In an infringement action concerning EP 1 697 604, the Mannheim Local Division issued a procedural order clarifying the permissible scope of a rejoinder to an application to amend the patent. The claimant Decathlon had asked the Court to disregard parts of the defendants’ rejoinder which dealt with the validity of the patent as granted. The order confirms that submissions outside the limits set by the Rules of Procedure (RoP) will not be admitted, even if they are framed as a “summary” for the Court’s convenience.
The dispute arose in the context of parallel validity and amendment proceedings. On 11 August 2025, the defendants filed a rejoinder to the claimant’s application to amend the patent (“AA”). Pages 3 to 14 of this rejoinder contained arguments relating to the validity of claim 1 as granted. Decathlon objected that this exceeded the permissible scope under Rule 32.3 RoP, which limits the content of the rejoinder to the AA to matters raised in the reply to the AA.
The defendants argued that the passages contained no new facts or evidence and merely summarised the arguments already on file. Decathlon requested that the passages be disregarded, or alternatively, that it be granted the opportunity to reply. The defendants, conversely, sought admission of their submission in full.
The judge-rapporteur relied on Rule 9.2 RoP and Rule 36 RoP, both of which empower the Court to disregard steps, facts, evidence or arguments not submitted within the proper procedural framework. The Court underlined that Rule 32.3 RoP restricts the content of the rejoinder to the AA to matters raised in the reply to the AA. This restriction applies broadly, not only to new arguments or evidence but to any content exceeding that scope.
The Court rejected the defendants’ view that a “summary” should be tolerated. Allowing such summaries would unfairly advantage the party filing the last submission in the written phase of amendment proceedings, leaving the patent proprietor without a chance to respond. Moreover, the Rules already give the judge-rapporteur discretion to request summaries if needed (Rule 101.1 RoP in conjunction with Rule 103.1(d) and Rule 104(e) RoP).
On that basis, the Court disregarded the contested section of the rejoinder.
Even though the present case related specifically to the rejoinder to the application to amend (AA), its implications seem to reach much further. It is not difficult to imagine other situations in which the Mannheim Local Division would likewise have disregarded submissions “smuggled” into the proceedings. One example would be notes by the claimant on claim interpretation inserted into its rejoinder to the counterclaim for revocation - if such notes are clearly irrelevant for validity and merely serve as an attempt to react to non-infringement arguments raised by the defendant in the rejoinder to the statement of claim within the infringement part of the proceedings.
