European Patent Litigators Association

First Oral Proceedings at the Vienna Local Division of the UPC

On 13 September 2023 the Vienna Local Division of the UPC held oral proceedings (OP) in an action based on EP 3 398 487 B1, UPC file number 528738/2023. Germany-based patent holder CUP&CINO Kaffeesystem-Vertrieb GmbH & Co. KG sought provisional measures against an alleged infringement by Austrian company Alpina Coffee Systems GmbH. The written proceeding is not open to the public in the UPCs Case Management System. Accordingly, this report only focuses on the oral proceedings but not on the case in total.

Four topics were discussed during the OP: the impact of an opt-out request that the patent in suit was subjected to after filing the action, urgency, infringement, and validity of the patent. The court only decided on the infringement matter. Since no infringement of the patent was found, the court did not need to decide on the other matters.

Both parties agreed that the opt-out request did not affect provisional proceedings but would impact the possibility of main proceedings later. According to the defendant, the opt-out is valid as Rules of Proceedings (RoP) Rule 5.6 would not apply. Reference was made to the German wording or the RoP, which used the word “Klage” instead of “action” in the English version. “Klage” would not include a provisional measure. Therefore R 5.6 would not apply, keeping the opt-out valid. The court voiced a different opinion asserting that R 5.6 would also apply for provisional measures and therefore the opt-out request would be ineffective.

Urgency was discussed in detail but did not lead to a decision. Of note, it appears that despite intensive discussion, that this was not the most prominent topic for the court. The senate mentioned that urgency would be more important when requesting provisional measures without hearing the other party but in the case at hand this was not the case. This topic could be sidelined.

The infringement arguments focused on claim interpretation in light of the description. The court decided that the alleged infringing machines would not fulfill the requirement of a critical component in this light. Although this was the deciding matter, it relates to technical particularities of the specific case. Interestingly enough, the court allowed demonstrations of the machines by both the defendant and the applicant during the OP, although the senate mentioned that such demonstrations would have less impact than the evidences that have been filed so far.

Finally, validity was discussed, focusing on added matter and lack of inventive step. An interesting point was given by the court on added matter. The attack was based on an unallowable intermediate generalization based on EPO’s gold standard for amendments. The patent holder defended also in line with established EPO practice and pointed to the claims and description for basis for an amendment that was made during the granting phase. After the arguments, one of the judges raised the question if the EPO gold standard was thus accepted, implying that UPC may have a different opinion on the EPO’s gold standard practice and different arguments could be made before the UPC. In the end no decision was made on this topic.

Overall, the OP were held with lively discussions. The judges took an active role in questioning the parties. All four topics were discussed continuously without a break. The only breaks were made to allow setting up the demonstrations and near the end when the court withdrew to discuss if a decision could be made during OP or if it had to hand out the decision in writing later. After 30 min of deliberations the court announced that the application for provisional measures is denied. Detailed reasons for the decision will follow in writing. The OP lasted from 9:00 to 12:10.

Philipp Weinzinger for EPLIT (present as public observer, not representing parties)

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European Patent Litigators Association