Context: Even before the launch of the Unified Patent Court (UPC), bifurcation was already one of the most-talked-about questions. Some were worried that there could be many divergent decisions, known as the German injunction gap.
What’s new: The UPC’s Dusseldorf Local Division (LD) has just entered an order to consolidate infringement and revocation proceedings without awaiting the completion of briefing (PDF (in German)). The parties to that case, Tridonic and CUPOWER, did not raise objections to that course of action.
Direct impact: The key objective was to trigger the assignment of a technically qualified judge (many of whom work for the UPC on only a part-time or case-by-case basis) as early as possible so as to avoid potential delays.
Wider ramifications: This is just the latest example of a procedural order by the UPC that reflects the high priority that its judges place on speedy proceedings.
Even though neither the plaintiff nor the defendant objected to the timing of this order, the court had to determine that it was within its powers to do so at this stage. The decision applies Art. 33(3)(a) of the UPC Agreement (UPCA) as laid out in Rule 37 of the UPC’s Rules of Procedure (RoP). Here’s the relevant passage from the UPCA:
3. A counterclaim for revocation as referred to in Article 32(1)(e) may be brought in the case of an action for infringement as referred to in Article 32(1)(a). The local or regional division concerned shall, after having heard the parties, have the discretion either to:
(a) proceed with both the action for infringement and with the counterclaim for revocation and request the President of the Court of First Instance to allocate from the Pool of Judges in accordance with Article 18(3) a technically qualified judge with qualifications and experience in the field of technology concerned.
And this is the relevant passage from the RoP:
Rule 37 – Application of Article 33(3) of the Agreement
1. As soon as practicable after the closure of the written procedure the panel shall decide by way of order how to proceed with respect to the application of Article 33(3) of the Agreement. The parties shall be given an opportunity to be heard [Rule 264]. The panel shall set out in its order brief reasons for its decision.
2. The Panel may by order take an earlier decision if appropriate having considered the parties’ pleadings and having given the parties an opportunity to be heard [Rule 264].
Here, the court deemed it appropriate to decide sooner (Rule 37(2) RoP) than “after the closure of the written procedure” (Rule 37(1) RoP) not only because there was no objection but also with a view to potential delays that a later request for the assignment of a technically qualified judge could cause.
With a view to consolidation per se (regardless of timing), the court mentions four reasons: judicial efficiency and avoidance of divergent decisions always apply, and here the technical depth of the patent-in-suit (EP2011218, “boost power factor correction circuit (boost pfc)”) is considered “rather moderate” and there aren’t many invalidity contentions.
The decision was made by Presiding Judge Ronny Thomas, Judge Peter Agergaard (Copenhagen) and Judge Dr. Peter Schilling (Hamburg), who filled in for Judge Dr. Bérénice Thom (Dusseldorf).
The patentee is represented by Dr. Markus Boelling (“Bölling” in German), who heads Mitscherlich’s litigation practice, and the defendant entities are represented by Wildanger’s Jan-Caspar Maiers (whose name does not appear in the procedural order, but is listed in the case registry).