7 January 2025
Local Division Munich, Avago v Tesla
Withdrawal
Background
Both parties inform the Court that they want to withdraw their claims (in an infringement case in which defendant had counterclaimed for invalidity) and that they did not need a cost decision and if such decision is necessary that each party bears its own costs.
Decision (second chamber LD Munich)
- The request is admitted;
- The proceedings are declared closed;
- The Court orders to mention this in the register;
- The parties bear their own costs
Comment
- The Court states that it must give a decision about costs, apparently because
265.2 (c) RoP says so (“shall”). I think that it is all a bit exaggerated. R. 265 RoP does not deal with settlement between the parties but with the withdrawal by one of the parties. In my view, if the parties have settled, the Court can simply declare the case ended and the registrar should put that in the register. - A completely different question is if a party can decide even with the consent of the other party to withdraw a revocation action (an “actio popularis”), because it may not be in the general interest that an invalid patent survives. In certain national jurisdictions such withdrawal is not an automatic right. However, R. 265 RoP is very clear: if the opposing party does not object, you can withdraw. Parties know that certain settlement agreements can have competition law consequences!
- It would be less confusing for the reader of the publication if the Court (here the second chamber of the Munich Local Division) would not publish the same decision twice. Just publish one decision mentioning the two different UPC publication numbers.
7 January 2025
Local Division Munich, Sanofi v Accord
Party merges and does not exist anymore
Background
This concerns a patent infringement case regarding EP 2 493 466 against several generic companies.
The Sanofi group was restructured. Sanofi requests the Court to order that Sanofi-Aventis France (one of the claimants) is substituted with Sanofi-Winthrop Industry (another claimant) and that the latter has obtained all rights and obligations of Sanofi-Aventis France (R. 305 RoP) without any (further) consequences (R. 306 RoP).
Certain defendants object on various grounds.
Decision of the Judge Rapporteur (“JR”)
The JR allows the request, correctly referring to R. 310 RoP, which applies if a party (as is the case here) ceases to exist (and which refers also to R. 305, 306 RoP). As the substitution has no effect on the proceedings, the request is allowed.
Comment
Although the Rules are very clear, there was only one defendant who did the wise thing and did not resist the request. Other defendants came with different “clever” defenses with, in my opinion, the obvious result.
7 January 2025
Local Division Munich, Dyson v Shark Ninja
Postponement of proceedings
Judge Rapporteur
- The parties ask to postpone the proceedings.
- The request is granted and the hearings of 8 May (interim conference) and 3 June (oral argument) are cancelled.
Comment
Parties should not think that such requests are always granted. In this case, the oral hearings were far away but if the same is asked a few days before a hearing this may not be the case. In that case it is recommended to settle before such hearing!
7 January 2025
Local Division Düsseldorf, Dexcom v Abbott
Withdrawal
Background and decision
The parties agreed about withdrawal of the proceedings and that no cost decision was necessary. This happened before the closure of the written proceedings and both parties requested to get part of the court fee reimbursed.
The Court ordered as requested.
The parties get 60% of their court fees reimbursed.
Comment
Christmas is apparently a good time to make peace! The Düsseldorf Division (different from the Munich Division) did apparently not consider R. 265 RoP to prescribe a mandatory cost decision also in cases where both parties agree.
I agree!
8 January 2025
Central Division Paris, Meril v Swat Medical
Decision in litigation?
Background
Swat Medical asked for access to written pleadings and evidence. This was rejected. Meril (one of the parties to the proceedings for which Swat requested the documents) filed a request for costs (€15.000!) which it stated to have been made in fighting Swat’s application.
Swat responded that the request is not admissible because it should not have been filed under Rule 9 but under Rule 158. Meril responded with a new application stating that their request was admissible.
The Court
- The new application (which in my view was not a new application but a reply to the defence of Swat) was refused by the Court.
- The argument about the wrong filing is rejected already because the application mentioned R. 150 RoP. (I think the reference to R. 158 RoP in the Swat response seems a typo of Swat or the Court).
However, even if an applicant refers to a wrong Rule, the Court should not dismiss the application but apply the correct Rule. - According to the UPC and the RoP cost decisions are given in litigation cases. A request of the public for access to the register is not litigation. So there is no place for a cost decision.
Comment
- All representatives know by now that without consent of the Court you cannot file any written observations etc. which are not provided for in the RoP. To try to circumvent that by filing a new application is obviously not going to work.
- Each lawyer has learned “ius curia novit” (“the court knows the law”). So, if you invoke the wrong rule of the RoP, but your request fits another rule, the Court may apply the latter. The Court was – in my opinion – absolutely correct that it you file in the wrong workflow that that does not mean that you request is not admissible. That is also nowhere to be found in R. 4 RoP.
- I also agree with the Court that a party who chooses to try to prevent access to the register is not entitled to costs. As the Court states, such a request does not initiate litigation. It is more an administrative process. Finally, you wonder how “public” a register would be when if you ask for information (e.g. as an academic) you can be confronted with “an invoice” of € 15.000!
8 January 2025
Court of Appeal, Daedalus v Xiaomi
Intervention regarding confidentiality
Background
Daedalus filed infringement action against Xiaomi and MediaTek. Xiaomi asks for certain confidentiality obligations (R. 262A RoP). The JR of the Local Division Hamburg granted the request. As a result, only representatives and the managing director of Daedalus get access, access for two US attorneys was denied.
The panel confirms.
Daedalus files an appeal.
MediaTek asks the Court of Appeal to intervene to support Xiaomi.
Court of Appeal
- The fact that MediaTek asks to intervene at such a late stage is as such no reason to refuse.
- MediaTek has a direct interest.
- MediaTek’s request does not lead to delay as they only want to be present during oral argument to support Xiaomi.
Comment
Logical decision, but could be different if the request would have caused delay!
9 January 2025
Local Division Munich, Air Up v Guangzhou
UPC_CFI_508/2023 and UPC_CFI_509/2023
Default decisions
Background
- Air Up sues Aiyun Yanwu, a Chinese company for infringement of EP 3 897 305 and EP 3 655 341 (for a drinking device), for offering these devices on the internet and sending them to customers in Germany.
- Air Up asks for a preliminary injunction (“PI”).
- Defendant is served according to R. 275.2 RoP (service by alternative method) but does not appear in Court.
Decision
After applying R. 355 RoP and therefore (among others) checking if the facts put forward justify the remedy sought, the Court grants the PI.
Comment
- The Court deals in detail with the material validity and infringement questions and with all the other requirements for a PI.
- I am somewhat surprised that an alternative way of service has been used and that service is not simply carried out via the The Hague Convention, Art. 15 last paragraph because of urgency. After that, the Court could have included in its judgment that because of the actions of the claimant, the defendant knew about the PI application and the period to respond to it.
- I wonder what the practical result of this action is if the Chinese company does not have any assets in the EU and just continues to send its products to customers in the UPC. It does not seem to make much sense to set up a border seizure program in a situation where individual infringing products are shipped to the EU.
- The Court states that it would decide about the service of the decision later. Such service is necessary before any penalty sums are forfeited.
9 January 2025
Court of Appeal Luxemburg, Insulet v Menarini
Timely filing
Background
- The Local Division Milan rejected a request of Insulet for a PI against Menarini. The Statement of Appeal was lodged on 4 December 2024 and served on Menarini on 11 December 2024.
- On 23 December 2024, Menarini informed the Registry that it could not file the Statement of Answer in the CMS and asked for urgent help in view of the 27 December 2024 deadline.
- Nothing was done to solve the problem and Menarini filed in the Art. 9 workflow and mailed a copy to the representatives of Insulet.
- On 30 December 2024, the problem was solved and the Statement of Answer was filed in the appeal workflow.
- Menarini requests the Court to extend the deadline for filing an answer to 30 December 2024.
Decision of the JR
The JR refuses the request because the filing on December 30 was in time!
Comment
- After the Registry took a full week (!) to serve the Statement of Grounds on 11 December, the term of 15 days (R. 235.2 RoP) for the Statement of Answer started to run on 12 December (R. 300(a) RoP). This period ended on 27 December. That was a Sunday, which meant that the period was extended to the end of 28 December (R. 301.1 RoP). Uploading was impossible on 28 and 29 December but on 30 December it was possible. Days 28 and 29 December then count as non-working days. The period is then extended to the end of the next day (R. 301.2 RoP) on which filing was possible again (here 30 December).
- If on 23 December it was not possible to use the CMS, one can also file by delivering a hard copy to the Registry and have a quiet Christmas (R.4 RoP) .
9 January 2025
Court of Appeal, Abbott v Powell Gilbert
Public access to the register
Background
The Local Division in The Hague partly granted Abbott’s application for provisional measures and denied the application for preliminary measures.
Powell Gilbert wants to get access to basically all written submissions and evidence (based on R. 262.1(b) RoP).
The JR of Local Division The Hague granted the request on the condition that no party filed an appeal and granted leave for appeal.
Abbott appealed.
Decision of the Court of Appeal
The Court of Appeal upholds the decision of the JR and dismisses the appeal, referring to its decision in Ocado v Autostore, and considered that the decision of the Court of Justice of the European Union (“CJEU”) in API v Commission does not preclude that in view of the Rules of Procedure, in principle access is to be granted also pending appeal proceedings.
Comment
- This decision means that in essence all non-confidential pleadings and evidence can be obtained after the CFI has given a decision, also with respect to provisional or preliminary measures, even if parallel cases are pending.
- Especially if one is used to litigate in national systems which have a “closed” system, it is good to realize that in advising clients about patents that are subject of earlier decisions, this can be a very valuable source of information.
10 January 2025
Local Division Munich, Dexcom v Abbott
Withdrawal
Background
Dexcom filed infringement action and Abbott counterclaimed for revocation. Dexcom filed an application to amend the patent. The oral hearing was held on 10 December 2024 and the date for the decision was set for 17 January 2025.
Present case
On 27 December 2024, both parties filed an application to withdraw their claims indicating, that each party would bear its own costs.
On January 2025, the Court indicated that it was mandatory to give a costs decision and asked to confirm that no costs are reimbursed between the parties. This was confirmed by the parties.
Decision
The requests are granted and the case is closed. “The parties shall bear their extra judicial costs. There will be no reimbursement of costs between the parties.”
Comment
The Court makes it all rather complicated about costs and can take an example of the decision of the same day of the Local Division in Düsseldorf.
10 January 2025
Local Division Düsseldorf, Valeo v Magna
UPC_CFI_460/2024; UPC_CFI_658/2024; UPC_CFI_459/2024; UPC_CFI_657/2024
Withdrawal
Background
Valeo filed an infringement action. Magna responded with a defence and counterclaim for invalidity.
Present case
The parties applied for withdrawal and consented to bear their own costs. Valeo reserved the right to ask for reimbursement of court costs.
Decision
The withdrawal was allowed and the case closed. Value of the case was determined at € 1.500.000.
Comment
- As parties did not ask for a reimbursement of part of the court costs at the same time, the Court establishes the value of the litigation so that parties know what they can ask for reimbursement.
- No decision about costs is necessary as parties agreed. R. 265.2(c) RoP does not require a separate cost decision if parties have an agreement to bear their own costs. Indeed. it seems superfluous (as the Local Division in Munich did) to also make a cost decision if parties agree.
10 January 2025
Local Division Paris, Hewlett-Packard v Lama
Cost procedure
Background
On 13 November 2024 the Local Division of Paris had given judgment in proceedings between the parties regarding two patents.
In that decision the Court held (in translation from French) “Each party bears 50% of the costs of the present action such as these are established in separate proceedings at the request of the parties.”
Present proceedings
On 13 December 2024, both parties asked the Court to decide on the costs.
Both parties asked for reimbursement by the other party of the € 7.500 court costs and € 168.000 as costs for the representation, asking to lift the ceiling for recoverable costs with 50% because of the technical complexity of the case and the fact that the case involved two patents.
Decision of the Court
- The Court cited Art. 69 UPCA and R. 252 RoP and the decision of the Administrative Committee of 24 April 2023 with respect to the ceiling of recoverable costs.
- The Court is free to lower or increase the ceiling.
- The Court does not consider the case technically complicated and also the fact that two patents were involved does not justify an increase of the ceiling.
- Costs made before the proceedings or made with respect to efforts to settle the case are not to be reimbursed.
- The Court concludes that each party owes the other party € 112.000 (the ceiling) for representation costs.
- Parties have each paid € 15.000 in court fees. Each has to bear 50% according to the decision of 13 November 2024, so each party owes the other party € 7.500.
Comment
I am still puzzled by the decision of 13 November 2024. The way I understand the phrase is that of the total costs each party has to bear 50%. That is exactly what has happened. Why then has each party to pay to the other party € 112.000 and € 7.500 (which payments I assume cancel each other out because of compensation – according to French law? -)?
Why did the Court on 13 November 2024 not decide that each party bears its own costs?
Why did parties go through these cost proceedings?
10 January 2025
Local Division Munich, Netgear v Huawei
UPC_CFI_152/2024; UPC_CFI_168/2024
Settlement
Background
The parties litigated about EP 3678321 and EP 3611989. The parties then settled.
Present proceedings
The claimant requests withdrawal of the proceedings. The defendant agrees. The claimant asks 40% back of the court costs.
Decision
- Request is accepted.
- Case is closed.
- Each party bears its own costs.
- Value of the litigation: 1 million.
- Claimant will get 40% of court costs back.
Comment
- Court states that it has to give a cost decision!
- 40% reimbursement can be obtained if the case is closed before the end of the interim procedure (R. 370.9.b.ii RoP).
10 January 2025
Local Division Munich, Huawei v Netgear
Withdrawal after decision
Background
Both parties filed a request for withdrawal with respect to respectively their infringement and counterclaim for invalidity case and agreed with the withdrawal by the other party.
JR considers:
- A withdrawal is also possible after a decision in first instance of 18 December 2024, against which appeal is still possible.
- In view of the date on which the request is made, parties do not get court fees back.
- 265.2(c) RoP orders the Court to make a cost decision even if a party does not ask for it.
Decision
The JR allows withdrawal, no reimbursement of court costs, and each party bears its own costs.
Comment
A withdrawal after the decision in first instance decision which can still be appealed makes sense. It ensures that parties cannot appeal and that the decision becomes final. Parties could of course also simply agree not to appeal, but then the decision is final and would have binding force in future or other disputes between the parties.
10 January 2025
Court of Appeal Luxemburg, EOFlow v Insulet
Nothing to adjucate
Background
Insolet filed PI proceedings against EOFlow in the Central Division seat Milan and against Menarini in the Local Division in Milan. The cases are about the same patent and the same infringement question. Menarini is the European distributor of EOFlow.
EOFlow requested the Central Division Milan that the two cases would be heard together.
The JR refused, the panel agreed. EOFlow appealed.
Court of Appeal rejected EO Flow’s request for a speedy appeal.
EOFlow and Menarini won the PI proceedings.
Appeal of the refusal to join the PI proceedings
The JR of the Court of Appeal asked the parties that it has to be considered if there is no longer a need to adjudicate pursuant to R. 360 RoP. The parties nevertheless answered with pleadings.
Decision
- Disposes of the appeal.
- No costs for Insolet because this “disposal” is not a final order.
Comment
- If the Court of Appeal will not already decide to hear the PI appeal cases together on it own motion, EOFlow can still ask to deal with the two appeals together which of course makes a lot of sense (and made a lot of sense also in first instance!).
– All comments above are Prof. Hoyng‘s personal opinions –
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