LD Munich, January 13, 2025, revised order on auxiliary requests, UPC_CFI_298/2023

Upon panel review the court views the number of 55 auxiliary requests as exceptionally high but not unreasonable. Considering the extreme complexity of the case (in particular in view of the number of grounds of invalidity raised), the importance of the patent at issue and the interrelationship with other proceedings, both judicial and administrative, the number of auxiliary request is not unreasonable in this case.

It would be absurd to stay proceedings before the UPC with regard to parallel EPO opposition proceedings if an auxiliary request which is the subject of discussion before the EPO could no longer be introduced into the UPC-proceedings.

The principle of fairness (Art. 42 UPCA) requires the possibility for the Claimant to defend itself against all attacks brought forward with the counterclaim.

The outcome of the proceedings before the EPO is to be reflected and taken into account in the present proceedings. It must be possible for Claimant to adjust his auxiliary requests in the present proceedings according to the decision of the Opposition Division.

However, the number of auxiliary requests to be considered reasonable in number may affect the time limit for replying to the auxiliary requests. It will considered the extent to which the parties have already had the opportunity to respond to the arguments of the other party before the EPO. In view of this, also a shortening of deadlines has to be considered.