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UPC Unfiltered, by Willem Hoyng – UPC decisions week 45, 2024

11 November 2024

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4 November 2024
Central Division Munich, Mathys & Squire, re Astellas vs Healios

UPC_75/2023

Request access to the file

Background and decision

  1. By Order of 22 August 2024 (ORD 591107/2023), applicant (“M&S) was granted access to the written pleadings and evidence concerning the decision between Astellas and Healios (UPC_CFI_75/2023). The claimant in the main case, Astellas, had requested to keep certain information confidential because it contained commercially sensitive material (R. 262.2 RoP). The Court accepted the request, and redacted versions of the pleadings were provided to the applicant.
  2. On 1 October 2024, the applicant lodged a request under R.263.3 RoP arguing that:
    a. the reasons given for confidentiality do not justify redactions;
    b. the redacted info is prima facie already in the public domain.
  3. The claimant in the main case, after being invited to do so, refrained from giving more comments than previously provided for the R.263.3 RoP request.
  4. The burden of proof regarding non-confidentiality of information is on the member of the public requesting access to the information.
  5. If that member provides credible arguments that there are no legitimate reasons to keep the information confidential and the party who requested confidentiality does not provide any counterargument, the application should be allowed.
  6. The Court allows the application.

Comment

  1. This decision is not surprising. It also shows that if the Court orders written documents and pleadings to be released, you should have solid reasons to justify a request to keep confidential certain information in those documents.
  2. A settlement of a case cannot prevent written submissions and evidence exchanged in the proceedings prior to the settlement from becoming public.

 

4 November 2024
Local Division Milan, Oerlikon vs Bhagat 

UPC_CFI_241/2023

Request for suspension

Request for suspension denied and injunction granted

  1. The Court can suspend proceedings in all cases where proper administration of justice requires so (R. 295(m) RoP).
  2. A request for suspension can be made during oral argument, provided that the other party is invited to respond to such a request.
  3. There is no reason to suspend infringement proceedings because in a different case a counterclaim for revocation has been filed with respect to the same patent (by a different party than the party requesting suspension in these proceedings).
  4. The Court finds infringement (during an exhibition in Milan) and is not convinced by evidence of Bhagat that there is no risk of infringement in the future. It therefore grants injunction.
  5. In view of the circumstances, it awards Oerlikon only 80 percent of the costs and is not ordering the publication of the judgment, which the Court considers a punitive measure in order to warn the public not to trade with the infringer.

Comment

  1. The judgment makes sense and is balanced in view of the circumstances (there had been extensive negotiations with respect to an amicable settlement).
  2. It shows how risky it is for a defendant to not take the case seriously (and not file a counterclaim for invalidity), in the expectation that the case can be settled.

 

5 November 2024
Central Division Paris, NJOY vs Juul Labs

UPC_CFI_315/2023

EP 3 504 991 held inventive without application of the PSA

The decision by the Court

  1. The procedure in the UPC is front-loaded, meaning that the claimant in his Statement of Claim should indicate the facts and, where available, evidence relied on and an indication of any evidence which will be offered in support (R. 44 RoP). However, the claimant is allowed, in its reply to the Statement of Defence, to present arguments in response to the arguments in the Statement of Defence.
  2. In relation to an expert report filed in these proceedings, the Court found that a clear distinction between new arguments and arguments in response to the Statement of Defence could not be drawn, and therefore allowed the entire report.
  3. The request by the claimant to allow a more extensive Rejoinder than only an answer to the Reply (R. 32.3 second sentence RoP) is denied, as the claimant could and should have included that further information earlier.
  4. A further submission by the defendant is (also) refused, as there is no basis for such a submission in the UPC system.
  5. The patent itself does not mention the problem solved by the invention. The Court formulates that problem based on an interpretation of the claim (“to optimize the parameters of the inhalable aerosol that is inhaled by the user”).
  6. The Court finds that “[t]here is no suggestion in the state of the art relied upon by Claimant to affix a heater, which comprises a heater chamber, to a first end of the cartridge (in the sense established above) and to affix a mouthpiece to a second end of the cartridge.”
  7. The Court furthermore considers: “[a]s indicated above, in general, an invention shall be considered as involving an inventive step if, having regard to any element that forms part of the state of the art, it is not obvious to a person skilled in the art. Limiting the evaluation of inventive step to certain elements of the prior art, for example a document perceived to be the “closest prior art”, generally bears the risk of introducing subjective elements into the evaluation.”
  8. However, the claimant did not raise Chen and Thompson in the context of inventive step, but only as novelty destroying prior art, so the Court did not assess inventive step based on those documents as the claimant determines the scope of the evaluation.
  9. The patent EP 3 504 991 is maintained, in a decision within 14 months, for all 12 UPCA countries where the patent is in force.

Comment

  1. This is a very important decision, as the Court seems to reject the problem-solution-approach in which, as first step, the closest prior art is established, followed by a definition of the problem on the basis of the difference between that closest prior art and the invention. The Court concludes that that often leads to introducing subjective elements in what should be an objective answer to Art. 56 EPC.
  2. The approach of the Court is in my view indeed more objective. It does not contain the sometimes-arbitrary decision of what is the closest prior art, which may result in a rather artificial way of formulating the problem. In this case, the Court looked at the patent to determine what problem the invention solves and looked at the entire prior art. Unfortunately for the claimant, they had done not done the same. For that reason, two publications very close to the patent (of which the claimant had argued that they were novelty-destroying) were not taken in consideration by the Court in evaluating inventive step.
  3. The problem with this approach – which resembles the UK approach – is that it does not give a fixed plan of steps to come to a result, which (as some will argue) therefore lacks predictability.
  4. The whole case shows a rather (national) German approach by the representatives of the parties. In the German national system, it is customary to file further pleadings until late in the proceedings. The Court refused additional or more extensive pleadings than the Rules of Procedure provide for. It shows that the UPC system is not – as certain German representatives seem to think – the same as the German national system. The drafters of the Rules of Procedure wanted to avoid unlimited numbers of written submissions while on the other hand they also found the Dutch system (with one exchange of written pleadings) too restrictive.
  5. The Court reasonably held that a claimant, in response to a Defence which for the first time contains the defendant’s arguments, can also react with arguments that were not already raised in the Statement of Claim (and I add: could also not reasonably be expected to have already been raised in the Statement of Claim).

 

5 November 2024
Central Division Paris, NJOY vs Juul Labs

UPC_CFI_309/2023

EP 3 498 115 B1 invalidated for extension of subject-matter

Decision by the Court (EP 3 498 115 B1)

  1. The Court considers claim 1 invalid because it extends beyond the content of the application as filed and beyond the content of the earlier (parent) application as filed.
  2. The Court states that Art. 65(3) UPCA means that in the event of partial invalidity, the Court limits the patent by a corresponding amendment of the claims and revokes it (only) in part, independent of any application to amend the patent.
  3. A dispute is generally controlled by the parties. Art. 76(1) UPCA states that the Court shall decide in accordance with the requests submitted by the parties.
  4. The defendant has requested the Court to consider its requests 2(a), 2(b), 2(c) to amend the patent prior to assessing novelty and inventive step.
  5. The claimant argued that in view of the unreasonably high total number of auxiliary requests (57), they should all be refused. The Court found that is an incorrect interpretation of R. 30 (1)(c) RoP and allows the conditional auxiliary requests 1 to 12.
  6. Auxiliary requests 1-10 do not solve the problem of the extension of subject-matter of claim 1. Auxiliary requests 11-12 are unclear (Art. 83 EPC).
  7. The Court considers: “What remains to be examined by the Court is the unamended patent” (because none of the auxiliary requests solve the extension of subject-matter problem).
  8. The rejection of the auxiliary requests does not mean, according to the Court, that the patentee has abandoned the patent.
  9. The Court now has to look whether the other claims of the granted patent may be valid.
  10. The Court concludes that they all have the problem of extension of subject-matter.
  11. Defendant had (with request 2d) also, as a further alternative, asked the Court to maintain the patent in accordance with the subclaims 2 to 7, but in combination with claim 1 of the auxiliary requests 1-12.
  12. The Court held that it had no obligation to look into that on the basis of Art. 65(3) UPCA because that article only pertains to granted patents.
  13. The Court considered request 2d to be unclear and also unreasonable in number of auxiliary requests (based on a quick count, I calculated 72 different requests).

Comment

  1. Interestingly, the Court feels obliged in case of a partly invalid patent to maintain (and formulate) the valid part ex officio based on Art. 65.3 UPCA.
  2. The Court is correct in that if in revocation proceedings the claimant seeks complete revocation of the patent, the Court also has to assess whether the dependent claims are invalid.
  3. I also think that in a revocation case, the claimant should in his Statement of Claim argue why also the dependent claims are invalid.
  4. If the main claim is held to be invalid, it should not be necessary for a patentee to have filed auxiliary requests with respect to the validity of the granted dependent claims. In his defence, he can just defend why a dependent claim is valid (even when the main claim is invalid). Although all the claims may for instance incorporate claim 1, they remain separate claims (which may – because they are more limited – not extend beyond the original application, or which may have their own inventive merit).

 

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

 

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