Case Law
Rule 263: Leave to change claim or amend case
Court of Appeal - Luxembourg (LU), Order dated 24/09/2024, Guangdong OPPO Mobile Telecommunications Corp. Ltd., OROPE Germany GmbH v. Panasonic Holdings Corporation (Case/ Registry number: APL_32350/2024, ORD_48655/2024)
Example of decision on changed claims: "1. Pursuant R. 263 RoP, a party may only be authorized, by the Court, to change its claims, on the twofold condition that the amendment could not have been made with reasonable diligence at an earlier stage of the proceedings and that it is not such as to disturb in an unreasonable way the conduct of the case.
2. The autorisation given by the Court, under rule R. 263 RdP, only concerns changed claims which have the effect of changing the subject matter and the scope of the dispute.
3. Changed claims that only complete those previously made do not constitute substantial modifications, which are likely to modify and affect the subject matter and the scope of the dispute and only relate to the implementation and enforcement modalities of a possible sentence."
Court of First Instance - Düsseldorf (DE) Local Division, Order dated 02/08/2024, FUJIFILM Corporation v. Kodak Graphic Communications GmbH, Kodak Holding GmbH, Kodak GmbH (Case/ Registry number: UPC_CFI_355/2023, ORD_40822/2024)
Example of decision on the leave to change claims: "If auxiliary requests filed in the context of an application for amendment of the patent are to be amended later, the scope of R. 263 RoP is not open from the outset. The conditions under which applications for amendment of the patent are admissible are laid down in R. 30 RoP."
Court of Appeal - Luxembourg (LU), Order dated 11/03/2024, NETGEAR Deutschland GmbH, Netgear International Limited, Netgear Inc./ Huawei Technologies Co. Ltd (Registry number: APL_5395/2024 ORD_13028/2024 and ORD_13025/2024)
Example of decision on time limit for the defence after the admissibility of the amendment or extension of the action: “ 9. According to the Court of Appeal, given the absence of a specific rule in the Rules of Procedure or the Convention and the lack of clarity of the order of the Judge-Rapporteur as to the starting date of the time limit for the statement of defence in these particular circumstances - where there was insufficient clarity as to the starting date of the time limit for the statement of defence against the amendment - the panel of the Court of First Instance should not have taken the earlier date of the Judge-Rapporteur’s order as the starting date of the time limit, but the date of service of its own order.“
Court of First Instance - Paris (FR) Central Division - Seat, Order dated 28/02/2024, Meril Italy srl (Registry number: App_7184/2024 ORD_7283/2024)
Example of decision on language of proceedings: “21. This Rule states that ‘A party may at any stage of the proceedings apply to the Court for leave to change its claim or to amend its case, including adding a counterclaim. Any such application shall explain why such change or amendment was not included in the original pleading’ (para 1), adding that leave shall not be granted, unless it limits a claim in an action unconditionally, if, all circumstances considered, the party seeking the amendment cannot satisfy the Court that the amendment in question could not have been made with reasonable diligence at an earlier stage and the amendment will not unreasonably hinder the other party in the conduct of its action (para 2 and 3).”
Court of First Instance - Munich (DE) Local Division, Order dated 11/12/2023, Huawei Technologies Co. Ltd ./. Netgear Inc./Netgear Deutschland GmbH/Netgear International Limited (Case number UPC_CFI_9/2023, ORD_587438/2023)
Example of decision on the admissibility of the extension of the action to claims arising from another action patent after the closure of a limitation procedure: “The court is also convinced that the amendment does not unreasonably hinder the other party in its conduct of the proceedings. A certain degree of obstruction does not preclude admission under the law. Furthermore, in the case of the joint management of both patents within the same infringement proceedings, the court is obliged to grant the defendant largely the same defence options with regard to the second patent. 5 as in the case of a new, further action. This can be done by granting or extending deadlines for comments. If the subject matter of the extension of the action is separated, this would even be simplified. The parties will be heard in a separate workflow on the question of whether the subject matter of the extension of the claim can or should be separated.”