Home » UPC decisions » Central Division » Paris Central Division » CD Paris, 13 November 2023, order on preliminary objection, UPC_CFI_255/2023

CD Paris, 13 November 2023, order on preliminary objection, UPC_CFI_255/2023

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Key takeaways

Art. 33(4) UPCA concerns, inter alia, the jurisdiction for revocation actions. If an action for infringement between the “same parties” relating to the same patent has been brought before a local or a regional division, revocation actions may only be brought before the same local or regional division.

The Applicant has stated that on 1 June 2023 it has filed an infringement action under the patent in suit before the Munich Local Division against the parent company of the Respondent, Meril Life Sciences Pvt. Ltd. (referred to as Meril India) and its subsidiary Meril GmbH (referred to as Meril Germany, together referred to as Meril), while a separate revocation action has been filed before the Paris Central Division by the Italian entity Meril Italy srl on 4 August 2023, i.e. at a later time.

The Applicant argued that the Respondent and Meril are effectively the same party and that their actions constitute an abuse of the Unified Patent Court framework aiming to interfering with the proper administration of the proceeding already pending before the Munich Local Division and are able to ‘block’ the progress of the pending infringement case.

The court found that in order to assess whether the Respondent is entitled to be a party in the meaning of UPCA – and, consequently, whether it is a different party from Meril India and/or Meril Germany – Italian national law has to apply. Under Italian law, a corporate connection is not suitable to determine the existence of a new legal entity or of a centre of attribution of relations other than the one of the connected companies, which maintain their distinct legal personality.

Therefore, the Respondent, the Italian entity Meril Italy srl, cannot be considered as the same party as Meril India and/or Meril Germany from a literal point of view.

The Applicant also stated that the expression ‘same parties’ mentioned in Article 33 (4) UPCA has to be interpreted broadly and relates to the judgement delivered by the Court of Justice of the European Union on 19 May 1998, case C-351/96 on the interpretation of Article 21 of the Convention of 27 September 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (‘Brussels Convention’).

However, the court found that the situation at hand is different and not comparable to it because no jurisdiction issue is disputed and, moreover, the UPCA provides for an autonomous set of rules that regulates the situations of parallel proceedings, as displayed, in particular, by Articles 33 (2)(4)(5)(6) UPCA and Rules 295, 302, 303 and 340 RoP. Therefore, the present particular case is outside the specific scope of Article 21 (and Article 22) of Brussels Convention and, therefore, it shall not be regulated by these provisions.

The Applicant also alleged that the Respondent is a straw company and, as such, it could not be considered as an independent legal entity and its actions should be attributed to the parent company.

The court found that there is not sufficient evidence that the Respondent is a straw company for Meril India or for any abuse of procedure by the Respondent.

The Applicant also argued that a broad interpretation of the term ‘same parties’ is also in line with the intention of the UPCA and, in particular, with the purpose to achieve uniform administration of justice and to avoid irreconcilable judgements within its divisions.

The court disagreed, finding that the UPC framework does not exclude that a patent may be attacked by different subjects, even if linked by organizational ties or commercial relationships, and by the means of different claims, even if structured in the same grounds of invalidity.

The Respondent had requested postponement of the oral hearing due to an additional submission of the Applicant made the day before the oral hearing (meeting the court deadline) and argued that a right for postponement would derive from the general principle of fairness and equity and from the right to a fair trial [Article 6 of the European Convention on Human Rights (‘ECHR’)] which governs proceedings before the Unified Patent Court (recital 13 UPCA and Rule 101 RoP).

The court found that the purpose of allowing the parties to file written submissions until the day before the hearing set for discussing the Preliminary objection is to anticipate to the opponent and to the judge the main points that would be addressed at the hearing. In this case, no further ground was added and so the request for postponement was denied.

One further exhibit filed by the Respondent concerns the same document previously filed but in a more complete way in view of the arguments exchanged. Other further exhibits only concern judicial decisions and thus do not introduce any new facts. Hence the request to exlude the new exhibits from the file is rejected.

The applicant has requested that the main proceeding shall be stayed until the final decision on the Preliminary objection is issued or until the defendants in the infringement action brought before Munich Local Division on the basis of the same patent in issue here have lodged their statements of defence and, as a less favourable alternative, an extension of the deadline to lodge a defence in the main proceeding by one month.

The court found that the deadline for filing the statement of defence is not affected by the lodging of a Preliminary objection, unless the judge rapporteur decides otherwise (R. 19(6) RoP, R. 48 RoP). At the hearing, the Applicant has declared that it has no more interest in these requests; the latter, therefore, were considered abandoned.

The Court deems that the mere circumstance that the Respondent is, at the moment, not active in the market and that it has a share capital of only euro 10,000.00 is not a sufficient reason to believe that it will not be able to enforce its claim for reimbursement of costs.

Thus the Applicant’s request to order a security for legal costs was rejected.

Division

Paris Central Division

UPC number

UPC_CFI_252/2023

Type of proceedings

Revocation action

Parties

Edwards Lifesciences Corporation

Meril Italy srl

Patent(s)

EP 3 646 825

Body of legislation / Rules

Art. 33(4) UPCA. Rules 19 (1) (b) and 48 RoP.


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