Short Summary
Procedural order issued by the Düsseldorf Local Division concerning European Patent No. EP 2 263 098 B1, addressing the bifurcation question under Article 33(3) UPCA. The court decided, with the consent of the parties, to hear both the infringement action and the counterclaim for revocation jointly under Article 33(3)(a) UPCA, citing efficiency and the benefit of having validity and infringement decided by the same panel based on a uniform interpretation of the patent.
Detailed Summary
This procedural order was issued on 14 April 2025 by the Düsseldorf Local Division in proceedings UPC_CFI_99/2024 and UPC_CFI_392/2024, concerning European Patent No. EP 2 263 098 B1. The claimant, Ona Patents SL (a Spanish company represented by its CEO Raúl Diaz Morales and represented by attorneys from Kather Augenstein Rechtsanwälte), brought an infringement action against multiple Apple entities: Apple Inc., Apple Distribution International Ltd., Apple Retail Germany B.V. & Co. KG, Apple GmbH, and Apple Retail France EURL (all represented by attorneys from Bardehle Pagenberg Partnerschaft mbB). The defendants filed a counterclaim for revocation.
The subject of the proceedings was the bifurcation question under Rule 37.1 RoP and Article 33(3) UPCA. Pursuant to Rule 37.2 RoP, the panel took an early decision on how to proceed under Article 33(3) UPCA before the end of the written procedure, after considering the parties' submissions and giving them the opportunity to be heard.
The panel, composed of Presiding Judge Thomas (acting as judge-rapporteur), legally qualified judge Dr Thom, and legally qualified judge Kokke, exercised its discretion to hear both the infringement action and the counterclaim for revocation jointly under Article 33(3)(a) UPCA. The court reasoned that a joint hearing was appropriate for reasons of efficiency and was preferable because it would allow both validity and infringement to be decided on the basis of a uniform interpretation of the patent by the same panel of judges. The court noted that an early decision on bifurcation would set the framework for possible issues and enable the parties and the court to manage the case accordingly.
The order was issued with the consent of the parties. The Judge-Rapporteur was instructed to request the President of the Court of First Instance to allocate a technically qualified judge with appropriate qualifications and experience in the field of technology related to the patent in suit to the panel.
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 Ona Patents SL vs Apple Inc., Apple Retail Germany B.V. & Co. KG, Apple Retail France EURL, Apple GmbH, Apple Distribution International Ltd. is valuable context for structuring arguments or assessing risk in similar proceedings.
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