Case Law
Article 33: Competence of the divisions of the Court of First Instance

Court of Appeal - Luxembourg (LU), Order dated 05/09/2024, Advanced Bionics Sarl , Advanced Bionics AG, Advanced Bionics GmbH v. MED-EL Elektromedizinische Geräte Gesellschaft m.b.H. (Case/ Registry number: APL_12739/2024, ORD_42780/2024)
Example of decision on referral of action: "1. A connection joinder pursuant to R. 340 RoP cannot result in the referral of an action to another division of the Court of First Instance beyond the possibilities provided for referral of actions in Art. 33 UPCA.
2. Art. 33 UPCA does not permit the referral of an action for infringement from a local division to the central division without the agreement of the parties involved."

Court of First Instance - Paris (FR) Local Division, Order dated 24/07/2024, Seoul Viosys Co., Ltd v. Laser Components SAS, Photon Wave Co.,Ltd (Case/ Registry number: ORD_41423/2024, ORD_41423/2024)
Example of decision on the interpretation of the term "same parties": "The Court also notes that both Article 33.4 of the UPCA and Rule 118.2 of the RoP are special and autonomous rules specific to internal jurisdiction within the divisions of the JUB. However, in order to interpret the concept of "same parties", it is relevant to reason by analogy with the rules of jurisdiction between the different courts within the EU in matters of lis pendens (Brussels I Regulations [Regulation no. 1215/2012 of 12 December 2012, known as the "Brussels I bis Regulation", and Regulation no. 44/2001 of 22 December 2000, known as the "Brussels I Regulation", or the 1968 Brussels Convention), the aim of which is also to avoid the risk of contradictory decisions. According to the case law in ’The Ship Tatry’, if the parties to the two pending proceedings are not identical in all respects, but only in part, the court second seised is only obliged to decline jurisdiction insofar as the parties to the dispute before it are also parties to the proceedings previously brought, and it is possible to continue between the other parties. (ECJ, 6 December 1994, The Ship Tatry, aff-C-406/92, pt 36)."

Court of First Instance - Mannheim (DE) Local Division, Order dated 10/07/2024, MED-EL Elektromedizinische Geräte Gesellschaft m.b.H. v. Advanced Bionics GmbH, Advanced Bionics Sarl , Advanced Bionics AG (Case/ Registry number: UPC_CFI_410/2023, ORD_35569/2024)
Example of decision on transfer to the central division of application to amend the patent following transfer to the central division of the counterclaim for revocation: "Pursuant to Art. 33(3) UPCA, the local division has various options for further proceedings after a revocation counterclaim has been filed. Which option the local division ultimately chooses is at its own discretion. In principle, the present Board is of the opinion that it is generally appropriate for the local division to also hear and decide on the revocation counterclaim pursuant to Art. 33(3)(a) UPCA. It is thus in agreement with all the orders of other Boards cited by the defendants 2 and 3 in their statement of 24 June 2024 (page 5 et seq.). However, the present case has the particularity that almost all attacks against the patent in suit contained in the nullity counterclaim are also already asserted in the previously filed central nullity action. In this particular case constellation, the Board exceptionally exercises the discretion granted to it in such a way that the nullity counterclaim is referred to the central division. The decisive factor for the Chamber is, in particular, the aspect of the efficiency of the proceedings, which, according to point 4 of the preamble to the Rules of Procedure, always carries particular weight when exercising its discretion. [...] In addition to the revocation counterclaim of the defendants 2 and 3, the plaintiff’s corresponding request for amendment of the patent in suit (R. 30 ROP) must also be referred to the central division. It is true that the referral of the request for amendment is not expressly regulated in Art. 33 para. 3 lit. a UPCA. However, since the request for amendment is in substance a defence of the patent proprietor against the revocation counterclaim, there can be no doubt that it cannot be referred back to the local division if the revocation counterclaim is referred to the central division."

Court of Appeal - Luxembourg (LU), Order dated 28/05/2024, Carrier Corporation / BITZER Electronics A/S (Case/ Registry number: UPC_CoA_22/2024, ORD_25123/2024)
Example of decision on the rejection of a request for a stay of the revocation proceedings: “3. The mere fact that the revocation proceedings before the UPC relate to a patent which is also the subject of opposition proceedings before the EPO is not sufficient to allow an exception to the principle that the Court will not stay proceedings. The Convention on the Grant of EP and the UPCA allow third parties to challenge the validity of a patent in both opposition and revocation proceedings and allow them to initiate revocation proceedings while opposition proceedings relating to the same patent are pending.
4. The principle of avoiding irreconcilable decisions does not require that the UPC always stay revocation proceedings pending opposition proceedings. Firstly, decisions in which the UPC and EPO issue different rulings on the revocation of a European patent are not irreconcilable. Where one body upholds the patent and the other revokes it, the latter decision will prevail. Secondly, the interests of harmonising decisions on the validity of a European patent can be promoted by ensuring that the body that decides last can take the decision of the body that decides first into account in its decision. That means that the interests of harmonisation in general do not require a stay by the UPC where it can be expected that the UPC will issue its decision first.
5. Pursuant to Article 33(10) UPCA and Rule 295(a) RoP, an exception to the principle that the Court will not stay revocation proceedings pending opposition proceedings applies when a rapid decision may be expected from the EPO. The terms “rapid” and “rapidly” in these provisions must be interpreted in the light of the principles set out above and the relevant circumstances of the case, such as the stage of the opposition proceedings and the stage of the revocation proceedings. The term “may” in Article 33(10) UPCA and Rule 295(a) RoP means that the Court has a discretionary power to stay the proceedings when a rapid decision may be expected from the EPO. Whether or not a stay is granted depends on the balance of the interests of the parties.
6. The mere fact that the EPO has granted a request to accelerate the opposition proceedings is not sufficient to stay revocation proceedings before the UPC. Rule 298 RoP provides that the Court may stay its proceedings “in accordance with Rule 295(a) RoP” pending accelerated opposition proceedings. Therefore, in that situation the same criterion applies, namely the requirement of Rule 295(a) RoP that the decision in the opposition proceedings may be expected to be given rapidly. Obviously, acceleration is relevant to the assessment, since the pace of the proceedings determines when the decision of the EPO can be expected. Acceleration as such is however not sufficient for establishing the expectation of a rapid decision within the meaning of Rule 295(a) RoP.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 15/04/2024, Ortovox Sportartikel GmbH/ Mammut Sports Group AG, Mammut Sports Group GmbH (Registry number: ORD_18121/2024 ORD_18121/2024)
Example of decision on a joint hearing of the infringement and nullity counterclaims: “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 infringement and nullity counterclaims appears to be sensible and necessary for reasons of efficiency alone, since the panel has already dealt with both infringement and validity issues in the previous summary proceedings (ACT_589655/2023, UPC_CFI_452/2023). 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 here - is rather moderate in the known spectrum of patent disputes and the number of validity attacks is also manageable.”

Court of First Instance - Paris (FR) Local Division, Order dated 11/04/2024, SVF Holdco v. ICPillar LLC ORD_18817/2024
Example of decision on the internal jurisdiction within the UPC where there are multiple defendants: “We are in a situation foreseen by Article 33(1)(b) UPCA, that is to say a case of multiple defendants, and one of the defendants has its residence in France (Arm France SAS), regardless of whether the other defendants are based inside or outside the CMS or inside or outside the EU.
Hence the only requirements to be met are:
1) the multiple defendants have a commercial relationship and
2) the action relates to the same alleged infringement.”
“The meaning of "commercial relationship" requires interpretation by the Court. The applicants rightly noted that the requirement of a “commercial relationship” implies a “certain quality and intensity”. However, to avoid multiple actions regarding the same infringement and the risk of irreconcilable decisions from such separate proceedings, and to comply with the main principle of efficiency within the UPC, the interpretation of the link between the defendants should not be too narrow.
The fact of belonging to the same group (of legal entities) and having related commercial activities aimed at the same purpose (such as R&D, manufacturing, sale and distribution of the same products) is sufficient to be considered as “a commercial relationship” within the meaning of the Article 33(1)(b).”

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/ 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 - Mannheim (DE) Local Division, Order dated 22/02/2024, MED-EL Elektromedizinische Geräte Gesellschaft m.b.H. v. Advanced Bionics AG, Advanced Bionics GmbH and Advanced Bionics Sarl ORD-597898/2023
Example of decision concerning the additional "optional" competence of the central chamber for infringement actions: "Under the system of jurisdiction set out in Article 33 UPC Agreement, jurisdiction for infringement actions lies in principle with the local or regional chambers (paragraph 1) and for invalidity actions, to the central chamber (paragraph 4). However, art. 33, par. 5, first sentence UPC agreement allows the central chamber an additional "optional" competence for infringement actions, if an invalidity action concerning the same patent is already pending there. The "optional" jurisdiction of the central chamber provided for in this article is only available if the same parties are involved in both actions - nullity action and infringement action - (so-called "identity of parties"). In the infringement action is also brought against defendants 2 and 3, who are not parties to the nullity action.”

Court of First Instance - Düsselforf (DE) Local Division, Order dated 19/12/2023, N.V. Nutricia ./. Nestlé Health Science (Deutschland) GmbH (Case number UPC_CFI_201/2023 ORD_589338/2023)
Example of decision on the discretion of the Local Division to hear both the infringement action and the counterclaim for revocation: “In the present case, the Local Division exercises its discretion to hear both the infringement action and the counterclaim for revocation (Art. 33(3)(a) UPCA). Such a joint hearing of the infringement action and the counterclaim seems to be appropriate in particular for reasons of efficiency. It is also preferable because it allows both issues – validity and infringement – to be decided on the basis of a uniform interpretation of the patent by the same panel composed of the same judges. Although validity and infringement issues in the chemical/pharmaceutical field can be demanding, the panel is composed of judges who are very experienced in patent law and familiar with difficult issues in this context. The assignment of the TQJ, who is experienced in the technical field in question, ensures that the Local Division is undoubtedly capable of deciding both matters.”

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.”

Court of First Instance - Munich (DE) Central Division - Section, Order dated 20/11/2023, ASTELLAS INSTITUTE FOR REGENERATIVE MEDICINE v HELIOS K.K, OSAKA UNIVERSITY (Case number UPC_CFI_80/2023, ORD_579547/2023)
Example of decision rejecting the request for suspension of CUP proceedings in the event of parallel EPO proceedings: “In exercising Court’s discretionary power on the basis of Article 33(10) UPCA in connection with Rule 295 sub a RoP, the Court has to assess the relevant facts and circumstances and has to take into account the interests of both parties. Where the interests of the parties do not align, the Court has to weigh up the interests upon deciding a request to stay proceedings. It is for the party requesting a stay to bring forward reasons why staying proceedings is appropriate in a specific case. Nevertheless, especially where it comes to weighing the interests of parties, it is up to all the parties to bring forward why a stay of proceedings would or would not be in their interest. Furthermore, in exercising its discretionary power the UPC must observe the principles 5 of proportionality, flexibility, fairness and equity (Preamble 2, 4 and 5 RoP, also see Order in Preliminary Objection App_572915/2023, case ACT_551308/2023, CD Paris Seat, dated 13 November 2023, par. 80).”
“It is in the view of the Court doubtful whether a decision that - at the time of issuing the present order - is expected in just over three months with notification of the decision and the grounds expected some months thereafter can be considered as a “rapid decision” for the purposes of Art. 33 (10) UPCA. However, this does not need to be clarified conclusively. Even if this is assumed in favour of the Defendants, who are requesting the stay, in the present case the interests of the Claimant in continuing the proceedings currently outweigh the interests of the Defendants in a stay, as discussed below.”

Court of First Instance - Paris (FR) Central division - Seat, Order dated 13/11/2023, Edwards Lifesciences Corporation v. Meril Italy srl (Case number UPC_CFI_255/2023, ORD_578356/2023)
Example of decision on the meaning for the concept of "party": “35. The UPCA does not offer a straight definition of the term ‘party’, but Article 46, dedicated to legal capacity, establishes that ‘Any natural or legal person, or any body equivalent to a legal person entitled to initiate proceedings in accordance with its national law, shall have the capacity to be a party to the proceedings before the Court’.
36. The following article, dedicated to ‘Partes’, adds that ‘Any other natural or legal person, or any body entitled to bring actions in accordance with its national law, who is concerned by a patent, may bring actions in accordance with the Rules of Procedure’ [Article 47 (6)].
37. While these provisions are aimed at indicating who has legal capacity to be a party and who can file an action, nonetheless they enable to assume that a party is any legal or natural person or any body and the related assessment has to be carried out in accordance with its national law.
38. This conclusion is not affected by the fact that Article 47 (6) UPCA requires that in order to bring actons a natural or legal person or a body has to be concerned by a patent, because this requirement is not a constitutive element of the concept ‘party’, rather a condition that a party has to possess in order to have its acton decided on the merits.”

Court of First Instance - Munich (DE) Local Division, Order dated 19/09/2023, NanoString Technologies Inc., NanoStrings Technologies Germany GmbH, NanoString Technologies Netherlands B.V. v. 10x Genomics, Inc., President and Fellows of Harvard College (Case number UPC_CFI_2/2023, ACT_459746/2023)
Example of decision explaining competence of the divisions

Court of First Instance - Munich (DE) Local Division, Order dated 24/08/2023, Amgen, Inc. v. Sanofi-Aventis Deutschland GmbH (Case number UPC_CFI_1/2023, ORD_560432/2023)
Example of decision on the moment at which an action can be considered to have been "introduced”: “4.35 By way of interim conclusion, Article 33.4 UPCA is interpreted such that in order to assess whether an (infringement) action has been brought before a local or regional division, the central division needs to establish if a Statement of claim to bring an infringement action has been lodged at a local or regional division and, if so, at what date and time this was done.”