Report on the Procedural Order of the UPC Local Division Duesseldorf of 22 November 2023, UPC_CFI_260/2023
Claimant:
myStromer AG, CH
Defendant:
Revolt Zycling AG, CH
Patent at issue:
EP 2 546 134 B1
Summary of Facts
On 22 June 2003, during the Eurobike trade fair, the defendant exhibited an e-bike which the claimant considered to infringe the above mentioned patent. Having unsuccessfully warned the defendant, the claimant applied for provisional measures, which were granted by the Düsseldorf Local Chamber on the same day. The court also ordered under Rule 213 RoP that the Claimant hast to start proceedings on the merits of the case within 31 calendar days or 20 working days, whichever is longer, from service of the order. After the claimant did so, the defendant filed a counterclaim for revocation.
Order of 22 November 2023
According to Art. 33(3) UPCA, the chamber before which a counterclaim for revocation has been filed has the discretion, after hearing the parties, to choose between three options:
- “proceed with both the action for infringement and with the counterclaim for revocation and request the President of the Court of First Instance to allocate from the Pool of Judges in accordance with Article 18(3) a technically qualified judge with qualifications and experience in the field of technology concerned;
- refer the counterclaim for revocation for decision to the central division and suspend or proceed with the action for infringement; or
- with the agreement of the parties, refer the case for decision to the central division.”
The Court decides in favour of option a) and gives the following reasons for doing so (translation by the authors):
“The local division exercises its discretion to hear both the infringement action and the counterclaim for revocation (Art. 33(3)(a) UPCA). Such a combined hearing of the infringement action and the counterclaim for revocation appears to make sense for reasons of efficiency alone. It is also advantageous from a substantive point of view, as it means that, on the basis of a uniform interpretation by the same panel of judges in the same composition can be decided on both the legal status and the question of infringement. Such a uniform approach is all the more justified if the complexity of the technology at issue - as in this case - is rather moderate in the known spectrum of patent disputes and the number of attacks on the legal validity is limited.“
The Court further instructs the Judge-Rapporteur to request the President of the Court of First Instance to assign a technically qualified judge to the panel.
Comment on the decision:
The decision of the Düsseldorf Local Chamber is to be welcomed. The UPCA promises in the seventh recital “expeditious and high quality decisions, striking a fair balance between the interests of right holders and other parties” and in the sixth recital to “enhance legal certainty.”
In the author's experience in numerous proceedings with and without separation of infringement and nullity actions, it serves legal certainty if infringement and revocation actions are heard before the same panel, as this ensures that the claims are interpreted in the same way. In this context, it should be recalled that the Protocol to Art. 69 EPC requires "a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties".
If, on the other hand, a chamber follows option b) of Article 33(3) UPCA, there is a danger that the two chambers will interpret the claim differently. Furthermore, there is a risk that the decision on infringement will be delayed compared to option a).
Finally, it is also difficult to justify from the point of view of efficiency why two chambers of the same court have to deal with the same patent, even if in this case from different perspectives.
It can also be assumed that the highly experienced patent judges provided with the UPC by the contracting states have sufficient experience in assessing the validity of patents, particularly with the support of their technically qualified colleagues.
In most UPCA contracting states, the alleged patent infringer brought before the court is allowed to plead the lack of validity of the patent or to bring an action for revocation before the same court. In countries where this is not the case, e.g. in Germany, the judges must decide whether a stay of the infringement proceedings is necessary in relation to a parallel revocation action and, in doing so, examine the validity themselves. Moreover, in Germany, for example, they are also regularly responsible for examining the validity of utility models whose requirements, such as inventive step, are identical to those of the patent.
