29 October 2024
Court of Appeal, Philips vs Belkin
Suspensive effect / intermediary / security
Decision by the Court of Appeal
- A request for suspensive effect needs to contain (a) the reasons why an appeal should have suspensive effect and (b) the relevant facts, evidence and legal reasoning. This means that the respondent should be able to prepare the defence only based on such request and the Court can give its decision only on the basis of that request. Reference to pleadings and documents produced in the first instance is allowed in as far as such reference is sufficiently concrete.
- The main rule (Art. 74. 1 UPCA) is that an appeal does not have suspensive effect. The Court of Appeal can only grant suspensive effect when the circumstances of the case justify an exception to the rule. The Court of Appeal therefore has to consider if the interest of the appellant in maintaining the status quo by way of exception outweighs the interest of the respondent.
- Suspensive effect can be especially warranted when the decision is clearly erroneous. Whether a decision is clearly contrary to the law should be based on the facts established and legal considerations made in first instance. If, after a summary review, these facts or considerations do not support the decision made in first instance, then suspensive effect should in general be granted. This also applies if the decision could potentially be justified based on different facts or legal considerations.
- The argument of Belkin that it did not have the opportunity during oral argument to argue about novelty and inventive step is incorrect.
- The managing director of the infringing party is not an intermediary whose services are being used by that party for committing infringement.
- Security on the basis of R. 352 RoP (for legal costs and damages as a result of a decision being enforced and later revoked) should be ordered together with the Decision or Order. The Court of Appeal cannot add that on the basis of a later request.
Comment
- The decision that a managing director of a party is not an “intermediary” whose services are used by the infringer is not surprising and the decision to suspend the decision on this point because of a clear mistake is therefore also not a surprise.
- It will be interesting to see under what circumstances a managing director is personally held responsible for the infringing activities for his company, as the law in the different member states on this point varies.
- In this case, we see that the German Local Division follows the German tradition on how an oral argument is conducted. The Presiding Judge gives an introduction and states on which points the Court wants a discussion (and on which points the court does not need a further discussion). The Rules of Procedure is the result of different traditions, and the Anglo-Saxon tradition (which we also find in the Nordic countries) on how to conduct an oral argument is quite different. The same is true for countries like France and Belgium.
- In this case, also the German representative followed the German tradition by not insisting on the opportunity to address points that the Court had indicated were unnecessary for discussion. In certain other UPC countries, the Court does not provide an introduction, and all points are discussed by the parties. I do think it is both useful and efficient if the Court gives an indication what it wishes to be discussed. However, it would also be good if parties get the opportunity to raise additional points if they so desire. Of course, a Court may set time limits in advance of the oral hearing (R. 113 RoP). For instance, a Court could allow both parties 20 minutes each for closing arguments after the discussion with the Court. R.113.3 RoP gives the Presiding Judge the possibility to limit a submission. However, if a party wants to make a point which has not been discussed during the oral hearing, I do not think that this rule should or could prevent that party from doing so.
29 October 2024
Local Division Düsseldorf, Dolby and Access Advance vs HP
Stay of proceedings
All parties ask for a stay (R. 295 RoP).
Court grants stay.
30 October 2024
Local Division Düsseldorf, Ortovox vs Mammut
Request for further written submissions (R. 36 RoP)
Background
One day before the closure of the written procedure by the Judge-Rapporteur (“JR”), Ortovox asks the JR to allow further written submissions. Ortovox states that it very recently noticed that defendants also market the Barryvox S. The pending case, however, is about the Barryvox S2.
The JR
Barryvox S has not been the subject of this case nor of the preliminary injunction (“PI”) proceedings, in which a PI was granted for the Barryvox S2, which was confirmed by the Court of Appeal.
The Court, based on the limited information available, cannot determine how this fits in the present case. Moreover, the defendant should be given the opportunity to respond.
With the oral argument scheduled for 26 November, there is insufficient time.
The JR denies the request.
31 October 2024
Local Division Düsseldorf, Sodastream vs Aarke
Claim interpretation / Gilette defence
Decision of the Court
- The Court repeats the Court of Appeal re Nanostring vs 10x Genomics of 26 February 2024 (UPC_CoA_335/2023) with respect to claim interpretation and adds: “A feature in a patent claim must always be interpreted in the light of the claim as a whole. From the function of the individual features in the context of the patent claim as a whole, it must be deduced what technical function these features actually have individually and as a whole. The description and the drawings may show that the patent specification defines terms independently and in this respect may represent a patent’s own lexicon. Therefore, even if the term used in the patent deviates from common usage, it may be that the meaning of the terms resulting from the patent specification is authoritative. The patent claim must be interpreted from the point of view of a person skilled in the art.”
Applying the foregoing the term “flask” is any component capable of receiving a container and forming a (substantially closed) cavity providing burst protection. - The scope of the claim must not be limited to the scope of the preferred embodiments. The scope of a claim extends to subject matter that the skilled person understands as the patentee’s claim after interpretation using the description and the drawings.
- The Court does not rely on the grant procedure as an interpretative aid, as it is not mentioned in Art. 69 EPC.
- The two-part shape of a claim does not have any implication for the interpretation of the claim with respect to the scope of protection.
- Arguments that are – without justification – raised for the first time during oral argument, are disregarded.
- The Court has dealt with the prior art publications mentioned in the patent and if the patent distinguishes itself from the prior art in a particular way, an interpretation that neglects that distinction must be avoided. The Court took this into account. “Therefore, there is not additional room for a Gilette defence.”
- The patent is infringed.
Comment
- The Düsseldorf Court (again) very clearly states that the prosecution file should not play a role in claim interpretation because it is not mentioned in Art. 69 EPC and the Protocol. The argument does not convince me. A normal way of interpreting a document is among others an interpretation based on the history of the document, which in this case is the file wrapper, which is public.
For instance, it would be unacceptable that a patentee gives a very limited meaning to a word in the claim to escape revocation of his patent in opposition proceedings and a very broad meaning of that same word in infringement proceedings to argue infringement. See for precisely such a case, about the interpretation of the German wording “satt und dichtend”, the Supreme Court of The Netherlands in Dijkstra vs Saier (HR 22 December 2006, ECLI:HR:2006:AZ1081). In the end, the Court of Appeal will have to decide the issue (as the UK Supreme Court has already done in Actavis – see UK Supreme Court 12 July 2017 [2017] UKSC48). - The Court also seems unwilling to adopt the Gilette defence, which is accepted as a non-infringement defence in several UPC countries and as far as equivalent infringement is concerned, also in Germany (Formstein, BGH 298, 12,18f.). It is in my view unacceptable to find that a product or method infringes a patent, if that product or method is known in the prior art or a non-inventive variant of the prior art. The argument (raised by the patentee) that the Gilette defence is basically an invalidity defence for which the Central division is competent, is not strong, as – different from the national German infringement courts – also the Court of First Instance can decide issues of validity.
31 October 2024
Local Division Düsseldorf, Valeo vs Magna – EP 3320604
Entitlement, urgency, proportionality
Decision
- Art. 47(1) UPCA states that the patent proprietor is entitled to bring an action before the Court. R. 8.5(a) RoP states that the person registered in the national register should be treated as the proprietor.
- A defendant raising an entitlement defence would have to prove that what is stated in the register is wrong. In PI proceedings, a strong presumption applies that the register is correct, meaning that the defendant has to prove that what is stated in the register is “manifestly erroneous”.
- In Germany, the applicant is definitively the proprietor because no entitlement action was started within the two years after the grant of the patent. As to France, an entitlement action was filed six years after the publication of the patent application but until then the defendants never challenged Valeo’s entitlement.
- There is therefore no serious dispute by defendants of the strong presumption of the applicant’s entitlement to the patent.
- The validity of the patent is more likely than its invalidity.
- The general high rate of revocations is considered irrelevant. Only the validity of the patent as such is relevant.
- The Court considers that it is more likely than not that there is infringement.
- The Court considers the exporting from the products made in Slovakia to a group member in Germany to be an infringing act in Germany. The same is true of the French Magna company which provides marketing services.
- As to urgency, the Court states: “The temporal urgency required for the order of provisional measures is lacking only if the infringed party has been so negligent and hesitant in pursuing its claims that, from an objective point of view, it must be concluded that the infringed party had no interest in the prompt enforcement of its rights and that it is therefore not appropriate to order provisional measures.”
According to the Court, this all depends on the circumstances of the individual case. - In weighing the interests of the parties (leaving open whether also the interests of third parties should play a role) the Court decides that the PI does not apply to the delivery of products to BMW pursuant to existing delivery obligations.
The non-delivery of products (gearboxes) would mean enormous damages because BMW could then not sell its cars.
Comment
- I do not understand why R. 8.5(a) RoP gives such a strong presumption that the national register is right that in P.I. proceedings this means that the defendant would have to prove that the presumption is “manifestly wrong” while as to a patent, granted after examination, the presumption of validity in P.I. proceedings can be refuted by the defendant if it establishes that it is more likely than not that the patent is invalid.
- From the facts stated by the Court, it becomes clear that parties collaborated in the development of products. Also in view of this, the Court should have provided reasons why Magna’s defence that Valeo is not entitled to the (whole) invention cannot prevent the grant of a preliminary injunction. The only “reason” it provides, is that Magna did not make its claim earlier, but there can be many good reasons for that and, moreover, that has nothing to do with the merit of the defence.
- Does the Magna company exporting from Slovakia to a group company in Germany infringe the German patent? The same question with respect to marketing activities of the French Magna company. Which of the infringing acts listed in Art. 25 UPCA do they commit, or is the list non-exhaustive? Suppose exporting cannot be qualified as “placing on the market” and marketing activities as “offering”, can then such companies be seen as intermediaries in the sense of Art. 11 of the Enforcement Directive? They may act unlawfully according to Slovakian or French law, but that is not the same as a direct patent infringement. The question arises then whether these acts fall under Art. 3 of the UPCA, so that the UPC has jurisdiction. I think that that could be the case, as it all has to do with a European Patent.
- The urgency requirement seems to become highly fact-specific. Should there not be a general rule that in principle urgency ceases to exist if no action is taken within a certain period after the claimant knows or could have known about the infringement?
- The Court has seriously considered a proportionality argument by granting an exception to the PI!
31 October 2024
Local Division Düsseldorf, Valeo vs Magna – EP 3320602
See for content and comments the decision to EP 3320604 (UPC_CFI_368/2024) discussed above.
– All comments above are Prof. Hoyng‘s personal opinions –
📩 Want to stay updated? To receive our weekly overview directly in your inbox, subscribe here.