13 January 2025
Court of Appeal, Magna v Valeo
Withdrawal
Background
On 31 October 2024, the Local Division Düsseldorf granted a preliminary injunction (“PI”) at Valeo’s request. Magna appealed.
At Magna’s request, the Court of Appeal suspended the PI pending appeal to the extent that it covered the BMW 2 Series Gran Coupé.
On December 2024, Valeo filed for withdrawal of the action, to which Magna subsequently consented.
Court of Appeal
The Court of Appeal:
-
- permits the withdrawal of the action;
- declares the proceedings closed;
- orders to mention the decision in the register; and
- declares there is no need for a cost decision.
Comment
- The Court of Appeal does not mention R. 265 RoP and does not give a cost decision. This is different from the LD Munich, which feels obliged (because of R. 265.2 sub c RoP) to give a cost decision even if the parties have agreed that each party bears its own costs.
- As I have written before: in my opinion, R. 265 RoP is written for a withdrawal by one of the parties but does not have to be used when parties reach a settlement. If both parties inform the Court that the case is settled, the Court can simply declare the case closed and tell the registrar to put that in the register. Parties can use the R. 9 RoP workflow. If a party or parties would like to get court fees reimbursed, they can ask the Court (if that has not yet been done) to determine the value of the case, or to order the registrar to reimburse a sum to which the parties are entitled, and, if security by (one of) the parties is given by payment to the Court, to pay back the security amount. See also R. 11 RoP.
- For the development of UPC law it is a pity that this appeal (the oral argument was set for 16 January 2025) will not be decided. One of the (many) issues at stake was the question whether a party could ask for a change of the technical judge if that technical judge has no experience in the relevant technical field. The LD Düsseldorf decided that that is not possible. I think that is incorrect. Art. 8 (5) of the UPCA states clearly that the TQJ should have qualifications and experience in the field of technology concerned. If it is clear that the TQJ does not have these qualifications, you would of course expect him/her not to accept the appointment or withdraw in the first place. But if the TQJ does not do so, a party should be able to ask for a replacement. It would be completely against the purpose of having a TQJ on the Court, if it is just window-dressing.
13 January 2025
Local Division Munich, Huawei v Netgear
Settlement
Background
Parties settle and ask for withdrawal according to R. 265 RoP.
Decision of Presiding Judge acting as sole judge
- The request is granted.
- The case is declared closed.
- The decision has to be put in the register.
- Each party bears its own costs.
- Value of the case: € 3 million.
- The € 3 million paid by claimant as security for costs to the Court has to be paid back.
Comment
- The LD feels obliged to give a cost decision. See Court of Appeal of the same day: that is not necessary!
- I assume that the Court places the € 3 million paid as security in an interest-bearing account and that the claimant gets the € 3 million back with the accrued interest (?).
13 January 2025
Local Division Munich, Harvard and 10x Genomics v Nanostring
Auxiliary requests
Background
On 19 August 2024, Harvard filed 55 auxiliary requests (!) in an application to amend the patent.
The oral argument at the EPO is scheduled for 18-20 March 2025.
The parties agree to stay the proceedings until the decision of the Opposition Division of the EPO.
Requests of the parties
The defendant’s main request was:
1. to suspend the deadline for the answer to the request to amend the patent to two months after the final decision with respect to its requests;
2. to order the request to amend the patent as inadmissible (request II).
Decision of the Judge Rapporteur (“JR”)
- The proceedings are stayed until the decision of Opposition Division of the EPO.
- The defendant is ordered to limit the number of auxiliary requests to a one-digit number within 20 days after the decision of the Opposition Division.
- The two months period for claimant to answer to the auxiliary requests start after the service of the limited number of auxiliary requests.
Review by the panel
- As parties agreed to a suspension and the Court agreed, this means that they want the decision of the Opposition Division to have its possible effect on the outcome of the litigation. For that reason, it is better to order the defendant to file its auxiliary requests 20 days after the decision of the Opposition Division.
- Whether 55 requests is unreasonable depends on the circumstances of the case. It is noted that the present case is extremely complicated, also in view of the numerous attacks on the patent. Auxiliary requests which are subject to the parallel proceedings before the EPO at the time of the decision of the Opposition Division will be allowed also within the present proceedings.
Comment
This seems a reasonable decision given the fact that parties agreed to a suspension of the proceedings. In this case, there were more than 40 different invalidity attacks. If auxiliary requests are answers to the different attacks, then I agree that (in such an exceptional case) a high number may be acceptable.
14 January 2025
Court of Appeal, Total Semiconductor v Texas Instruments
Composition of the Court re security of costs
Background
- The JR of the Local Division Mannheim ordered Total Semiconductor to provide a security of € 600.000. If not provided within 8 weeks, a default judgment might be given. Leave for appeal was refused.
- Total Semiconductor asked for discretionary review (R. 220.4 RoP).
- The standing judge allowed the request to the extent it related to (i) the question whether the JR is competent to give a cost order and/or (ii) whether the JR is competent to refuse leave for appeal, but refused the appeal with respect to the substantive matter.
Court of Appeal
- In this case the JR himself, instead of the panel, decided not to grant leave for appeal. Therefore, this would prevent an appeal because there is no order of the panel. That is only acceptable if the JR is right that he himself can decide on the security request and the leave for appeal.
- This is a question concerning access to justice, which the Court of Appeal can raise on its own motion. The appeal is therefore admissible.
- 1.2(a) RoP provides that if an act of the Court is not exclusively reserved for the panel, the President or the JR can perform such an act.
- 158 RoP does not reserve granting security for the panel.
- The system of the Rules of Procedure implies a broad interpretation of “management decision”, which can be reviewed by the panel on its own motion or at the request of a party, and avoids unnecessary appeals.
- The case is sent back, so that the panel, after panel review, can decide about leave for appeal.
Comment
- This is a decision which confirms wide powers for the JR and the presiding judge. The Court of Appeal refers to R. 1.2(a) RoP.
- However, I wonder how broad “act of the Court” in R. 1.2(a) RoP has to be interpreted. For instance, R. 118 RoP (“decision on the merits”) does not refer to the panel. However, in my opinion, a decision on the merits has to be made by the whole panel.
- Another example is an order for a PI (R. 211 RoP). Until now, Local Divisions decide PI proceedings with a full panel. Under the present ruling of the Court of Appeal, this apparently can also be done by the President (or one judge)?
- The decision of the Court of Appeal is of course in general making an efficient handling of a case possible. Why would you need a full panel for a decision on security for costs? However, the provision of R. 158.3 RoP that an appeal may be lodged in accordance with R. 220.2 RoP is confusing. If the cost decision is made by the JR or the presiding judge, this in my opinion should be read as that it is indicated in the decision that review can be asked by the panel. I assume that if the presiding judge makes a cost decision, this is also considered to be a management decision.
- It is also interesting that the Court of Appeal states that the panel at its own motion can review the order. I do not see that possibility in R. 330 RoP but you find it with respect to decision by the JR during the interim proceedings in R. 102.1 RoP.
However, also I am all in favor of this possibility, although as we have seen panels do not like to contradict their colleagues! (Who in general, by the way, make correct decisions, considering that almost all appeals fail!) - If the Court of Appeal desires fewer appeals I think representatives should be far more selective, or an appeal of a management decision should be (further) restricted.
14 January 2025
Local Division Munich, Sanofi v Accord and others
UPC_CFI_145/2024; UPC_CFI_146/2024; UPC_CFI_147/2024; UPC_CFI_148/2024
Confidentiality request
Background
Sanofi requests a confidentiality regime based on R. 262A RoP for witness statement D4, with access restricted to only the representatives of the defendants.
The defendants argue that certain information is not confidential.
The judge agrees with respect to the personal data of the witness, but with respect to other information the judge has not seen any evidence that this is public.
According to the judge, each defendant is entitled have the information disclosed to one employee.
Decision by the presiding judge
- The contents of witness statement Exhibit D4 contains confidential information, except the personal details of the witness.
- The representatives of the parties (including patent attorneys, paralegals and administrators) for which access is demanded get access.
- Different companies belonging to the same group have been sued. As each defendant is entitled to (at least) one employee to whom the information has to be disclosed, several employees belonging to the same group get access.
- All mentioned employees of the defendant get access, as Sanofi has not raised specific objections against these persons.
Comment
- The defendants mentioned all the members of their legal teams, including non-representatives such as paralegals, patent attorneys, administrative personnel. The judge in his decision mentions all these persons by name.
- To me this does not seem very practical. In a law firm, associates, secretaries and paralegals may change. How do you deal with that? In my view, only the representatives on record should be named as entitled to access. They can use their secretaries, associates, IP personnel, patent attorneys (if they are not listed representatives), but they are responsible that these people keep the confidential information secret. If a member of the team would not keep the information secret, the representatives should be accountable and fined (apart from the fact that they have civil law responsibility for all damages caused).
- The result of this decision is that if you sue six subsidiaries of a group, at least six natural persons (of the group) get access to the confidential information. I wonder if that is not a too literal interpretation of R. 262A RoP. If one or two are sufficient for the defence, the Court should in my opinion nominate these one or two persons for all the group companies together.
15 January 2025
Court of Appeal, Avago v Tesla
UPC_CoA_629/2024; UPC_CoA_631/2024; UPC_CoA_632/2024
Settlement
Background
The LD Hamburg dismisses an infringement claim of Avago and, in the counterclaim for invalidity, declares the patent partly invalid.
Avago appeals against both decisions.
Proceedings in appeal
- Avago requests withdrawal of infringement action and (if necessary) that each party bears its own costs. It requests reimbursement of 60% of the appeal court fees and agrees with Tesla’s request to withdraw the invalidity action.
- Tesla agrees and requests withdrawal of the invalidity action. It does not ask for cost decision.
Court of Appeal
- The Court of Appeal can decide because the case is on appeal and there is no final decision.
- Although R. 265.2(2) RoP states that a cost decision is necessary, it is not necessary here as both parties do not ask for it.
- A withdrawal of the invalidity action makes the request for to amend the patent without subject.
- The request is made before the end of the written proceedings: reimbursement of 60% of the court costs is ordered.
Comment