Key takeaways
Further written submission following the interim conference to deal with a later filed document
Following the exchange of the written pleadings in accordance with Rule 43 RoP, the judge-rapporteur – after having informed the parties of his intention to do so – closed the written procedure pursuant to Rule 58 in connection with Rule 35 RoP on 24 January 2024.
However, a further prior art document was filed by the Claimant with the Reply to the Defence to Revocation (on 27 November 2023) and is relied upon as prior art in the context of novelty and inventive step. In the Rejoinder to the Reply to the Defence to Revocation, the Defendant objected to the filing of the further prior art document and argued that it should be disregarded as being late-filed.
The judge-rapporteur reminded the parties of the front-loaded character of UPC proceedings, which means that parties shall set out their full case as early as possible in the proceedings (see e.g. Preamble 7 RoP).
Upon further discussion at the interim conference, it was agreed that the Defendant would get the opportunity to respond to the submissions of the Claimant based on the further prior art document within 6 weeks after the date of the interim conference, in a written submission having a maximum of 10 pages. This submission must be strictly limited to responding to the invalidity arguments raised by Claimant based on the further prior art document. The Defendant subsequently withdrew its objection.
Recoverable Costs
The judge-rapporteur pointed out to the parties that the table (D-AC/10/24042023_D) as drawn up by the Administrative Committee relates to a ceiling for recoverable costs, i.e. the maximum amount of costs recoverable. In accordance with Article 69 UPCA, reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity requires otherwise (up to a ceiling set in accordance with Rule 104(j) in connection with Rule 152.3 RoP).
In order for the parties and the Court to assess whether costs incurred are indeed reasonable and proportionate and whether or not equity requires otherwise, the Court and parties must have access to information showing at least a detailed description of the number of hours spent working on this particular case, by whom, what for and at what rate.
Division
Munich Central Division
UPC number
UPC_CFI_252/2023
Type of proceedings
Revocation action. Order following interim conference.
Parties
NanoString Technologies Europe Limited
President and Fellows of Harvard College
Patent(s)
EP 2 794 928
Body of legislation / Rules
Rule 43 RoP, Rules 58 and 35 RoP, Rules 105.5 and 103 RoP, Rules 104(j) and 152.3 RoP; Article 69 UPCA
