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Order
of the Court of First Instance of the Unified Patent Court
Central Division (Section Munich)
issued on 28 February 2025
CLAIMANT:
UPM-Kymmene Oyj, Alvar Allon katu 1 - FI-00101 - Helsinki - FI
represented by Clemens Tobias Steins of Hoffmann Eitle PartmbB.
DEFENDANT (APPLICANT):
Virdia Inc., 1319 Highway 182 - LA 70394 - Raceland - US
represented by Matthew Naylor of Mewburn Ellis LLP.
Action n°: UPC 829/2024
Revocation action
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PATENT AT ISSUE
European Patent number 2 611 800
PANEL/DIVISION
Panel 1 of the Central Division (Section Munich).
DECIDING JUDGE
This Order is an order of the Judge-rapporteur András Kupecz.
LANGUAGE OF THE PROCEEDINGS:
English.
SUBJECT-MATTER OF THE PROCEEDINGS
Revocation action. Application for a change (substitution) in parties.
SUMMARY OF FACTS
Claimant lodged a Statement for Revocation dated 20 December 2024 regarding European patent
EP 2 611 800 against Virdia Inc., 1319 Highway 182, Raceland, LA 70394, United States of America.
After service of the Statement of Revocation, the Defendant on 14 February 2025 lodged an
application under Rule 305 of the Rules of Procedure of the Unified Patent Court (´RoP´) to change
parties.
By preliminary order dated 18 February 2025, the Claimant was invited to comment on the request
pursuant to Rule 305.2 RoP. The Claimant provided comments in its submission of 24 February
2025.
SUBMISSIONS OF THE PARTIES AND REQUESTS
Defendant submitted as Exhibit ME 01 a copy of a patent assignment executed in 2024 relating to
a number of patents. The patents were assigned from Virdia Inc. to International N&H Denmark
ApS. Included in the list of patents assigned is EP 2 611 800, which is the subject of the present
revocation action. The registered proprietor on the European Patent Register is Virdia Inc.
However, the person entitled to be registered as proprietor under the law of each Contracting
Member State in which the European patent has been validated is International N&H Denmark
ApS.
The Defendant further argues that this application is made as soon as practicable after service, in
view of the need to establish the correct ownership position of this patent and also in view of the
more complex circumstances raised in the CMS in the revocation action filed in a parallel case
against EP 3 540 068.
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Further, Defendant considers that no court fees are to be due and it would not be appropriate to
make an order as to costs specifically for dealing with this routine application. The Defendant
proposes that the Court directs that the date of service of the revocation action on International
N&H Denmark ApS is confirmed as the same as the date of service on Virdia Inc., namely 14 January
2025.
On this basis, the Defendant requests:
that the originally-named defendant (Virdia Inc.) is substituted by:
International N&H Denmark ApS
Parallelvej 16
2800 Kongens Lyngby
Denmark
The Claimant agrees to the substitution. The Claimant also agrees that the case management
should not be affected by the substitution.
GROUNDS FOR THE ORDER
The request to change (substitute) the Defendant in this revocation action by International N&H
Denmark ApS is admissible and is well-founded.
1. Admissibility
According to Rule 42 RoP:
1. Any action for the revocation of a patent shall be directed against the proprietor of the
patent.
2. If the action for revocation is directed against the proprietor in accordance with Rule 8.6
(“the registered proprietor”) but the registered proprietor is not a proprietor within the
meaning of Rule 8.5(a) or (b) (“the Rule 8.5 proprietor”) each such registered proprietor
shall as soon as practicable after service of the Statement for revocation apply to the Court
pursuant to Rule 305.1(c) for the substitution of the registered proprietor by the Rule 8.5
proprietor.
According to Rule 305.1(c), the Court may on application by a party, order a person to be
substituted for a party.
Accordingly, the Defendant as the registered proprietor may apply to the Court pursuant to Rule
305.1(c) for its substitution by the Rule 8.5 proprietor. The Court accepts that in view of the
circumstances of the case, given the agreement of the Claimant, the application is made as soon
as practicable after service.
The application for a change in parties is therefore admissible.
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2. The application is well-founded
The request for a change (substitution) in parties is to be granted. A revocation action is to be
directed at the proprietor of the patent (Rule 42.1 RoP). If the registered proprietor is not a
proprietor within the meaning of Rule 8.5(a) or (b), the registered proprietor shall apply for its
substitution by the “Rule 8.5 proprietor” (Rule 42.2 RoP). Based on the facts and evidence
presented by the Applicant, which have not been disputed by the Claimant, the Court is satisfied
that the present Defendant, who is the registered proprietor, is not the Rule 8.5 proprietor. As the
present Defendant is not the Rule 8.5 proprietor, it is to be substituted by the Rule 8.5 proprietor.
There is no dispute between the parties that the Rule 8.5 proprietor is International N&H Denmark
ApS. Accordingly, the present Defendant shall be substituted by International N&H Denmark ApS.
In agreement with the parties, the Courts sees no reason to exercise its discretion under Rule 305.3
RoP to make any orders as to payment of court fees and costs as regards the new party specifically
for dealing with this application. The court fees for the revocation action have already been paid
by the Claimant. There is, furthermore, no reason to make a cost order at this stage of the
proceedings.
Rule 306 RoP requires that the Court gives directions to regulate the consequences of the
substitution as to case management. The Court, in agreement with the parties, directs that case
management should not be affected by the substitution. For the calculation of deadlines, including
time limit for filing the Defence to revocation, the date of service on Virdia Inc., namely 14 January
2025, shall be used as a starting point. The Court understands that the parties wish to, and agrees
that, N&H Denmark ApS shall be fully bound by the proceedings as they are constituted at the date
of this order (Rule 306.2 RoP). The Court is aware that International N&H Denmark ApS is
represented by the same representative as the Applicant and therefore assumes that this party
agrees as well.
ORDER
Having heard the parties, the Court orders that :
1. The originally-named defendant (Virdia Inc.) is substituted by:
International N&H Denmark ApS
Parallelvej 16
2800 Kongens Lyngby
Denmark
2. For the calculation of deadlines, including the time limit for filing the Defence to revocation, the
date of service on Virdia Inc., namely 14 January 2025, shall be used as a starting point.
3. International N&H Denmark ApS shall be fully bound by the proceedings as they are constituted
at the date of this order.
4. Any further requests are rejected.
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Issued 28 February 2025
KUPECZ
Judge-rapporteur
INFORMATION ABOUT REVIEW BY THE PANEL
Any party may request that this Order be referred to the panel for a review pursuant
to R. 333 RoP. Pending review, the Order shall be effective (R. 102.2 RoP).
INSTRUCTIONS TO THE PARTIES AND THE REGISTRY
1. The Registry shall take all necessary steps to effectuate the substitution as ordered as soon as
practically possible.
2. Even if would turn out to be impossible to implement this change in the CMS, this order takes
precedence.
ORDER DETAILS
Order no. ORD_7966/2025 in ACTION NUMBER: ACT_67479/2024
UPC number: UPC_CFI_829/2024
Action type: Revocation Action
Related proceeding no. Application No.: 7719/2025
Application Type: Application for a change in parties
András
Ferenc
Kupecz
Digital unterschrieben
von András Ferenc
Kupecz
Datum: 2025.02.28
16:23:49 +01'00'