The patent, EP 3 295 663 B1, relates to a digital overlay in a captured image, for instance an overlay in the image captured by a TV camera, so that occlusion of the real captured image is overcome.
Brief outline of the case
AIM SPORT DEVELOPMENT AG, holder of EP 3 295 663 B1, initiated infringement proceedings and requested a PI at the UPC Helsinki LD against a Finnish Company, SUPPONOR OY and some of its subsidiaries in the EU countries in which the patent had been validated.
The Helsinki LD decided that it was not competent to decide on both the actions for infringement and for a PI in view of the fact that the patent EP 3 295 663 B1 had been opted-out by the claimant on 12.05.2023. The register for EP 3 295 663 B1 does not comprise a section “UP All documents”.
The Helsinki LD considered that the decision for both options was a final action according to Art 73(1) UPCA and RoP 220.1(a) and RoP 224.1(a).
The Helsinki LD dismissed the defendant’s request for a security deposit for costs.
The claimant appealed the decision of the Helsinki LD within a time limit of two months.
The order of the CoA
In its order, UPC_CoA_500/2023, the CoA reminded that an appeal is possible against an order under Art 62UPCA, cf. RoP 220.1(c), but according to RoP 224.1(b), but the time limit for filing such an appeal is 15 days of service of said order.
According to RoP 224.1(a), the time limit for filing an appeal against a final decision or a decision terminating proceedings as regards one of the parties, cf. RoP 220.1(a),(b), is of 2 months of service of said decision.
In the UPCA and its RoP, a distinction has to be made between a decision and an order and there are two time limits to observe when filing an appeal:
- 15 days when the appeal is against an order and
- 2 months if the appeal is against a decision.
The CoA held that an ambiguity could arise when reading Art 62 UPCA and RoP 220.1(c) and 224.1(b).
The CoA also held that an incorrect, or at least incomplete, information has been provided by Helsinki LD.
Consequently the appellant believed that a two months’ time period applied for an appeal of an order, when in fact it is 15 days.
The principle of the protection of legitimate expectations required that the appellant under the exceptional circumstances of this case to be allowed to rely on the information provided by the CFI that the applicable time period for lodging the Statement of appeal was 2 months.
The appeal against the PI was thus timely filed. By doing so, the panel of the CoA simply ignored the white elephant sitting in the room. See below.
Comments
The RoP 220.1 and 224.1 are quite clear and do not appear to give raise to any ambiguity.
The ambiguity was created by the Helsinki LD in qualifying both “decisions” as final.
It is good that the CoA considered that the claimant/appellant could rely on the information given by the CFI and accepted the belated filing of an appeal for the order.
As the patent has been opted-out, it is difficult to see how the CoA could decide differently from the CFI.
To my knowledge there is no legal rule cancelling or rescinding an opt-out when an action is started before the UPC. Rescinding or cancelling the opt-out is done by the registrar of the UPC and the opt-out is only effective from the date in the UPC register.
Should the opt-out be rescinded, the claimant could start again before the UPC. But what waste of money! In the mean time, legal “advisors”, especially from the claimant, will earn good fees.
When refusing a PI, the Vienna LD ordered the payment of costs against the losing claimant. It is thus surprising that, in spite of the “final decisions”, the Helsinki LD did not accept that a least a deposit for the legal costs was ordered against the claimant.
A word of warning
It is a warning to all parties considering filing or facing an infringement action and/or an action seeking a PI.
Both “decisions” can be appealed, but the time limits for filing an appeal are quite different.
Composition of the CoA – Art 6(1) ECHR
The present order for the CoA was only taken by a panel composed by 3 legally qualified judges. According to Art 9(1) UPCA, any panel of the CoA comprises 5 judges, 3 legally qualified judges and 2 technically qualified judges.
In the present case, the Helsinki LD comprised one technically qualified judge.
It is so more not understandable that the composition of the CoA panel deciding in the present case was not comprising the required 5 technical judges, but sat with only 3 legally qualified judges.
At least when the composition is not according to Art 9(1) UPCA, the CoA should offer a discount on the appeal fee.
The problem is that such a discount lacks any legal basis as a much as a panel of the CoA composed exclusively of 3 legally qualified judges.
I would have thought that the rule of law takes precedence over considerations of efficiency.
What is to be held from such a court which is not capable of abiding by the legal rules founding it? In another blog, the question was raised was whether such a panel of the CoA is not in conformity with Art 6(1) ECHR.
This also applies to the decision of the presidium having decided to provisionally transfer the duties originally devolved to the London section of the CD to the Paris and Munich sections of the CD. It further applies as well to the creation of the Milan section of the CD.
The UPCA and its Annex II are so clear, that any interpretation under Art 31/32 VCLT would not allow such kind of legal acrobatics. It is to be noted that the decision of the presidium and that of the AC under Art 87(2) UPCA fail to mention the VCLT.
Addendum
In AIM v Supponor [2023] EWHC 164 (Pat), the UK Court of Appeal confirmed that AIM’s patent, EP (UK) 3 295 663 was valid and infringed.
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