EP 3 404 726, granted in English, relates to an ultraviolet (UV) light emitting device, adapted to improve light extraction efficiency.
Brief outline of the case
SEOUL VIOSYS has brought an infringement action in French before the Paris LD, against LASER COMPONENTS, relating to European patent EP 3 404 726.
The Judge-Rapporteur declared admissible LASER COMPONENTS’ application to intervene against its supplier PHOTON WAVE.
LASER COMPONENTS filed its statement of defence, disputing, among other things, the materiality of the infringement. It did not file a counterclaim for nullity for EP 3 404 726.
PHOTON WAVE filed a statement seeking a declaration that its intervention was admissible, and a statement in intervention. In this statement of intervention he filed a counterclaim for nullity for EP 3 404 726 as well as a request for changing the language of the proceedings.
The Paris LD held the intervention admissible, but decided that the counterclaim for nullity for EP 3 404 726 was not admissible and the request=application for a change of the language of proceedings was rejected.
We will concentrate here on the intervention.
Chronology of events
05.12.2023, filing of an infringement action by SEOUL VIOSYS.
12.02.2024, the Judge-Rapporteur declares LASER COMPONENTS’ application to intervene admissible.
18.03.2024 LASER COMPONENTS files a statement of defence contesting, inter alia, the materiality of the infringement.
18.03.2024 PHOTON WAVE files a statement of defence seeking a declaration that its intervention is admissible, and a statement in intervention.
23.04.2024 deadline for SEOUL VIOSYS to file written observations, pursuant to the preliminary order of 09.04.2024.
PHOTON WAVE’s statement in intervention
In its statement in intervention, PHOTON WAVE filed, inter alia, the following request:
– rule that, as part of the intervention, the intervener may raise, independently of the defendant, all the grounds of attack and defence in support of the defendant itself could or would have raised. In particular that the intervener may bring an independent counterclaim for invalidity.
The decision of the Paris LD on the intervention
According to RoP 315.4 UPCA, “the intervening party shall be considered a party unless the court decides otherwise”.
As such, the intervening party has the rights attached to the status of party and participates in the proceedings, subject nevertheless, in accordance with RoP 313.2 UPC, that the intervention is “made in whole or in part in support of a claim”
This means that the intervener may not develop requests independently and in accordance with procedural rules that are different from those from those offered to the party it supports.
In the present case, PHOTON WAVE is intervening in support of LASER COMPONENTS, which had a period of three months in which to enter a statement of defence and, if appropriate, to file a counterclaim for invalidity of the patent.
LASER COMPONENTS filed a statement of defence, without filing a counterclaim for invalidity of the patent.
In the present case, PHOTON WAVE is intervening in support of LASER COMPONENTS, had a period of three months in which to enter a statement of defence.
As the defendant has not filed a counter-claim for nullity the intervener may not adopt a procedural position different from that of the defendant in the main proceedings.
The counter-claim for nullity filed by PHOTON WAVE is thus not admissible.
Comments
The conditions and the effect of an intervention are quite different at the UPC and at the EPO.
Intervention at the EPO
At the EPO an intervener has to be either accused of infringement or has to file an action of non-infringement action after refusing to accept a cease and desist letter. He can intervene as long as there is an opposition running, even in appeal.
The intervener can bring in any grounds of opposition, even those not brought forward by the actual opponent. He is thus not limited to the legal and factual framework set by the opponent.
To be deemed filed and admissible, an opposition fee has to be paid and a statement of grounds of opposition filed within a given time limit.
Intervention at the UPC
It is possible to consider that LASER COMPONENTS called PHOTON WAVE, its supplier, in guarantee when it was accused of counterfeiting.
No fee is due when an application=request for intervention is filed. Not having to pay a fee has however dramatic consequences.
The key message here, is that an intervener may not independently develop claims and procedural methods that are different from those offered to the party it supports.
It is clear from the decision, that, at the UPC, the powers of the intervener are limited by the actions of the defendant. He can only help the defendant within the legal and actual framework of the letter of defence filed by the defendant. If the potential infringer does not file a request in nullity, the intervener is not allowed to do so.
According to RoP 313.1 UPC, an application to intervene may be lodged at any stage of the proceedings before the CFI or the CoA by any person establishing a legal interest in the result of an action submitted to the Court.
When called in guarantee PHOTON WAVE accepted to intervene. In its decision the CFI called the intervention under RoP 315.4 UPC a “forced intervention”. This does not seem correct as the “forced intervention” is governed by RoP 316A UPC.
Forced intervention
Should a person invited to intervene refuse to intervene, it can, by decision of the court nevertheless be bound by the decision on the action. This is the nub of the so-called “forced intervention” under RoP 316A UPC.
This means that a third party can be dragged in an action before the UPC even if it does not consider itself concerned by the litigation going on at the UPC.
When invited to intervene, any third party should think twice before joining the defendant. But even if the third party refuses to be dragged in, it can nevertheless be subject to the decision of the UPC.
The constitutionality of such a “forced intervention” appears rather problematic.
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