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UPC Unfiltered, by Willem Hoyng – UPC decisions week 42, 2024

21 October 2024

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11 October 2024
Local Division Munich, MSG vs EJP

Patent Revoked

UPC_CFI_300/2023, ORD_56109/2024

Infringement action and counterclaim for invalidity.
The Board of Appeal of the EPO then revokes the patent during the written proceedings.
The claimant now requests to withdraw its complaint and to get 60% of the court fee back.

The Court decides that with respect to costs Art. 69 UPCA is fully applicable, including Art. 69.3 UPCA which specifies “[a] party should bear any unnecessary costs it has caused the court or another party”.
Costs resulting from (normal) claim and defence submissions which in the end were not successful are not unnecessary and are covered by Art. 69.1 UPCA (“loser pays”).
What is “unnecessary” is to be judged ex ante in an objective way.
The court decides that in this case it does not see “unnecessary costs”.

Decision
The court declares that the case has ended and orders to state this in the register. For the infringement case, the claimant gets back 60% of the court fees. The claimant has to pay the costs of defendant.

For the invalidity case, the Court declares the case without object and terminated, and dismisses the invalidity case. The claimant (in the main claim) bears the costs of the counterclaim. The defendant (in the main claim) gets back 60% of the court fees for the counterclaim.

Comment
The decision of the CD in Paris with respect to R. 262A RoP should not be interpreted as that an inhouse patent attorney would not be able to represent his or her employer. In the case at hand the patent attorney was the managing director and majority shareholder of the party.


11 October 2024
Local Division Hamburg, Daedalus Prime vs Xiaomi

Confidentiality Order and US attorneys

UPC_CFI_169/2024, ORD_51859/2024

JR granted confidentiality order with access only to the Representatives and the Managing Director but not to two US attorneys.

Claimant asked panel for review of the Order (pursuant to R. 333 RoP), arguing:
1. US attorney is coordinating and is very important;
2. Order is also not clear.

The Defendants argue that the JR’s Order is correct

Decisions of the panel

  1. Order is clear;
  2. US attorneys will not be allowed. The confidential information is not part of the parallel US proceedings and the interests of defendants, who in order to defend themselves were forced to disclose confidential information, weighs heavier than the interests of the claimant, which interests are sufficiently served by access to its representatives and its managing director.
  3. Other Divisions may have given different decisions with respect to the UK, but the UK is different from the US as its patent attorneys can act as representatives making the UK an integral part of the UPC system.
  4. Leave for appeal is given so that Court of Appeal can set standard.

Comment
It happens quite often that worldwide litigation is coordinated by one law firm. This avoids double work and taking conflicting positions in different national proceedings. I cannot see why a US attorney who is coordinating such proceedings (and who is bound to strict ethical rules) should not have access to the Confidential Information, provided that the US attorney can only use the Confidential Information for the purpose of (coordinating) the UPC proceedings.

 

11 October 2024
Local Division Munich, I-Mop vs Arcora

Default judgment

UPC_CFI_193/2024, ORD_47439/2024

Defendant appoints a representative but does not file a defence.

On 16 August 2024, the JR warns the defendant that a default judgment may be given and gives the claimant the possibility to make certain amendments in order to enable the court to grant its claims.
On 30 August 2024, the Claimant makes amendments.
On 31 August 2024, the JR gives the defendant 14 days to respond.
No reaction follows.

The Court enters a default judgment

 

14 October 2024
Central Division Paris, Swat vs Meril and Edwards

UPC_CFI_255/2023 (CC_584916/2023 and CC_585030/2023), ORD_36095/2024

Access to file (R. 262 RoP)

 

Swat’s request
1. Swat demands all pleadings and evidence in the revocation action between Meril and Edwards.
2. Swat claims direct interest because it is developing similar device.

Order of the JR
1. Developing a product in the same area is not a specific interest.
2. However, case is terminated, and the request is reasoned (because they plan to enter a market in which the patent is relevant).
3. The JR refuses the requests by (one of the parties) (a) to restrict the order to only invalidity documents; (b) to prohibit use of the documents in court proceedings against a party and (c) to keep the documents confidential.

Decision
JR grants Swat’s application, gives leave for appeal and suspends the decision pending the appeal term and a possible appeal.

Comment
If a party does not want that certain information is kept confidential it should make sure that it acts timely (R. 262.2 RoP).


15 October 2024
Local Division Lisbon, Ericsson vs Asustek

No urgency in PI proceedings 

UPC_CFI_317/2024, ORD_52116/2024

  1. The Court has jurisdiction because alleged infringements also take place in Portugal. The same applies to acts of the intermediary.
  2. The products are on the market since 2019 resp. 2021. The Claimant has not stated at which time it became aware of these products, but only refer to a test purchase in 2024. Although urgency is not mentioned in the UPCA (Art. 62) it is inherent with respect to provisional measures (which curtail the right of defendants). The Division refers to R. 209(2)(b) RoP which requires urgency and considers urgency is lacking.
  3. The Division nevertheless looks into the merits of the case and gives its opinion.

Validity
More likely than not that patent is valid.

Auxiliary request (without any necessity to deal with this)
The Division states that such auxiliary request in PI proceedings is not possible, as it is incompatible with the nature of such proceedings.

Infringement

  1. The Applicant did not disclose that the images in annex B5 and B7 were not taken from an Asus computer but from a computer of a competitor. The Division considered this misleading, but as Defendant in fact did not deny that these images are from the same (allegedly infringing) modules which are also incorporated in their computers, the Division accepted this as evidence.
  2. The Court follows with respect to claim interpretation the Court of Appeal of 26 February 2024 in 10x Genomics vs Nanostring (UPC_CoA 335/2023) and finds that it is more likely than not that there is infringement.
  3. Owning an internet domain or subdomains constitutes infringement under Art. 25(a) UPCA if the domain provides a website on which infringing products are offered and/or sold.

Comment

  1. Despite lack of urgency, the Lisbon Local Division remarkably decides on validity and infringement, apparently with the expectation that Applicant will also come to Lisbon with the case on the merits. If that would be the case, it would in my opinion be better to appoint other legal and technical judges, in order to have a different panel deciding the case on the merit.
  2. I find it somewhat strange that without any necessity the Division decides that auxiliary requests in preliminary injunction proceedings are not possible. It would have been better to await a decision of the Court of Appeal. I also think that indeed it should be the exception, but there are certainly circumstances where an auxiliary request is justified and the rights of the defendant can be respected. This also raises the question what is considered as an auxiliary request. If a claimant relies on all granted claims, but after having seen the defence only relies on dependent claim 3 or part of claim 3. Is that an auxiliary request?
  3. The Division correctly notes that Art. 62 UPCA does not require urgency. One can imagine situations in which provisional measures would be called for without there being “urgency” in strict sense. The UPCA should then prevail over the RoP.

 

15 October 2024
Court of Appeal, Microsoft vs Suinno

UPC_CoA_570/2024, ORD_55908/2024

Manifestly bound to fail?

Microsoft asks for review of the refusal of the CD Paris to apply R. 361 RoP (“dismissal because action is manifestly bound to fail”).
It filed this application because the representative of Suinno was not considered to be independent on a different Order of the CD (with respect to the application of R. 262A RoP).

Decision of the JR of the Court of Appeal
1. R. 361 RoP is only for (very) clear-cut cases. This is not such a case.
2. The question of the independence of the representative is at the moment (already) subject of an appeal of the R. 262A RoP Order of the CD.

Comment
The decision of the CD in Paris with respect to R. 262A RoP should not be interpreted as that an inhouse patent attorney would not be able to represent his or her employer. In the case at hand the patent attorney was the managing director and majority shareholder of the party.

 

17 October 2024
Central Division Munich, Nanostring vs Harvard

EP 2 794 928 revoked

UPC_CFI_252/2023, ORD_598480/2023 

History

  1. EP 2 794 928 was already revoked for Germany by the Bundespatentgericht (first instance invalidity court) on 7 May 2024 at the request of a different Nanostring company. Appeal is still possible.
  2. The Local Division Munich in PI proceedings held that it was more likely than not that the patent was invalid.
  3. The Court of Appeal decided the same with respect to divisional patent EP 4 108 782.

Jurisdiction

  1. UPC has to examine its international jurisdiction on its own motion. It has such jurisdiction because it is to be considered as a court of a member state and has exclusive jurisdiction with respect to validity for the member states of the UPC (Art. 32(1)(a) UPCA).
  2. During the 7/14 years transitory period, also the national courts of the member states have exclusive jurisdiction.
  3. CD: applies CoA re Mala vs Nokia, which refers to Art. 29-32 of the Brussels I recast Regulation (“Brussels Ibis”). Art. 29 Brussels Ibis is not applicable because parties in German invalidity case are not the same. Although the CD could stay, the CD agrees with the parties and does not stay because among others it would deprive parties from a decision for France and The Netherlands within a reasonable delay (Art. 6 ECHR). The CD refers among others to aims of the UPCA (efficiency and expeditious decisions).

The assessment on the merits

  1. The CD formulates the problem as “to develop high-throughput optical multiplexing methods for detecting target molecules in a sample”.
  2. On claim (feature) interpretation, the CD refers to the CoA in 10 Genomics vs Nanostring (UPC_CoA 335/2023) and in Vusion vs Hanshow of 13 May 2024 (UPC_CoA_1/2024).
  3. The CD notes that “The description and the drawings may represent a patent’s own lexicon”, so the meaning of terms used may deviate from the general meaning.
  4. Novelty
    Novelty: see for test CoA re Mammut vs Ortovox (UPC_CoA182/2024). Claim 1 is not novel.
  5. Auxiliary requests
    The auxiliary requests in the Defence to Revocation are accepted. The new (further) auxiliary request filed after the written proceedings is refused because it could have been filed earlier.
  6. Inventive step
    a. requires a legal evaluation of all relevant facts and circumstances;
    b. concerns an objective approach. Subjective ideas of the inventor and whether the invention is the result of a stroke of luck or of systematic work involving experimentation is irrelevant;
    c. inventive step is to be assessed from the point of view of the skilled person on the basis of the state of the art as a whole;
    d. the decisive factor is whether the claimed subject matter follows from the prior art in such a way that the skilled person would have found it on the basis of its knowledge and skills, for example by obvious modification of what was already known;
    e. determine for the assessment a realistic starting point. There can be different realistic starting points. You do not have to determine the most realistic starting point;
    f. in general, the invention is obvious if there is an incentive to consider the claimed solution and to implement it as a next step. However, it is relevant if the skilled person would have expected particular difficulties in taking the next step;
    g. depending on the facts and circumstances of the case, it may be allowed to combine prior art disclosures.

Conclusion
All allowable auxiliary requests are not inventive

Decision
EP invalidated

Comment

  1. The decision to not await the outcome of an appeal in the German invalidity case seems completely justified.
  2. As the German EP is still valid pending the possibility of appeal to the BGH, it is understandable that the CD also invalidates the German part.
  3. It is clear that the CD does not apply the problem solution approach, as it considers “you do not have to determine the most realistic starting point”.
  4. Combination of documents may be allowed depending on the facts and circumstances. One may wonder, which facts and circumstances are required? Should the document which you want to combine with a realistic starting point not have a pointer to the solution or an incentive to take the next step to the invention?
  5. Note that you have to file your auxiliary request(s) timely and see also R. 30.1 (c) which was inspired by the UK practice and intended by the drafting committee to avoid the EPO practice of numerous auxiliary requests.

 

18 October 2024
Local Division Munich, SES vs Hanshow

Know the RoP

UPC_CFI 292/2023, ORD_52059/2024

  1. Hanshow is defendant in PI proceedings and wins in first instance and appeal. The decision of the appeal is of 13 May 2024.
  2. On 18 June 2024 Hanshow asks the Court of Appeal to give a costs decision. The Court of Appeal refers the request to the JR of the first instance proceedings.
  3. Hanshow is too late. R. 151 RoP states that you have to start cost proceedings within one month of service of the decision (so here 13 June – R. 300 RoP).
  4. Hanshow asked an extension of three working days based on R. 9 RoP.

Assessment by the Court (full panel)

  1. R. 320.1 (Re-establishment of rights) is lex specialis of the general provision of R. 9 RoP.
  2. Even if one assumes that Hanshow’s request to the Court of Appeal could serve as a request for a re-establishment of rights according to R. 320.1 ROP, then this has been lodged at the wrong instance. Hanshow’s submission of 2 August 2024 lacked a request for re-establishment of rights but would also have been too late (see R. 320.2 RoP). Even if the LD would have considered Hanshow’s request to the Court of Appeal as a request to the LD it could not have been granted, as Hanshow had not paid the court fee (see R. 371.2 RoP)

Decision

  1. No extension of term.
  2. Dismisses the request for costs.

Comment

  1. The decision that R. 320 RoP is a lex specialis of 9 RoP is convincing.
  2. Hanshow misses out on € 131.874.80!
  3. You have to know the Rules of Procedure and in this case so many things went wrong that the LD could not save Hanshow!
  4. Every representative should read this decision!

 

– All comments above are Prof. Hoyng‘s personal opinions –

 

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