2024 UPC May

IPPT20240530, UPC CFI, President, Samsung v Headwater
Change of language of the proceedings from German to English in proceedings between Samsung and American company Headwater (Article 49(5) UPCA, Rule 323 RoP). While considering that the claimant may also be in a critical situation and obligated to respond promptly for economic reasons, [...] the position of the defendant (s) prevails in the event that both parties are in a comparable situation. […]. Samsung needs to organise its defence in English;  adopting the language in which the patent was granted does not result in any inconvenience for Headwater Research LLC. which uses English in its communications and preparatory work on the case, as do the Defendants. 

IPPT20240528, UPC CoA, Carrier v BITZER Electronics
No stay of revocation proceedings pending EPO opposition, appeal rejected. (Article 33(10) UPCA; Rule 295(a) RoP). Oral proceedings in the opposition is 25 October 202; scheduled date for the oral hearing in the revocation proceedings before the UPC is 21 June 2024. As a general principle, the Court will not stay proceedings. The mere fact that the revocation proceedings before the UPC relate to a patent which is also the subject of opposition proceedings before the EPO is not sufficient to allow an exception to the principle that the Court will not stay proceedings. The principle of avoiding irreconcilable decisions does not require that the UPC always stay revocation proceedings pending opposition proceedings. The mere fact that the EPO has granted a request to accelerate the opposition proceedings is not sufficient to stay revocation proceedings before the UPC. Panel of three legally qualified judges (Article 9 UPCA). No reason for the Court of Appeal to depart from its case law that an appeal may be adjudicated by a panel of three legally qualified judges if the subject matter of the appeal proceedings is of a non-technical nature only and there are no technical issues at stake. No ground for requesting the CJEU to issue a preliminary ruling on the question of whether the Court of Appeal can determine its own composition.

IPPT20240527, UPC CFI, LD Munich, NEC V TCL
Extension of deadlines to file Statement of Defence: wrong Annexes were provided with the Statement of Claim; non-compliance with Rule 13.2 RoP.

IPPT20240522, UPC CoA, Volkswagen v NST

IPPT20240522, UPC CoA, Audi v NST

IPPT20240522, UPC CoA, Texas Instruments v NST

Request by the Appellants to expedite the appeal against an order in which an application for security for costs was dismissed and shorten any deadlines where possible is denied for being too unspecified and insufficiently substantiated. (Rule 9(3) RoP, Rule 224(2)(b) RoP).

IPPT20240521, UPC CFI, LD Munich, Dyson v SharkNinja
Preliminary injunction for Germany and France (Rule 211 RoP). Urgency (Rule 209(2) RoP): Two months is normally not an unreasonably long wait for filing an application for provisional measures in the case of a suspected infringement in two or more countries. Claim interpretation (article 69 EPC). The patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent. Nullity arguments in proceedings for provisional measures (Article 62 UPCA, Rule 211(2) RoP). The number of arguments raised against the legal validity in the present case must be reduced to the three best arguments from the point of view of the defendants. No interim award of costs (Rule 211(1)(d) RoP). There is no reason for a provisional decision on costs in proceedings to order interim measures if the summary proceedings - as here - must be followed by proceedings on the merits and no special reasons, e.g. an insolvency risk, have been put forward that would require such an order.

IPPT20240521, UPC CFI, LD Paris, ARM v ICPillar
Security for costs of € 400.000 ordered because of potential inability for Claimant to cover the legal costs in case of losing (Article 69(4) UPCA, Rule 158(1) RoP). Factors to be considered when ordering a security order include the financial position of the other party that may give rise to 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 in an unduly burdensome way, be enforceable. In the present case, there are no exceptional circumstances that would be considered as unduly burdensome to justify the order. Nor does the mere fact that the Respondent is domiciled in the United States of America justify an order for security for costs. Potential risk of inability to cover the legal costs of the other party in case of losing the litigation. Respondent in its written comments did not provide any indication of its financial situation. Insurance taken out to cover the financial risks is insufficient for two reasons. Firstly, the purpose of this type of insurance is to provide a financial protection for ICPILLAR (the insured party), and not to protect the potential rights of the ARM entities (the applicants of the Security for cost request). Secondly, the full terms of the said insurance have not been disclosed and it is hence unclear what are the actual terms of the insurance.

IPPT20240516, UPC CFI, LD Mannheim, Panasonic v Orope
Order to produce evidence in FRAND proceedings denied as being too vague and too broad as a mere request for investigation (Rule 190 RoP).Insofar as the defendants have requested the naming and submission of the licence agreements with the companies ‘X’ and ‘Y’, previously unnamed by the plaintiff, an order is no longer necessary after the plaintiff has in the meantime introduced these agreements into the proceedings, naming the contracting parties. Insofar as the defendants request the submission of all other agreements concluded by the plaintiff and to be concluded in the future regarding 3G and/or 4G SEPs that extend to mobile stations, as well as the agreements concluded by third parties in their possession, the request is too vague and too broad as a mere request for investigation.

IPPT20240515, UPC CFI, LD Munich, Headwater v Motorola
Deadline for filing Preliminary objection by defendants 3-5 is extended by agreement from 13/05/2024 to 17/05/2024 (the deadline for defendants 1-2) (Rule 9.3 RoP, Rule 19.1 RoP). If all parties agree on the request, the request must generally be granted unless there are serious reasons to the contrary. No reasons to the contrary are apparent in the present case.

IPPT20240514, UPC CFI, LD Hamburg, Ballinno v UEFA
Insolvency risk of the plaintiff is the relevant factor for security for costs of a party, not enforcement not enforcement risk in case of an EU domiciled plaintiff (Article 69(4) UPCA, Rule 158(1) RoP). Claimant to provide security for the legal costs of the Defendants in the (total) amount of € 56.000. As the starting point the undisputed facts point into the direction of the argument of the defendants that there is a risk of insolvency of the claimant when it comes to the reimbursement of the costs of the present proceedings. […]. In the present case the Panel has especially considered that the patent in suit was not only just recently assigned to the claimant, but that the transfer was performed months after the assignor entered into a pre-trial correspondence about a possible patent infringement with the defendants 2) and 3). This raises the concern that the purpose of this transfer might be to facilitate this litigation without any financial risk to applicant. 

IPPT20240514, UPC CFI, LD Düsseldorf, Dolby v HP
Leave to unconditionally limit the claim in action granted (Rule 263(3) RoP): The present action does not assert any claims against the realisation of the claimed teaching of the patent-in-suit by graphics cards of the NVIDIA Cooperation and/or companies affiliated with it.

IPPT20240514, UPC CFI, LD Milan, Oerlikon v Bhagat
Public interim conference and protection of confidential information (Article 45 UPCA, Article 58 UPCA). Ordered that the interim conference be open to the public, unless in the course of the interim conference, for the purposes of protecting confidential information, the Court decides to limit attendance to the parties' advocates only, in respect of specific matters dealt with, with particular regard to the issues examined in the order rendered on 6.5.2024. 

IPPT20240513, UPC CoA, VusionGroup v Hanshow
Claim features must always be interpreted in the light of the claim as a whole (Article 69 EPC). These features teach the skilled person that the chip and antenna of the radio frequency device should not be placed in the same location in or on the case. Sufficient degree of certainty that the right is being infringed (Rule 211.2 RoP; Article 62(4) UPCA) […] requires that the Court consider it on the balance of probabilities at least more likely than not that the patent is infringed.

IPPT20240510, UPC CFI, CD Paris, Cead v Bego
Request for simultaneous interpretations (Rule 109(1) RoP) rejected. The interests of the applicants are represented by three German-speaking representatives. In the course of the proceedings to date, they have made extensive submissions in German without the court becoming aware of any communication problems. The fact that the fourth legal representative does not speak German does not alter this assessment. Applicants' counsel is permitted to conduct the interim hearing and the oral hearing in English, optionally in Dutch, with simultaneous interpretation into German at their expense (Rule 109(2) RoP).

IPPT20240510, UPC CFI, CD Paris, Roche Diabetes Care v Tandem Diabetes
Preliminary objection rejected that UPC currently lacks jurisdiction because of violation of standstill agreement requiring a party has to inform the other party of the intention to file a lawsuit 90 days before the lawsuit is filed  (Rule 19 RoP). Jurisdiction – the ability of a specific court to hear and issue a decision on one or more specific disputes – has to respond to objective criteria which must not vary depending on the time of the filing of a claim or on the identity of the claimant.

IPPT20240509, UPC CFI, LD Munich, NEC V TCL
Plaintiff ordered to amend the statement of claim within 10 days by providing the correct HEVC standard (Rule 9 RoP). This can be done by filing an amended version of the statement of claim. In doing so, the plaintiff may also amend any other information that will facilitate service on defendants 2, 5 and 7.

IPPT20240508, UPC CFI, LD Munich, Volkswagen et al. v NST
Valid withdrawal of opt-out on behalf of NST by a representative included in the official list of patent attorneys kept by the Registrar pursuant to Art. 48.3 UPCA who was not required to justify with powers of attorney at the time of filing the application on behalf of NST (Rule 5.3(b)(i) RoP, Article 83.3 UPCA). NST has full standing to sue for a declaration of infringement of EP’669 and for a related claim for damages as assignee of the original owner, including fot prior infringements (Rule 8.5 RoP). NST has provided documentary evidence of the assignment of the patent in suit and of all the related rights. At this stage a detailed infringement outline and mapping of features for only one specific device by way of example is sufficient (Rule 13(n) RoP). At a later stage, it would be sufficient to show that this “infringement read” actually applies in the same way to all other devices included in a given list of infringing embodiments, if and to the extent that the infringement will be actually assessed. Sound reasons of case management efficiency for preliminary objections of lack of jurisdiction raised by the Defendants to be deferred to a later stage of the proceeding (Rule 20.2 RoP, Article 41.3 UPCA). The exceptions are related to the claim for damages for Defendants’ activities in the territory of the United Kingdom or, more broadly and generally, to the entire claims for damages moved against TI. 

IPPT20240508, UPC CFI, LD Munich, Huawei v Netgear
Order against the requesting party itself to produce license agreement under confidentiality regime (Rule 262A RoP). With reference to the statements of the Local Chamber Mannheim in the order of 30/04/2024, orders against the requesting party itself are in any case possible pursuant to Rule 103 RoP.

IPPT20240506, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Separation of proceedings in two separate proceedings ordered (Rule 303 RoP). Separation between the defendants already represented by lawyers and the defendants regarding which foreign service is to be effected in accordance with the Hague Service Convention that is expected to take some time. 

IPPT20240506, UPC CFI, LD Paris, Photon Wave v Seoul Viosys
An intervening party may not develop claims contrary to those of the party it is supporting (Rule 313 RoP, Rule 9 RoP) and may not independently develop claims and procedural methods distinct from those offered to the party it is supporting. Consequently, an intervener who has not filed a counterclaim for invalidity within the time limit set for the party it is supporting cannot claim an extension of time to file an independent claim. No change of language of proceedings from French to the language of the patent (English) (Rule 322 RoP, Article 49 UPCA). Even though the European patent at issue was granted in English, the plaintiff, a Korean company, chose to bring its action in French, thereby respecting the rights of the defendant, a French company established in France. Neither the nationality of the representative of one of the parties, nor the nationality of the intervening company, constitute serious grounds for proposing a change in the language of the proceedings for reasons of convenience or fairness.

IPPT20240506, UPC CFI, LD Milan, Oerlikon v Bhagat
Lawyers only confidentiality club by consent with respect to a document filed in preparation for the Interim Conference in connection with the JR's invitation to document the costs (Article 58 UPCA, Rule 262A RoP)

IPPT20240502, UPC CFI, CD Paris, Nokia v Mala Technologies
Preliminary objection against jurisdiction of the UPC because of ‘lis pendens’ with German revocation action rejected (Rule 19.1(a) RoP, Article 71c Brussels I, Article 83 UPCA). Lis pendens rules of Article 71c(2) Brussels I Reg recast do not apply  to a case in which the lawsuit before the national German court was brought two years before the beginning of the transitional period. No stay of UPC revocation action possible because of pending German revocation proceedings. Article 30 (1) Brussels I Reg recast is not applicable and in accordance with Art. 33 (10) UPCA and Rule 295 RoP, the UPC may only stay its proceedings in cases involving EPO opposition proceedings when a swift decision is anticipated from the EPO. No time extension for lodging Statement of defence to revocation because of preliminary objection (Rule 49.1 RoP, Rule 9.3 RoP). 

IPPT20240502, UPC CoA, PMA v AWM
Suspensive effect given to appeal of restitution order (that that shall take place from 5 June 2024) to ensure that there is time to decide on the appeal before the impugned order is enforced (Article 74 UPCA). No decision on the costs since this order is not a final order or decision concluding an action (Rule 242.1 RoP).

IPPT20240501, UPC CFI, LD The Hague, Keestrack v Geha Laverman
Withdrawal of proceedings pursuant to a settlement (Rule 265 RoP, Rule 11 RoP). Restitution of part of the court fee appropriate. With the case being terminated at an early stage, i.e. after the issuance of the summons and before the filing of a reply by the respondent, and therefore before the 'written proceedings' are concluded, 60% of the court fees paid will be refunded (Rule 370.9(b) RoP). Delay in response considered timely filed (Rule 9.2 RoP). The delay in the respondent's response is apparently due to problems with CMS, and does not affect the applicant's legal position (other than delay). The response is therefore considered timely filed in this case, also given the timely submission by email.