Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC.
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17 March 2025
Local Division Munich, Edwards v Meril
Confidentiality
Background
In these cost proceedings, Edwards asks for costs with interest calculated the German way and requests to impose a confidentiality regime with respect to (certain) information about these costs.
Judge-rapporteur (“JR”)
After the JR’s suggestion that defendants could get full access but not the public (R. 262.2 RoP), implying that Meril has to keep the information confidential, Edwards amended its claim according to the JR’s suggestion.
The JR decides accordingly.
Comment
- As the JR also notes, R. 262.2 RoP is drafted such that it is triggered by a request by the public for pleadings and/or evidence, and the party or parties concerned invoke confidentiality within 14 days after being informed of the request.
- However, it can be practical to already decide about this confidentiality during the proceedings ex officio (without a third party having asked for the documents) and that is what the JR does.
- Of course, as the JR also decides, such decision automatically triggers that the other party should not make the information public.
- The JR rightly takes in consideration the interest of the public at large and states that although it may be interesting for a potential litigant to have information about the costs of lawyers, such information is not of great interest, as it is based on agreement between the client and the lawyers.
- The JR is nice to the lawyers, but I can imagine that the users of the system could be interested in seeing what a law firm charges for a case. Of course, I assume – although I sometimes doubt it – that users first of all go for quality and thereafter for price. They will also realize that hourly rates are certainly not a very good yardstick for costs, as efficiency is important. As general counsel of Windsurfing International, my experience was also that some lawyers and patent attorneys are very bad in estimating the costs (being (too) optimistic as they want to get the case). So one of my colleagues (a GC of another company) told me that in his report to management, he always doubted the estimate!
18 March 2025
Local Division Munich, Sun v Roku
R. 19.1 RoP
Background
Claimant opted out in May 2023 and withdrew the opt-out on 21 May 2024. The defendant raises a preliminary objection on the basis of R. 19.1 RoP in the infringement suit started by the claimant. The defendant argues:
- The defendant argues that the Court has no jurisdiction because the UPCA is contrary to EU law. The UPCA is contrary to Art. 267.1 of the EU Treaty and therefore invalid. The national courts have jurisdiction.
- The changes made after Opinion 1/06 of the CJEU dated 8 March 2011 on the “draft UPCA” have not resolved the fundamental problem that it concerns an agreement between Member States without the participation of the EU which agreement has taken away competence of national (patent) courts, without the UPC being part of the national courts of such member states.
The Court
- The Court considers that R. 19.1 RoP is not applicable with respect to all arguments based on the ground that the UPCA (and the UPC) violates EU law.
- The Court dismisses the argument that the withdrawal of the opt-out was not valid because the CMS does not show the power of attorney of Mr. Vigand (representative for the plaintiff with respect to the withdrawal of the opt-out). Such power of attorney is not necessary for a representative.
- Also not mentioning the withdrawal of the opt-out in the Statement of Claim (R. 13.1 RoP) is not a ground under R. 19.1 RoP and therefore no basis for a preliminary objection.
- The Local Division is competent because among others infringement has taken place in Germany, also if this happened before the entry of the UPCA.
Comment
- The defendants have spent a lot of time and money on all the arguments why the UPCA would violate the EU Treaty and the UPC therefore would not be able to deal with patent infringement. That, according to the defendant, is for the national courts.
- In reading all this, I wondered:
a. Does the defendant really believe that, after the decision of the ECJ on the Spanish and Italian complaints, the advice of the ECJ and the constitutional complaints in Germany, the ECJ is going to blow up the UPC, creating complete chaos?
b. And what would be the result of all that? It would be a case in a national court. The Dutch defendant would be sued together with the US parent in The Netherlands with as a result (after BSH Hausgeräte) a cross-border decision! - The JR in Munich has a good solution with respect to the EU story. He decides that R. 19.1 RoP is not applicable. A very practical solution, although R. 19.1 RoP states under “a” as possible objection that the Court is not competent. Is that not in essence what the EU story is all about?
- The argument that there was no power of attorney for the representative in the CMS with respect to the withdrawal of the opt-out was (of course) dismissed. A representative who claims to act for a party shall be accepted as such. See R. 265 RoP.