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Rule 37: Application of Article 33(3) of the Agreement

Court of First Instance - Mannheim (DE) Local Division, Order dated 22/02/2024, Panasonic Holdings Corporation/ OROPE Germany GmbH, Guangdong OPPO Mobile Telecommunications Corp. Ltd. (Registry number: ORD_7452/2024 ORD_7452/2024)
Example of decision on common treatment of infringement action and counterclaim for a declaration of nullity: “Such a joint hearing of infringement and nullity counterclaims appears to make sense for reasons of efficiency alone. It is also advantageous in terms of content, as it allows a decision to be made on both the legal status and the infringement issue on the basis of a uniform interpretation by the same panel of judges in the same composition. In the present case, no other aspects are apparent that could speak against such a joint hearing.”

Court of First Instance - Mannheim (DE) Local Division, Order dated 22/02/2024, Panasonic Holdings Corporation v. Xiaomi Technology France S.A.S, Xiaomi Technology Germany GmbH, Xiaomi Technology Italy S.R.L, Xiaomi Communications Co., Ltd., Xiaomi H.K. Limited, Odiporo GmbH, Xiaomi Technology Netherlands B.V., Xiaomi Inc., Shamrock Mobile GmbH, Beijing Xiaomi Mobile Software Co. Ltd. ORD-7453/2024
Example of decision on the reason why the Court can take an earlier decision : “Although, in accordance with Rule 37.1 of the Rules of Procedure, the formation of the court must rule by way of order on the procedure to be followed under Article 33(3) AJUB as soon as possible after the close of the written procedure, it may, in accordance with Rule 37.2 of the Rules of Procedure, take an earlier decision if it takes into account the arguments of the parties and grants them the right to be heard. In the present case, such an early decision is justified and is already necessary due to the current situation of the court, which is in its infancy. Given that the parties 4 on the bench are currently only employed on a part-time or case-by-case basis, it seems appropriate, for reasons of procedural economy, to obtain the assignment of the technical judge as soon as possible.“

Court of First Instance - Mannheim (DE) Local Division, Order dated 22/02/2024, Panasonic Holdings Corporation/ Xiaomi Technology Italy S.R.L., Xiaomi Technology Germany GmbH, Xiaomi Technology Netherlands B.V., Xiaomi Communications Co., Ltd., Xiaomi H.K. Limited, Xiaomi Inc. , Xiaomi Technology France S.A.S., Shamrock Mobile GmbH, Beijing Xiaomi Mobile Software Co. Ltd. , Odiporo GmbH. (Registry number : ORD_7585/2024 ORD_7586/2024 and ORD_7587/2024)
Example of decision on common treatment of infringement action and counterclaim for a declaration of nullity: “Such a joint hearing of infringement and nullity counterclaims appears to make sense for reasons of efficiency alone. It is also advantageous in terms of content, as it allows a decision to be made on both the legal status and the infringement issue on the basis of a uniform interpretation by the same panel of judges in the same composition. In the present case, no other aspects are apparent that could speak against such a joint hearing.”

Court of First Instance - Munich (DE) Local Division, Order dated 2/02/2024, Amgen Inc./ Sanofi-Aventis Deutschland GmbH, Sanofi-Aventis Groupe S.A., Sanofi Winthrop Industrie S.A., Regeneron Pharmaceuticals Inc. (Case number : UPC_CFI_14/2023 ORD_392/2024)
Example of decision on application for the review of an order: “All parties requested that the counterclaim be referred to the Central Division. Unanimous requests by all parties will be granted unless strong counterarguments require a different decision.”
“IV. In the exercise of its discretion, the Panel decides to proceed with the infringement proceeding, but reserves the right to reconsider the possibility of suspending the proceeding for any other reason put forward by the Defendants.”

Court of First Instance - Munich (DE) Local Division, Order dated 2/01/2024, Amgen Inc./ Sanofi-Aventis Deutschland GmbH, Sanofi-Aventis Groupe S.A., Sanofi Winthrop Industrie S.A., Regeneron Pharmaceuticals Inc. (Case number: UPC_CFI_14/2023 ORD_597730/2023)
Example of decision on an extension of time limit to comment counterclaim : “This court exercises its discretion and grants the extension. Plaintiff rightfully pointed out that it should not take 21 days to agree on dates for an oral hearing, not even during holiday season. And defendant did not provide any details on the names and functions of those who should participate during the oral hearing but could not yet comment on the dates.
However, it would be awkward not to grant the desired extension or to grant a shorter extension as the overall handling of the case will not be affected at all or not much by granting the desired extension.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 01/12/2023, Franz Kaldewei GmbH & Co. KG ./. Bette GmbH & Co. KG (Case number UPC_CFI_7/2023, ORD_581034/2023)
Example of decision ordering hearing of both an infringement action a counterclaim for a declaration of invalidity: “Even if, according to R. 37.1 RP, the panel is to decide on the procedure under Art. 33(3) UPCA by order as soon as possible after the conclusion of the written procedure, it may, according to R. 37.2 of the Rules of Procedure may make an earlier decision if it takes into account the submissions of the parties and grants them the right to be heard.
Such an early decision is justified and necessary in the present case due to the current situation of the court, which is in its infancy. As parts of the panel are currently only employed on a part-time or case-by-case basis, it appears appropriate for reasons of procedural economy to obtain the assignment of the technical judge at an early stage in order to be able to take this into account in the scheduling as early as possible. Otherwise, there would be a considerable risk of delays if the technical judge is only called in during the interim proceedings and is already otherwise prevented from attending.
The local division exercises its discretion to hear both the infringement action and the counterclaim for a declaration of invalidity (Art. 33 (3) (a) UPCA). Such a joint hearing of the infringement action and the counterclaim for a declaration of invalidity appears to make sense for reasons of efficiency alone. It is also advantageous in terms of content, as it allows a decision to be made on both the legal status and the question of infringement on the basis of a uniform interpretation by the same panel of judges in the same composition. Such a uniform approach is all the more justified if the complexity of the technology at issue – as in this case – is in the 3 known spectrum of patent disputes is rather moderate and the number of legal disputes is also manageable.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 22/11/2023, myStromer AG v. 1. Revolt Zycling AG, 2. George Merachtsakis (Case number UPC_CFI_260/2023, ORD_586970/2023)
Example of decision on common treatment of infringement action and counterclaim for a declaration of nullity: “Even if the panel is to decide on the procedure under Art. 33(3) UPCA by order as soon as possible after the conclusion of the written procedure in accordance with R. 37.1 RP, it may take an earlier decision in accordance with R. 37.2 RP if it takes into account the parties’ submissions and grants them the right to be heard. In the present case, such an early decision is justified and necessary due to the current situation of the court, which is in its infancy. As parts of the panel are currently only employed on a part-time or case-by-case basis, it seems appropriate for reasons of procedural economy to obtain the assignment of the technical judge at an early stage in order to be able to schedule the judge as early as possible. 3 possible. Otherwise, there would be a considerable risk of delay if the technical judge is only called in during the interim proceedings and is already prevented from attending elsewhere.”