2024 UPC June

IPPT20240627, UPC CFI, LD Mannheim, Panasonic v Orope
Case management order. The following information and questions have been sent to the parties by the judge-rapporteur in order to structure the further proceedings (Article 43 UPCA, Rule 9(1) RoP, Rule 101(1) RoP). In case of technically complex subject-matter statements on the interpretation of features of the asserted patent claim which are not readily understandable by themselves must already be made in the statement of claim (Rule 13(1)(n) RoP). Here: Location of reference signals for determining the uplink channel quality in an available transmission bandwidth to avoid interference with control channels in the context of LTE standardisation. In the Defence to the counterclaim for revocation, the patent proprietor must base his argumentation on specific features of the patent claim (Rule 29A RoP). The plaintiff's statements in the reply to the counterclaim are not clearly recognisable in relation to the individual features - this must be made up for. It is insufficient to deal with the defendant's arguments without a clear reference to the features of the asserted claim, without it being clearly recognisable why a specific feature of the claim is not covered by the prior art disclosure. Rule 30(2) RoP is a strict rule of preclusion which allows subsequent requests for amendment of the patent only with the permission of the court. Corresponding requests must be substantiated in detail. When assessing whether a new amendment is permitted, it will be important to consider whether the new amendment would have been necessary at an earlier stage in response to the invalidity plaintiff's arguments and whether the late request for amendment causes delays in the proceedings. Defendants will have to clarify what the current version of the FRAND counterclaim (seeking a FRAND licence rate determination and/or a declaratory judgemen) is aimed at.

IPPT20240627, UPC CFI, LD Düsseldorf, Dolby v HP
Time limit for filing reply to Statement of defence which includes a Counterclaim for revocation extended to two months from the date of access to unredacted information under confidentiality regime (Rule 9(3) RoP, Rule 29(a) RoP, Rule 262A RoP). Need to consult with employees of patent pool related to FRAND objections that relate to a definable part of a statement; interest of effective proceedings and preventing a permanent divergence of time limits if the conduct of the oral hearing is not jeopardised by an extension of the time limit relating to the entire statement.

IPPT20240626, UPC CFI, CD Paris, Suinno v Microsoft
Unfounded objection that representative is not an independent counsellor (Rule 290(2) RoP). The mere fact that […] also carries out active administrative tasks on behalf of the represented party and that he may be directly interested in the outcome of the case is not decisive in order to consider that the representative is not independent for the purposes of interest here. Possible violation of the obligation of independence can only be asserted by the represented party, not by the counterparty. Access to two agreements containing business secrets related to granted licenses restricted to Microsoft attorneys and Microsoft directors who have a legitimate need to access these Agreements for the purposes of the current proceedings (Article 58 UPCA, Rule 262A RoP).

IPPT20240626, UPC CFI, LD Düsseldorf, Dolby v HP
Intervention by manager of patent pool to which the plaintiff has contributed its HEVC-essential patent portfolio, including the patent in suit, allowed (Rule 313 RoP). The intervener has a sufficient legal interest in the outcome of the legal dispute. […] the intervener also fulfils the plaintiff's FRAND obligations and has been in talks with the defendant's group for some time about the conclusion of a pool licence.

IPPT20240625, UPC CFI, LD The Hague, Amycel
Simultaneous interpretation during the oral hearing  into Polish allowed, but to be decided later whether the costs thereof shall become costs of the proceedings (Article 51 UPCA, Rule 109 RoP, Rule 150 RoP). Rule 109 RoP includes a double/twofold ‘appropriateness-test’, in the sense that it is to be decided (i) whether allowing translations during the oral hearing is appropriate and (ii) whether it is appropriate that the costs of such interpretation shall become costs of the proceedings. Simultaneous interpretation will in general already be appropriate if the language of the proceedings is not a language that is sufficiently familiar to (one of) the parties or to their counsel. The threshold for allowing interpretation as such is therefore low for R. 109.1-requests. For R. 109.4-requests the threshold seems even lower: for self-paid translations the only restriction seems to be whether it is practically possible (R. 109.2 second sentence). Generally it cannot reasonably be expected that the UPC provides translations to all languages, even if these have no relationship at all with the UPC or with one or more Contracting Member States. It seems reasonable to interpret R. 109.5 in such a way that it does not prevent the Defendant from submitting the costs incurred for interpretation for recovery as costs of the proceedings at a later point in the proceedings, if facts and/or circumstances are established that make it unreasonable for Defendant to bear these costs. 

IPPT20240624, UPC CFI, LD Düsseldorf, Dolby v Asus
Time limit for filing reply to Statement of defence which includes a Counterclaim for revocation extended to within two months of access to unredacted information under confidentiality regime (Rule 9(3) RoP, Rule 29(a) RoP, Rule 262A RoP).

IPPT20240621, UPC CoA, Mala v Nokia
Reasoned request to stay proceedings must be in statement of appeal and lack thereof cannot be remedied at the interim conference (Rule 21.2 RoP). As a general rule, the main proceedings are not stayed pending an appeal because of the principle that proceedings before the Court of First Instance must as far as possible continue unhindered by any (procedural) appeals (Rule 223 RoP, Article 74 UPCA). A stay may be granted under exceptional circumstances, having regard to the relevant circumstances of the case, such as the stage of the revocation proceedings before the Court of First Instance, the stage of the appeal proceedings and the interests of the parties or if the impugned order were manifestly erroneous.

IPPT20240620, UPC CFI, LD Düsseldorf, Tridonic v Cupower
Before the conclusion of the written procedure: decision to hear both the infringement and revocation action and to request the assignment of a technically qualified judge to the panel (Article 33(3)(a) UPCA, Rule 37 RoP). As parts of the panel are currently only employed on a part-time or case-by-case basis, it appears appropriate for reasons of procedural economy to obtain the assignment of the technical judge at an early stage in order to be able to take this into account in the scheduling as early as possible. Otherwise, there would be a considerable risk of delays if the technical judge is only called in during the interim proceedings and is already otherwise prevented from attending. 

IPPT20240620, UPC CoA, Curio v 10x Genomics
No need for a new confidentiality order if the information or evidence is already protected by a confidentiality order but is only contained in another statement or document lodged in the appeal proceedings (Rule 262A RoP).

IPPT20240619, UPC CoA, ICPillar v ARM
No suspensive effect given to appeal from order to provide security (Rule 220 and 223 RoP, Article 74 UPCA) and request to expedite appeal rejected (Rule 9(3) RoP). Granting suspensive effect to an order pursuant to R.220.2 RoP, is possible under Article 74 UPCA notwithstanding R.223.5 RoP. Suspensive effect only to be given under exceptional circumstances. An example of such exceptional circumstances would be where the appeal is devoid of purpose or would render the appeal largely ineffective if the impugned order were not given suspensive effect, because the consequences of enforcement of the impugned cannot be effectively reversed if the order is later set aside (see UPC_CoA_407/2023, order of 6 November 2023; UPC_CoA_177/2024, order of 2 May 2024). Other exceptional circumstances that could justify suspensive effect would be where the impugned order is manifestly wrong (See UPC_CoA_2/2024, order of 18 January 2024). No suspensive effect given to appeal from order to provide security for costs. ICPillar not unable to comply with the order, nor would it lead to extreme detriment if it complies. Request to expedite appeal rejected (Rule 9(3) RoP). The circumstances of the present case are not of such an urgent nature that the interests of ICPillar outweigh the interest of ARM and the principles of due process. 

IPPT20240619, UPC CFI, LD The Hague, Abbott v Sibio – EP283
Preliminary measures denied. No sufficient degree of certainty that patent is valid (Article 62(4) UPCA; Rule 211(2) RoP). Added matter under the so-called “gold standard” disclosure test of the Boards of Appeal of the EPO for added matter (article 138(1)(c) EPC). International jurisdiction UPC (Article 31 UPCA). After Sibio c.s.’ defence, Abbott indicated that it did not mean to include Ireland, so there is no need to decide on competence with regard thereto. Sufficient degree of certainty that the patent is valid (Rule 211(2) RoP) is lacking if the court considers it on the balance of probabilities to be more likely than not that the patent is not valid.The burden of presentation and proof with regard to the facts from which the lack of validity of the patent is derived and other circumstances favourable to the invalidity or revocation lies with the opponent (Art. 54 UPCA). The Court applies the so-called “gold standard” disclosure test of the Boards of Appeal of the EPO for added matter (article 138(1)(c) EPC) which is also the standard used in many Contracting Member States of the UPC. Claim 1 appears to be the result of an unallowable intermediate generalization, at least relating to the omission of the presence of an elastomeric seal in the recess of the base portion of the enclosure (in feature 1.4). For intermediate generalization to be considered allowable (in the sense that it does not result in added matter), it should be (clearly) established that there is no structural and functional relationship between the omitted feature and the other features incorporated into the claim. Abbott ordered to bear reasonable and proportionate legal costs and other expenses incurred by Defendants in these proceedings, up to the applicable ceiling (Art. 69 UPCA; and R. 118.5 and R. 150.2 RoP); Even if the applicant were to be successful in the proceedings on the merits, it will still have to bear the costs of these proceedings as the unsuccessful party. 

IPPT20240619, UPC CFI, LD The Hague, Abbott v Sibio – EP879
Immediately enforceable preliminary injunction for direct infringement and order to deliver up devices in direct or indirect possession, subject to a recurring penalty payment (Rule 211 RoP). International jurisdiction UPC (Article 31 UPCA): competence for Ireland undisputed (Article 26 BR); Court does not understand the application to also involve the UK. Abbott’s interests outweigh any interest of Sibio (Rule 211(3) RoP); action not devoid of purpose (Rule 360 RoP). Given Sibio c.s.’ breaches of their cease-and-desist declarations, which do not include an irrevocable penalty payment in case of breaches.  According to their submissions, Sibio c.s. has left the markets where the patent is in force. This court therefore fails to see any legitimate interest on their part in opposing the preliminary injunction sought.

IPPT20240617, UPC CoA, Audi v NST

IPPT20240617, UPC CoA, Volkswagen v NST
Further exchange of written pleadings in appeal proceedings allowed (Rule 36 RoP). The Court of Appeal considers the request by Audi to be sufficiently reasoned. It wants to correct some facts submitted by NST in relation to its behavior in the market, together with written evidence. The Court of Appeal considers that Audi has a sufficient interest to do so and that the written procedure is the most convenient phase to do so. The Court of Appeal therefore allows the request. There is no need to consult NST about this request. NST will be given the opportunity to respond to the additional statement lodged by Audi within 14 days after the day on which this order is issued.

IPPT20240613, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Confidentiality regime (Rule 262A RoP) and extension of deadlines for filing Rejoinder to the Reply in infringement proceedings and Reply to the Defence in the revocation proceedings (Rule 29(d) RoP): rejected for the technical aspects of the case (legal facts and infringement facts); granted for FRAND aspects of dispute (plaintiff's submission contained in the pleadings designated as "Supplement Replica Part II Non-Technical Part" together with annexes on the FRAND aspect of the dispute).

IPPT20240612, UPC CFI, President, Samsung v Headwater
Change of language (unobjected) of the proceedings from German to English (Article 49(5) UPCA, Rule 323 RoP). In the absence of objection from Headwater Research LLC., the language of the proceedings shall be changed to the language in which the patent at issue has been granted - namely English. It is to be noted that the Applicants did not request that existing pleadings and other documents should be translated. 

IPPT20240606, UPC CFI, LD Milan, Oerlikon v Bhagat
Interim conference (Rule 104 RoP). Access granted to written report and any other results of the measures of inspection of the premises and preservation of evidence which can only be used in the proceedings on the  merits (Rule 196.2 and 199 RoP). No order to declare chain of sales and resale by defendant (Rule 104(e) RoP). Does not appear necessary in these proceedings, also in light of the principle of proportionality (paragraph n 3. of the Preamble of the R.o.P.), the allegatory and evidentiary framework collected, such an order does not appear necessary. Claim may be made in future procedure for determination of damages. Value of the case provisionally set at € 750.000 (Rule 104(j) RoP). In the light of all the above considerations, the Judge Rapporteur considers, in the context of an assessment as already stated only provisional, subject to better examination by the Court also in the light of the documents whose filing is authorised as shortly, that the value of the case in € 750,000.00. And this for the purpose of the scale of the limits for recoverable costs. Allowed to file new documents preparatory to the review of the value of the case and the Court's review of the defensive efforts undertaken, in relation to the assessment of the costs of litigation.

IPPT20240604, UPC CFI, LD Hamburg, Avago v Tesla
Rebuttable presumption that the registered person is the patent proprietor (Rule 8(5) RoP). Defendants allowed to examine those resolutions to which the property right holder listed in the register, i.e. the plaintiff, has itself referred in the proceedings (Rule 190 RoP), inluding: the resolution of the Board of Directors of [...] to authorise [...] to act on behalf of [...], as referred to in the Power of Attorney submitted as Exhibit EIP 12 and the resolution of the Board of Directors of [...] referred to in the Power of Attorney submitted as Exhibit EIP 12 authorising the transfer of the patent-in-suit from [...] to Avago Technologies General IP (Singapore) Pte. Ltd.

IPPT20240604, UPC CoA, Neo Wireless v Toyota
Opt out must be by all proprietors of all national parts of a European patent (Article 83(3) UPCA).  The object and purpose of Art. 83(3) UPCA make clear that the opt out Application must be lodged by or on behalf of all proprietors of all national parts if there are more validations. The legislator has expressly chosen that, as a default position, there is an automatic transition into the jurisdiction of the UPC and that the status quo prior to the establishment of the UPC is not maintained. The interpretation, whereby all proprietors of all national parts must file the opt out Application, is in accordance with the default position chosen by the legislator. If not all proprietors of all national parts of an European patent file the opt out Application, the ‘default position’ stays in place.

IPPT20240604, UPC CoA, Daedalus v Xiaomi
Application to withdraw appeal in relation to two (Xiaomi DE and Xiaomi NL) of several defendants rejected (Rule 265 RoP). The Court of Appeal will consider whether those respondents have already been served the Statement of grounds of appeal, whether they want the appeal to be adjudicated in relation to themselves as respondents and whether they have a legitimate interest in adjudication. Main consideration for legitimate interests is the content of the order under appeal and how a withdrawal affects the respondent. Part of the appeal is that Daedalus is requesting that service on Xiaomi Communications Co. Ltd. and Xiaomi Inc is made via Xiaomi DE. Xiaomi DE is a defendant before the Court of First Instance, has responded to the appeal, and will be affected by a reversal of the order of the Court of First Instance since, in that situation, it will be burdened by service on behalf of affiliate companies, which would result in internal responsibilities / liabilities, as it is supposed to inform the other companies of service having been made. Xiaomi NL, who owns all shares in Xiaomi DE, is a defendant before the Court of First Instance, has responded to the appeal, and will indirectly be affected by the outcome of the appeal since it will influence the course and length of proceedings before the Court. The latter aspect applies also in relation to Xiaomi DE. Question whether Rule 305 RoP allows a withdrawal of an appeal against one or more but not all defendants in the proceedings before the Court of First Instance in a case such as the one at hand is left aside. Rule 263.3 RoP is not applicable to withdrawal of an appeal against respondents in appeal proceedings since it allows for a an unconditional limitation of a claim in an action, while the present withdrawal is a matter of limiting not the claim but the respondents in the appeal proceedings.

IPPT20240603, UPC CFI, LD Hamburg, Ballinno v UEFA
Application for provisional measures dismissed because of a lack of urgency from a temporal perspective; unreasonable delay in seeking provisional measures (Article 62 UPCA, Rule 209(2)(b) RoP, Rule 211 RoP). No necessary measures to clarify the alleged infringement and obtain the documents required to support its claims were taken between mid-November 2023 (when it became clear that a settlement was not within reach) and mid-February 2024. Local Division not convinced with sufficient certainty that the Defendants infringe the patent in suit (Article 62(4) UPCA, Rule 211(2) RoP; Article 69 EPC). The realization of several features of the patent claim is disputed between the parties (see below under IV. 2.). On summary examination, the Court finds that the attacked embodiment does not make direct or indirect literal use of claim 1 or 8 of the patent in suit (see below under IV. 3.). An infringement by equivalent means has also not been sufficiently demonstrated (see below under IV. 4.). […] it cannot be concluded that it is more likely than not that the attacked embodiment makes literal use of the teaching of patent claim 1 and/or 8, and their dependent claims 3, 7, 10 and 15. The facts of the case do not convince the Court that the attacked embodiment establishes an infringement by equivalent means. The technology used in the “Connected Ball Technology” does not make use of the same technical effect. Neither can a support vector machine nor the functioning of the “Connected Ball Technology” in particular be seen as equivalent to the patented com-parison of sound signals.