1. Key takeaways
Background of the case
The Claimant brought an infringement action against the Defendant who filed a Counterclaim for Revocation, alleging a lack of enablement, a lack of novelty, and a lack of inventive step. However, they raised certain novelty and inventive-step objections for the first time in their Reply to the Defence to the Counterclaim for Revocation. In doing so, they relied for the first time on prior-art publications and new combinations of prior-art documents in support of their arguments.
The UPC's "front loaded" procedural system
According to R. 263 RoP, a party may at any stage of the proceedings request the amendment or extension of its pleadings, including a counterclaim for revocation. Such a request must include a justification as to why the amendment was not already included in the original written submission. Leave to change the case shall not be granted if, all circumstances considered, the party seeking the amendment cannot satisfy the Court that (a) the amendment could not have been made with reasonable diligence at an earlier stage, and (b) the amendment will not unreasonably hinder the other party in the conduct of its action. These conditions must be fulfilled independently of one another. The burden of proof lies with the applicant.
This legal framework must be interpreted in light of the front-loaded nature of UPC proceedings, which requires that all grounds for revocation and supporting documents be set out in the counterclaim for revocation. According to R. 25(1)(b)–(d) RoP, the counterclaim must contain the grounds relied on, the facts asserted, and—where available—the supporting evidence. This ensures that the Claimant can respond within the procedural deadlines in a fair and orderly manner.
In the present case, the introduction of further documents and a new inventive-step attack in the Reply to the Defence to the Counterclaim for Revocation constitutes an amendment of the case requiring a request and justification under R. 263 RoP. However, the Defendant neither submitted such a request nor provided any explanation why the materials could not have been filed earlier. Furthermore, no sufficient argument was made to demonstrate that the admission of the new matter would not unreasonably hinder the Claimant in the conduct of its action.
Additionally, the late submissions were not prompted by any new arguments introduced by the Claimant in its response. The Defendant's own earlier statements already indicated the limitations of its case, and yet it chose not to raise the additional lines of argument in the original counterclaim. Therefore, the Defendant could not rely on the Claimant's pleadings to justify the extension.
Finally, even if, in exceptional cases, such an amendment were to be admitted at a later stage, the party bears a heightened obligation to substantiate why the newly introduced arguments are both relevant and procedurally justified. This standard was not met in the present case.
Front-Load or Forfeit
This decision sends a clear message: the UPC expects parties to come fully armed from the start. Revocation grounds, prior art, and arguments must be comprehensively set out in the original counterclaim—there's little room for tactical withholding. Attempts to introduce fresh attacks or documents later will face an uphill battle, requiring rigorous justification and proof of diligence. For litigators, the strategy is simple: build your case early, thoroughly, and transparently—or risk losing your best weapons.nt 1
2. Division
LD Duesseldorf
3. UPC number
UPC_CFI_11/2024
4. Type of proceedings
Revocation action
5. Parties
Claimaint: Grundfos Holding A/S
Defendant: Hefei Xinhu Canned Motor Pump Co., Ltd.
6. Patent(s)
EP 2 778 423 B1
7. Body of legislation / Rules
R. 25(1)(b)–(d) RoP and R. 263 RoP
D5CE84D2F9750FE5A2A246B9C8B5E7AB_de Download
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