Case Law
Rule 333: Review of case management orders
Court of First Instance - Paris (FR) Central Division - Seat, Order dated 30/04/2024, Carrier Corporation / BITZER Electronics A/S (Registry number: App_20743/2024 ORD_24607/2024)
Example of decision on the rejection of a request to amend a patent: “Limiting the right to amend the patent to the claims that are challenged also aligns with the principle of proportionality which shall guide the interpretation of the Rules of Procedures and has informed the relevant provisions.
26. As apparent from Rules 30 and 50 ‘RoP’ the patent proprietor does not have an unlimited right to amend the patent, as it has to meet several conditions. In particular, the patent proprietor has to request the patent amend in due time – which means within the two-month period from the service of the statement of claim or the counterclaim for revocation – and any subsequent request to amend the patent may only be admitted with the permission of the Court and the proposed amendments; additionally, the proposed amendments, besides meeting various substantive requirements, must be a reasonable number in the context of the case if they are conditional.
27. Furthermore, excluding from consideration amendments which do not relate to the claimant’s challenges can help expedite the proceedings, aligning with the ‘UPCA’s goal and, at the same time, it is not detrimental to the patent proprietor, who can still seek amendments to its patent by filing a separate request with the competent administrative body.”
Court of First Instance - Munich (DE) Central Division - Section, Order dated 31/01/2024, NanoString Technologies Europe Limited/ President and Fellows of Harvard College (ORD_598209/2023)
Example of decision on application for the review of an order: “With respect to the application to amend the patent/auxiliary requests, in the context of a request made by the Claimant, the judge-rapporteur indicated that the Court sees no legal basis for pre-emptively and categorically ruling out the submission of any further auxiliary requests. Nor does the Court see any legal basis to order the Defendant to make the auxiliary requests more convergent. The judge-rapporteur did make it clear that an announcement reserving the right to amend, e.g. combine, these Auxiliary Requests, as required, and/or to change the order of the auxiliary requests in the further course of the proceedings is not considered as an auxiliary request on file because it lacks a concrete proposal. This statement is, as far as the Court is concerned, a general announcement without any legal status or implications. The judgerapporteur emphasized the front-loaded character of UPC proceedings, also where it concerns auxiliary requests (with reference to 50.2 Rule in connection with Rule 30.2 RoP). Last-minute requests and submissions are not what is intended in UPC proceedings.”
Court of First Instance - Paris (FR) Local Division, Order dated 30/01/2024, Dexcom, Inc. / Abbott Laboratories, Abbott Diabetes Care Inc, Abbott France, Abbott NV/SA, Abbott B.V, Abbott S.r.l., Abbott Sacandinavia Aktiebolag, Abbott DmbH, Abbott Diagnostics Gmbh, Abbott Logistics B.V (Case number UPC_CFI_230/2023, ORD_561/2023)
Example of decision on the possibility of the panel to harmonise two similar orders :“The Court notes that, although the UPC Paris LD order of 19 November 2023 and the UPC Munich LD order of 31 December 2023 relate to the same protected confidential information, the two orders were ruled by two divisions in two different proceedings concerning different patents. In such circumstances, one division is not bound by a decision in another division despite belonging to the same unified court.”
Court of First Instance - Hamburg (DE) Local Division, Order dated 25/01/2024, Fives ECL, SAS / REEI GmbH (Case number: 559935/2023, no order number)
Example of decision on the applicable regulation used to appeal against an admissible objection : “The request for examination by the entire panel against an admissible objection by the Judge-Rapporteur is inadmissible. Pursuant to Rule 21.1 RP, an appeal against an admissible objection may be lodged in accordance with Rule 220.1(a) RP to one of the decisions referred to in Rule 220.1(a) or (b) RP. In the case of an decision granting an opposition is a decision under Rule 220.1(a) RP. There is no scope for the applicability - directly or by analogy - of Rule 333.1 RP.”
Court of First Instance - Munich (DE) Local Division, Order dated 18/01/2024, Netgear Deutschland GmbH, Netgear Inc., Netgear International Limited/ Huawei Technologies Co. Ltd. (Case number: UPC_CFI_9/2023 App_595631/2023)
Example of decision on a request to review the order of the Judge-Rapporteur to allow the extension of an action: “The defendants must be granted the same pleading deadlines for the defence in the context of the present proceedings or in the context of separate proceedings as would have been granted if the action had been filed as a separate action, but no longer. This means that the non-extended time limit for filing a defence in relation to the subject matter of the extension of the action began to run on 11/12/2023 when the extension of the action was admitted. The defendants will be informed in which workflow the statement of defence is to be submitted.”
Court of Appeal - Luxembourg (LU), Order dated 11/01/2024, Germany GmbH; International Limited / Huawei Technologies Co. Ltd (Case number UPC_CoA_486/2023, APL_595643/2023)
Example of decision on the admissibility of the request for discretionary review: “As a general principle, unless provided otherwise, a case management decision or order made by the judge-rapporteur or the presiding judge can only be appealed if such decision or order has first been reviewed by the panel pursuant to Rule 333.1. This follows from the fact that it is only possible to make a request for discretionary review to the Court of Appeal under Rule 220.3 RoP in the event leave to appeal of an order of a panel is refused. Therefore, in such a situation, first a request pursuant to Rule 333.1 must be made in order to obtain a panel decision, which can then – if necessary – subsequently be the subject of 3 an appeal under Rule 220.2 RoP if leave to appeal is granted by the panel, or be the subject of a request for discretionary review under Rule 220.3 RoP if such leave is not granted.”
Court of First Instance - Munich (DE) Local Division, Order dated 11/12/2023, Netgear Deutschland GmbH/Netgear Inc./Netgear International Limited vs Huawei Technologies Co. Ltd. (Case number UPC_CFI_9/2023,ORD_586381/2023)
Example of decision on the treatment of preliminary objections in the main proceedings: “Rather, according to the clear and unambiguous wording and intention of the authors of the Rules of Procedure, neither a review by the panel at the request of a party nor the legal remedy of an isolated appeal should be possible against the judge-rapporteur’s indication that the objection is to be dealt with in the main proceedings. This ensures that the judge-rapporteur is in a position to choose the most economical conduct of the proceedings. The defendant is required to submit arguments within the one-month objection period that could oppose the jurisdiction of the court or the chamber seised. The judge-rapporteur is free, after hearing the claimant, to decide on the objection immediately or to state that the objection will be dealt with as part of the decision on the merits. The second alternative offers the possibility of sparing the court’s resources, in particular those of the other members of the panel, in the case of manifestly unfounded objections or objections which, even if they are well-founded, do not render the entire proceedings obsolete, and to postpone a written argument until the time of the decision on the merits.”