30 December 2024
Local Division Hamburg, Nera v Xiaomi
Change of claim (R. 263 RoP)
Background
- In response to a counterclaim for invalidity, the claimant requests to change the patent (R. 30.1 RoP) and, as the result of the requested change, also requests a change of its original claim in the proceedings (R. 263 RoP).
- The Judge-Rapporteur (“JR”) informed the defendant that they could respond to the R. 263 RoP request within the two months term for reply.
- The defendant reacted after 14 days, demanding to refuse the request, which according to the defendant, was based on inadmissible auxiliary requests. The defendant argued that for reasons of procedural efficiency, a decision should be given during the written procedure.
Decision of the JR
The JR refuses the request, stating that the decision will be made by the panel during the oral hearing or in the final decision. The JR moreover states that an early decision (even by the full panel) would be possible, but that the Court has the discretion not to do so. The JR also notes that efficiency is not just relevant for the parties but also for the Court. He notes that the auxiliary requests are conditional (which means that the Court may not have to deal with them). In addition, according to the JR, dealing with the auxiliary requests requires a profound knowledge of the patent and the parties’ arguments. Also therefore, it is more efficient to deal with everything during the oral hearing.
Comment
- This seems an understandable decision. The procedural economy is more important for the (international) Court which must make sure to deliver a judgment within 14 months than for the parties.
- However, (sometimes) there may be a middle ground. The JR is right, you do not need the Court’s consent for filing auxiliary requests in response to the Statement of Defence/Counterclaim for Revocation (R. 30 RoP). However, in view of R. 30.1 (c) RoP, the numbers of auxiliary requests should be reasonable. Now that patent attorneys also litigate before the UPC, I have the impression that there is a tendency to file numerous auxiliary requests as if we are at the EPO. The drafting committee of the Rules thought of up to 4 to 5 auxiliary requests. It would be efficient if the JR would in an early stage order a party to limit the number of auxiliary requests and to make sure that they are in a logical order and that the formal requirements of Rule 30.1(a)(b) RoP are fulfilled.
30 December 2024
Local Division Munich, Huawei v Netgear
A resigning judge
Decision
Technically Qualified Judge (“TQJ”) Vidon has resigned (Art. 9.2 of the Statute). The interim hearing is set for 15 January 2025 and oral argument for 25 March 2025. The presiding judge asks the President of the Court of First Instance to appoint another TQJ as of 1 January 2025.
Comment
- According to Art. 9.3 of the Statute, a judge shall continue to hold office until a successor has been appointed. This does not seem to be written for TQJ’s but is important for Legally Qualified Judges (“LQJ’s”), e.g. when a Local Division would otherwise lack a judge with the required nationality and consequently would not function anymore.
- What is the consequence of a judge resigning during the case? The rules in the different UPC countries are different. In the present case, the interim conference still has to take place and there is no reason for not continuing with a new TQJ. The situation may be quite different if a judge resigns at a later stage of the proceedings. The safest way to avoid any complication is to secure the parties’ agreement with the replacement.
2 January 2025
Local Division Munich, Huawei v Netgear
No bifurcation
Background and decision
The Local Division, after having heard the parties (which agree), decides to hear both the infringement and the revocation case.
The Court sets the hearing in the interim phase on 16 January 2025 and for the oral argument on 25 March 2025.
Comment
All very efficient.
3 January 2025
Central Division Munich, Berggren Oy v Nanostring and Harvard
Request for access to pleadings and evidence
Background
On 17 October 2024, the CD Munich delivered a final decision in the revocation action between Nanostring and Harvard. The applicant, citing “general interest for better understanding how the Court arrived at its decision”, wants to get access to the pleadings and evidence based on R. 262.1(b) RoP.
Decision by the JR
The parties did not give any comments. The JR therefore granted the request.
Comment
The JR follows the Court of Appeal in Ocado v Autostore.
As the option of filing a request for access is available to all, it has the potential to become quite time-consuming for the Court. When the Rules of Procedure are revised, it would be preferable to address the issue of publicity in the judgment itself, allowing the parties the opportunity to comment on it during the oral argument, and then simply making the pleadings and evidence accessible.
– All comments above are Prof. Hoyng‘s personal opinions –
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