LD Düsseldorf, March 4, 2025, Procedural Order, UPC_CFI_468/2024, UPC_CFI_687/2024

The Local Division Düsseldorf referred the counterclaim for revocation to the Central Division in Milan. The Parties had unanimously requested the, and requests by all parties will be granted unless strong
counterarguments require a different decision (UPC_CFI 14/2023 (LD Munich), Order of 2 February
2024 – Amgen v Sanofi). The Panel did not see any such strong counterarguments. On the
contrary, a referral was seen to be appropriate, particularly for reasons of efficiency. In the exercise of discretion, procedural efficiency is of particular importance (cf Preamble 4 RoP; see also UPC_CFI_410/2023 (LD Mannheim), Order of 10 July 2024 – MED-EL v Advanced Bionics). A revocation action was already pending before the Central Division, and the Counterclaim for revocation was essentially based on the same prior art documents and other grounds for invalidity. The Central Division was therefore already familiar with the subject matter of the counterclaim for revocation.

The application to amend the patent was also referred to the Central Division in Milan.

The Local Division Düsseldorf decided to proceed with the infringement action despite the referral of the counterclaim. A stay of the proceedings was not considered to be appropriate, as the question of whether there is a high likelihood of invalidity requires a detailed examination, taking into account the entire content of the file. For this reason, given the stage of the proceedings, it did not appear effective to deal with the issue of invalidity at that point in time.

The panel reserved the right to reconsider staying the proceedings at a later stage.

The Defendants were granted a one-month extension for filing the Rejoinder to the Defence to the counterclaim and the Defence to the application to amend the patent.

The extension was deemed sufficient given the recent bifurcation decision and extended deadlines in the revocation proceedings.

The Defendants’ proposal to limit their pleadings to the granted version of the patent was rejected.

The granted extension for filing the Rejoinder to the Defence allows the Defendants to address all issues, including auxiliary requests related to the patent amendment application.