Topics: revocation action
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LD Munich, June 6, 2025, decision, UPC_CFI_324/2024, UPC_CFI_487/2024
Burden of proof for non-infringement: If the defendant claims that infringement is impossible due to factors outside the scope of the patent claim, the defendant must prove this. The claimant does not need to address such external factors. In the decision, the defendant unsuccessfully argued that infringement was impossible due to the design of existing…
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CD Paris, May 28, 2025, decision in revocation action, UPC_CFI_198/2024
Revocation of European patents can be limited to specific UPC Member States upon request (Art. 34, 76(1) UPCA; Rule 44(d) RoP): The Court confirmed it may revoke a European (bundle) patent only for the national part(s) specified by the claimant, not necessarily for all UPC Member States. This approach respects the adversarial nature of proceedings…
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LD Duesseldorf, May 8 2025, Decision concerning the infringement and revocation of EP 2778423 B1
Background of the case: The Claimant brought an infringement action against the Defendant who filed a Counterclaim for Revocation, alleging a lack of enablement, a lack of novelty, and a lack of inventive step. However, they raised certain novelty and inventive-step objections for the first time in their Reply to the Defence to the Counterclaim…
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Court of Appeal, March 26, 2025, allocation of costs, UPC_CoA_290/2024
Prevailing claimant to exceptionally bear costs: An exception to the general rule of Art. 69 (1) UPCA, which requires the unsuccessful party to bear the reasonable legal costs and expenses of the successful party, applies if a claimant files a revocation action without the patent holder prompting it and the holder surrenders the patent immediately…
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LD Düsseldorf, March 4, 2025, Procedural Order, UPC_CFI_468/2024, UPC_CFI_687/2024
Referral of Counterclaim for Revocation (Art. 33(3)(b) UPCA, R. 37.2 RoP): The Local Division Düsseldorf referred the counterclaim for revocation to the Central Division in Milan. The Parties had unanimously requested the, and requests by all parties will be granted unless strongcounterarguments require a different decision (UPC_CFI 14/2023 (LD Munich), Order of 2 February2024 –…
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CD Paris, January 21, 2025, decision on validity, UPC_CFI_311/2023
A revocation claimant must present all grounds of invalidity with the Statement of Claim: In revocation actions, the claimant is required to specify the grounds of invalidity that allegedly affect the contested patent, as well as prior art documents relied upon to support any allegation of lack of novelty or inventive step in its statement…
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CD Paris, January 17, 2025, decision in first instance on validity, UPC_CFI_316/2023
“Generous standard” with regard to late-filed facts and evidence: While the front-loaded approach of the UPC system requires the parties so submit facts and evidence relied on as early as possible, a generous standard is to be applied with regard to submissions in a Reply to a Statement of Defence. A Claimant is allowed to…
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CD Paris, November 5, 2024, Revocation action, UPC_CFI_309/2023
R. 30 (1) (c) RoP does not set out the consequence that all amendments proposed (auxiliary requests) should be dismissed en bloc as not meeting the criterion of being reasonable in number.: Only some of the proposed auxiliary requests may be admitted. The Court can limit a patent by an amendment of the claims and…
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CD Paris, November 5, 2024, Revocation action, UPC_CFI_315/2023
The Court does not evaluate reasons for revocation that the Claimant has not raised.: The Claimant defines the scope of evaluation for a revocation action. If a party, in its first submission, raises an argument and the other party takes issue with this argument in reply, the party may further substantiate its initial argument in…
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CoA, September 6, 2024, procedural order, UPC_CoA_457/2024 and UPC_CoA_458/2024
The possibility that an injunction might be granted by the Court of First Instance (Local Division) in infringement proceedings based on a patent that has been upheld in first instance revocation proceedings, but may subsequently be revoked by the Court of Appeal, is not sufficient to justify expediting the appeal proceedings.: The two Defendants in…
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LD Hamburg, August 26, 2024, Decision, UPC_CFI_54/2023
Failure to use the correct workflows provided by the CMS does not result in a violation of the deadlines resulting from the Rules of Procedure, Rule 4.1 sentences 1 and 2 RoP. In the initial phase of the UPC – the present action was filed on the first day of the UPC, 1 June 2023…
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CD Paris, August 21, 2024, Order on stay of revocation proceedings, UPC_CFI_230/2024
Stay of revocation action pursuant to Rule 295(m) RoP: An appeal against the denial of provisional measures does generally not justify a stay of revocation proceedings pursuant to Rule 295(m) RoP. Rule 295(m) RoP must be applied and interpreted in accordance with the principle according to which proceedings must be conducted in a way which…
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CD Paris, July 29, 2024, Decision concerning the revocation action No. ACT_555899/2023, UPC_CFI_263/2023
Admissibility of defense with non-attacked claims: The request to amend the patent which concerns both claims challenged by the revocation action and claims not challenged by it is inadmissible (only) with regard to these latter claims. Defense with features from non-attacked claims admissible: In a situation in which the patent is not entirely attacked, the…
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LD Paris, 24 July 2024, Procedural order of the Court of First Instance, UPC_CFI_440/2023
Pendency of an action: The pendency of an action is determined by the date of the registration with the Division concerned – in other words, the pendency of an action is independent on whether or not the defendant has already accepted service of the statement of a claim. Same parties according to Art. 33 (4)…
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Central Division, Paris Seat, 19 July 2024, Decision of the Court of First Instance, UPC_CFI_255/2023
Concurrent pendency of invalidity proceedings before different divisions and criteria for exercising the Court’s discretion, Art. 33 (3) UPCA: In the situation of concurrently pending invalidity attacks by different parties against the same patent before different divisions (here: revocation action before CD and counterclaim(s) for revocation before LD) the local division has a discretion either…
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CD Paris, Preliminary objection of a revocation action, May 2, 2024, UPC_CFI-484/2023
The UPC has jurisdiction for the central revocation action even if a prior national revocation action is pending: The asserted patent is only validated in Germany. In 2021, Nokia Solutions and Networks GmbH & Co. KG filed a national revocation action with the German Federal Patent Court (GFPC) against the proprietor (Mala Technologies), which was…
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CoA, May 28, 2024, Order, UPC_CoA_22/2024
Regularly proceedings must be conducted in a way, which will allow the final oral hearing at first instace to take place within one year. As a general principle, the Court will not stay proceedings: Art. 33.10 UPCA and R. 295.a RoP must be applied and interpreted in accordance with the fundamental right to an effective…
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