Context: The Unified Patent Court (UPC) publishes orders at all stages of proceeding, and ip fray aims to keep the patent litigation community informed of key decisions by the UPC (see, e.g., the May 6, 2024 ip fray article on a decision by the Paris Local Division (LD) on nullity counterclaims by an intervenor or the May 7, 2024 ip fray article on the Mannheim LD’s order to sever claims against ex-EU defendants) as well as U.S. courts (see, e.g., the May 7, 2024 ip fray article on a $1 million “bounty” for suing a licensee’s rivals or the May 8, 2024 ip fray article on the Federal Circuit’s latest decision on the U.S. International Commission’s domestic industry requirement).
What’s new: The UPC’s Paris Central Division (CD) today published an order denying a preliminary objection against a revocation objection that argued the court lacked jurisdiction (PDF). The key holding is that standstill clauses (here, as part of a non-disclosure agreement) with notice periods and similar restrictions go to the potential inadmissibility of a claim, which the parties can argue further down the road, rather than the court’s jurisdiction. The order also indicates, however, that standstill agreements will not be interpreted too restrictively by the Paris CD.
Direct impact: There is a possibility of the Paris CD’s decision becoming UPC-wide practice, but it remains to be seen, as other UPC divisions may prefer to dispose of barred claims at the earliest stage of proceeding.
Wider ramifications: The final part of the decision explains that some other arguments raised by the parties would have warranted clarification, but the court prefers to do so at a later stage, based on more evidence, as it didn’t have to reach those questions yet.
What makes the order more difficult (or potentially confusing) to read than necessary are three factors:
- On top of the obviously warranted redactions of direct quotes from the standstill agreement, the names of the parties are also redacted, though the case number of the related revocation action is stated anyway.
- The court uses two different terms for each party. This is related to revocation action no. ACT_589997/2023 brought by two legal entities of the Tandem Diabetes Care group against Roche Diabetes Care GmbH over EP2196231 (title: system for ambulatory drug infusion comprising a filling apparatus for flexible containers). In the revocation action, the Tandem companies are the “claimants” and Roche is the “defendant”, while with respect to the preliminary objection, Roche (the patent holder) is the “applicant” (“movant” or “moving party” in U.S. terminology). What helps when reading the decision is to focus on whether the term is a singular (Roche) or plural (Tandem) word.
- The first parts of the decision just clarify that Tandem interpreted the standstill agreement too narrowly, but in the end none of that matters because the decision is then based on the fact that a standstill agreement merely concerns admissibility, not jurisdiction. The fact that the court addresses those parts at all is helpful in one way (as it warns other revocation claimants against relying on very restrictive interpretations of standstill agreements), but a distraction in another as the court wouldn’t have had to reach those arguments.
The key paragraphs that explain why the objection was thrown out are 16-22, and of those paragraphs, particularly this one:
20. […] [T]he definition of jurisdiction has to respond to objective criteria which must not vary depending on the time of the filing of a claim or on the identity of the claimant.
The decision contrasts those objective and timeless criteria to the lapse of a standstill clause that could otherwise lead to the court regaining jurisdiction during the proceedings. The court may have to deem the revocation claim inadmissible in the end, but it does have jurisdiction as no other court that would have jurisdiction in the alternative is named and the abstract power of the court to adjudicate the validity of the challenged patent is not affected by the standstill part of the agreement. The Paris CD looked at national case law provided by Roche and interpreted it as equally considering standstill agreements in connection with admissibility, not jurisdiction.
The term “jurisdiction” is also potentially confusing here. Roche invoked Rule 19.1(b) of the UPC’s Rules of Procedure, at least according to the order (“the defendant in the revocation action lodged a preliminary objection pursuant to Rules 19 (1) (b)”). And that one only refers to “the competence of the division indicated by the claimant” while Rule 19.1(a) refers to “the jurisdiction and competence of the Court.” Maybe Roche actually invoked Rule 19.1(a), in which case the use of the term “jurisdiction” would make more sense.
The revocation claim may still fail, and what does not bode well for Tandem is that the court is not inclined to interpret a standstill clause so restrictively as to consider a revocation action outside the scope of “[any] proceeding arising from or relating to a dispute over intellectual property.”
The decision was made by the Paris CD’s Panel 2: Presiding Judge (and judge-rapporteur) Paolo Catallozzi, legally qualified judge Tatyana Zhilova and technically qualified judge Giorgio Checcacci.
Roche (the patentee) is represented by Kather Augenstein’s Dr. Christof Augenstein, Dr. Katharina Brandt and Robert Knaps as well as a patent attorney, Gruenecker’s Dr. Thomas Kronberger.
Tandem is represented by Taylor Wessing’s Netherlands-based Charlotte Garnitsch and Dr. Wim Maas, and Germany-based Dr. Alexander Rubusch.