UPC_CFI-484/2023
Order of the Court of First Instance of the Unified Patent Court
Central Division (Paris Seat)
rejecting a Preliminary objection
concerning the Preliminary objection No. App_8708/2024
lodged in the revocation action No. ACT_595045/2023
issued on 2. May 2024

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

Defendant:
Nokia Technology GmbH, represented by its Managing Directors Marc Malten and
Kristina Marie Vainio, Carl-Theodor-Strasse 6, 40213 Düsseldorf, Germany,
- Claimant in the main action–
represented by Boris Kreye, attorney-at-law, Bird & Bird LLP, Maximiliansplatz 22,
80333 Munich, Germany

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. Final Order

STATEMENT OF THE FORMS OF ORDER SOUGHT BY THE PARTIES
Applicant in the Preliminary objection proceedings, Defendant in the main proceedings
(hereinafter referred to as ‘Applicant’), requests that
I. the Preliminary objection be allowed;
II. the decision on the Preliminary objection be issued in accordance with Rule
20.1 of the Rules of Procedure (“RoP”);
III. the Unified Patent Court (“UPC”) decline its jurisdiction for the revocation action
and reject the revocation action as inadmissible;
IV. on an auxiliary basis, in the event that the Court does not decline its jurisdiction
as requested in item III., that the proceedings be stayed until a final decision of
the German Federal Court of Justice has been issued in the German revocation
appeal proceedings, docket no. X ZR 6/24;
V. the proceedings be stayed until a final decision on the Preliminary objection has
been issued;
VI. on an auxiliary basis, in the event that the proceedings are not stayed as
requested under V., that the deadline to lodge a defence to the revocation be
extended by one month.

Defendant in the Preliminary objection proceedings, Claimant in the main proceedings
(herein referred to as ‘Defendant), opposes the Preliminary objection.
Defendant requests that:
I. the Preliminary objection be rejected;
II. Applicant’s request to stay the proceedings until a final decision has been
issued by the German Federal Court of Justice (Docket No. X ZR 6/24) be
rejected;
III. in the alternative, the proceedings regarding the German portion of the
patent at issue be separated and stayed;
IV. in the further alternative, the Preliminary objection be dealt with in the main
proceedings (R. 48, 20.2 RoP).
V. in the further alternative, the parties be heard in a hearing before a decision
on the Preliminary objection is taken (R. 48, 20.1, 264 RoP).
Defendant further requests that:
VI. the Applicant’s request to stay the proceedings until a final decision has
been issued on the Preliminary objection be rejected;
VII. the Applicant’s request to extend the deadline for lodging a Statement of
defence by one month be rejected.
Summary of proceedings
1. Defendant in this Preliminary objection (‘Defendant’) has brought a revocation
action in relation to 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.
2. On 16 February 2024 the Defendant in the revocation action, Applicant in this
Preliminary objection (‘Applicant’), filed a Preliminary objection pursuant to Rules
19.1(a), and 48 of the Rules of Procedure of the Unified Patent Court (‘RoP’)
denying the competence of the Court on the grounds of a revocation action
previously filed with the German Federal Patent Court.
3. Defendant in the Preliminary objection submitted written comments regarding the
Preliminary objection on 4 March 2024.
4. An oral hearing (by video conference) was scheduled by the Court to give the
parties the opportunity to be heard (R. 20, 48, 264 RoP).
5. Prior to the oral hearing, on 9 April 2024, the parties submitted further comments
regarding the Preliminary objection.
6. The hearing took place by video conference on 17 April 2024. At the hearing, the
parties presented their arguments and addressed questions from the judge-
rapporteur (hereinafter ‘JR’). At the end of the hearing, the JR indicated that the
decision or order would be delivered in due course.

Summary of facts
7. Applicant is the proprietor of EP 2 044 709 B1 which is valid only in Germany.
8. On 29 April 2021, Nokia Solutions and Networks GmbH & Co. KG filed a revocation
action against Applicant with the German Federal Patent Court (docket no. 5 Ni
22/21 (EP), hereinafter “German revocation action”) requesting that the German
part of the European patent EP 2 044 709 (hereinafter “patent at issue” or “EP
709”) be declared invalid.
9. On 18 July 2023, the German Federal Patent Court dismissed the German
revocation action and upheld the patent at issue in its entirety. The full written
decision of the German Federal Patent Court was served on the parties on 13
December 2023 (Applicant) and 14 December 2023 (Nokia Solutions and
Networks GmbH & Co. KG).
10. On 15 December 2023, Defendant (i.e. Nokia Technology GmbH) filed an action
for the revocation of EP 709 with the Central Division of the Court of First Instance
of the Unified Patent Court – Paris Seat (hereinafter “Central Division”, “CD” or “CD
Paris”), registered as No. ACT_595045/2023.
11. On 15 January 2024, Nokia Solutions and Networks GmbH & Co. KG filed an
appeal against the decision of the German Federal Patent Court with the German
Federal Court of Justice (docket number X ZR 6/24).
Applicant’s arguments
12. Applicant claims that the jurisdiction of the Unified Patent Court is to be determined
in accordance with Art. 29 et seq. Regulation (EU) No 1215/2012 (recast)
(hereinafter “Brussels I Reg recast”). The jurisdiction of the UPC as a common
court to several Member States (Art. 71a Brussels I Reg recast) must be
determined in accordance with Art. 71b Brussels I Reg recast. Applicant points out
that Art. 71a et seq. Brussels I recast have supplemented the Brussels I Reg recast
in order to establish the international jurisdiction of common courts such as the
UPC. Therefore, the international jurisdiction of the UPC strictly depends on
Art. 71b Brussels I Reg recast. According to Art. 71b (1) Brussels I Reg recast, the
UPC has jurisdiction where, under the Brussels I Reg recast, the courts of a
Member State of the UPCA would have jurisdiction. Therefore, as is the case with
national courts, the entire Chapter II of the Brussels I Reg recast must be applied
in order to determine the jurisdiction of the UPC. This also includes the application
of Art. 29-32 Brussels I Reg recast in the event that national proceedings are
already pending. Art. 71c (2) Brussels I Reg recast merely clarifies that Art. 29-32
Brussels I Reg recast will (also) apply where proceedings are brought in the UPC
and in a court of a Member State during the transitional period, but without limiting
the applicability of Art. 29-32 Brussels I Reg recast to such proceedings.
Consequently, Art. 29 et seq. Brussels I Reg recast are applicable to the present
case regardless of the fact that the German revocation action was filed before the
beginning of the transitional period provided for in Art. 83 UPCA.
13. Applicant further points out that if the UPC had been launched without a transitional
period, there would still be a need to apply Art. 29 et seq. Brussels I Reg recast in
order to avoid conflicting judgements. In this scenario as well, Art. 29 et seq.
Brussels I Reg recast would be applicable under Art. 71b (1) Brussels I Reg recast.
14. This is not affected by the transitional period. Rather, Art. 71c (2) Brussels I recast
expressly deals with this transitional period and clarifies the applicability of Art. 29-
32 Brussels I Reg recast. There is no reason to distinguish between an action
before and during the transitional period.
15. On an auxiliary basis, Applicant argues that Art. 29-32 Brussels I Reg recast are
applicable as Art. 71c (2) Brussels I Reg recast is applicable by analogy. The
interests regarding two proceedings, both initiated during the transitional period,
are identical to those concerning two proceedings, one of which was initiated
before the beginning of the transitional period. In both scenarios, there is a risk of
conflicting or contradictory judgments. Art. 71c (2) Brussels I Reg recast aims to
prevent such conflicting or contradictory judgments through reference to Art. 29-32
Brussels I Reg recast.
16. Applicant claims a lack of jurisdiction of the Unified Patent Court under Article 31
Brussels I Reg recast. Both the German Federal Patent Court (and the German
Federal Court of Justice as the competent court of appeal) and the Central Division
have exclusive jurisdiction for a revocation action regarding EP 709. At the time
the German revocation action was filed, the German Federal Patent Court had
exclusive jurisdiction in proceedings concerning the validity of the German part of
a European patent (see Article 24 (4) Brussels I Reg recast) and the German
Federal Court of Justice now has exclusive jurisdiction in respect of the appeal filed
against the decision of the German Federal Patent Court. The UPC has exclusive
jurisdiction with regard to actions for revocation of European patents (see Articles
3(c) and 32(1)(d) UPCA). There is a high risk of irreconcilable judgments because
both the German revocation proceedings 5 Ni 22/21 (EP) / X ZR 6/24 as well as
the UPC revocation action ACT_595045/2023 concern the same patent. The
claimants in both proceedings even rely on the same (identical) grounds for
invalidity / revocation and the same facts and legal arguments. The revocation
proceedings before the Central Division ultimately only concern the German part
of EP 709, since EP 709 has been validated in Germany only.
17. To the extent the CD Paris considers Article 31 Brussels I Reg recast inapplicable,
the lack of jurisdiction of the Central Division also results from Article 29 (1), (3)
Brussels I Reg recast. German revocation proceedings 5 Ni 22/21 (EP) / X ZR
6/24 as well as the UPC revocation proceedings ACT_595045/2023 represent “two
(revocation) proceedings in (two different) courts of different Member States” within
the meaning of Art. 29 Brussels I Reg recast. The two court proceedings also
involve the “same cause of action” within the meaning of Art. 29 Brussels I Reg
recast. In the case at hand, both proceedings, i.e. the German revocation
proceedings 5 Ni 22/21 (EP) / X ZR 6/24 as well as the UPC revocation
proceedings ACT_595045/2023, concern the validity of the German part of the
European patent EP 709. The claimants refer to the same grounds of invalidity and
have even cited the same prior art documents. The German revocation action as
well as the revocation action at hand also involve the “same parties” within the
meaning of Art. 29 Brussels I Reg recast. In the German revocation proceedings 5
Ni 22/21 (EP) / X ZR 6/24 as well as the UPC revocation proceedings
ACT_595045/2023, both claimants share identical and indissociable interests.
18. If the Central Division finds (in addition) that the requirements of Article 29 Brussels
I Reg recast are not met, the present revocation proceedings are to be stayed in
accordance with Article 30 (1) Brussels I Reg recast. The revocation proceedings
before the German Federal Patent Court and the revocation proceedings before
the Central Division concerning the German part of EP 709 are related actions
within the meaning of Article 30 (1) and (3) Brussels I Reg recast, as there is a risk
of irreconcilable judgments.
19. In view of the high degree of probability that the Central Division will conclude that
it does not have jurisdiction and competence in the present revocation
proceedings, the main proceedings shall be stayed until a final decision on the
Preliminary objection has been taken.
20. In the event that the Central Division rules that the main proceedings will not be
stayed, Defendant requests an extension of the deadline to lodge a defence in
the main proceedings by one month as a less favourable alternative.
Defendant’s arguments
21. Defendant argues that Art. 29-32 Brussels I Reg recast are not applicable to
the present case as the German revocation action was not filed “during the
transitional period” within the meaning of Art. 71c (2) Brussels I Reg recast. With
regard to the question of the UPC functioning as a common court to several
Member States, Art. 71c (2) Brussels I Reg recast serves as the lex specialis for
determining the scope of application of Art. 29-32 Brussels I Reg recast. In
accordance with Art. 71c (2) Brussels I recast, Art. 29-32 Brussels I Reg recast
only applies where, during the transitional period referred to in Art. 83 UPCA,
proceedings are brought in the UPC and in a court of a Member State party to the
UPCA. The German revocation action however was filed on 29 April 2021 and
therefore before the beginning of the transitional period starting with the entry into
force of the UPCA on 1 June 2023. If Art. 29-32 Brussels I Reg recast were
applicable by virtue of Art. 71b Brussels I recast, Art. 71c (2) Brussels I Reg recast
would not have a separate scope of application.
22. Art. 71c (2) Brussels I Reg recast is moreover not applicable by analogy. The
scope of application of Art. 71c (2) Brussels I Reg recast was intentionally limited
to proceedings that were brought in the UPC and in a court of a Member State
during the transitional period within the meaning of Art. 83 UPCA. Art. 71c (2)
Brussels I Reg recast was drafted specifically for the transitional period; the risk of
conflicting judgments was taken into account with regard to such proceedings that
had already been brought in a court of a Member State before the beginning of the
transitional period. Furthermore, the interests during and before the beginning of
the transitional period are not similar. Before the entry into force of the UPCA, the
claimant did not have the option to choose between filing a lawsuit before the
national courts or before the UPC.
23. If the Central Division finds that Art. 29-32 Brussels I Reg recast may be applicable
in principle, the Defendant claims that Art. 31(1) Brussels I Reg recast is not
applicable due to the absence of exclusive jurisdiction for both the CD and the
German Federal Court of Justice (“FCJ”). The UPC and national courts have
parallel jurisdiction for revocation proceedings concerning European patents in
accordance with Art. 83(1) UPCA.
24. Article 29 (1), (3) Brussels I Reg recast is not applicable. Defendant, and the
claimant in the parallel nullity proceedings against the German portion of the patent
at issue, Nokia Networks and Solutions GmbH & Co. KG (“NSN”), are not “same
parties” within the meaning of Art. 29(1) Brussels I Reg Recast. The principle of
autonomy of legal entities requires that each legal entity should, as a matter of
principle, have the right to take its own legal action independently of the actions of
other group entities. According to the CJEU, two different entities/persons may be
regarded as the “same parties” within the meaning of Art. 29(1) Brussels I Reg
recast in exceptional cases, namely where the interests are identical and
indissociable. Moreover, the revocation action also includes attacks that deviate
from the arguments in the German revocation action, such as the insufficiency
attack on claim 2 (cf. para. 70), the added-matter attack based on features 1.3.1.
and 1.3.2 of claim 1 (cf. para. 75, 76 and 82-85) and the added-matter attacks
against claim 6 (cf. para. 86) as well as against claims 2 and 4 (para. 87-89).
25. In addition, the declaration of overall invalidity of the patent at issue has practical
consequences for all Member States, meaning that it is irrelevant that the patent
at issue is only valid in Germany. The revocation of the patent at issue by the CD
would lead to an ex tunc annulment of all claims for damages that may have arisen
in the Member States of the UPCA. Although the patent at issue is only valid in
Germany, claims for damages for the period from 11 March 2019 to 11 June 2019
could exist due to automatic validation, for example, under Belgian law (see Art.
XI.83 of the Belgian Code of Economic Law). Automatic validation is likewise
provided for under French and Luxembourg law (see Art. 64 and 65(1), (3) EPC in
conjunction with Art. 1(1) London Agreement and the Table of National Law relating
to the EPC, Section IV Translation requirements after grant.
26. A stay of the revocation proceedings is not appropriate. Staying the proceedings
would unduly restrict the Defendant’s right to attack the validity of the patent at
issue by way of a popular action, merely because another entity has already
brought a revocation action against a portion of the patent at issue before a national
court. There is no general rule under the UPCA that revocation proceedings must
be stayed because other proceedings relating to the same patent are pending.
Rather, revocation proceedings may be brought before the UPC even if an
opposition before the EPO is pending.
27. If, contrary to Defendant’s view, the PCD considers that a stay is appropriate, the
proceedings should in any event be stayed only with respect to the German
portion of the patent at issue, and otherwise continue. The issue of staying the
proceedings should be discussed at a later stage of the proceedings, e.g. at the
interim conference or at the oral hearing.
Points at issue
28. The first issue is whether Art. 29-31 Brussels I Reg recast are directly applicable
and can determine the relationship between the two lawsuits.
29. If Art. 29 et seq. Brussels I recast are not directly applicable, then the scope of
application of Art. 29 et seq. Brussels I Reg recast in connection with Art. 71a -
71d Brussels I Reg recast must be determined.
30. If Art. 29 et seq. Brussels I Reg recast are not directly applicable and not applicable
in conjunction with Art. 71a – 71d, it must be determined whether Art. 71c (2)
Brussels I recast is applicable by analogy.
31. If the UPC has jurisdiction, then a stay of the proceedings must be considered.
No direct applicability of Articles 29 to 32 Brussels I Reg recast
32. The UPCA does not provide material rules concerning the international jurisdiction
of the UPC. The UPCA does not specifically provide rules for the relationship
between lawsuits before the UPC and lawsuits before national courts which have
been lodged prior to the transitional period stipulated in Art. 83 UPCA. The rules
on international jurisdiction were previously, i.e. before the enactment of the UPCA,
unified within the EU by the Brussels I Regulation. Therefore Art. 31 UPCA merely
stipulates that the international jurisdiction of the UPC is determined in accordance
with Brussels I Reg recast.
33. The issue of competing lis pendens is governed by Art. 29 to 32 Brussels I Reg
recast. Art. 29-31 Brussels I Reg recast provide instruments for the courts of the
EU Member States to coordinate civil proceedings which are related to each other
and are pending simultaneously in different Member States. The rules on
procedural coordination aim to avoid parallel proceedings in different countries and
the resulting irreconcilable decisions.
34. Art. 29-31 Brussels I Reg recast are not directly applicable to the UPC and do not
of themselves determine the relationship between lawsuits before the UPC and
before national courts.
35. Art. 29 Brussels I Reg recast states:
(1) Without prejudice to Article 31 (2), where proceedings
involving the same cause of action and between the same
parties are brought in the courts of different Member States,
any court other than the court first seised shall of its own
motion stay its proceedings until such time as the jurisdiction
of the court first seised is established.
(2) …
36. The UPC is not a court of the Member States, however according to Art. 71a
Brussels I Reg recast it should be ‘deemed to be’ a court of a Member State. It is,
within the meaning of the Brussels I Reg recast, a ‘common court’. According to
Art. 71a (1), (2a), Brussels I Reg recast, the Unified Patent Court is considered a
"common court" (Article 2(a)) within the meaning of Brussels I Reg recast in order
to integrate these courts into the Brussels I system of jurisdiction.
37. Article 71a states:
For the purposes of this Regulation, a court common to several Member States
as specified in paragraph 2 (a ‘common court’) shall be deemed to be a court
of a Member State when, pursuant to the instrument establishing it, such a
common court exercises jurisdiction in matters falling within the scope of this
Regulation.
For the purposes of this Regulation, each of the following courts shall be a
common court:
(a) the Unified Patent Court established by the Agreement on a Unified Patent
Court signed on 19 February 2013 (the ‘UPC Agreement’); and (…)
38. Art. 71a – 71d Brussels I Reg recast stipulate the rules relating to such “common
courts”. These provisions make clear that Art. 29 et seq. Brussels I Reg recast are
not directly applicable to the UPCA. Art. 71a et seq. Brussels I Reg recast provide
for special rules with regard to the application of Articles 29 to 32 Brussels I Reg
recast to “common courts” within the meaning of the Brussels I Reg recast.
39. If Art. 29 et seq. Brussels I Reg recast were immediately applicable, then Art. 71a
et seq. Brussels I Reg recast would be superfluous. Instead, the scope and manner
of application of Art. 29 et seq. Brussels I Reg recast are determined by Art. 71a –
71d Brussels I Reg recast.
Scope of Application of Articles 29 to 32 Brussels I Reg recast in relation to Art. 71a –
71d Brussels I Reg recast
40. As a general principle, according to Art. 71b Brussels I Reg recast the jurisdiction
of common courts is similar to the jurisdiction of the courts of the Member States.
This is stipulated in article 71b (1) Brussels I Reg recast which states that:
(1). a common court shall have jurisdiction where, under this Regulation, the
courts of a Member State party to the instrument establishing the common court
would have jurisdiction in a matter governed by that instrument.
(2)…
41. However, Art. 71b Brussels I Reg recast does not provide for a general application
of Art. 29 et seq. Brussels I Reg recast by determining the jurisdiction of common
courts such as the UPC. If this were the case, both Art. 71c (1) and (2) Brussels I
Reg recast would not have a separate scope of application and would lack any
meaning.
42. Moreover, the wording of both subsections of Art. 71c Brussels I Reg recast
(“Articles 29 to 32 shall apply where […]”) implies that Art. 71c Brussels I Reg
recast determines exclusively when Art. 29 et seq. Brussels I Reg recast apply.
43. Therefore, Art. 71c Brussels I Reg recast provides for special rules for cases of lis
pendens. Article 71c states:
(1) Articles 29 to 32 shall apply where proceedings are brought in a common
court and in a court of a Member State not party to the instrument establishing
the common court.
(2) Articles 29 to 32 shall apply where, during the transitional period referred to
in Article 83 of the UPC Agreement, proceedings are brought in the Unified
Patent Court and in a court of a Member State party to the UPC Agreement.
44. In Art. 83 UPCA the transitional period referred to is defined as follows:
1. During a transitional period of seven years after the date of entry into force
of this Agreement, an action for infringement or for revocation of a European
patent or an action for infringement or for declaration of invalidity of a
supplementary protection certificate issued for a product protected by a
European patent may still be brought before national courts or other competent
national authorities.

45. The wording of Art. 83 UPCA makes clear that the transitional period starts with
the date of entry into force of the UPCA and lasts for a period of seven years.
During the transitional period provided for in Art. 83 UPCA, the proprietor of a
patent may choose whether to assert his claim before the Unified Patent Court or
the national courts. Art. 71c (2) Brussels I Reg recast takes this into account if the
two competing courts are called upon in parallel proceedings.
46. According to Art. 83 UPCA the transitional period commences with the date of
entry into force of the agreement, i.e. 1 June 2023.
47. In the current case, the lawsuit before the German Federal Patent Court was not
lodged during the transitional period but was filed on 29 April 2021 and hence
approximately two years before the beginning of the transitional period.
48. A literal application of Art. 71c (2) Brussels I Reg recast suggests that Articles 29
to 32 Brussels I Reg recast do not apply in this case, given that the proceedings
were brought before a court of a Member State (Germany) prior to the beginning
of the transitional period, rather than during it.
No Application of Art. 71c (2) Brussels I Regulation recast by analogy
49. The issue arises of whether Art. 71c (2) Brussels I Reg recast is applicable by
analogy to a case in which the lawsuit before the national court has not been
brought during the transitional period, but two years before the beginning of this
transitional period.
50. It has been argued that Art. 71c (2) Brussels I Reg recast is applicable by analogy
if an action for revocation had already been brought before a national court before
the entry into force of the UPCA (Tilmann/Plassmann, UPC commentary, Article
89 mn 32).
51. This court does not follow that view and does not extend the scope of applicability
of Art. 71c (2) Brussels I Reg recast beyond its literal wording.
52. In order to apply Art. 71c (2) Brussels I Reg recast by analogy, an unintended gap
and a similarity of the interests would be required.
53. There is no unintended gap in the Brussels I Regulation or in the UPC.
54. As a general principle, decisions of courts of sovereign states and sovereign
entities such as international organizations like the UPC are independent of each
other. The principle of sovereignty grants each country’s courts as well as the UPC
court the authority to independently determine their jurisdiction and to adjudicate
cases independently of the courts of other countries.
55. Only if there are rules which define the interrelationship of judgments of courts of
sovereign countries can the judgment of the courts of one country have effects on
the jurisdiction of the courts of another country.
56. The independence of both national and international courts may carry the risk that
contradictory judgments will be issued by the various courts, however this risk is
merely the consequence of the sovereignty of the respective countries.
57. Based on this principle and the clear and unambiguous wording of Art. 71c (2)
Brussels I Reg recast, it can be assumed that the legislators of the UPCA
considered this general rule of sovereignty of each national and international
jurisdiction.
58. There is no general principle within the UPCA that precludes the UPC from
asserting jurisdiction in revocation proceedings merely because other proceedings
relating to the same patent are pending before other courts. Rather, revocation
proceedings may be brought before the UPC even if an opposition before the EPO
is pending, see Art. 33 (8), (10) UPCA. There is no reason why the same principle
should not apply to national courts (absent a legal rule to the contrary).
59. Furthermore, the interests of claimants filing revocation lawsuits before and after
the entry into force of the UPCA are distinct. A party which filed a lawsuit in a
national court before the entry into force of the UPCA should not be barred from
filing a lawsuit before the UPC because at the time of filing the national lawsuit it
was not clear if and when the UPCA would enter into force and when the UPC
would be operational. At this time, a claimant could not make a choice between the
UPC and a national court. In contrast, a claimant which files a lawsuit during the
transitional period can make such a choice.
60. Therefore, in sum, Art. 29-31 Brussels I Reg recast are not applicable in the current
proceedings.
No stay of proceedings
61. There is no need for a stay of proceedings until the Preliminary objection is
decided, as the Preliminary objection has already been resolved (in a timely
manner).
62. The court sees no legal basis for the claimant’s request for a stay of the
proceedings regarding the patent as a whole or the German portion thereof.
63. Article 30 (1) Brussels I Reg recast is not applicable.
64. In accordance with Art. 33 (10) UPCA and Rule 295 RoP, the UPC may only stay
its proceedings in cases involving EPO opposition proceedings when a swift
decision is anticipated from the EPO. However, the preconditions outlined in this
provision are clearly not met. There is neither an imminent decision expected from
the EPO nor is the German Federal Supreme Court poised to deliver a prompt
decision.
65. There is also no provision in the UPCA or the RoP that would allow the underlying
rationale behind these EPO-related provisions to be applied broadly. Hence, there
is no legal foundation for staying the proceedings before this court.
No Time extension
66. The deadline for the lodging of a Defence to revocation is stipulated by R. 49.1
RoP. This Rule forms part of an elaborate regime of deadlines set out in the RoP.
One of the Court’s aims is to provide expeditious and high-quality decisions,
striking a fair balance between the interests of rights holders and other parties and
taking into account the need for proportionality and flexibility (cf. Preamble to the
Unified Patent Court Agreement, paragraph 6). The regime of deadlines provided
for by the RoP (including R. 49.1 RoP) implements this objective through
procedural measures. It provides a balance by setting deadlines that are short
enough to allow for expeditious decisions while at the same time being long enough
to allow the parties to prepare and present their case in a manner suitable for the
Court to deliver high-quality decisions. R. 9.3 RoP offers the Court the possibility
to extend a time period referred to in the RoP upon a reasoned request by a party.
R. 9.3 RoP addresses the need for proportionality and flexibility. Proportionality
and flexibility need to be applied, however, while maintaining the overall goal of
delivering expeditious and high-quality decisions, thereby striking a fair balance
between the interests of rights holders and other parties.
67. The mere existence of a Preliminary objection alone does not justify granting an
extension of the time period for submitting a Defence. Indeed, the deadline regime
provided for by the RoP was established with consideration of parties and their
representatives which have lodged a Preliminary objection. If the lodging of a
Preliminary Objection would suffice for a time extension, a party lodging a
Preliminary Objection would have it in its hands to influence and alter the tight
timeframe as provided for by the UPCA.
68. The present case does not qualify as extraordinary even though the legal issues
discussed in this Preliminary objection warrant extensive research and concern
issues which have not been addressed in the UPCA. The parties are expected to
allocate their resources accordingly.

Order
On these grounds, having heard the parties on all aspects and elements of relevance
for the following order, the court issues the following order:
- the Preliminary objection is rejected;
- Applicant’s request to stay the proceedings until the Preliminary objection is
decided is rejected.
- Applicant’s request to stay the proceedings until a final decision is delivered by
the German Federal Court of Justice (Docket No. X ZR 6/24) is rejected;
- Applicant’s request to extend the time period for lodging a Defence to the
revocation according to R 49.1 RoP is rejected.

Issued on 2. May 2024.

Judge-rapporteur
Maximilian Haedicke
Information about appeal
This rejection of a Preliminary objection focuses on fundamental issues concerning
the relationship between lawsuits before the UPCA and national courts. Therefore,
leave to appeal is granted.

The present order of the Judge-rapporteur rejecting the Preliminary objection may
either be the subject of an appeal together with the appeal against the final decision
of the Court of First Instance in the main proceedings or be appealed within 15 days
of service of the Court’s decision to that effect (Article 73 (2) (b) UPCA, Rules 21 (1),
2nd sentence, 220 (2) and 224 (1) (b) RoP.

ORDER DETAILS
Order no. ORD_13023/2024 in ACTION NUMBER: ACT_595045/2023
UPC number: UPC_CFI_484/2023
Action type: Revocation Action
Related proceeding no. Application No.: 8708/2024
Application Type: Preliminary objection