UPC Munich Local Division: A flexible and practical way of dealing with an expansion of an infringement action to a second patent in case of a limitation proceedings at the EPO 

In a recent ruling by the Unified Patent Court's Local Division in Munich, the court addressed the admissibility of “changing” (actually: expanding) the claim of a UPC infringement action to include an additional patent after the conclusion of a limitation procedure at the EPO. This case underscores the intricacies of navigating patent litigation, particularly when faced with the complexities of limitation proceedings.

Case Overview:

The plaintiff initiates legal action against the defendants for the infringement of European Patents 3 611 989 and 3 678 321. Initially, on June 1, 2023, the plaintiff filed a complaint based solely on European Patent 3,611,989. However, in a submission dated November 23, 2023, the plaintiff requested permission to extend the claim to include rights from European Patent 3 678 321. The plaintiff argues that due to a limitation procedure before the European Patent Office concerning European Patent 3 611 989, which took place from April 13, 2023, to October 20, 2023, it was prevented from asserting claims based on this patent in the initial complaint on June 1, 2023. The extended action addresses the same instances of infringement related to the WiFi6 functionality of the infringing products. The plaintiff contends that the extension is procedurally efficient, and the defendants would not be unduly prejudiced by its acceptance.

The defendants argue that the conditions specified in Rule 263 of the Rules of Procedure (RoP), regulating the admissibility of changes of the claim or amendments to the case, are not sufficiently demonstrated. They contend that the limitation procedure only incorporated the features of dependent claim 6 (relating to the method claim) and identical dependent claim 14 (relating to the apparatus claim) into the original main claims 1, 2, 9, and 10. Therefore, according to the defendants, the plaintiff could have asserted the restricted version as of June 1, 2023, by formulating the claims accordingly. The defendants further argue that the plaintiff could have initially based the complaint on European Patent 3 678 321 and adjusted the claims after the conclusion of the limitation n procedure, as allowed by Rule 263.3 RoP, which permits unconditional limitation of claims at any stage of the proceedings.

The defendants feel unfairly hindered in their defense strategy by the aforementioned expansion of the complaint.

Reasons of the Court for Allowing the Change of the Claim:

Under Rule 263.1 RoP, a party can request permission to change its claim or to amend its case at any stage of the proceedings unless the proposed change/amendment (a) could not have been made earlier with due diligence and (b) does not unduly hinder the other party in its conduct of the proceedings.

The Local Division held that the plaintiff acted with due diligence by waiting for the conclusion of the limitation procedure, avoiding the necessity of constantly adjusting its claim to unpredictable developments in the limitation procedure. Procedurally, filing a complaint based on the still unrestricted European Patent 3 678 321 from the outset would not have been more economically advantageous. Therefore, the change of the claim after the limitation procedure does not unreasonably hinder the defendants.

Additionally, when multiple patents are jointly pursued in the same infringement proceeding, the court is obligated to grant the defendants largely the same defense opportunities for the second patent as they would have in the case of a new, separate lawsuit. This can include extending or prolonging response deadlines. Furthermore, the option of separating the subject of the claim expansion exists, depending on the specific circumstances. With a second order lodged on the same day as the above discussed first order, the Division asked the parties to comment on the - in view of the Division reasonable – separation of the subject of the claim expansion.

Our Key Takeaways:

• When planning to base an action on two or more European Patents, with one or more patents intended for limitation before the European Patent Office under Article 105a EPC, the complaint before the UPC can either encompass all patents from the outset, adjusting claims during the proceedings, or initially focus on patents not subject to limitation and later expand the claim under Rule 263.1 RoP after the conclusion of the limitation procedure.
• It is crucial for the plaintiff to ensure that the restriction procedure concludes in a timely manner, preferably before the completion of the written procedure, i.e., before the commencement of the so-called "interim procedure" under Rules 101 et seq RoP.

Recommendation:
In a limitation procedure at the EPO, plaintiffs must be mindful of its timely completion, preferably before concluding the written procedure at the UPC, to facilitate efficient proceedings.