LD Mannheim, June 27, 2024, indicative decision, UPC_CFI_ 210/2023

According to R. 13(1)(n) RoP in cases of technically complex subject-matters, the Statement of Claim must already contain the claim construction if the patent in suit is not readily understandable on its own. In case the plaintiff does not comply, further legal issues may arise (Additional round of submissions needed? Decision by default according to R. 355 RoP?) which, however, are not yet decided in the present order.

In the Reply to a counterclaim for revocation, the patent proprietor has to structure its argumentation according to the specific features of the patent claim.

R 30.2 RoP is a strict preclusion rule which allows subsequent requests to amend the patent only with the permission of the court. Such requests must
be substantiated in detail. When assessing the question if a new amendment will be allowed, it will be important to consider whether the new
amendment was already made at an earlier point in time in response to the arguments of the Claimant for revocation and whether the late request for amendment delays the proceedings.

If implementer applies for a determination of the FRAND rates, it must have a legitimate “need for legal relief”. Such need could be missing if the implementer is not willing to take a license to the rates that would be determined by the Court.

Above all, this decision is of importance as it could lay out the practice of the LD Mannheim: This interim decision has been issued after the Reply and shortly before the Rejoinder. It allows both parties to review their arguments and to focus their arguments in the remaining submissions. From the practitioners view, this could be very helpful – as long as the Division is still amenable to new arguments and does not take the interim decision as blueprint for the later decision.