UPC_CFI-484/2023
Order of the Court of First Instance of the Unified Patent Court
Central Division (Paris Seat)
lodged in the revocation action No. ACT_595045/2023
delivered on 2. July 2024

Plaintiff:
Nokia Technology GmbH, represented by its Managing Directors Marc Malten and
Kristina Marie Vainio, Carl-Theodor-Strasse 6, 40213 Düsseldorf, Germany,
marc.malten@nokia.com
- Plaintiff –
Representative: Rechtsanwalt Boris Kreye, Bird & Bird LLP, Maximiliansplatz 22,
80333 Munich, Germany

Defendant:
Mala Technologies Ltd., represented by its Managing Director, Izhak Tamir, 41 Yosef
Tzvi Street, 52312 Ramat Gan, Israel, izhak.tamir@malatechnology.com
- Defendant –
Representative: Rechtsanwalt Dr. Thomas Lynker, TALIENS Partnerschaft von
Rechtsanwälten mbB, Amalienstrasse 67, 80799 Munich, Germany,
thomas.lynker@taliens.com
and
German and European Patent Attorney Dr. Thomas Kurig, Becker Kurig &
Partner Patentanwälte

PATENT AT ISSUE:
EP 2 044 709 B1

PANEL:
Panel 1 of the Central Division - Paris Seat

DECIDING JUDGE:
This order has been issued by the Judge-rapporteur Maximilian Haedicke

LANGUAGE OF PROCEEDINGS:
English

SUBJECT-MATTER OF THE PROCEEDINGS
Revocation action. Preliminary Objection. Hearing Invitation

BACKGROUND
1. On 21. December 2023 Plaintiff has brought a revocation action against the patent
at issue (EP 2 044 709 B1) before this Seat of the Unified Patent Court, registered
as number ACT_ 595045/2023 UPC_CFI_484/2023. Service on Defendant has
been effected on 17. January 2024.
2. On 17 March 2024 Defendant filed an Application to amend the patent within the
Defence to revocation (p. 29 et seq., mn. 138 et seq.).
3. Defendant started the workflow for the Application to amend the patent on 13 May
2024 (No. App_26882/2024).
4. Plaintiff requests to reject Defendant’s Application to amend as inadmissible, and
to revoke the patent is suit in its entirety in the form of auxiliary requests 1 to 7.
Plaintiff argues that Defendant’s Application to amend is inadmissible because
Defendant failed to initiate the correct workflow in the CMS in a timely manner.
Defendant should have started the separate “Application to amend” workflow within
the CMS and file its auxiliary requests therein at the same time as it lodged its
Defence to revocation (see R. 30.1 RoP). Initiating a separate workflow is essential
because R. 55 RoP, in conjunction with R. 32 RoP, establishes a different
procedural timetable than the main proceedings. If an application to amend the
patent is filed in violation of R. 4.1, sentence 2 RoP, the legal consequence is that
the application to amend must be rejected as inadmissible (see MLD UPC CFI
15/2023, Order of 29/09/2023, p.9).
5. Defendant requests to reject Plaintiff’s request. Defendant argues that Auxiliary
requests 1-7 were effectively introduced into the proceedings on 17 March 2024,
along with the filing of the Defence to revocation, and thus not filed too late but filed
within the deadline to file a defence. It does not follow from the Rules of Procedure
that the Application to amend the patent in response to a revocation action is to be
regarded as something separate from the Defence to revocation. And it does not
follow from the Rules of Procedure that an Application to amend the patent is only
admissible if filed in a separate workflow of the CMS.

GROUNDS FOR THE ORDER
6. Plaintiff’s request to reject Defendant’s Application to amend as inadmissible is
denied. The Application to amend has been filed within the 2-month time limit of R
49 (1), (2) RoP.
7. By filing the Application to amend in the same submission as the Statement of
Defense, Defendant filed this request on 23 May 2024 and hence in a timely
manner.
8. It does not unambiguously follow from the Rules of Procedure that the Application
to amend the patent in response to a revocation action has to be filed in a separate
workflow.
9. Article 29 (a) RoP states:
“Within two months of service of a Statement of defence which includes a
Counterclaim for revocation…”.
The verb "include" may be interpreted to indicate that neither separate written
pleadings nor the use of a separate workflow for the Application to amend the
patent is required.
10. However, Article 4 (1) RoP provides that
1. Written pleadings and other documents shall be signed and lodged at the
Registry or relevant subregistry in electronic form. Parties shall make use of the
official forms available online. The receipt of documents shall be confirmed by the
automatic issue of an electronic receipt, which shall indicate the date and local time
of receipt."
This provision indicates that whenever a specific workflow is provided, this
workflow is to be used. Hence, Article 4 (1) RoP stipulates an obligation to use the
workflows provided by the CMS. However, this provision cannot justify Plaintiff’s
request to set aside the Application to amend the patent.
11. The Rules of Procedure have to be interpreted with reference to the principles of
fairness and proportionality (Preamble No. 2 RoP). As stated in ORD_19619/2024
ACT_580198/2023, UPC_CFI_367/2023, it is not readily apparent to the CMS user
that the CMS requires an independent reaction to the Application to amend a
patent by opening a separate workflow. Ambiguities arising from the CMS,
particularly shortly after the launch of the UPC, should not be to the detriment of
the parties and should not render a submission inadmissible (see also Ordonnance
ORD_25657/2024 ACT_578871/2023 UPC_CFI_360/2023).
12. The Order ORD_576853/2023 UPC_CFI_15/2023 of the Munich Local Division
which has been mentioned by Plaintiff states correctly that the parties are obliged
under rule 4.1 RoP to use the correct workflow. The Order does not consider the
submission to be inadmissible because the wrong workflow was used. The order
left open whether in the future submissions filed in the wrong workflow may be
inadmissible. This issue doesn’t have to be decided in this order. At least for now
the use of the wrong workflow does not render a submission inadmissible.
13. However, the parties are strongly encouraged to use the correct workflows in the
future, as this makes the case management system more transparent and more
accessible.
14. The arguments underlying the Application to amend were brought to the attention
of the court and Plaintiff within the 2-month time limit of R 49 (1), (2) RoP. No
disadvantage arose for Plaintiff because Defendant failed to open a separate
workflow.
15. Whether the patent in suit can be maintained as requested in any of the auxiliary
requests 1, 2, 3, 4, 5, 6, or 7 (R. 32.1(b) RoP) will be decided in due course after
the oral hearing.

ORDER
16. Plaintiff’s request to reject Defendant’s Application to amend as inadmissible is
rejected.
17. Whether the patent in suit can be maintained as requested in any of the auxiliary
requests 1, 2, 3, 4, 5, 6, or 7 (R. 32.1(b) RoP) will be decided in due course after
the oral hearing.

The Judge-rapporteur
Maximilian Haedicke

REVIEW:
Pursuant to Rule 333 RoP, the Order shall be reviewed by the panel on a reasoned
application by a party. An application for the review of this Order shall be lodged within
15 days of service of this Order.

ORDER DETAILS
Order no. ORD_33370/2024 in ACTION NUMBER: ACT_595045/2023
UPC number: UPC_CFI_484/2023
Action type: Revocation Action
Related proceeding no. Application No.: 29031/2024
Application Type: Generic procedural Application