CD Paris, November 27, 2024, Decision Concerning The Revocation Action No. ACT_571565/2023, UPC_CFI_308/2023

1. Key takeaways

Background of the case

The Claimant filed a revocation action against the patent at issue based on a lack of inventive step.

On 11 December 2023, the Defendant submitted the defence to revocation including a conditional application to amend the patent based on different amendments and consisting of 35 auxiliary requests, which were later reduced to the number of 10. The Defendant requested that: the revocation action be dismissed and the patent be maintained as granted; in the alternative, to maintain the patent based on one of the proposed amendments; further in the alternative, in parts based on the independent validity of one or more of its dependent claims in combination with independent claim 1 as granted; and yet further in the alternative, in parts based on the independent validity of one or more of its dependent claims as granted in combination with claim 1 of the proposed amendments of the claims of the patent.

Between 13 February 2024 and 2 May 2024, the Claimant filed written pleadings together with new evidentiary documents and the Defendant also filed written pleadings, in particular requesting to dismiss these new evidentiary documents.

Exceptions of the UPC's 'front loaded' procedural system

To give a more accurate reasoning, the Court considered the following:

According to R. 44 RoP, R. 13 RoP, and para. 7, last sentence, of the preamble of RoP, the parties are under an obligation to set out their full case as early as possible, which is the so-called 'front loaded' procedural system of the UPC, to ensure that a defendant is aware of the facts and grounds on which the claim against him is based and of the evidence available to the claimant, thereby enabling him to prepare an adequate defence, and, at the same time, to expedite the proceedings.

This legal framework must be interpreted in the light of the principles of proportionality and procedural efficiency. For the proportionality, the parties should not be burdened with tasks that are unnecessary to achieve the stated objective, wherein it must be noted that R. 44 RoP requires an "indication" of the facts relied on and this seems to support an interpretation of the relevant provisions contrary to an overly strict application of the 'front loaded' procedural system. For the procedural efficiency, account must also be taken of the need to avoid excessive and overly detailed allegations of facts and the production of multiple documents in relation to matters that can be presumed to be known to the opposing party and not to be disputed by them.

Therefore, in revocation actions, the claimant is required to specify in detail the grounds of invalidity that allegedly affect the contested patent, as well as the prior art documents relied upon to support any allegation of lack of novelty or inventive step. Thus, the claimant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered novelty destroying or convincing starting points for the assessment of lack of inventive step in subsequent written submissions.

However, following the principles set by the Court of Appeal (decision issued on 21 November 2024, UPC_CoA_456/2024), in certain situations, following the defence raised by the defendant, the claimant may need to allege new facts, insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant.

In the present case, late filed documents containing arguments to react to the arguments raised by the Defendant in its defence to the statement of revocation (arguments regarding the common general knowledge and the claim construction) are admissible. In contrast, arguments and reactions that do not directly respond to previously raised arguments cannot be considered.

Proof of common general knowledge

While it is in general questionable that a particular patent document (published patent application or patent specification) can be considered as an indication of the common general knowledge, the background section of such a particular patent document can, because the nature of this type of description may describe what the author of the patent document considered to be a widely spread approach at the time.

Article 65(3) UPCA allows to request that the patent shall be limited by a corresponding amendment of the claims and revoked in part

A request to maintain the patent in parts based on the independent validity of one or more of its dependent claims in combination with independent claim 1 as granted (or in combination with claim 1 of the proposed amendments of the claims) is admissible and consistent with Article 65(3) UPCA, according to which "Without prejudice to Article 138(3) of the EPC, if the grounds for revocation affect the patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part".