Key takeaways
Pendency of an action
The pendency of an action is determined by the date of the registration with the Division concerned – in other words, the pendency of an action is independent on whether or not the defendant has already accepted service of the statement of a claim.
Same parties according to Art. 33 (4) UPCA and Rule 118.2 RoP in view of intervening party
The term “same parties” mentioned in Art. 33 (4) UPCA and Rule 118.2 RoP requires harmonized interpretation within the UPC.
The panel found that an intervener is to be considered as a party in line with Rule 315.4 RoP. Regarding the interpretation of Art. 33 (4) UPCA and Rule 118.2 RoP, it is required that the parties are the same, but it is not required that the procedural position of the parties is the same. Also, “same parties” can be assumed even if there was only a partial identiy of the parties (defendant of parallel infringement action was no party to the central revocation action).
Stay of proceedings in view of revocation action filed by intervening party, R. 295 (g) and (m), 118 RoP
The intervener asked to stay the infringement proceedings with regard to the pending parallel central revocation action initiated by intervener, R. 118.2 (b) RoP. This was rejected despite the fact that (i) no counterclaim for revocation had been filed by defendant in the infringement action and (ii) the panel rejected the intervener’s petition for an opportunity to file a counterclaim for revocation.
The panel found that the requirement of the same “parties set” out in Art. 33 (4) UPCA were met (see above) and that the “same patent” was concerned. Therefore the panel expected the Central Division would not retain jurisdiction to rule on the revocation action.
Also, when deciding about an application to stay (R. 295(g) and (m) RoP), the state of the relevant proceedings must generally be considered. While in the infringement proceedings the deadlines for the written proceeding have already expired, the central revocation complaint was only in the stage of being served. For all these reasons the application to stay was rejected.
Division
LD Paris
UPC number
UPC_CFI_440/2023
Type of proceedings
Infringement Action
Parties
Claimant: Seoul Viosys Co., Ltd (Ansan-si, Gyeonggi-do, KR)
Defendant: Laser Components SAS (Meudon, FR)
Intervening Party: Photon Wave Co., Ltd (Yongin-si, Gyeonggi-do, KR)
Patent(s)
EP 3404726
Body of legislation / Rules
- Art. 33 (4) UPCA
- R. 118.2, 295, 315 RoP