27 January 2025
Local Division Munich, Avago v Tesla (re Fuchs)
File access request
Facts
Patentanwalt Läufer requests access to pleadings and evidence, particularly in the revocation case of Avago v Tesla.
Läufer cites training purposes, among other reasons, for the request.
Neither Avago nor Tesla object to the request.
Decision
The request is granted.
Comment
- No surprise, as this aligns fully with the case law of the Court of Appeal (Ocado v Autostore, CoA 404/2023)
- As mentioned, it seems more efficient for the Rules of Procedure (RoP) to be revised, making this a task for the Registry at first instance.
- In my opinion pleadings etc. are protected by copyright. So certainly if you organize trainings for patent attorneys and hand out copies of the pleadings as material for the students that may be a copyright infringement. I do not think the “no objection” of the parties can be seen as a consent to use the material for such purposes (see Article 10(2) of the Berne Convention (!)).
27 January 2025
Local Division Munich, Lenovo v Asus
Setting dates
The judge-rapporteur (JR) sets the dates for the interim conference (25 September 2025) and the oral argument (19 November). Parties may inform the Court until 18 September regarding topics they wish to discuss at the interim conference and submit a provisional cost estimate.
Comment
- Is it really necessary to publish these types of “house keeping orders”?
- Far more serious is that (interesting) decisions which are not published on the day of the decision may be overlooked by the interested reader because they are only published some time after the date of the decision. To give an example: if a decision rendered on 23 December was not published on that date but only on 15 January, the reader who reads all decisions published that day or that week, will never see the 23 December decision because that decision of 15 January is placed in the list of decisions published on 23 December. A preferred and much better way would be to publish the decision on the website on 15 January indicating that the date of the decision is 23 December. Alternatively, if it really is necessary to preserve the present system, the decision could be listed both under 23 December and (temporarily) under 15 January, and then 2 weeks or so later be deleted again from the list of 15 January.
27 January 2025
Local Division Munich, Avago v Realtek
Reimbursement after withdrawal of ex parte injunction application
Background
Avago had obtained an ex-parte injunction. Thereafter, Avago requested the withdrawal of the application, which was allowed by the Local Division.
Avago had first requested a 60% return of the court costs but was informed that it could not receive more than 20%.
Decision of the Presiding Judge
R. 370.9(b) RoP is not directly applicable to withdrawal in preliminary injunction proceedings, but the Court chose to apply it by analogy.
The Court granted the request for a 20% return of the paid court fees.
Comment
A reasonable interpretation of the Rules of Procedure.
28 January 2025
Local Division Düsseldorf, Fujifilm v Kodak
Decision with respect to EP 3594009
Case started 23 October 2023 and concluded on 28 January 2025: 15 months.
The Court’s decision
Jurisdiction against German defendant with respect to the UK
1. If the defendant is domiciled in a Contracting Member State (here: Germany), the Unified Patent Court has jurisdiction to hear the infringement action in respect of the UK part of the patent in suit. This also applies if the defendant has filed a counterclaim for revocation in respect of the German part of the patent in suit. Even then, as regards the infringement action concerning the United Kingdom, the Unified Patent Court has jurisdiction to hear the case.
Claim interpretation
2. The terms used in a claim should normally be given their broadest technically sensible meaning in the context of the claim in which they appear. Art. 69 EPC and its Protocol do not provide a justification for excluding what is literally covered by the terms of the claims by a narrowing claim construction based on the description or the drawings. A narrowing interpretation of the claims which deviates from the broader general understanding of the terms used therein by a skilled person can only be permitted if there are convincing reasons based on the circumstances of the individual case in question.
Implicit disclosure, added matter
3. The Court followed the case law of the EPO (See about implicit features Case Law of the Boards of Appeal, I.C.4.3, in particular T666/89).
Comment
1. Jurisdiction for the UK. This is standard case law. The situation may be different if the defendant by way of Preliminary Objection or in its Statement of Defence (?) raises as a defence the invalidity of the UK patent. If the ECJ in BSH Hausgeräte follows the Advocate General’s opinion, the Court will have the choice in either refusing jurisdiction for the infringement or to continue with the assessment of infringement and grant relief if it is not more likely than not that the UK patent is invalid. In that case, I think the Court should grant a conditional injunction as long as the UK patent has not been revoked by a final decision, see in my analogy R.118.2(a) RoP. The Court states that it can hand down a provisional decision in accordance with Solvay v Honeywell. That is indeed possible under Article 62 UPCA. However, as this is a case on the merits, I do not think that the decision on infringement should be provisional.
2. As said if the ECJ follows the opinion of the AG in Hausgeräte, the Court, with respect to non-EU countries, would have the option to either refuse jurisdiction over the infringement if validity is raised or proceed with the case based on a “more likely than not” approach to validity. In the case of a defendant who is sued in its place of residence (its natural forum), I would opt for the second option. However, if the case concerns a UK company sued as a co-defendant, I would as a rule abstain.
3. Claim interpretation. I agree in general, but I do not agree that something that is literally covered cannot be excluded. If it is clear from the description and drawings that the product that is literally covered does not embody the invention for which the patent was granted, then in my view, there cannot be an infringement (see, for the Netherlands, the Supreme Court decision in KLM v Handley Page, NJ 1942/519, and Cardiac Pacemakers v Lagergren, Court of The Hague, BIE 1990, nr 101). Of course, strictly speaking, the claim is then too broad, and the patent is partially invalid. One can compare it with a Gillette or Formstein defence. I also think that a Court should, if reasonably possible, interpret the claim in a way that maintains its validity. First of all, the patent system exists to stimulate inventions. So if there is an invention, the Court should preserve protection as far as reasonably possible. Moreover, it is in the spirit of Art. 138(2) EPC not to take more away from the patentee than what is justified.
4. Implicit disclosure, added matter. Also here, I agree in general. Everything that is (immediately) taught to the skilled person when they read the document with their common general knowledge is disclosed.
28 January 2025
Local Division Munich, Qualcomm v Shenzen
Settlement
R. 265 RoP withdrawal is approved.
60% court fees are reimbursed.
29 January 2025
Local Division The Hague, Abbott v Dexcom
Settlement
R. 265 RoP withdrawal.
20% of the court fees is reimbursed to the claimant.
Comment
Two similar decisions were published in the same case (UPC_CFI_424/2023) on the same day!
29 January 2025
Paris Local Division, C-Kore v Novawell
Confirmation of settlement
The parties settled the case a few days before the oral hearing (scheduled exactly 12 months after the start of the proceedings, fully adhering to the Rules of Procedure schedule).
Parties requested confirmation of the settlement by the Court (see R. 365 RoP).
Decision of the Court
The Court confirmed the settlement and confirmed that parties made an agreement with regards to the costs and had requested the Court not give an order with respect to the costs.
Comment
What is the purpose of such confirmation? R. 365 RoP states that after confirmation, the decision may be enforced as a final court decision. It is important to clarify what exactly this entails. It seems clear that if a party, under the settlement, is required to refrain from further sales of an infringing product, the other party may request the court to impose penalty payments for any continued sales.
However, does this also mean that in future proceedings involving different products, a party cannot argue for a more limited scope of the patent than what was accepted under the agreement? In other words, does the effect of confirmation equate to a judgment that binds the same parties not only to the decision itself but also to the findings within the judgment (e.g., regarding the scope of protection)? I do not think so. Confirming a settlement does not mean granting it the status of a court decision.
Article 79 UPCA states that a patent cannot be revoked or limited by way of settlement. However, parties may, of course, agree that one party will limit or surrender the patent.
29 January 2025
Decision of the Registrar
Request to withdraw protective letters
X wants to withdraw protective letters which it filed in accordance with R. 207 RoP
Registrar grants the request.
Comment
A protective letter filed with the Registrar will be removed from the Register after 6 months unless an extension is applied for (R. 207.9 RoP). However, nothing in the Rules explicitly addresses an earlier withdrawal of the letter. It seems logical that this should be permitted and that the Registrar has the power to grant such a request. This is comparable to the task of the registrar with respect to the opt-out and withdrawal of an opt-out (see also R. 3 RoP).
30 January 2025
Local Division Munich, Adeia Guides Inc v The Walt Disney Company
Extension of deadlines
Facts
Three defendants were served on different dates which would mean that the Statement of Answer would be due on three different dates. Parties agree on one deadline which is a week after the earliest deadline but before the latest deadline.
Court Decision
The Judge Rapporteur (JR) grants an extension of the first deadline to the agreed deadline.
Comment
Streamlining deadlines is efficient, and a delay of one week is acceptable. However, in principle, given the UPC’s objective to resolve cases within 12-14 months, it would be preferable to streamline deadlines to the earliest possible date by shortening later ones. If all defendants belong to the same corporate group, this should not pose a problem, as the group would still receive the full three months.
The argument of a “substantial workload and travel commitments to the US and Asia” cited by representatives of the defendant, is, in my opinion, not a valid reason for an extension under the UPC framework.
30 January 2025
Local Division Mannheim, Fujifilm v Kodak
Instructions for hearing
Judge-Rapporteur:
- The views expressed are preliminary
- Parties are free to address further points
Permanent injunction for the UK
The Court is inclined to separate the proceedings concerning the UK if there is no decision in BSH Hausgeräte.
Further Instructions & Questions
- Claimant has to clarify its claim.
- Since the Sonora X precursor were only marketed before 1 June 2023, any infringement regarding those precursors relates to the period before the UPCA came into force.
- What is the applicable law for these infringements?
- Does the UPCA has retroactive effect?
- What about the law applicable to UPC-CMS states for infringements after 1 June 2023?
- Does the Claimant have to clarify how much damages he wants for each country?
- Is Article 67 (request for information) also applicable to the period before 1 June 2023?
- Does the prior use have to take place in the UK, in order to obtain a prior user right for the UK?
Comment
How complicated can you make it!
This approach would completely contradict the UPC’s objectives if we end up with 17 different national infringement proceedings within one court, with judges who are only familiar with two of these national systems! Please read the UPC’s foundational considerations.
It is the clear intention that if a case comes before the UPC, that the Court applies the same law on acts of infringement and revocation. This is evident not only from the considerations that form the foundation of the UPCA but also from reading Article 24 UPCA.
There can be no doubt about this with respect to infringements occurring after 1 June 2023, but also for events that took place partially or entirely before this date. Article 83 UPCA explicitly allows these cases to be litigated before either a national court or the UPC. If the claimant (or the alleged infringer initiating a declaration of non-infringement) chooses the UPC, they also accept the application of Article 24 UPCA and the efficiency the UPC was designed to achieve.
Article 24 UPCA is very clear. First, the material provisions of the UPCA apply (see Articles 25-30, 65, 68). Then, the EPC provisions apply (Article 69, etc.). Even if one incorrectly believes that national law must be applied, the fact remains that all Contracting Member States are EPC members, and most have harmonized their patent laws with the Community Patent Convention. Therefore, it seems to me that it is up to the defendant to prove why a particular national law deviates from UPC provisions.
Section 61(1) of the UK Patent Act clarifies, among other things, that to obtain a prior user right in the UK, the invention must have been practiced in good faith in the UK before the priority date.
31 January 2025
Local Division Mannheim, Rematec v Europe Forestry
First instance decision (EP 2548648)
Timeline:
The decision does not mention when the case started, therefore the duration until the decision is unknown.
Oral argument: 27 November 2024
Decision: 31 January 2025, six weeks post-argument (in accordance with R. 158.6 RoP)?
Ruling
- The patent concerns a mill for comminuting materials (Mahlgut), especially wood chips.
- The Court defined the skilled person.
- The Court first addressed the meaning of various terms in the claims, in accordance with the Court of Appeal (Nanostring).
- Claim 1 is not novel.
- Further claimed auxiliary requests were also not deemed novel or inventive.
Comment
- The defendant requested invalidation in all EPC countries, demonstrating a surprising lack of knowledge of the BX Regulation, which resulted in them bearing 25% of the costs despite their victory. One gets the impression that both parties acted as if they were in EPO opposition proceedings! This patent should never have been granted, and the claimant should have known better. A simple prior art search or some practical experience should have made this clear.
- The Court explains that a product claim containing a purpose (here, a mill for comminuting material, especially woodchips) does not limit the claim. Therefore, all mills which comprise the features of the claim fall under the claim, and if prior art exists, it destroys novelty. This is standard case-law. However, I add that it is different if the purpose necessitates additional physical properties of the product that are not defined in the claim. In such a case, these physical properties should be considered part of the claim and limit the claim to products possessing such physical properties.
– All comments above are Prof. Hoyng‘s personal opinions –
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