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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5 May 2025
Court of Appeal, Meril v SWAT
Public access
Facts
- In this case, there are two respondents: a private person (who is also a representative) and SWAT, in which the private person has invested and of which he is a board member.
- Both respondents asked for access to documents in the case between Edwards and Meril. Respondent 1 asked this as representative for himself and respondent 2.
- Both Meril and Edwards objected. The Central Division in Paris granted access as the proceedings had come to an end.
- Meril appealed and asked for the order to be set aside.
- The Judge-Rapporteur (“JR”) invited the parties to comment on the question of representation.
- The Court of Appeal issued an order on 13 February 2025 that also representatives of the UPC, if they are a party in UPC proceedings, need a representative (because of public policy/due process considerations). This was also the case for SWAT, in which respondent 1 had a high management position. The Court of Appeal gave respondents two weeks to appoint an authorized representative. The Court of Appeal warned that if no authorized representative would lodge the response for the two respondents within these two weeks, the Court of Appeal may draw negative consequences and give a reasoned decision (R. 235.3 RoP).
Decision of the Court of Appeal
- The question is: did an authorized representative lodge the Statement of Response? If not, then R. 235.3 RoP is applicable and triggers a decision by default (R. 357 RoP).
- Respondents lodged an application to change representative, but that was impossible because respondents had no authorized representative!
- Moreover, the person who was named as replacement did not make any appearance or claim to be the representative for respondents and did not sign the Statement of Response before the deadline.
- The legislative history shows that R. 235.3 RoP is a lex specialis (special rule) of R. 356/357 RoP (the decision by default) and means that the Court can make that default decision on its own motion without the application by a party as required by R. 355 RoP.
- The Court of Appeal rules that a default judgment is justified as respondents were warned and given a chance to rectify.
- The Court concludes that compensation of costs should not be awarded in relation to an application for access to the public register (R. 262 RoP).
Decision
- Order of Paris Central Division is set aside.
- The request for access is refused.
- The request for costs by Meril is refused.
Comment
- The Court of Appeal had already decided that a representative cannot represent himself, and the same is true for a representative who works for a company in a higher management position. (Order of 12 February 2025, UPC_CoA_635/2024 Meril v SWAT, see Unfiltered week 7.)
- Although the Court of Appeal offered respondents the possibility to appoint an independent (thus authorized) representative, respondent sub 1 started to play a bit of games with the Court of Appeal, such as filing for a replacement of representative (in fact implying that he had been his own authorized representative) and just using the name of a representative of the same firm who did not even sign the Statement of Response. You even wonder whether respondent sub 1 informed his colleague, whose name he was using as representative.
- The Court of Appeal states that if somebody does not file a Statement of Response, R. 235.3 RoP states that the Court may give a reasoned decision and that that is a lex specialis of the default judgment provisions.
- I wonder if that also necessitates always applying the Rules for a default decision. If it is a lex specialis, why can the Court (in this special case) not simply set aside the decision in first instance and rule that the application is inadmissible?
- If I understand the decision correctly, the respondents can now still file an application to set aside the decision by default (R. 356 RoP).
- The Court rules (giving a convincing reasoning) that respondents 1 and 2 do not have to pay costs because this is a public request for information from the register. I have already said earlier that it would be contrary to the whole concept of public access if parties would be able to cause the payment of costs by successfully fighting the access. That would have a chilling effect, e.g., on researchers seeking access. Moreover, as the Court of Appeal remarks, parties can indicate already before requests are made which information has to remain confidential (R. 262.2 RoP). However, is this not in the first place a case of a procedural question of admissibility, and if you look at it that way, why could you not rule that the respondents are the losing party and have to pay costs?
- I have no admiration for the behavior of this patent attorney/representative. His reaction to the possibility which the Court gave him is not what you may expect of a representative (see the Code of Conduct for representatives Art. 2.1 and Art. 2.4.1). Now he gets away with the possibility to annoy the Court further by filing an application to set aside the default judgment and does not have to pay any costs. For me, not a very satisfactory result.
6 May 2025
Local Division Düsseldorf, Ona v Apple
Confidentiality Information
The Order of the JR
The order in this case follows the earlier Confidentiality Order for the same reason. The information in the Rejoinder with respect to the functionality of Apple products is classified as confidential under R. 262.2 RoP.
The information can only be used in these proceedings and only seen by the three named representatives and their team and the CEO of the claimant.
Comment
- The reference to R. 262.2 RoP means that this information will not be disclosed when a member of the public asks for access to the file. This is the right way a confidentiality order should be asked and granted.
Note: a member of the public can, when asking for access to pleadings and evidence, always challenge the confidentiality (see R. 262.3 RoP). - The JR states that the representatives are liable for a culpable breach by their staff, and the Court can then impose a penalty payment. As said before, the penalty payment is, in my opinion, separate from the civil liability of the representative and their firm for the damages caused by a breach, also by a breach of their staff.
7 May 2025
Local Division Milan, Ericsson v Asustek
Withdrawal
Background
Ericsson filed infringement proceedings against three defendants.
Asustek c.s. answered and counterclaimed for invalidity.
One of the three defendants, Digital River, went bankrupt.
Ericsson filed a motion of withdrawal with respect to Digital River and stated that it would not be fair (as it did not lose) to have to bear costs of the (bankrupt) defendant. Digital River agreed to the withdrawal but, stating it was successful (the winning party), it claimed € 5,500 costs. It also filed an application for the withdrawal of its counterclaim, claiming that Ericsson had not incurred costs in defending the counterclaim because it had to defend the counterclaim anyway because of the two other defendants. Ericsson agreed with the withdrawal but asked for € 5,500 costs.
The Court (full panel)
No costs awarded
1. The withdrawal of Ericsson was caused by the insolvency of Digital River. Not fair to have Ericsson pay costs.
2. Ericsson did not pay extra costs to defend the counterclaim, which it had to defend against the other defendants anyway.
Comment
If you read this, you wonder why two sensible representatives cannot come to the same conclusion and save costs for their clients and time for the Court.
8 May 2025
Local Division Munich, Sanofi v Accord, Stada, Reddy and Zention
UPC_CFI_145/2024; 146/2024; 147/2024; 148/2024; 463/2024; 496/2024; 374/2024; 503/2024
Preliminary interim conferences
Background
- In a “Preliminary Interim Conference” of 15 January, the JR tried to get some order and clarity in this complicated infringement case by making suggestions to the parties, such as to agree on costs, to try to settle the case by using PMAC (which by the way is not yet in operation), and not to file numerous briefs for all the different claimants and defendants. One does not get the impression that these suggestions led to something. The different teams of representatives have still not formed a common defence team.
- The JR also mentioned numerous deficiencies (unclarities) in the Statement of Claim (of which defendants basically argued that this should lead to a dismissal).
- The JR ordered claimants (the Sanofi companies) to rectify the deficiencies within 7 days and defendants to answer to the rectification within a further 14 days.
- On 27 February 2025, the JR gave some further guidance and ordered a further round of comments because Sanofi “did not quite manage to remedy the deficiencies and some defendants amended the respective pleadings”.