Netgear Deutschland GmbH, Netgear Inc., Netgear International Limited v. Huawei Technologies Co. Ltd.

This order was issued by the Court of Appeal on March 11, 2024, in case UPC_CoA_44/2024 (APL_5395/2024, App_12629/2024), in proceedings conducted in German. The appellants in the original proceedings before the Court of First Instance were Netgear Inc., Netgear Deutschland GmbH, and Netgear International Limited (collectively referred to as Netgear), represented by Dr. Stephan Dorn of Freshfields Bruckhaus Deringer. The respondent was Huawei Technologies Co. Ltd, represented by Dr. Tobias J. Hessel of Clifford Chance. The proceedings concerned two European patents: EP 3611989 and EP 3678321. The underlying case before the Court of First Instance was UPC_CFI_9/2023 before the Local Division Munich.

The contested order (ORD_593106/2024) was issued by the panel of the Local Division Munich on January 23, 2024, following the preliminary proceedings 593105/2023 (Rapporteur) in the main proceedings ACT_459771/2023. By this order, the Local Division Munich directed that the action based on European patent EP 3678321 be separated from the main proceedings pursuant to Rule 302.1 of the Rules of Procedure. Netgear filed an appeal against this order and submitted five requests to the Court of Appeal: (1) to set aside the Local Division Munich's orders ORD_597550/2023 and ORD_589178/2023; (2) to reject Huawei's request of November 23, 2023, for permission to extend the claim; (3) to set aside the Local Division Munich's order ORD_593106/2023 separating the subject matter of the claim extension; (4) alternatively, if the Court of Appeal found the claim extension admissible, to order an appropriate time limit for the appellants' defense means that would allow them to assert all available defenses against the extended claim as they would against a new action; and (5) to order acceleration of the appeal proceedings under Rule 225(e) in conjunction with Rule 9.3(b) of the Rules of Procedure.

& Analysis

The headnote of the order establishes the guiding principle: the principle of due process requires that when a new patent is added to an already pending action through an extension of the claim, the defendant must be afforded the same time limit to file a Statement of Defense—and, where applicable, a counterclaim for revocation—as would apply if a new action had been filed in respect of that patent. The keywords of the order identify the central issue as the time limit for filing a Statement of Defense following an amendment or extension of the claim under Rule 263 of the Rules of Procedure.

Final Order & Ruling

During the interim hearing, Netgear withdrew requests 1 through 3, as well as the request for suspensive effect filed under App_12629/2024, on the condition that Huawei agreed to an extension of the deadline. Under this conditional withdrawal, a three-month deadline to respond to the claim extension would run from the date of the Court of First Instance panel's order of January 18, 2024. The deciding judges were Presiding Judge and Rapporteur Rian Kalden, legally qualified judge Ingeborg Simonsson, and legally qualified judge Patricia Rombach, sitting as the Second Panel.