Short Summary
This procedural order from the Düsseldorf Local Division concerns FUJIFILM Corporation's application under Rule 333 RoP to review and set aside a prior order by the Judge-Rapporteur that had rejected FUJIFILM's request to submit a further written pleading in response to new prior use allegations raised by the Kodak defendants in their Rejoinder. The Panel found the request for review admissible but dismissed it on the merits, holding that the Judge-Rapporteur had correctly balanced the risk of delay against the Claimant's interest in further written submissions.
Detailed Summary
This case (UPC_CFI_355/2023) is a patent infringement action and counterclaim for revocation concerning European patent EP 3 594 009 B1, brought by FUJIFILM Corporation against three Kodak entities (Kodak GmbH, Kodak Graphic Communications GmbH, and Kodak Holding GmbH) before the Düsseldorf Local Division.
The procedural dispute arose as follows: On 19 August 2024, the Defendants filed their Rejoinder containing new factual allegations regarding the prior use defence. On 3 October 2024, the Claimant (FUJIFILM) filed an application pursuant to Rule 36 RoP seeking leave to submit a further written pleading in response to these new allegations. By Order of 30 October 2024, the Judge-Rapporteur rejected this application, holding that having only one opportunity to submit written observations on the right of prior use is a consequence of the Rules of Procedure and the time limits laid down therein. The Judge-Rapporteur reasoned that while the Court must consider the Claimant's reasons for needing further pleadings, it must also weigh the impact on the further course of proceedings and the associated risk of delay. The Judge-Rapporteur concluded that the right to be heard was not unduly restricted because the Claimant had the opportunity to file the request earlier, and that allowing a further submission would lead to delay. The Judge-Rapporteur also noted that the Claimant still had a possible opportunity to respond to the Defendants' new allegations at the oral hearing if the Court considered it necessary.
FUJIFILM then filed an application under Rule 333 RoP seeking review of the 30 October 2024 Order, requesting that the Court (I) review and set aside that Order, and (II) allow the Claimant to submit a further written pleading with respect to the Defendants' private prior use pleadings in their Rejoinder of 19 August 2024.
The Panel found the request for review admissible, as the requirements of Rules 333.2 and .3 RoP were met. Although Rule 333.2 RoP states that the other party shall be heard, the Panel noted it may decide immediately if the decision is in favour of the other party, which it did by dismissing the request.
On the merits, the Panel held that the Judge-Rapporteur applied the correct legal standard in dismissing the request for a further written submission. The Panel agreed that the risk of delay outweighed the Claimant's interest in presenting its arguments in writing, endorsing the Judge-Rapporteur's findings and conclusions. The Panel further held that the Claimant had not put forward any relevant arguments that would lead to a different conclusion regarding the late filing creating a risk of delay. The Panel interpreted 'immediately' in Rule 333.2 RoP as including at least enough time not to create a risk of delay, noting this is particularly true in patent cases where entire legal teams work on a case. The Panel emphasized that the risk of delay is borne solely by the parties who decide when to file their applications, and that the time taken by the Court to decide on an application is not decisive. The Panel also rejected the Claimant's preference for written submissions and its unsubstantiated fear that it would not be able to present its arguments in the necessary detail.
The final order dismissed the Claimant's requests in their entirety.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Düsseldorf (DE) Local Division. Understanding the court's reasoning in FUJIFILM Corporation vs Kodak GmbH, Kodak Graphic Communications GmbH, and Kodak Holding GmbH is valuable context for structuring arguments or assessing risk in similar proceedings.
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