EP 2 387 844 B1 relates to managing associated sessions in a network.
Its proprietor is KPN.
Brief outline of the procedure before the EPO
An opposition was filed by Xiaomi and the OD decided maintenance in amended form. The opponent appealed the decision.
The UPC informed the board that EP 2 387 844 B1 was subjected to infringement proceedings before it.
On 24.09.2024, the board decided ex-officio acceleration of the proceedings ex-officio, cf. Art 10(5) RPBA.
On 21.10.2024, in a communication under Art 15(1) RPBA, the board provisionally announced that the patent was likely to be revoked for added matter.
OP were scheduled for 11.12.2024.
On 18.11.2024, OPPO filed a notice of intervention.
On 21.11.2024, the proprietor, requested postponement of the OP in view of the intervention.
On 26.11.2024, the board considered the intervention admissible and was not convinced by the proprietor’s reasons for postponement. The non-availability of the proprietor’s expert was not a “serious reason” under Art 15(2) RPBA. The board further indicated that it still adheres to its previous provisional opinion, i.e. that the patent is likely to be revoked for added matter.
On 09.12.2024, the board, by stating that it was not inclined to change the date for OP, actually refused the request for postponement and maintained the OP on the set date.
On 11.12.2024, at 12:35, during the OP, the proprietor filed an objection under R 106 per e-mail.
The decision is not yet public, but the minutes are available.
What do the minutes reveal
From the minutes it is possible to gather that irrespective of any admissibility problems of the AR on file, claim 11 of the MR and of all AR was infringing Art 123(2).
The board thus decided revocation due to added subject-matter.
The objection under R 106 was dismissed by the board.
Brief outline of the procedure before the UPC
KPN had previously opted out EP 2 387 844 B1. Date of publication and mention of the grant of the patent: 25.08.2021 Bulletin 2021/34. KPN withdrew the opt-out in March 2024.
On 04.09.2024 the proprietor, KPN, sued OPPO at the LD The Hague, see Case Number: ACT_49150/2024.
Following the infringement action before the UPC, OPPO filed a notice of intervention before the BA.
Request for postponement of the OP before the BA
The proprietor requested postponement in view of the fact, that besides taking over the objections of the actual opponent, the intervener filed an objection of lack of N based on a US document not yet in the procedure. The proprietor argued that it had to consult an expert which was not available in the upcoming few weeks.
As explained above, the board maintained the date originally set for the OP.
Conclusions to be drawn from both procedures
The patent having been revoked, in principle, any infringement action before the UPC has become moot since the board’s decision applies in all contracting states in which it was validated, i.e. also in UPCA contracting states.
It is clear that KPN has still the possibility of filing a petition for review under Art 112a before the EBA of the EPO. The petition appears admissible, but whether it is well founded and allowable remains to be seen. The BA has decided ex-officio to accelerate proceedings and to keep a very tight schedule as announced in its communications.
As the patent has been revoked for added matter, it appears irrelevant that a new document, filed by the intervener/opponent, in order to support an alleged lack of N, would have justified the postponement of the OP before the BA. The question of added matter had been present all along the appeal procedure, so that the proprietor could not be surprised by the outcome of the OP.
It should also be reminded, firstly, that according to Art 112a(3) a petition for review has no suspensive effect.
Secondly, the patent having been revoked, Art 112a(6) applies. The intervener/opponent as well as the original opponent, could without payment continue the use of the invention in EP 2 387 844 B1 in the course of their businesses or for the needs thereof.
Comments
The procedure before the EPO has been criticised by the supporters of the UPC as being to slow, the present board has shown that a quick decision can be taken by a BA should necessity arise.
In an article of 23.12.2024, JUVE, under the heading “EPO not playing along with KPN’s UPC strategy”, considers that it is unclear how the UPC case will proceed.
As noted in the article, it is not even sure that KPN will file a petition for review.
Should this be the case and should the EBA admit the petition for review, it could also accelerate proceedings and could come rapidly to a conclusion whether the proceedings before the BA should be reopened or not.
As explained above here, there are reasonable doubts that the petition will succeed.
Retroactive application of the UPCA
As the patent has been opted-out first and opted in again, it is to be noticed that there is no trace of those actions in the register of EP 2 387 844 B1. One wonders why this is not the case here?
The opt-out followed by an opt-in gives raise to a certain number of problems.
In my opinion, it poses the question of retroactive application of the UPCA. The constitutionality of such a measure has never been clarified.
If an opt-out is decided by the proprietor, then the EP falls into a bundle of national patents which can only be subject to actions of infringement or nullity before separate national courts, in the EPC member states in which the patent has been validated.
When the opt-out is withdrawn, the situation changes drastically for any potential infringer as patent then falls under the exclusive competence of the UPC, and for all contracting states of the UPCA.
From only being able to be brought before a national jurisdiction with limited territorial competence, any potential infringer will then be able to brought before an international jurisdiction with a much more extended territorial competence and much higher costs.
If the EP has fallen into a bundle of national patents any action to obtain a declarative judgement of non-infringement can only be brought before a national jurisdiction.
Once the patent, after withdrawal of the opt-out, becomes a EP with unitary effect, then a declarative judgement of non-infringement can only be brought before a the UPC.
It is doubtful whether such a retroactive change of position to the detriment of third parties, but to the exclusive advantage, and only within the realm of the proprietor is at all admissible and tolerable. Besides possibly justified exceptions, legal rules cannot be applied retroactively. Why should the UPCA be allowed to be an exception during the transitional period.
This open issue is further exacerbated in view of the possibility of being invited to intervene, cf. RoP 316 UPC, and even forced to intervene under RoP 316A UPC.
Had the present patent not have been revoked, the opponent at the EPO, Xiaomi could be forced to intervene in the UPC proceedings. The constitutionality of such a forced intervention has also not been clarified.
No stay of proceedings at the UPC
In its order UPC_CoA_22/2024, commented in this blog, the Court of Appeal of the UPC has decided that proceedings before the UPC are not to be stayed in case of a parallel opposition proceedings before the EPO.
In this order, the CoA made it abundantly clear that, in the interests of harmonisation, it requires the EPO to follow the case law of the UPC. In view of the different time limits in the different procedures, the UPC will most probably decide first. This has nothing to do with harmonisation, it is simply requesting supremacy of the UPC over EPO.
Now its own medicine could be applied to the UPC, as the EPO has decided first.
Diverging decisions between the EPO and the UPC
Diverging decisions between the EPO and the UPC are perfectly possible. The prior art at stake and more important, the interpretation of the claims might diverge, irrespective of what the EBA will decide in G 1/24. It is to be expected that the EBA is not prepared to give up its very coherent set of decisions relating to what ought to be understood as being “directly and unambiguously derivable“, which applies when it comes to assess added subject-matter.
If the UPC revokes a patent maintained by the EPO, who will pay for the damages incurred by the proprietor?
Conversely, if the UPC decides infringement of a patent revoked by the EPO, who will pay for the damages incurred by the infringer?
Validity of granted European patents
When looking at 1108 final decisions of the BA, published in 2024 on the home page of the BA, after appeal in opposition, the following conclusions emerge:
- In 50% of the cases, the patent has been revoked.
- In 35% of the cases, the patent has been maintained in amended form, i.e. more limited.
- Only in 15% of the case the patent as granted has survived the opposition.
When looking at the rate of confirmation of decisions of the ODs by the boards, it turns out that 70% of decisions of ODs are set aside by the boards.
There is clearly food for thoughts.
Final comment
The UPC exists and might change the infringement/nullity landscape in the contracting states of the UPCA.
Due the absolute will to push the UPCA, its promoters have left too many issues open, for instance when it comes to parallel procedures before the UPC and the EPO. This could well backfire.
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