12 November 2024
Court of Appeal, AIM Sport v Supponor
Interpretation of Art. 83(4) UPCA – “withdrawing an opt-out”
Background and decision in first instance
The patent was opted-out on 12 May 2023, i.e. during the sunrise period. AIM applied to withdraw the opt-out on 5 July 2023, and subsequently started main proceedings and preliminary injunction (“PI”) proceedings. In those proceedings, Supponor argued that the opt-out was not effective.
The LD Helsinki decided that the withdrawal is ineffective in view of Art. 83(4) UPCA, because a national case with respect to the opted-out patent has been pending since 2020 a before a German court.
Court of Appeal:
Interpretation of the language in Art. 83(4) UPCA which stipulates that withdrawing an opt-out is possible “Unless an action has already been brought before a national court”.
- General rules of Treaty interpretation of the Vienna Convention, Art. 31: “A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the term of the treaty in the light of its object and purpose.”
- The Court of Appeal points to the fact that Art. 83 UPCA has as object and purpose to apply to and regulate the transitional regime, which starts at the start of the UPC. In that context, an action started before the start of the UPC is not an action as meant in the above sentence.
- The Court of Appeal further points out that during the transitory period a proprietor has the right to use both the national and the UPC courts. So, allowing a withdrawal of an opt-out restores basically that intended possibility.
- The argument that this can lead to conflicting judgments has been resolved by the Brussels Regulation as interpreted by the Court of Appeal in Mala v Nokia (UPC_CoA_227/2024).
- Even if one could argue the contrary based on the Rules of Proceedings, then that could not be decisive as the Rules of Procedure is of lower rank than the UPC Agreement.
- The preparatory work for the UPC Agreement can only be used to confirm an interpretation reached applying Art. 31 of the Vienna Convention or to resolve a point that is still ambiguous after applying Art. 31 of the Vienna Convention.
Conclusion:
Only national proceedings started after the start of the UPC can preclude a withdrawal of an opt-out.
Comment:
- A well-reasoned decision which also maximizes the possibility of using the UPC, as more and more patentees, after having initially opted-out, now start to see the advantages and quality of the UPC.
- However, the opt-outers should still realize that a competitor can make withdrawing the opt-out impossible by filing an action in a national court.
- On the other hand, companies who thought that a patentee could not withdraw its opt-out because of litigation started before the entry of the UPC and who do not wish to start litigation in a national court, may now have to rethink their strategy and for instance file a protective letter for the situation that the patentee may opt-in (and for instance file a request for an ex-parte injunction on the same day).
13 November 2024
Local Division Paris, Hewlett Packard v Lama France
Decision in main proceedings
EP 1 737 569 (“EP569”): valid and infringed
EP 2 089 230 (“EP230”): revoked
Decision
- Claim interpretation according to Court of Appeal in UPC_CoA_335/2023 (Nanostring v 10x Genomics) and UPC_CoA_1/2024 (SES v Hanshow).
- Although the proceedings are in French, the interpretation of the patent is based on the English language of the granted patents.
- The novelty test: no novelty if the invention is disclosed in one prior art disclosure in a clear way with the elements of the invention in the same form, in the same arrangement and with the same function for the same technical result.
- Also for infringement committed prior to 1 June 2023, the Court applies Art. 25 and 26 UPCA.
- As the competition law defense does not include a proper definition of the relevant market, there is no necessity to ask questions to the Court of Justice of the European Union (CJEU).
- In case of direct infringement, it is not necessary that the patentee informs the defendant about the existence of the patent before starting proceedings.
- Even if the description states that certain figures are examples not claimed, such figures can still be used for claim interpretation, as they are part of the description.
- Claim 1 (product claim) and claim 7 (method claim) are not novel, and the dependent claims are also not novel (no. 112).
- The auxiliary request is novel but not inventive.
- With respect to EP569 (valid and infringed) the Court held that (also) HP’s products which have been parallel imported from outside the EU infringe the patent.
- The Court grants an injunction and an order to recall infringing products and to destroy them.
- The Court refuses to order that defendant has to publish the decision on its website for a period of three months, because the measures ordered are considered sufficient for protecting the rights of claimant.
- The fact that during the interim conference, based on R. 191 RoP, the JR had already ordered defendant to provide certain information, does not prevent the Court to give a further order to provide information.
- The Court refuses to grant a provisional amount for damages and costs, because claimant has not substantiated these claims.
Comment:
- The case started on 13 October 2023. The oral hearing took place on 2 October 2024 and the decision is of 13 November 2024. This shows that the UPC delivers on its promise: an oral hearing within a year and a decision (within) 6 weeks after the oral hearing!
- Patentees should realize that if they all go to the same local divisions (such as Munich and Düsseldorf), they cannot expect that these divisions will be able to provide the same service. If a patentee wants to be certain to have a decision in the timeframe promised by the RoP, it is wise to solicit less busy divisions.
- The decision is well-reasoned. The only question I have relates to consideration 112. If the conclusion is that the independent claims 1 and 7 are not novel, why would that (automatically) mean that also the dependent claims are not novel? A dependent claim adds subject matter to the main claim. If that subject matter is not to be found in the document which lead to the invalidity of the main claim, then such dependent claim is novel. Maybe this was not argued by claimant and anyway it does not make a difference because the invention was considered not to be inventive.
- I agree that for the interpretation of claims one should look at the language in which the patent is granted. (Also in that respect it is somewhat surprising why the US claimant did not choose English as language of the proceedings.) I also agree that, even if certain figures in the description are said not to be claimed, they can still play a role in the interpretation of the claims.
- Although the Court does not use the word ‘proportionality’, the refusal to order defendant to publish the judgment on its website shows proportionality has its role to play, and certainly with these corrective often rather invasive measures. Of course, it is up to the parties to put forward arguments with respect to proportionality (and whether corrective measures are justified).
- In order to obtain damages and/or costs without having to go through separate proceedings, a party will have to put forward the necessary arguments and evidence.
As to costs, I wonder why parties before the oral argument cannot agree on the costs. At that time parties know what they have spent and do not know if they are going to win or not. It saves both parties time and expenses (and it saves the Court time). In The Netherlands, in 90% of the patent cases costs are established in this way, to the satisfaction of all parties concerned.
14 November 2024
Court of Appeal, Magna v Valeo
Obvious mistake in judgment
Background and decision
The Court of First Instance (“CFI”) granted a PI against Magna on 8 October 2024. However, the CFI exempted the existing supply obligations of Magna to BMW, as not being able to fulfil these obligations would result in significant harm.
The exemption was supposed to cover all BMW models equipped with the Magna device, but one model was not mentioned because of an “obvious slip”.
On 6 November 2024, Magna filed an application for correction (R. 353 RoP) at the CFI. The CFI granted Valeo two weeks to respond. Valeo responded, but at the same time (on 13 November 2024) posted the bond necessary for execution of the PI and indicated that it would execute the order.
As the case was now extremely urgent, the standing judge of the Court of Appeal granted suspensive effect of the PI, until the CFI has decided on the request for correction, insofar as the exception to the injunction issued therein does not include the “BMW series Gran Coupé model”.
Comment:
- An understandable and very quick decision (within a day) of the standing judge. That is exactly the situation for which the position of the standing judge was created in the Rules of Procedure (R. 223.4 RoP).
- Although many judges of the Court of Appeal master various languages, it is prudent to make such a very urgent request in English, as all judges master English.
- One wonders if such a situation could not have been resolved in a more practical way, e.g.:
a. by the representative of Valeo, by simply confirming to the representative of Magna that Valeo accepted that the forgotten model was also covered by the exemption; or
b. by the CFI, by not granting Valeo two weeks but 24 hours to respond, and then immediately correct the obvious mistake. - Valeo choose to try to benefit from the obvious mistake. This decision shows that the RoP (and the Court of Appeal) make it possible to prevent that.
15 November 2024
Local Division Munich, Philips v Shenzen
Withdrawal request ex parte
Background and decision
Philips applies for an ex parte injunction on 8 September 2024.
On 9 September 2024, the request was withdrawn based on analogous application of R. 209.2 RoP.
On 11 November 2024 Philips asks to get 60% back from the court fee.
The JR considers that R. 370.9 RoP (“Fixed fees and value-based fees may be reimbursed as follows:”) has no rules directly applicable to PI proceedings, but applies the rule analogous and orders that the applicant gets back 60% (of € 11.000).
Comment:
- I think that the reference to R. 209.2 RoP for withdrawing the request must be a mistake, because there is nothing in that paragraph about withdrawing an application. R. 209.4 RoP and R. 209.5 RoP make withdrawal possible if the Court decides not to grant a PI without hearing the defendant, or if a protective letter is filed.
- If the application was for an ex parte injunction and the applicant withdraws the application before a decision is rendered, the applicant may wish that this remains unknown. Apparently, the applicant did not file a request to that effect (R. 209.4 or R. 209.5 RoP). If the applicant would have filed such a request, then the Court should also not publish the name of the defendant in a case in which the applicant asks reimbursement of (part) of the court fee.
15 November 2024
Local Division Munich, Meril v Edwards
Requests after the oral hearing
Background
1. Edwards sued Meril for infringement. The Central Division partially upheld the patent.
2. Defendant Meril requests, in an application filed after the oral hearing, to ask the European Commission to provide information about the status of the investigation into potential competition law violations by Edwards, and to allow parties to file further briefs after the answer of the Commission.
Decision of the CFI:
The request was filed after the oral hearing. The Court did not allow any post-hearing briefs. The application is therefore filed outside the procedural realm.
The CFI moreover already asked for information about the complaint at the Commission during the oral hearing, and it was confirmed that the Commission has not opened a formal investigation. Therefore, the CFI sees no need for a request to the Commission.
Comment:
- It looks like a desperate effort from the defendants, who apparently fear an injunction by the Local Division since the patent has been maintained.
- The normal procedural way to raise a competition law defence seems to be to argue such defence during the written proceedings (and maybe Meril has done do). The CFI has to apply EU (competition) law separately of what the Commission is or is not doing. If the arguments are good and invoking patent rights amounts to abuse of a dominant position, then no injunction will follow. It is not so relevant whether the Commission has (already) launched a formal investigation.
– All comments above are Prof. Hoyng‘s personal opinions –
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