25 November 2024,
Local Division Paris, Dexcom v Abbott
Request after the oral argument
Background
The oral hearing in this case took place on 30 October 2024 and the Court announced to render its decision on 12 December 2024. On 12 November 2024, Dexcom asked the Court to communicate with the parties about its wishes to comment on a decision of the national German Court (Munich). In that decision, the Court granted an injunction on the basis of the parent patent of the patent subject of the proceedings in Paris and found that it is not likely that that patent is invalid.
Decision
Decision of the Presiding Judge, which after the closure of the interim procedure is in charge of case management:
1. The application is admissible. The Court refers to R. 334 RoP and R. 336 RoP and the Book of Tilmann and Plassmann. Since the case is still pending, the presiding judge remains in charge of the case management as foreseen in Art. 43 UPCA and Chapter 8 of the Rules of Procedure on case management.
2. The application is not justified, as the decision does not concern the patent at issue but another patent which discloses another invention with different features and moreover the Munich Court does not examine the validity.
Comments
- I disagree with the Court that the application is admissible. The reasons given by the Court cannot support this decision.
- It is correct that the Presiding Judge after the closure of the interim procedure is in charge of case management. That is indeed what Tilmann and Plassmann write, but there is no suggestion in their book and more importantly in Art. 43 UPCA or Chapter 8 of the Rules of Procedure (all cited by the Court to support its decision) that a party after the oral hearing (which is the final step in the proceedings) can file a further request that reopens the debate. On the contrary, R. 111 RoP in my opinion makes clear that the management role of the Presiding Judge ends with ensuring that, at the end of the oral hearing, the case is ready for a decision.
- If such requests are allowed, then of course parties are going to use this to keep bringing arguments after the debate is closed at the end of the oral hearing.
- This case provides a clear example, as Dexcom already conveys the arguments it wants to make in its request.
- The proper and correct way would have been to state during the oral argument that a decision of the Regional Court of Munich was expected. Both parties could have made arguments about the importance of that decision during the oral argument. If the Court had thought that it was important (from the decision it can be seen that that was not the case), the Court could have given appropriate directions.
- Hopefully, the Court of Appeal will in the future clearly rule that after the closure of the oral hearing a party cannot communicate with the Court without the consent of (the representative of) the other party (unless the Court during the oral hearing would expressly ask for such communication).
- A representative who after such a clear ruling nevertheless communicates with the Court (as happened in this case) would violate Art. 2.2 and 2.3 of the Code of Conduct for representatives.
25 November 2024
Local Division Düsseldorf, FUJIFILM v Kodak
UPC_CFI_355/2023
Rule 36 (further pleadings)
Background
The defendants filed a Rejoinder containing new factual allegations regarding its prior use defense.
The claimant wanted to respond, but its request (R.36 RoP) was refused by the Judge-Rapporteur (“JR”).
The JR stated:
- The fact that you have only one pleading to react to new allegations is a consequence of the Rules of Procedure.
- As to the application of R. 36 RoP, the Court should take into account:
a. the reasons for the request;
b. the risk of delay.
The JR stated that the request could have been made earlier (as the filing of the defendants was on 19 August, and the request for a further written submission on 3 October) and that claimant could further respond to the new allegations during the oral hearing.
The claimant asked for review by the panel (R. 333 RoP).
Decision of the panel
- The JR has correctly evaluated the risk of delay.
- The fear of claimant that it will not be able to deal with the new allegations in sufficient detail during the oral argument does not justify a different decision.
Comment
- It is true that 6 weeks is quite a long time for filing a request. Still, it is difficult to judge without knowing the facts but “prior use” is very often fact intensive and especially also with a Japanese claimant (time difference, language issues) may require some time to investigate.
- However, it seems to me more important that the defendant introduced new factual allegations about the prior use in its last submission. I assume that these allegations couldn’t have been made earlier and were in response to the reply of the claimant (front-loaded character of the proceedings).
- Of course, a party can respond to such new facts during the oral argument. However, that will mean that the Court hears these arguments for the first time during the oral hearing and this seems to go somewhat against the idea of the Rules of Procedure (and the institute of the JR and the interim conference). It is the intention that at the oral hearing, the facts are on the table and that the Court can give a decision after the oral hearing.
- I understand that the oral argument in this matter is scheduled for 17/18 December 2024. Quite frankly, I do not see then what the delay would be, if the JR on 30 October (the date of his decision) would have given the claimant two weeks to respond only to the new factual allegations, (e.g. including page or word limit) and giving defendant two weeks to respond only to this reaction. This would have meant that almost three weeks before the oral argument this exchange would have taken place, without any delay.
26 November 2024
Local Division Munich, GXD v Myriad
Security for costs
Order by the JR
Myriad asks for security for costs (R. 158 RoP) because the claimant is an IP monetizing Korean company with only 5 employees.
The claimant is a company established by a Korean non-practicing entity (“NPE”) named “Intellectual Discovery” (which has several subsidiaries). It was established in 2024, apparently for enforcing the present patent family as it holds no other patents.
Myriad asked for € 112.000, the ceiling for recoverable costs in first instance.
GXD agrees and asks for some time to arrange for payment in the account of the Court or for giving a bank guarantee.
JR decides accordingly but not after having discussed and decided that the request was justified referring to all decisions of LD’s and the Court of Appeal (UPC_CoA_218/2024).
Decision of the JR
- In exercising its discretion, the Court must weigh the relevant facts and circumstances.
- The requesting party has to bring facts and arguments why a security order is appropriate.
- If that has happened in a credible way, it is up to the other party to contest such facts and reasons in a substantiated way. Since it normally knows its own financial situation, it is best placed to do so.
In this case, the claimant has not argued that he would be unduly restricted in obtaining an effective remedy.
Comment
- The JR repeats (after the CoA in its decision of 17 September re Volkswagen v NST) the way such demands for security should be handled. In Volkswagen v NST, the CoA also held that the fact that the claimant is rich is not important (but that was not a circumstance in this case).
- I do not understand why the JR spends too much of her precious time to draft such an elaborate decision in a case where parties immediately agreed (and the request was prima facie justified).
26 November 2024
Local Division Paris, C-Kore Systems v Novawell
Order after interim conference
Background
In this case, a seizure to preserve evidence took place (R. 190 RoP).
The Court had appointed Mr Wlodarczyk (“Mr W”) to be present as representative for the claimant (patentee). The measures were carried out by a court-appointed expert and a bailiff. Mr W had sworn an affidavit about what happened during the seizure which the patentee (C-Kore Systems) had produced in the proceedings. Novawell wanted that affidavit removed.
Decision of the JR
The JR refuses as the statements of Mr W are not covered by professional secrecy. They just say how the seizure was carried out. The statements are also not covered by the confidentiality order in the present case.
In the decision on the merits, the probative value of this affidavit written by a representative of a party will be assessed. The Court notes that the measures were recorded in the minutes of the bailiff, who is a ministerial officer, which is a document with the highest probative value. It is not necessary to hear the court expert and the bailiff, as the report and minutes submitted are sufficient to inform the Court.
The JR also refused to allow French to be used during the oral hearing. It concluded that the French company was used to work also in English and that during the interim conference the parties spoke English.
Comment
Sensible decisions. A court has to trust the bailiff.
If parties could follow the interim proceedings in English, you may assume that this is also the case for the oral arguments. The Court is supposed to be self-financing, so no unnecessary funds should be spent on (simultaneous) translation. R. 109 RoP allows a party to request translation at its own costs.
27 November 2024
Local Division Milan, Himson v Oerlikon
Postponement of the interim conference
Order of the JR
- The parties are reminded that interim conference will take place at 6 December 2024 at 10.30 hrs.
- Claimant Himson informed the Court that they are not available because of other professional commitments.
- After consultation of the parties, the conference is postponed to the same date at 14.00 hrs and will be a video conference.
Comment
I do not think that publication of this kind of orders serves any purpose, especially because sometimes other more interesting orders do not get published.
27 November 2024
Court of Appeal, Total Semiconductors LLC v Texas Instruments
Cost order of the JR?
Background
- The JR of LD Mannheim ordered security for costs at an amount of € 600.000. The order stated that leave for appeal was refused and that therefore R. 158.3 and R. 220.2 RoP did not apply.
- Total Semiconductors requested the Court of Appeal for discretionary review.
- On 15 November 2024, the standing judge of the Court of Appeal issued an order pursuant R.220.4 RoP, raising the question whether (i) a JR can issue a cost order and deny leave for appeal or (ii) if the full panel should to decide or (iii) if adopted by the JR, the decision should be subject to review by the panel (R. 333 RoP).
- Parties commented.
Decision of the standing judge
- Unless provided otherwise, a case management decision or order cannot be appealed directly (you first have to ask for review by the panel, see UPC_CoA_486/2023 Netgear v Huawei).
- In this case, the question is whether a JR can decide on a request for security for costs and deny leave for appeal, or whether the panel has to decide on such a request.
- This is a question of access to justice not yet decided by the Court of Appeal. Therefore, the absence of panel review cannot lead to inadmissibility.
- The JR asks the President to refer the matter to a panel of the Court of Appeal to decide.
Comment
- Art. 69 (4) UPCA and R. 158 RoP state that the Court may order security for costs.
- The question is therefore whether you can qualify such order as a management order, which can also be given by a JR. Nowhere in the Rules, such a decision is mentioned as an example of a management order and I have difficulty understanding what such order has to do with the management of the case (see R. 101 RoP and Chapter 8 of the RoP).
- Even if the JR could give such an order, then you cannot read R. 158.3 RoP in a way as the JR apparently did.
- R. 158.3 RoP states that the order should mention that appeal may be lodged in accordance with Art. 73 UPCA and Rule 220.2. That says nothing more than that the order should tell the parties how they can appeal.
- The JR now apparently has the view that if he/she does not mention this, an appeal is not possible (and apparently also not a review by the panel).
- In fact, in my opinion this notice prescribed by R. 158.3 RoP confirms that the decision cannot be a management decision of the JR, because then the possibility of review by the panel should also have been mentioned in R. 158.3 RoP.
- The Court of Appeal will have the last word.
27 November 2024
Paris Central Division, NJOY v VMR
Front-loaded, inventive step
Revocation action started on 14 September 2023, decided 27 November 2024
Background
The defendant files a conditional application to amend the patent, with 8 different amendments and 35 auxiliary requests.
The claimant in its reply and defence against the application to amend asked for admittance of 29 further exhibits and admittance of its submission in as far as that submission went beyond its response to the defence. It asked further to refuse the conditional application to amend.
The defendant asked not to allow the further 29 exhibits and the comments that went beyond answering the defence.
Interim conference
The JR allows the application to amend (R. 30(1) RoP).
New grounds for revocation exhibits, facts and arguments which were not in the Statement of Claim and/or which are not a response to the Statement of Defense or request for amendment are excluded.
Decision
The Court revokes patent EP 3 456 214.
Frontloaded
Court gives “a more accurate reasoning” with respect to the decision after the Interim Conference. Court discusses the front-loaded system, which means:
- all the grounds, prior art and arguments for revocation have to be in the Statement of Claim;
- this does not have to be in a very detailed way (Court: “excessive and overly detailed allegation of facts”) and may be elaborated upon in response to the defence;
- it is not excluded that a document that was created or became available during the proceedings can be admitted because of fairness which protects a party who acted in a diligent way;
- the addition of grounds for revocation or new documents as new starting points for an inventive step argument are falling in the scope of R. 263 RoP, i.e. for which you need leave;
- in certain situations, new facts in response to a defence may be allowed.
Further written submissions
Both parties asked for a further exchange of written submissions, but they failed to file a reasoned request.
Inventive step
The Court considers:
- Inventive step is defined in terms of the specific problem encountered by the person skilled in the art.
- “In order to access 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 an invention 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.”
Thereafter the Court formulates the underlying specific problem solved by the invention: the problem being (paraphrased) to develop a vaporizer with certain features including a cartomizer receiving chamber, which is partly visible from the outside.
The Court:
Prior art document ‘Pan’ shows all features except a window in the chamber. If you want to make the content of the chamber visible, then it is obvious to put a window in the chamber (so you could check the level of liquid inside). Making that possible was already common general knowledge (prior art publication ‘Lee’ showed it in a different way).
Auxiliary requests
After a letter from the Court, the number of auxiliary requests was reduced to 10.
The Court discussed the auxiliary requests, as well as whether there was inventive merit in (combinations of) the dependent claims. It concluded that they were all not inventive.
Comments
- The Opposition Division upheld the patent in amended form. I think it would be helpful, if not clearly apparent from the decision itself, that the Court explains why it came to a different decision.
- I was also surprised by the consideration which I quoted above (under “Inventive Step”) where the Court referred to “a person skilled in the art seeking to develop an invention or process similar to that disclosed in the prior art”. Is this a slip of the pen? Does the Court mean “in the patent”? I would understand and agree with that and then it would also have made sense in my view to first determine what the problem was that the patent is solving. Or is it just a very cumbersome way of referring to ‘the relevant skilled person’?
28 November 2024
Court of Appeal, X v Amycell
Small and poor?
Background
X lost preliminary injunction (“PI”) proceedings and appealed. It did not pay the complete appeal fee, because it pretended to be a small company. However, they twice failed to produce convincing evidence (other than arguing that X is a farmer) that they qualified as small company.
Thereafter, X asked for legal aid, but again did not put in any evidence that they qualified for legal aid.
Decision Court of Appeal
Appeal proceedings are closed by a decision of default.
Comment
An understandable decision: not all farmers are poor!
29 November 2024
Court of Appeal, Aarke v Sodastream
Security for costs
Background
- Aarke asked LD Düsseldorf to order that Sodastream provided security for costs.
- After hearing Sodastream, the JR dismissed the request. The panel (after review) did the same. Leave for appeal was granted.
- Decision of the LD:
a. the Court has discretion;
b. is there a legitimate and real concern that a possible cost order might not be recoverable and/or the likelihood that a possible cost order by the UPC may not, or only in an overly burdensome way, be enforceable?
c. Sodastream belongs to the Pepsico group and therefore financially able to comply with a possible decision on costs. The fact that Pepsico is not a party to the proceedings, does not mean that the claimant is unable to comply with a possible decision on costs.
Decision Court of Appeal
- You have to look at the party itself. It is not relevant whether it has a financially strong parent.
- However, Sodastream itself has sufficient financial resources.
- The possible outcome of the case is irrelevant.
- Allegations that Sodastream will try to avoid payment are irrelevant.
Comment
This makes sense. The fact that a parent is financially sound does not automatically mean that such a parent is responsible for the debts of its subsidiary.
29 November 2024
Local Division Düsseldorf, FUJIFILM v Kodak
Further written submissions
Background
On 28 November, after the written procedure had come to an end, the defendant filed a further written submission. The defendant had not filed a reasoned request (R. 36 RoP) to ask permission of the Court.
Order
The Court will disregard the defendant’s submission contained in the brief of 28 November.
Comment
A representative should by now know the Rules of Procedure for filing a further written submission. You should file a reasoned request. The normal rule is no further written submissions. Therefore, a reasoned request should mention special reasons to obtain an exception to the rule. The limited number of written submissions may be different than the national (e.g. German) practice, but a representative in the UPC has to realize that the UPC is a supra national court with its own rules.
29 November 2024
Local Division Düsseldorf, FUJIFILM v Kodak
Simultaneous translation
Background
Fujifilm asks for simultaneous translation in Japanese during the oral argument, for reasons of the fair trial principle and equality of arms.
Decision by the JR
The JR applies the two step approach (as previously done by the LD The Hague).
- Is the requested translation justified?
- Who arranges the translation?
a. If the Court arranges the translation, then it becomes a cost of the proceedings.
b. If the party requests it, it should be considered the party’s own cost.
The JR concludes:
- The request for simultaneous translation is justified.
- Japanese is not a language of the UPC and not of the Court. Fujifilm filed the proceedings in English. Therefore, Fujifilm has to arrange for translation themselves.
Comment
Logical decision. There is no reason why the Court should pay for this (and be burdened with the organisation). If you choose to litigate in a foreign country, you have to deal with the “handicap” of the foreign language. As long as the Court allows translation, the trial is fair and the equality of arms is respected.
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