Context: On October 13, 2023, the Court of Appeal of the Unified Patent Court (UPC) overruled (PDF) a procedural order by the Munich Local Division (LD) in Sanofi v. Amgen. The Munich LD took a rather permissive approach to the requirement that a Statement of Claim be filed with all of the annexes referenced by it, lest the effective filing date on which the clock starts to tick for an answer to the complaint be deemed to be the one on which the defendant(s) received the last missing document, provided that such document is needed to understand the claim and prepare a proper defense.
What’s new: Today, the Munich LD’s Presiding Judge Dr. Matthias Zigann entered (also in his capacity as judge-rapporteur on the case) a procedural order (PDF) in an analogous scenario (case: NEC v. TCL) where a wrong annex had been initially attached, which the Munich LD compellingly deems to be the equivalent of an incomplete Statement of Claim that falls short of what defendants need in order to be able to prepare a responsive pleading. In today’s order, the above-mentioned appellate decision is referenced.
Direct impact: Of the two competing proposals (NEC: responsive pleading deadline on May 23; TCL: July 8), Judge Dr. Zigann adopted the latter. It is hard to see how an appeal would reasonably serve any practical purpose given how close the new filing deadline is. Also, the Munich LD’s reasoning is compelling that an incorrectly-attached document doesn’t change anything about a failure to attach a reasonably required documents. But it’s fair to say that Judge Dr. Zigann’s order is relatively strict, as NEC argued that TCL had received the correct document (a standardization document) in some parallel cases.
Wider ramifications: Almost 100% of all defendants to patent infringement actions are interested in delay (aka “stalling”), but that motivation cannot deprive them of fair proceedings. UPC practitioners know now that omissions or other mistakes can have the consequence seen in these two cases: the deadline for defendants to respond starts when everything was correctly and completely in place.
The Munich LD’s August 29, 2023 order in Sanofi v. Amgen that the Court of Appeal reversed in October 2023 was already more balanced than one might think:
- The UPC, in reference to EU-level law, does not consider just any omission from the original Statement of Claim to warrant a later deadline for the responsive pleading. When a LD rules on a motion to shorten time and/or a motion to extend the time to respond to a complaint, the burden is on defendants to explain why such omission should not be deemed an inconsequential oversight. So the Munich LD assumed that it had some wiggle room here, and to some extent that is also what the appeals court confirmed.
- The Munich LD never meant to allow extreme situations in which, for instance, a relevant annex would be filed just on the day before the responsive-pleading deadline. Much to the contrary, the Munich LD suggested, though without specificity, to develop a more nuanced approach to deadlines.
The Court of Appeal, however, made it clear that the clock starts ticking when everything is complete. Judge Dr. Zigann applied that rule now to NEC v. TCL. That is a procedural win for Noerr’s Dr. Ralph Nack on TCL’s behalf.
There are various TCL entities that have to defend in this case, and several of them argued that “[NEC] with its Statement of Claim submitted the AVC standard and not the 2014 version of the HEVC standard, which is referred to in the Statement of Claim.” It was apparently undisputed that the corrected annex was submitted to the UPC’s Case Management System on May 15, 2024.
By denying NEC’s motion on the merits, Judge Dr. Zigann didn’t have to reach the question of whether that motion was improperly filed as it was submitted by a lawyer who is not listed as NEC’s representative in the CMS.
ip fray believes it would actually have been interesting if Judge Dr. Zigann had denied the motion for an extension of the responsive-pleading deadline based on the provision of the relevant document in other HEVC-related cases. The Court of Appeal could then have clarified the question of whether a relevant document already provided in parallel cases is a permissible omission that does not result in extended deadlines for defendants. But this was pragmatic. There is no guarantee that the Court of Appeal would have resolved that question, and sooner or later there may be a superior vehicle for that purpose. Presumably Judge Dr. Zigann didn’t want the appeals court to be bothered by the Munich LD with too many plaintiff-friendly scheduling orders in such a short time.