LD Düsseldorf, 22 November 2023, order on joint proceedings of infringement action and counterclaim for revocation, UPC_CFI_260/2023

Even if the panel is to decide by order on the procedure under Article 33 (3) UPCA as soon as possible after the conclusion of the written procedure pursuant to Rule 37.1 RoP, it may take an earlier decision pursuant to Rule 37.2 RoP if it takes into account the parties’ submissions and grants them the right to be heard.

Article 33 (3) UPCA leaves it to the discretion of the regional/local division whether to proceed with the infringement action and the counterclaim for revocation together or whether to refer the counterclaim for decision to the central division.

The joint proceedings of infringement action and counterclaim for revocation can make sense for reasons of efficiency alone. It is also advantageous in terms of content, as it allows for a decision to be made on both the validity and the infringement issue, on the basis of a uniform claim construction by the same panel of judges in the same composition. This applies all the more if the complexity of the technology at issue is rather moderate in the known spectrum of patent disputes, and if the number of validity attacks is also reasonable.