By Mike Gruber, Attorney at Law & UPC Representative, and Thorsten Bausch, European Patent Attorney & UPC Representative
On October 13, 2023, the UPC’s Court of Appeals (“CoA”) held its first public hearing ever and issued a decision orally on the same day. The case at stake concerned an interlocutory appeal against the procedural order of the Local Division Munich (“LD Munich”) in the infringement action of Amgen v. Sanofi and Regeneron. Such an interlocutory appeal under RoP 220.2 is possible with the leave of the Court of First Instance. Especially for a new court, this procedural mechanism is quite useful as it allows the CoA to harmonize the interpretation of the Rules of Procedure early on, instead of having to wait until the full decision on the merits is appealed.
The CoA’s decision concerns the interpretation of RoP 13.2, 19.1 and 23: What happens if a Claimant – contrary to RoP 13.2 – does not submit the exhibits referred to in its Statement of claim at the same time, but only more than two months later, as it happened in this case? Do the Defendant’s terms for filing the Provisional Objection and the Statement of Defense start when the Statement of claim is served, or only when also the exhibits become available to the Defendant? The LD Munich favored the first alternative, arguing that a Claimant may have an interest to submit the exhibits only after service has been completed. The Central Division that was invoked in the parallel revocation action regarding the same patent decided in favor of the second alternative. Clarification by the CoA was therefore highly desirable.
Amgen’s infringement action was based on EP 3 666 797 (“EP’797”) derived from the parent patent EP 2 215 124 (“EP’124”), which Amgen previously asserted against Sanofi and Regeneron in national infringement proceedings at the Regional Court Dusseldorf until the Board of Appeals came to the conclusion that the patent could only be maintained on the basis of previous auxiliary request 7 (T 0845/19), which was not asserted against the Defendants. Amgen therefore eventually lost the first infringement action but decided not to give up. As the next step, Amgen started asserting another divisional of EP’124 in Germany, EP 2 641 917 (“EP’917”) in March 2022, but this infringement action was again derailed by the EPO, which found – at Opposition Division level – this Amgen patent to be invalid as well and revoked it. Amgen’s EPO appeal is pending. Moreover, when the UPC opened its doors on June 1, 2023, Amgen saw another chance to successfully assert one of their patents of the EP’124 family and immediately filed an infringement action based on EP’797. However, Sanofi and Regeneron had anticipated this move and validly filed a revocation action even a few minutes earlier than Amgen. Thus, the battle will probably continue, and the CoA’s decision of 13 October 2023 only settles a particular formal side aspect while expressing no opinion on the merits of the case.
2. Details of the proceedings
Case No.: UPC_CoA_320/2023
Statement of appeal: September 13, 2023
CoA: Rian Kalden (NL, presiding judge & judge rapporteur), Ingeborg Simonsson (SE), Patricia Rombach (DE)
Case No.: UPC_CFI_14/2023
Statement of claim: June 1, 2023
Service of all exhibits: August 10, 2023
LD Munich: Dr. M. Zigann (DE, presiding judge & judge rapporteur), T. Pichlmaier (DE) and S. Granata (BE); a technically qualified judge has not been appointed as of yet.
Claimant and Respondent: Amgen, Inc.
Defendants and Appellants: Sanofi-Aventis Deutschland GmbH, Sanofi-Aventis Groupe S.A., Sanofi Winthrop Industrie S.A., Regeneron Pharmaceuticals Inc.
Language of the proceedings: German
Language of the hearing: English
3.1 Statement of claim can be validly filed without exhibits
Appellants Sanofi and Regeneron argued that a Statement of claim is not complete if the documents it refers to or announces (exhibits), are not attached to it when it is served. Form this it follows that a complete statement of claim only came into existence upon receipt of the annexes on August 10, 2023 and therefore the terms mentioned in RoP 19.1 and 23 should only start from that date. The CoA disagreed, as did the LD Munich in the order under appeal. The CoA held that there was a statement of claim that could validly be served on the Defendants pursuant to RoP 271, even if the annexes had not been attached to that.
On this point, the CoA considered that RoP 13.1 sets forth which information a Statement of claim shall contain. In the CoA’s view, this Rule serves the purpose of ensuring that the Statement of claim meets the requirements of the EU Service Regulation, and that only annexes that are indispensable for the understanding of the subject matter must be served under RoP 271.8. A Statement of claim that fulfills the requirements of the provisions of that EU Regulation, as interpreted by the CJEU, which does not necessarily include all or even any annexes, thus is a “complete” Statement of claim for the purposes of RoP 19.1 and 23.
3.2. Term extension request
However, the CoA found that the LD Munich did not properly take into account the general principles of fairness and equality of arms when it granted the Defendants only a few days to compensate for the delay in supplying the exhibits. The CoA considered that RoP 13.2 serves the purpose of enabling the defendant to prepare a Statement of defense based on all the arguments brought forward in the Statement of claim and all supporting Annexes in support of its arguments. As such, this provision ensures that the fundamental principles of fairness and equity, which must be ensured by having regard to the legitimate interests of both parties (see preamble 5 to the RoP) are properly adhered to. Given this purpose, the obligation under RoP 13.2 equally applies to all documents that are already in the possession of the claimant and which are referred to in the Statement of claim.
The CoA noted that the Registry was correct to object that Claimant failed to submit the exhibits with its Statement of claim and asked it to correct this deficiency within 14 days. This objection correctly followed from the non-compliance with the clear obligation under RoP 13.2 by Claimant and thus, the LD Munich should have considered what the consequences should be.
The CoA considered that the Rules of Procedure would even allow the court to reject an action as inadmissible if the requirements or RoP 13.2 are not met. Another option set forth in the RoP is to disregard exhibits that are late filed. However, if the court decides not to use these discretionary powers, it must, upon a reasoned request of a party for a term extension, ensure that the general principles of fairness and equity are complied with.
The CoA clarified that this applies regardless of the nature and/or content of the annexes. The court noted that if a claimant refers to a document to substantiate its arguments that is a clear indication of its importance to the proceedings. Also, even if certain documents are already known to a defendant or generally available, it is still important that it be beyond doubt which precise document the claimant relies on, and the exact contents thereof, which can only be established beyond any doubt, if and when such document is made available by uploading it in the CMS.
According to the CoA, it would be unfair to put the burden of arguing the relevance of the annexes for the preparation of a defense on the defendant, where the reason for the request for extension is non-compliance with RoP 13.2 by the claimant to begin with.
Lastly, the CoA noted that although such an extension of time causes delay and is (in an infringement case generally) contrary to the interests of the claimant, this cannot lead to another conclusion. It is up to the claimant to comply with RoP 13.2. If Claimant fails to do so, this should not go to the detriment of the defendant.
In view of the above, the CoA extended the terms for defendants as they are to be calculated from the date when the annexes were uploaded by the claimant.
This decision provides a necessary clarification for the parties about the relevancy of submitting also the exhibits when filing an action. The CoA clearly understands Rule 13.2 to require that the Claimant should upload all exhibits together with the Statement of claim (i.e. at the same time as the Statement of claim). When claimants take liberty with the clear requirements of the RoP, this entails risks, although it is unlikely that a statement of claim will be considered completely “invalid” for formal reasons. In determining the correct interpretation of the RoP, the CoA considered particularly the purpose of the relevant Rules of Procedure. A minor issue here was the discrepancy between the German language version and the English and French versions of the Rules of Procedure: While the English and French versions require the exhibits to be filed „at the same time“ or „simultanément“, the German version lacks an explicit expression having this effect. However, the CoA took the view that the wording, purpose and system of the Rules of Procedure make it clear that Rule 13.2 of the Rules of Procedure is to be understood in this sense (also in the German version). This follows in particular from the fact that compliance with Rule 13.2 of the Rules of Procedure is the subject of the examination of the formal requirements. Thus, wherever linguistic differences exist in the RoP (and there are several in the German text), it may be worthwhile also checking the English and French versions and considering which purpose this Rule serves and how it fits best within the entire system of the RoP.