Key takeaways
Failure to use the correct workflows provided by the CMS does not result in a violation of the deadlines resulting from the Rules of Procedure, Rule 4.1 sentences 1 and 2 RoP. In the initial phase of the UPC – the present action was filed on the first day of the UPC, 1 June 2023 – the UPC finds it appropriate to apply a more generous standard.
Pursuant Rule 4.1 sentence 1 RoP, parties “shall” submit written pleadings in electronic form. Rule 4.1 sentence 2 RoP further specifies that the parties “shall” use the available CMS forms. At least in the initial phase of the UPC, the Local Chamber considers it appropriate to construe “shall” in a more generous sense (and not as a “must”), because it should be borne in mind that the workflow-based coding of the CMS poses challenges for all parties involved. An overly strict approach at present would be unacceptable given the principles of the right to be heard. The RoP do at no point expressly order the exclusion of applications for which the special workflows provided in the CMS have not been used. In the present case, it became apparent that the plaintiff had not used the specific workflow in relation to the application to amend the patent. However, the plaintiff subsequently made up for this so that there was no need to decide whether stricter standards should be applied in this respect.
Also in revocation actions before the UPC, a patent can only be revoked insofar as the grounds for revocation warrant such revocation. This means that a patent can also remain (partially) valid to the extent of individual independent patent claims within the scope of the complete set of claims submitted as the main or auxiliary request. This applies to independent claims provided that they do not build on each other in such a way that the cancellation of one would necessarily require the cancellation of the other because they would be closed sets of claims.
According to Art. 65 (3) UPCA, if the grounds for invalidity relate only to part of the patent, the patent shall be limited and declared partially invalid by amending the claims accordingly, without prejudice to Art. 138 (3) EPC. The concept of partial revocation of the patent using limitation through amendment of the patent claims is familiar from the EPC and from the legal systems of the Contracting UPC Member States. The Local Division therefore narrowed the scope of the patent-in-suit as a result of the Defendant’s counterclaim for revocation and did not find the amended version infringed.
Division
Local Division Hamburg
UPC number
UPC_CFI_54/2023
Type of proceedings
Infringement Proceedings
Parties
Claimant: Avago Technologies International Sales Pte. Limited
Defendant: 1) Tesla Germany GmbH; 2) Tesla Manufacturing Brandenburg SE
Patent(s)
EP 1 612 910 B1
Jurisdictions
Place jurisdictions
Body of legislation / Rules
Rule 4.1 RoP; Rule 30.1 and 29 lit (a) RoP
