20 January 2025
Court of Appeal, Amazon v Nokia
Confidentiality on appeal
Background
The Local Division (“LD”) Munich ordered confidentiality (R. 262A RoP) with respect to certain information and documents from Nokia.
Amazon appealed and filed a request under R. 262.2 RoP and R. 262A RoP.
Court of Appeal with respect to R. 262A RoP
- All information and related content which was already protected by the order of the LD remains confidential. A new order in appeal is not necessary (cf. Curio v 10x Genomics).
- As far as a request for confidentiality relates to information etc. which was not covered by the previous LD order, the request is not sufficiently precise.
Court of Appeal with respect to R. 262.2 RoP
- The Court grants the request, noting that Amazon provided sufficient justification (and here it is clear to which information the request pertains).
- The Court makes clear that in case a representative breaches confidentiality, penalties are forfeited by the party represented by the representative and not the representative itself.
Comment
- It is already established case law that (if not appealed) an R. 262A RoP (confidentiality) order of an LD remains valid on appeal (and I add – also in my opinion without this being specified in the order – thereafter as long as that information is not publicly available).
- An application for confidentiality must clearly specify the information and why the request is justified.
- An R.262.2 RoP order makes sure that the public cannot obtain the information from the register. In this case, Amazon also asked that the hearing would not be public as far as this protected information is concerned and that the information would not be published in the publicly available version of the judgment. This shows what a representative should demand if he wants to make sure that certain information is fully protected!
20 January 2025
Nordic-Baltic Division, Abbott v Dexcom
Settlement
Background and decision
The parties request the Court to permit withdrawal, agree with each other’s request and do not ask for costs.
The Court grants the request.
Comment
The court refers to R. 265 RoP and states that parties can appeal within two months after service of the Court’s decision. As I said several times before (and the Court of Appeal confirmed), you do not have to use R. 265 RoP (in my view it is not even applicable) in case of a settlement. Just inform the Court about the fact that the case is settled. It avoids the strange situation which we see in this case, in which the Court states that you can appeal the withdrawal while the case is settled. That does not make any sense!
20 January 2025
Local Division Paris, NJ Diffusion v Gisela Mayer
Request for interim conference
Background
NJ Diffusion requested a hearing to inspect the two wigs deposited at the registry and to position strong lamps directed to the place where the cap is connected exactly at the level of the assembly strip, to make photos and enlargements for presentation during the oral hearing.
Mayer responds:
a) The request should have been made under R. 201 RoP (regarding experiments).
b) The request was late, as it was submitted a week after NJ Diffusion’s reply.
Decision of the Judge Rapporteur (“JR”)
- Parties are free to bring evidence in the way as they see fit.
- A Court is free to legally requalify a request.
- The request does not constitute an experiment in the sense of R. 201 RoP.
- The request was not late, as the interim conference is scheduled for 7 April 2025.
- A special hearing was unnecessary as the file already contained enlarged photos.
Comment
Lesson of the JR to representatives:
a. do not raise formalities which you should know have no chance of success;
b. if the facts justify the application of a certain rule, then the Court will apply the law (i.e. that rule) even if a party has not mentioned it, or have mentioned a wrong rule;
c. do not waste the time of the Court with unnecessary requests. Why would you ask for a (for the client also costly) meeting for making enlarged photos when they are already on file.
20 January 2025
Court of Appeal, Shark Ninja v Dyson
Period for starting cost proceedings
Background
Shark Ninja lost preliminary injunction (“PI”) proceedings in first instance but won on appeal, after which the issued PI was lifted. Dyson was ordered to pay the costs for both instances.
The case on the merits is still ongoing.
Shark Ninja sought to suspend the cost procedure or, alternatively, extend the term for initiating such proceedings. Dyson agreed.
The Court of Appeal’s decision
The separate cost proceedings must be initiated within one month after the service of the decision. Shark Ninja’s request was therefore premature, as the one-month term had not yet started.
In an obiter dictum the Court notes that R. 150 RoP and R. 151 RoP are also applicable if a PI application is unsuccessful.
Comment
- I understand this decision means you have to await the decision (in the case on the merits) before you can lodge your cost proceedings for the PI. The Court of Appeal does not say that it means with “decision” the decision in the case on the merit but PI proceedings do not end with a decision but with an order and Shark Ninja’s request was certainly not premature if the Court meant the decision in the PI proceedings.
- If the way I understand the decision of the Court of Appeal is correct then I think that is efficient (you can always ask for an interim award for costs). However, if a stand alone PI is lost and there is no case on the merit then it is of course possible (and necessary) to start cost proceedings within 30 days after the (final) decision in the PI proceedings.
21 January 2025
Local Division Düsseldorf, Maxeon Solar v Aiko
UPC_CFI_336/2024; UPC_CFI_605/2024
Confidentiality/Rectification
Decision
The Court dismissed a rectification request, ruling that the error in question did not qualify as an obvious slip.
In the redacted version, only the name of defendant 7 to whom access was granted, is deleted. Defendant 7 was a natural person.
Comment
The presiding judge is very brief which is understandable. Apparently one of the parties wanted to know who was allowed access to certain confidential information. For privacy reasons, the name was redacted in the public version of the decision, which is of course not an obvious slip.
21 January 2025
Paris Central Division, NJOY v VMR Products
Inventive step
Background
Duration of the revocation case: 16 months.
Patent at issue: EP 3 626 092.
The defendant filed 20 auxiliary requests. Upon request by the Court, this was reduced to 10.
Decision
- The Court repeats the known principles of a front-loaded system;
- The Court again explains when R. 263 RoP (amendment of claim) is applicable and when not;
- The Court again explains that in a Reply, a party can only react to the Rejoinder;
- It is only possible to request further written submissions (I add: before the closure of the written proceedings) with a reasoned request;
- The defendant challenges the translation of a Korean prior art document. However, the Court finds the translation provided by the defendant even closer to the invention than the challenged translation;
- The Court applies principles of claim interpretation in accordance with the Court of Appeal in Nanostring;
- The Court notes that the assessment of inventive step must be carried out in the light of Article 56 EPC according to which “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”. Hence, it is necessary to determine whether, given the state of the art, a person skilled in the art would have obtained the technical solution claimed by the patent using their technical knowledge and carrying out simple operations. Inventive step is defined in terms of the specific problem encountered by the person skilled in the art (c.f. LD Paris, decision issued on 3 July 2024, UPC_CFI_230/2023);
- In order to assess whether or not a claimed invention is obvious to a person skilled in the art, it is first necessary to determine one or more teachings in the prior art that would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop a product or process similar to that disclosed in the prior art. Then, it must be assessed whether it would have been obvious for the skilled person to arrive at the claimed solution of the underlying technical problem on the basis of a realistic disclosure of the selected prior art (cf. CD Munich, decision issued on 17 October 2024, UPC_CFI_252/2023; LD Dusseldorf, decision issued on 10 October 2024, UPC_CFI_363/2023).
Decision
Revocation dismissed: patent is valid.
Comment
- Points 1-4 and 6 above contain knowledge of the UPC proceedings and wise lessons for representatives!
- The CD Paris (again) does not apply the problem solution approach, although in practice its assessment comes rather close.
21 January 2025
Nordic Baltic Division, Applicant X v Edwards and Meril
No costs
Background
Edwards started infringement proceedings against Meril. Meril filed a counterclaim for revocation.
Applicant X requested access to all pleadings and evidence. Both parties objected and Meril asked for costs. The applicant withdrew its application. The parties stated not to object against the withdrawal, but Meril asked for a costs order.
The JR
- The applicant has withdrawn its application. The proceedings with respect to the application are closed.
- The JR refers to UPC_CoA_404/2023 and concludes it does not positively state that an entitlement to costs exist.
- There is nothing in the UPCA which indicates that Art. 69.1 UPCA is applicable in this situation. It is based on Art. 14 of the Enforcement Directive, but that provision does not apply to requests by members of the public.
Decision
Award of costs is refused.
Comment
1. See my comments under CD Paris in Meril v Swat Medical of 8 January 2025, in which the CD Paris already came to the same (in my opinion correct) conclusion.
2. There, I noted that you can hardly speak of access for the public to pleadings and evidence, if such a request may result in a cost order for, in this case, € 17.168,70.
3. The Court grants leave for appeal based on R. 220.2 RoP and R. 224.1(b) RoP but in my view this is a decision in the sense of R. 220.1 RoP because it is a final decision in first instance. If it is indeed an order under R. 220.2 RoP, then the party who does not agree should first ask for a review by the panel.
21 January 2025
Local Division Munich, Air Up v Guagzhou
UPC_CFI_509/2023; UPC_CFI_508/2023
Service of decision by default
Background
Air up files a PI application against a Chinese company. The service by the registry in accordance with the The Hague Convention takes a year, without success. The Court declares good service pursuant to R. 275.2 RoP. A default judgment is rendered on 9 January 2025.
The applicants request to rule that the steps ordered by the Court to bring the service of the request for a PI to the attention of defendant are also sufficient for service of the decision pursuant to R. 275.2 RoP.
The Court
- Effective legal protection is a general principle of law (cf. Court of Justice of the European Union in C-222/84).
- Good service must always be possible at least in accordance with R. 275.2 RoP.
- Service of the summons was not possible due to lack of cooperation of the Chinese authorities. In that case, you do not have to try again (R. 274).
- R. 275.1 RoP, i.e. service by alternative method or at alternative place, is only applicable if such service is possible. That is not the case.
- Service must always be possible. The Court applies R. 275.2 and notes that an email to Mr. Long of the defendant is good service.
Comment
This decision makes sense! However, as I noted previously, why was Art. 15 (3) of the The Hague Convention not applied in both situations (service of the request for PI and service of the default decision). In my view, this provision also covers the service of the default judgment, because otherwise it would still not be possible to act effective in an urgent situation. The Court could, at the request of the party applying for the PI, indicate already in the decision what needs to be done to make sure that the defendant will become aware of the judgment (such as sending an email or a courier or an advertisement etc.).
22 January 2025
Local Division Mannheim, Fuji Film v Kodak (EP 3511174)
Preparation of oral hearing
Court
Prior to the oral hearing, the Court gives its preliminary views and the questions it wants to have addressed, in order to have an efficient hearing. The Court states that this does not prevent parties from addressing further points.
Comment
- This is certainly an efficient way to prepare an oral argument (which – in principle – should not take more than one day).
- It is important that the Court explicitly states that parties may address other points. Of course, representatives are in my opinion wise to be selective in doing so and only raise issues which are clearly important for their case and not covered by the preliminary views of the Court.
22 January 2025
Local Division Munich, Sanofi v Accord
UPC_CFI_145/2024; 146/2024; 147/2024: 148/2024
Preliminary interim hearing
Decision after the hearing
- It is possible to carve out France.
- The UPC has jurisdiction with respect to damages prior to 1 June 2023.
- Sanofi has to detail what relief for which territories it is seeking.
- The Court questioned why Accord objected against co-claimants.
- The Court remarked many deficiencies in claims. Sanofi gets the opportunity to correct.
- The Court noted that the calculation of damages (Art. 68 UPCA) is different than in national practices.
- If you counterclaim for invalidity, you have to mention the countries for which you ask invalidation.
- If you want any other party than the patentee in a revocation action to also pay costs, you should indicate that you are seeking an order for payment jointly or separately.
- The JR set the value of the proceedings.
- The JR suggested mediation/arbitration: no agreement.
Comment
All representatives should carefully read this decision, as Sanofi was in fact saved by the JR who pointed to many deficiencies in Sanofi’s claims and allowed Sanofi to correct. Of course, a judge should not have to do the work of a representative. Here, Sanofi can be grateful to the JR.
23 January 2025
Local Division Munich, Edwards v Meril
Confidentiality in cost proceedings
Request
Edwards requested confidentiality for certain statements and exhibits.
JR
The JR intends to follow the decision of the CD Paris of 30 July 2024 (UPC_CFI_367/2023) and grant full access to Meril under an implied application of R. 262.2 RoP. No public access will be allowed. Edwards has been asked to respond.
Comment
See below.
23 January 2025
Local Division Munich, Edwards v Meril
Request for partial stay
Background
The parties request for a partial stay of the cost proceedings.
JR
R. 295(c) RoP allows the Court to stay proceedings but does not provide for a partial stay. The JR found no advantage in ordering a partial stay. Meril’s application is dismissed.
Comment
- In the fourth order of the same day, Meril withdrew its request for a stay of proceedings in respect to confidential information. The JR closed the workflow.
- These 4 decisions (see for the third one hereafter) all related to cost proceedings show that it is all very nice that the UPC aims to decide all cases on the merits (regarding infringement and/or invalidity) in 12-14 months. However, that is not the end of the story for the parties and the Court, if parties do not reach an agreement and want to fight over every eurocent with respect to costs.
- This case is a good example. The case on the merits is on appeal, but Edwards (understandably) wants its costs for the first instance. Parties cannot agree on these costs and thus in the cost proceedings both parties go for confidentiality demands which may be justified, but they could have agreed to keep certain data confidential and resist any public disclosure requests under R. 262.2 RoP.
- If Meril ultimately wins the appeal, all efforts and money spent on these cost proceedings will have been for nothing.
- More efficient ways to deal with this include:
a. Representatives being proactive to reach agreement on these issues. As to costs, I still cannot see why parties cannot agree just before the oral hearing in the case on the merits. This does not need calculations to the last cent, but a general reasonable amount. Parties know what time has been spent and what a reasonable amount is.
b. During appeal, the Court could suspend the cost proceedings at the request of the defendant (who has lodged an appeal), if the defendant provides security for a reasonable amount.
c. Ideally, cost proceedings would be unnecessary because the Court awards costs in the decision on the merits (which under the Rules of Procedure is possible). Both parties could submit cost statements two weeks before oral argument, with an update 24 hours before the oral hearing.
23 January 2025
Local Division Munich, Edwards v Meril
Cost proceedings
Facts
Meril requested an extension for its response in the cost proceedings until the decision of the JR with respect to Edwards confidentiality request. The parties had agreed to continue the cost proceedings related to the representative costs while staying proceedings for other cost items. They also agreed to suspend Edward’s confidentiality request until the decision on appeal in the case on the merits.
As the deadline for responding expired on the day of their request, the defendants requested a quick decision.
JR
All decisions relating to a cost decision and the protection of confidential information are lifted.
New deadlines will be sent in due course.
Comment
See above.
23 January 2025
Local Division Mannheim, Hurom v NUC (a Korean company)
UPC_CFI_162/2024 – (not published yet)
Preparation oral hearing
JR
The Court questions the jurisdiction with respect to non-UPC countries, pointing out that the defendant does not have its seat in the UPC area, nor in the European Union.
The Court notes that the Court of Justice of the European Union (“CJEU”) has not yet decided the BSH Hausgeräte case.
The Court also questions if R. 19.7 RoP can exclude an objection which is allowed under Art. 26 of the Brussels I bis Regulation. Furthermore, the Court raises some interpretation questions with respect to features of the claim. It suggests discussing the applicable law for acts/damages which started before the start of the UPCA. Lastly, the Court wonders if national law is applicable, and notes that a party invoking such law should provide evidence on that point.
Comment
- For a good and efficient hearing, an order like the one at hand is welcomed.
- It is also very good that the JR states very clearly that the parties are not limited in arguing other issues of the case not covered by his order.
- As to jurisdiction, in my opinion, Art. 71b of the Brussels I bis Regulation is clear: the Court has jurisdiction under Art. 7(2) Brussels I bis Regulation and the Court can therefore rule for all countries of the UPC. The UPC is a (one) Court common to all the member states (see also Aylo v Dish of 3 September 2024; UPC_CoA_188/2024).
- Art. 7(2) Brussels I bis Regulation does in principle not provide jurisdiction outside the UPC (See CJEU Shevill, case C-68/93). However, apparently the defendant did not raise the lack of jurisdiction for non-UPC countries by preliminary objection (See R. 19.7 RoP) and the question is whether it can still do so later in the proceedings. Art. 26 Brussels I bis Regulation states that if you enter an appearance, the Court shall have jurisdiction unless the appearance is to contest jurisdiction. In the case at hand, the defendant filed an appearance (confirming the registry of the Court of his electronic email address), but although the defendant(’s representative) knew the Rules of Procedure, it chose not to file a preliminary objection to contest jurisdiction. It is also clear that you should contest jurisdiction at the first opportunity, as that is in such a case the purpose for filing an appearance.
- According to case law of the CJEU (See Roche and Honeywell) the Court can rule on infringement with respect to non-UPC countries. It is not clear from the order if the defendant raised the invalidity of the invoked European patent. If that is the case, there is diverging case law in the member states, and one would have to await the decision of the CJEU in BSG Hausgeräte. If no invalidity was raised, under Art. 26 Brussels I bis Regulation the Court can grant injunctions and award damages for all the countries (UPC, EU and non-EU) where the European Patent is in force.
- If invalidity was not raised, in my view the decision of the CJEU to be rendered in BSH Hausgeräte will be irrelevant.
- If Art. 26 Brussels I bis Regulation would then not be applicable, as the Court has jurisdiction under Art. 7(2) Brussels I bis Regulation, the claimant can still invoke Art. 71(b)(3) Brussels I bis Regulation and ask for damages in the non-EU and non-UPC countries if the conditions mentioned in that provision are fulfilled.
- It would of course be wrong, let alone inefficient, to apply the national law of each UPC state with respect to infringement and validity after 1 June 2023. Article 24 UPCA is clear. The Court should apply the UPCA and the EPC. This also follows from Art. 28 UPCA. If national law would apply, this article would be superfluous. It would only be different if in a certain country the EP is more limited (e.g. the result of national invalidity proceedings) or if the defendant has obtained a compulsory license in a certain country.
- I also think that the UPC has retroactive effect if there was infringement before 1 June 2023, which continued after 1 June 2023, based on recitals 2, 4 and 5 of the UPCA. The countries wanted efficiency and, let’s face it, the differences are minimal.
- I even think that if the patent was valid on 1 June 2023 and the UPC competent, this should also be the case with respect to infringements which ended before 1 June 2023.
- We must await the judgment of the Court and the Court of Appeal.
24 January 2025
Local Division Munich, Headwater v Samsung
UPC_CFI_54/2024; UPC_CFI_396/2024
Procedural issues prior to the interim conference
Facts
Samsung, with the Court’s permission, filed observations regarding Headwater’s entitlement to the patent and requested confidentiality.
Headwater sought to withdraw the order granting Samsung permission and also requested permission to amend its claim.
Decision JR
- The order stands and the Court awaits Samsung’s comments. A confidentiality order is not necessary because one is already in place.
- Headwater’s request to amend its claim is (provisionally) granted. If Samsung’s late submissions are admitted, then Headwater has already had time to respond and amend its pleadings. If the late filed arguments are rejected, there is no harm caused by allowing the amendments.
- The interim conference is scheduled for 26 February 2025. Parties are invited to suggest discussion points.
Comment
Nothing surprising. If a confidentiality regime is in place, you do not have to ask for it in each phase of the proceedings. On the contrary, you are good for the whole proceedings including the appeal.
24 January 2025
Court of Appeal, Dexcom v Abbott
Settlement
Background
Dexcom’s patent was revoked in first instance. Dexcom appealed. Abbott withdrew its Counterclaim for Revocation. Dexcom consented and requested withdrawal of its appeal, stating that this action renders the first-instance decision ineffective and restores the patent’s validity across all UPC states where it has been validated. The parties agreed that a cost decision is not necessary and requested a 50% refund of the appeal court fees.
Decision Court of Appeal
- The revocation decision becomes ineffective.
- The case is closed.
- A cost decision is not necessary.
- 60% of the court fees will be refunded.
Comment
The Court of Appeal strictly applies 265 RoP in the sense that as the other party does not object, withdrawal will be granted. As the revocation decision was not yet final, withdrawal of the claim for revocation was possible.
The conclusion is that an invalid patent remains valid in the EPO register. The public interest does not play a role in R. 265 RoP. We should not exaggerate this, because everybody can obtain the file in first instance to see that and why the patent was invalidated.
24 January 2025
Local Division Munich, Sanofi v Accord and others
Dates for interim conference and oral argument
Decision
The presiding judge sets dates for the interim conference (by video) on 25 July 2025 and oral argument for 14-17 October 2025.
Comment
In this case with multiple generic defendants, it shows good case management to set the dates for the interim conference and the oral hearing very early, to ensure that parties cannot argue that they cannot make it! In general: the earlier these dates are scheduled, the more certain it is that cases are decided within 12-14 months.
24 January 2025
Local Division Paris, Photon Wave v Seoul Viosys
Jurisdiction
Background
- On 5 December 2023, Seoul filed an infringement action against Laser Components.
- On 12 February 2024, Photon Wave intervened.
- On 6 May 2024, the Court ruled that Photon Wave cannot file a counterclaim for revocation as it was too late. The Statement of Defence of Laser Components had already been filed without a revocation action.
- Photon Wave subsequently initiated revocation proceedings in the Central Division Paris and requested the Local Division to suspend the infringement case.
- The Local Division refused to suspend the case.
- The Central Division transfers the revocation case to the Local Division Paris.
The dispute
Seoul (the patentee and claimant) argues that the Local Division lacks jurisdiction to hear the revocation case (under Article 33(4) UPCA) and that the case is manifestly inadmissible (R. 361 RoP). Photon Wave states that the Court is competent and requested the revocation case be joined with the infringement case.
Decision of the JR
Competence
The Court holds it is competent to hear the revocation action based on Art. 33.4 UPCA, second sentence: in the event of parallel infringement proceedings between the same parties, a revocation action has to be brought before the Division dealing with the infringement.
Inadmissible
The Court rules that the case is inadmissible, as Photon Wave did not lodge the revocation action timely and now tries to circumvent this by this move.
Comment
- In my opinion the JR came to the right conclusion (assuming that indeed the Counterclaim for Revocation was not filed timely – which as stated above – to me is unclear).
- However, I wonder why the Central Division did not hold that it lacks jurisdiction because infringement proceedings between the same parties were already pending.
- Trying to circumvent the Rules should never pay off!
24 January 2025
Local Division Munich, Heraeus v Vibrantz
UPC_CFI_114/2024; UPC_CFI_448/2024
Setting of Dates
The presiding judge sets a new date for the interim conference because of “Terminskollision”.
Comment
I wonder if it is really necessary to publish this type of orders and sometimes not even once but several times! (See the Sanofi decision of today.)
– All comments above are Prof. Hoyng‘s personal opinions –
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