Court of Appeal, September 18, 2024, order concerning a preliminary objection and a request for an order pursuant to R. 361 RoP, UPC_CoA_265/2024 et. al.

R. 20.2 RoP allows that objections are referred to the main proceedings. An objection to the Court’s jurisdiction for damages suffered in the UK and Northern Ireland can be dealt with in the main proceedings for case management reasons.

A UPC representative holds a position of trust. Thus, a party challenging the power of attorney of the other party’s representatives (here for lodging a withdrawal of an opt-out for the asserted patent) must bring forward substantiated reasons why the actual existence of a valid power of attorney should be called into question. The mere fact that the withdrawal of the opt-out was lodged by other representatives than those registered in the EPO and national patent registers is insufficient.

Proceedings under R.361 RoP should not result in a full exchange of arguments and evidence, but – as is clear from the use of the word ‘manifestly’ – must be reserved for clear-cut cases.

The decision on an application pursuant to R. 361 RoP must not be based solely on the content of the Statement of claim. Even though the UPC procedure is a front-loaded system, it is not required that the claimant envisages every possible line of defence and includes all arguments, facts and evidence in and submits it with the Statement of claim and that nothing could ever be added thereafter. This may in particular be the case when the claimant, after having made an argument in its Statement of claim, further substantiates this argument in its Statement under R. 29(a) or (b) RoP, in reply to a defence to the initial argument brought forward by the defendant in its Statement of defence.

The question of whether any claim has been sufficiently argued and substantiated in the Statement of claim is not a matter to decide under R. 361 RoP. Whether claims have been sufficiently stated, substantiated and if required proven is for the Court of First Instance to decide in the main proceedings after full consideration of all (further) submissions and
evidence.

A Statement of claim that sets out in detail why one infringing embodiment, that is taken as an example, infringes the patent and that includes a list setting out further embodiments with a similar structure that are infringing for (essentially) the same reasons, does not with respect to the embodiments included in that list result in an action that is manifestly lacking any foundation in law as meant in R.361 RoP.

There is no cost decision at the end of preliminary objection or R. 361 RoP proceedings. However, the outcome of these proceedings should be considered when the Court decides on the costs for the main action.