Appeal. What Dyson has said in different proceedings is in the end irrelevant. It is, as the Court of Appeal states, up to the Court of Appeal to decide what is the correct interpretation for the person skilled in the art.
22 October 2024
Central Division Munich, Dehns vs Sanofi and Amgen
Access to documents
Disclosure granted in limited form
- Dehns, a law firm, asks for written pleadings and evidence after the revocation of the patent in the Sanofi vs Amgen litigation. It argues that it has a “general interest in better understanding how the court conducted the actions and arrived at the decision of 16 July 2024” (reference UPC_1/2023). A list of desired documents is attached to the request.
- The JR recites the Court of Appeal in Ocado vs Autostore of 10 April 2024.
- The parties did not object.
- The JR grants the request, but not for the listed “other documents” as they are not “written pleadings and evidence”.
Comment
The Central Division (seat Paris) has the same interpretation of “pleadings and evidence” (ORD_587436 in ACT 571808/2023) and Dehns did not insist to get “other” (in general rather irrelevant) documents.
However, if an “other document” would relate to the substance of the case (and requested with reasons given) it should in my opinion be released. The literal interpretation should in such a case not prevail over the purpose of R. 220 RoP.
24 October 2024
Local Division Hamburg, 10x Genomics vs Vizgen Inc.
UPC_CFI_22/2023 ORD_49363/2024
R. 262A RoP (Confidentiality Club)
Background
During discovery in parallel US proceedings, a license agreement is produced containing very sensitive commercial information. In the US, this agreement is subject to an attorneys’ eyes only protective order attorneys’ eyes only.
Decision by the JR
- For application of a confidentiality regime, it is sufficient if the Court is convinced that the information is very likely (“überwiegend wahrscheinlich”) confidential.
- R. 262A RoP in accordance with Directive (EU)2016/943 states that at least one person of the other party should get access, but if parties agree (as already has been decided by the LD The Hague (UPC_CFI 239/2023) and LD Hamburg itself) then “attorneys’ eyes only” is possible.
- The argument of defendant that the license agreement does not belong to the agreed “attorneys’ eyes only” documents is incorrect.
- An Order ex R. 262A RoP can be given by the JR.
- Appeal is not possible under R. 220.1 RoP. Appeal is only possible with the final decision (see R. 220.2 RoP). No party has (yet) asked for leave for appeal.
Comments
- There is not yet a decision of the Court of Appeal that an attorneys’ eyes only regime is allowed under Directive (EU) 2016/943 if parties agree. However, it is difficult to see why that should not be possible.
- In the US, such confidential orders imposed by the court are quite common, and if parties do not agree, then it is difficult to see how documents from US proceedings can be produced in UPC proceedings. A US court is in general willing to allow such production under the same conditions but less likely to also allow a person working for a party to access such information.
- The JR sees the Order as a management order. In that case, before being able to appeal, a party will have to ask the panel to review. I do not think that this is a management order. R. 262A RoP refers to the Court for making such an order. R. 1.2 under a RoP seems to make it possible for the JR to make such an order on behalf of the Court.
- If you wish to be able to appeal an order which falls under R. 220.2 RoP as quickly as possible, you should ask the Court to grant leave for appeal in its order, otherwise you lose time.
24 October 2024
Paris Central Division, Qualcomm
UPC_CFI_427/2024 ORD_53290/2024
Background and decision
Qualcomm asked the Court to annul a decision of the EPO (see for the tasks of the EPO, Art. 9 of Regulation (EU) 1257/2012). Before the Court decided, the EPO already did what Qualcomm requested.
The Court then closed the case pursuant R. 91.2 RoP and ruled that there was no particular reason to reimburse (part of) the fee.
In this case, Qualcomm requests the Court to rectify the above decision and to order reimbursement of (part of) the fee, arguing that the Court should have done so on its own motion (R. 91.2 jo. R. 370.11 RoP).
The Court decides that it has already decided the issue and cannot review and decide in a different way.
The Court (apparently) decides that this is an order by a single judge (and not a management order) and grants leave for appeal.
Comment
- I assume that Qualcomm asked the (original) case to be heard by a single judge (R. 88 under f RoP), because normally these cases are heard by three legal judges (Art. 8(6) UPCA).
- This means that it is not a management order and as the Court rightly indicates the order can directly be appealed. Moreover, a management order could have been altered or revoked (R. 335 RoP).
24 October 2024
Local Division Hamburg, Easee vs Visibly
App_55164/2024 UPC_CFI_525/2024
Change of language
Background
Visibly filed a Statement of Claim on 12 September 2024 in German. On 8 October 2024, the Dutch defendants asked for change into English (the language of the patent).
Visibly agrees, but asks to dismiss the request that they have to provide an English translation of the Statement of Claim.
Decision
- Change into English is granted.
- In view of the nationalities of the parties, this change of language could have been expected: the Claimant has to provide a translation.
Comment
Logical decision. You wonder why German was chosen in the first place as the Claimant (client) was a US company?
25 October 2024
Local Division Brussels, Cretes vs Hyler
UPC_CFI_216/2024 ORD_55012/2024
No bifurcation
Order of the JR
- Panel decides early (R. 37.2 RoP) to apply Art. 33(3) UPCA and to deal with both infringement and the counterclaim for invalidity (“which enables parties to coordinate their arguments as to infringement and invalidity”).
- The JR asks the President of the Court of First Instance to assign a Technically Qualified Judge for the case.
- Language of the proceedings between two Belgian companies: Dutch.
– All comments above are Prof. Hoyng‘s personal opinions –
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