6 February 2025
Local Division Mannheim, Panasonic v Oppo
Less redacted SEP decision
Comment
- This is the final public version of the decision of 22 November 2024 after the parties provided comments on what should remain redacted (i.e. not published due to confidentiality). I refer to my comments on the 22 November 2024 decision (published in Week 47, 2024).
- In this case, the defendant asked at the last moment to postpone the decision because the parties were settling. The Court refused (see the order of 22 November, published in Week 47, 2024). The parties then settled after the decision. The Court rightly decided that there was no reason to reimburse court fees (see the order of 3 February, published in Week 6, 2025).
7 February 2025
Milan Local Division, Dainese v Alpinestars
R. 9 RoP – Request for Extension of Deadline
- The Defense to Counterclaim for Revocation and Reply to Statement of Defence were due on 13 February 2025.
- On 13 February, the Board of Appeal was scheduled to hear an opposition against one of the two patents invoked by Dainese.
- Dainese requested an extension.
Judge-Rapporteur (JR)
Granted a two-week extension.
Comment
- A very logical decision, which (as the JR rightly points out) makes for a far more efficient proceeding, assuming the Board of Appeal revokes or amends the patent. In that case, the pleadings due on 13 February would either not be necessary or would not make sense.
- Quite frankly, I don’t understand why the defendants were objecting to such a sensible request: clearly it was going to be granted.
- The Milan Court has a habit of citing the full texts of all relevant Articles/Rules, which indeed makes life easier for readers who don’t know all the provisions by heart!
8 February 2025
Local Division Munich, Motorola v Ericsson
R. 262A RoP
Judge-Rapporteur (JR):
- Dismisses Ericsson’s R. 262A RoP request, which would have prevented Motorola from discussing and disclosing to its parent company, Lenovo, information originating from Lenovo itself.
- The JR stated—correctly, in my opinion—that Lenovo and Motorola must be seen as the same entity in this context. An order preventing a party from disclosing its own information makes no sense!
Comment:
- This seems like an entirely logical decision. R. 262A RoP governs the obligation to keep confidential information that belongs to the requesting party and which that party wants to introduce as evidence in the litigation.
- You cannot request an order that forces the other party to keep its own information confidential. That is entirely up to the party that “owns” the information.
10 February 2025
Local Division Düsseldorf, Dolby v Asus
Settlement
- The parties followed Rule 265 RoP, requesting a Court decision allowing them to withdraw their claims, with each party bearing its own costs.
- As the settlement was reached before the end of the written procedure, the parties were entitled to a 60% reimbursement of court costs.
- The Court ordered the Registry to process the reimbursement “as quickly as possible”.
Comment:
- As I have said many times before: settlements handled via R. 265 RoP by parties and Divisions are, in my view, a waste of time. This should be a point of attention in any future review of the Rules of Procedure.–
- The same might apply to the reimbursement of court fees, which, in my view, is overly generous.
- If a party chooses to litigate as a means to ultimately reach a settlement, then that litigation serves a valuable purpose—so why shouldn’t they pay for it?
- If a party wants to avoid court fees, then they should settle without involving the Court.
10 February 2025
Local Division Düsseldorf, Syngenta v Sumi Agro
(Link no longer available)
Scheduling order
- The Court schedules well in advance:
– Interim Conference: 19 September 2025 (via video).
– Oral Hearing: 10 December 2025. - The Court requests the President of the Court of First Instance to appoint Judge Dorland-Galliot as Technical Judge.
Comment:
- It is unclear why the Judge-Rapporteur specifically requested this Technical Judge. The appointment of the Technical Judge is up to the President of the Court of First Instance, and while this request does not override that authority, it is unlikely that the President would appoint someone else. It would be interesting for both the President, the parties, and readers to know why this specific request was made.
- It is also up to the President of the Court of First Instance to appoint the (second and) third judge of different nationality in a panel. Although one can understand the wish of having always the same third judge for efficiency reasons, I think that this is not desirable for the UPC. The national judges of a Local Division should be exposed to different third judges and different other national traditions. It means also that more judges get to know each other, which will create a more international outlook and understanding. It would also give the opportunity to have less experienced judges gain more experience, which enhances the quality of the Court. If indeed a Local Division is very busy, this can be and is addressed with the appointment of further judges. Finally, most of the time claimants have a choice of venue and could get a less busy Local Division!
11 February 2025
Court of Appeal, Suinno v Microsoft
Representation
Background
- Suinno filed an infringement claim and also applied under Rule 262 RoP (Public access to the register) and Rule 262A RoP (Protection of Confidential Information).
- The Judge-Rapporteur (JR): rejected Microsoft’s objection that Suinno’s representative lacked independence and granted the application.
- Microsoft requested a review of case management orders under Rule 333 RoP.
- The Court: ruled that Art. 48(5) UPCA and Art. 19(5) of the Statute must be interpreted to require the representative to be independent.
- The Court found that Suinno’s representative was not independent, as he was also the managing director and shareholder of Suinno.
- The application was therefore dismissed.
- Suinno appealed.
Court of Appeal Decision:
The Appeal was rejected.
Grounds for Decision:
- Except for actions under Art. 32(1)(i) UPCA, parties must be represented by a qualified representative (Art. 48(1)(2)(7) UPCA).
- Under Art. 48(5) and (6) UPCA, the rights and obligations of representatives are further specified in Part 5, Chapter 3 of the Rules of Procedure.
- Art. 48(1)(2) UPCA implies that a party cannot represent itself.
- A corporate representative or any other person with significant administrative or financial authority (such as a high-level management position or a significant shareholding) may not serve as a representative.
- The Court referenced ECJ decisions, concluding that Suinno’s representative lacked the necessary independence.
- Any new actions after the Statement of Appeal were deemed irrelevant—facts and arguments must be included in the Statement of Appeal.
- The same applies to observations submitted after the hearing under an R. 9.3 RoP application.
- The Court of First Instance must determine whether a representative is qualified to act in court proceedings. This appeal only concerned an R. 262A RoP request.
Comment:
- It is very clear from both the UPCA and RoP that representation should be by an independent professional, which is also reflected in Rule 2.4.1 of the Code of Conduct for representatives.
Truly independent means in my opinion that I can act within legal and ethical boundaries in the best interest of my client but also that I have the freedom to refuse to act if I think what is asked of me is not lawful, not ethical, or not in the client’s best interest. If you are employed by your client, you do not have that freedom. - I also admit that in practice this generally does not give rise to problems, although I believe that in litigation (strategy) there is a higher risk this may become a problem than when an employed patent attorney’s task is drafting and prosecution patents.
- I am not a patent attorney, but here is one example from my own practice. During litigation you find out that an employee of your client before the priority date had disclosed the invention during a quest lecture at a South African University. The client does not want you to disclose this because it is unlikely the defendant finds out, and winning is important for the company. Would it not be much easier for me as an independent representative to say that I cannot do that because it would be unethical, than for somebody else who is completely dependent on their employer in terms of income, career etc.?
- In an ideal world, representatives should be truly independent. Quite frankly, in high-stakes litigation, if I were a company, I would not put my employees on the line—I would entrust the case to an independent, experienced representative.
- The Court of Appeal recognized that we do not live in this ideal world. The fact that patent attorneys with a certificate are allowed to act as representatives means that there will inevitably be many employees of parties with such a certificate. Moreover, various national bar rules in certain countries already permit lawyers to be employed under strict conditions, although I am not aware of any such lawyer acting as a representative in the UPC.
- Since the UPCA does not contain an explicit rule forbidding a representative from acting for their employer, the Court could not categorically decide that an employed representative is always not independent.
- However, the case at hand was fairly clear-cut. If the representative and the party are effectively the same entity, then there is no doubt that independence is compromised. In my view, the Court of Appeal’s ruling provides a clear framework for deciding such cases. The general rule is simple: being employed by a party to the dispute does not in itself disqualify someone from acting as a representative—but when a representative has significant control or influence over the party they represent, that is where independence becomes an issue.
11 February 2025
Local Division Helsinki, AIM v Supponor
Amendment of claim
Background:
- The Helsinki Local Division initially dismissed AIM’s case due to lack of jurisdiction following a preliminary objection.
- The Court of Appeal overturned the decision, and the case did not proceed during the appeal.
AIM requested:
- to add a defendant.
- to get an injunction for Spain.
- to add companies whose services are used to infringe.
- to update the Statement of Claim to include equivalence arguments in light of decisions from other Divisions.
All requests were granted.
Comment:
The decision is practical. The case was effectively suspended for almost a year due to the preliminary objection appeal. In that time, many developments occurred that were unforeseen when the original Statement of Claim was filed. It was both efficient and logical to allow an updated Statement of Claim rather than requiring a completely new case (which would involve new service issues, etc.). This was ultimately the most efficient course of action. As defendant was granted three months to answer its rights were fully respected.
12 February 2025