Context: Earlier this month, the Unified Patent Court’s (UPC) Mannheim Local Division (LD) faced the dilemma that a redacted filing by the plaintiff raising arguments specific to standard-essential patent (SEP) licensing deprived the defendants of full access to a pleading, and in order to minimize the resulting delay, Presiding Judge Dr. Peter Tochtermann bifurcated the subsequent pleadings (June 13, 2024 ip fray article).
What’s new: Today the Dusseldorf LD’s Presiding Judge Ronny Thomas filled in for judge-rapporteur Dr. Bérénice Thom and entered an order granting Dolby an extension by about five weeks to file a reply brief against various ASUSTeK entities (PDF (in German)). In this case, the defendants had filed an answer to the complaint that contained redacted business information, and it took more than a month until a protective order granted the plaintiff and all of its outside attorneys access to the unredacted document. Unlike the Mannheim LD in Panasonic v. Xiaomi, however, the Dusseldorf LD kept all pleading deadlines in sync.
Direct impact: Whether the additional five weeks granted to Dolby will ultimately require the court to schedule the trial for a later day than without this delay is not stated in the order. But this obviously does nothing to accelerate the proceedings.
Wider ramifications: The UPC is known to prioritize speedy proceedings (June 21, 2024 ip fray article). It now turns out that redacted FRAND (fair, reasonable, and non-discriminatory [license terms]) pleadings, whether by a plaintiff or a defendant, almost routinely result in the need to extend deadlines. There is no simple solution as neither party can be deprived of the time it has available to prepare a pleading, and confidential business information (CBI) must be protected.
The UPC’s Rules of Procedure (RoP) give plaintiffs two months for their reply briefs: two months from service of the defendant’s answer to the complaint. In this Dolby v. ASUSTeK case, the defendants made a confidentiality request on April 23, 2024. While the order does not say so explicitly, it is a reasonable assumption that this is the date on which they filed their answer to the complaint.
The following day (April 24, 2024), the Dusseldorf LD granted only two of Dolby’s outside attorneys access to the redacted information, and only subject to a strict protective order. On May 28, 2024, the court entered a less restrictive protective order further to briefing. It imposed confidentiality obligations on Dolby and its lawyers, but at this point all the persons who would contribute to Dolby’s reply brief finally had full access.
Dolby subsequently moved for an extension of its deadline for the reply brief and/or its answer to the revocation counterclaim until July 28, 2024. The defendants had no problem with that extension. But instead of just requesting the extension, Dolby asked the court to declare that the deadline for the reply brief and the one for the answer to the revocation counterclaim began on May 28, 2024. The immediate effect of that would have been the same: two months until July 28, 2024. But the simple extension until July 28, 2024 was just a fallback (“auxiliary”) request.
The court declined to make those declarations and simply extended the deadlines. The ASUSTeK defendants were fine with the extension and left it to the court’s discretion to enter the requested declarations (which the court decided not to do). The order explains that the period during which a reply brief must be filed begins with service of the answer to the complaint, even if some information is redacted, but the plaintiff’s interests are protected by the possibility of an extension granted on a reasoned request.
The UPC may just have to live with the fact that SEP cases (as well as other disputes in which CBI may be outcome-determinative) are gradually slower than others.
Alternatively, the UPC might consider a modification of its procedural rules with a view to SEP cases and other cases involving CBI, separating technical from non-technical arguments. That would provide the judges, particularly also the technically qualified judges who are assigned on a case-by-case basis, with a head start on the technical aspects of a case, which is why the Mannheim LD bifurcated the pleadings in Panasonic v. Xiaomi, but in that case the FRAND arguments were part of the same document as the other defenses.
The administrative burden on the court increases with the number of pleadings. In that regard, the Dusseldorf LD opted for efficiency and kept all timelines in that case in sync.