Short Summary
This is a procedural order from the Local Division Hamburg in an infringement action and counterclaim for revocation concerning European Patent EP2579551. Following an interim conference held on 22 October 2025, the judge-rapporteur issued decisions on various procedural matters, including the value of the case, admissibility of evidence, amendments to the patent claims, and the introduction of prior art documents. The order admits the Patent Sale Agreement and Patent Assignment Agreement, both rounds of patent amendments under Rules 30.1 and 30.2 RoP, and prior art documents D6 through D11, while granting the Claimant the right to comment on the newly introduced documents and validity attacks.
Detailed Summary
This procedural order (UPC_CFI_537/2024) was issued by the Local Division Hamburg on 28 October 2025, following an online interim conference conducted on 22 October 2025. The Claimant, Malikie Innovations Ltd. (represented by Dr. Marc Grunwald), brought an infringement action against Nintendo Co., Ltd. and Nintendo of Europe SE (represented by Johannes Heselberger) concerning European Patent EP2579551, which is also subject to a counterclaim for revocation.
The order addresses twelve main procedural matters:
1. Value of the Case: The parties agreed to set the value of the infringement action at €3 million and the counterclaim at €4.5 million (with a 50% addition), totaling €7.5 million.
2. Reimbursable Legal Costs: The parties agreed to seek an out-of-court settlement based on the judge-rapporteur's proposal of approximately 50% of the ceiling.
3. Parallel Proceedings: The Claimant provided updates on a nullity action before the German Federal Patent Court and other cases pending in the U.S. related to EP2579551 and EP2448225.
4. Operational Request: The Claimant clarified that the operational request regarding the counterclaim for revocation concerns the unconditional amendment of the patent based on the new main claim.
5. Patent Sale Agreement and Patent Assignment Agreement: The judge-rapporteur admitted Exhibits PS 7 and 8 to the case, noting that while a registered patent owner does not need to prove ownership in the Statement of Claim, the Claimant introduced these documents without undue delay after ownership was contested. The sufficiency of these documents to prove entitlement to sue was left to examination on the merits.
6. Change of Claim (R. 263 RoP): The applications to change the claim were admitted, as unconditional leave to limit a claim must always be granted under R. 263.3 RoP. The second round of amendments to operational (injunctive) requests was also admitted as they limit the scope of the requested injunction.
7. First Round of Patent Amendments (R. 30.1(c) RoP): The first set of applications to amend the patent was admitted. The court found that the auxiliary requests constituted two strains based on the movement of the component (detaching or attaching), resulting in five to six lines of demarcation countering five prior art documents, which was considered within the limits of R. 30.1(c) RoP. The decision on whether the amendments satisfy the substantial patentability requirements of R. 30.1(b) RoP was left to the merits.
8. Prior Art Documents D6 to D9: These documents were admitted as a reasonable reaction to the amended main request and more than 30 auxiliary requests to amend the patent.
9. Second Round of Applications (R. 30.2 RoP): The second round of applications to amend the patent was admitted. The Claimant had modified Auxiliary Requests 8, 9, 28, 29, 36, and 37 to limit the physically movable component to include a joystick, and Auxiliary Requests 16, 17, 24, 25, 34, and 35 to specify that the retaining mechanism is other than a friction fit. The judge-rapporteur found these amendments to be a direct and proportionate response to the Defendants' objections.
10. Documents D10 and D11 and New Validity Attacks: The court admitted documents D10 and D11, which were introduced to counter the second round of amendments. The court noted that when a Claimant introduces another round of amendments under R. 30.2 RoP, a Defendant must have the possibility to challenge their validity, including adding inventive step attacks based on already provided documents. The Claimant was given two weeks to comment on documents D10 and D11 and the new validity attacks in the Defendants' Rejoinder of 6 October 2025.
11. Physical Evidence: The filing of physical evidence (samples of the attacked embodiments) was admitted but requested to be done well in advance of the oral hearing.
12. PowerPoint Presentations: The court indicated that PowerPoint presentations could be facilitated via the Webex Video Conference tool, with best practice suggesting submission beforehand to the division's clerks and the opponent.
The final order admitted the Patent Sale Agreement and Patent Assignment Agreement, the applications to change the claim under R. 263 RoP, both applications to amend the patent under R. 30.1 and R. 30.2 RoP, documents D6 to D11, and the validity attacks in the Defendants' Rejoinder of 6 October 2025. The Claimant was given two weeks to comment on documents D10 and D11 and the new validity attacks, while the Defendants were given two weeks to comment on the contested passages in the Claimant's brief of 4 September 2025 regarding claim interpretation and infringement.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Hamburg (DE) Local Division. Understanding the court's reasoning in Malikie Innovations Ltd. vs Nintendo Co., Ltd. and Nintendo of Europe SE is valuable context for structuring arguments or assessing risk in similar proceedings.
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