UPC Court of Appeal
UPC_CoA_44/2024
APL_5395/2024
App_12629/2024

ORDER
of the Court of Appeal of the Unified Patent Court issued on 11 March 2024
concerning a procedural appeal

HEADNOTE:
The principle of due process requires that when a new patent is added as a basis for a claim already pending, then the defendant shall be given the same time period to respond – and, if applicable, file a counterclaim in revocation – as would be the case when the amendment would have been lodged as a new action with respect to such patent.

KEYWORDS:
Time period for defence following a change of claim or amendment of case pursuant to R.263 RoP

APPLICANTS / DEFENDANTS IN THE MAIN PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE:
Netgear Inc.
Netgear Deutschland GmbH
Netgear International Limited
Herinafter also jointly referred to as: Netgear (in singular)
represented by: Rechtsanwalt Dr Stephan Dorn, Freshfields Bruckhaus Deringer Rechtsanwälte, Düsseldorf

RESPONDENT / CLAIMANT IN THE MAIN PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE
Huawei Technologies Co. Ltd
Hereinafter also referred to as Huawei,
represented by: Rechtsanwalt Dr Tobias J. Hessel, Clifford Chance, Düsseldorf

LANGUAGE OF THE PROCEEDINGS:
German

PATENTS AT ISSUE
EP 3611989
EP 3678321

PANEL
Second Panel

DECIDING JUDGES:
This order has been adopted by
Rian Kalden, Presiding judge and judge rapporteur
Ingeborg Simonsson, legally qualified judge
Patricia Rombach, legally qualified judge

IMPUGNED ORDER OF THE COURT OF FIRST INSTANCE
□ Date: 23 January 2024; ORD_593106/2023 (panel) following preliminary order 593105/2023 (judge rapporteur) in the main action ACT_459771/2023)
□ Action number attributed by the Court of First Instance: UPC_CFI_9/2023

SUMMARY OF FACTS
In the impugned order, the panel of the Court of First Instance of the Local Division Munich ordered that the action based on European patent 3678321 shall be separated from the main action pursuant to Rule 302.1 RoP.

INDICATION OF PARTIES’ REQUESTS
Netgear has appealed the order and, in the main proceeding before the Court of Appeal, APL_5395/2024, requests that the Court of Appeal:
1. annul the order of the Local Division Munich ORD_597550/2023 (in proceedings App_595631/2023), as well as the order of the judge-rapporteur of the Local Division Munich ORD_589178/2023 (in proceedings App_587438/2023),
2. reject Huawei’s application for admission of the extension of the action of 23 November 2023,
3. annul the order of the Munich Local Division ORD_593106/2023 (in proceedings ORD_593105/2023) to separate the subject matter of the extension of the action;
4. in the alternative, in the event that the Court of Appeal assumes the admissibility of the extension of the action, to order a reasonable time limit for the appellants' defense, which allows the appellants to assert all intended defenses to which they would be entitled against a new action, also against the subject matter of the extension of the action;
5. to order the expedition of the appeal proceedings concerning applications for leave to appeal 1 to 4 pursuant to R. 225(e) in conjunction with R.9.3(b) RoP and to shorten the time limits for commenting in these appeal proceedings at the discretion of the Court of Appeal [as per APP_7580/2024].
During the interim conference Netgear withdrew the requests under 1-3 as well as its application for suspensive effect lodged under application number App_12629/2024, under the condition Huawei would accept a time extension, such that a 3 months period for a response to the amendment would run from the order of the panel of the Court of First Instance dated 18 January 2024. During the interim conference Huawei accepted this.

POINTS AT ISSUE
Time period for defence after leave to change claim or amend case.

GROUNDS FOR THE ORDER
1. The appeal is admissible.
2. Both parties were heard at the interim conference held at 11 March 2024 at 9.00 am.
3. Pursuant to R.263.1 RoP a request to be granted leave to amend the case by broadening the basis of the claims – and where necessary change the claim(s) as a result thereof – by adding another patent, may be made. Such leave shall not be granted if one of the circumstances mentioned in R.263.2 RoP is present.
4. When considering whether or not the amendment will unreasonably hinder the other party in the conduct of its action, the Court shall consider and take into account the measures available to the Court to ensure that this is not the case.
5. The principle of due process requires that when a new patent is added as a basis for a claim already pending, then the defendant shall be given the same time period to respond – and, if applicable, file a counterclaim in revocation – as would be the case when the amendment would have been lodged as a new action with respect to such patent.
6. The Rules of Procedure do not specify from which date this time period starts to run, as is the case if a new action would have been lodged. Therefore, when granting leave pursuant to R.263 RoP, that date should be specified in the order.
7. The judge-rapporteur in his order mentioned: “in the case of the joint management of both patents within the same infringement proceedings, the court is obliged to grant the defendant largely the same defense options with regard to the second patent as in the case of a new, further action. This can be done by granting or extending deadlines for comments. In the case of separation of the subject matter of the extension of the action, this would even be simplified. The parties will be heard in a separate workflow on the question of whether the subject matter of the extension of the claim can or should be separated.”. No specific date was given in the order. In view of the further instructions to the parties: “The parties will be given the opportunity to comment on the issue of separation within 14 days”, there was room for doubt whether the time period for defence was to be determined in the envisaged separated proceeding.
8. The panel of the Court of First Instance thereafter, in the R.333 RoP review requested by Netgear, in its order of 18 January 2024, confirmed the order of the judge-rapporteur of 11 December 2023 and considered: “The defendants must be granted the same pleading deadlines for the defence in the context of the present proceedings or in the context of separate proceedings as would have been granted if the action had been filed as a separate action, but no longer. This means that the non-extended time limit for filing a defence with respect to the subject matter of the amended complaint began to run on 11/12/2023 with the admission of the amended complaint. The defendants will be informed in which workflow the statement of defence is to be submitted.” Paragraph 2 of the order reads: “The time limit for filing a statement of defence in relation to the subject matter of the extension of the action began on 11/12/2023 and will end (without extension) on 11/03/2024.”.
9. In the opinion of the court of appeal, taking into account the lack of a specific rule in the Rules of Procedure or the Agreement and the lack of clarity in the order of the judge-rapporteur on the date on which the time period for the defence started to run, under these specific circumstances – where there was not sufficient clarity on the starting date for the time period for its defence to the amendment – the panel of the Court of First Instance should not have taken the earlier date of the order of the judge rapporteur as the starting date, but should have taken the date of service of its own order as the starting date. Taking into account that the Court of First Instance allowed a time period for 3 months, which as such has not been contested, the time period ends at 18 April 2024.
10. In view of the above, the Court of Appeal annuls the order of the Court of First Instance of 18 January 2024 to the extent that in paragraph 2 of the order it decided that: “the time limit for filing a statement of defence in relation to the subject matter of the extension of the action began on 11/12/2023 and will end (without extension) on 11/3/2024”.

ORDER
The Court of Appeal:
1. annuls the order of the Court of First Instance of 18 January 2024 to the extent that in paragraph 2 of the Order it decided that “the time limit for filing a statement of defence in relation to the subject matter of the extension of the action began on 11/12/2023 and will end (without extension) on 11/3/2024
2. sets the time limit for filing a statement of defence on the subject matter of the extension of the action and, if applicable, for filing a counterclaim for revocation at 18/4/2024.
INSTRUCTIONS TO THE PARTIES AND TO THE REGISTRY CONCERNING THE NEXT STEPS
This order closes APL_5395/2024 and App_12629/2024

Issued on 11 March 2024

NAMES AND SIGNATURES
Judges
Rian Kalden, Presiding judge and judge-rapporteur
Ingeborg Simonsson, legally qualified judge
Patricia Rombach, legally qualified judge