Given the exceptional relevance of this holding by the Munich Local Division to practitioners, we are sharing a LinkedIn post (as opposed to an article from our website) by email. We do, however, encourage all subscribers to follow ip fray on LinkedIn as well.
https://www.linkedin.com/feed/update/urn:li:activity:7272882708932935680
Something important for Unified Patent Court counsel to know: you may now be allowed to start a UPC infringement litigation with one category of patent claims, e.g. product claims, and throw in a second category of patent claims, e.g. method claims, by amendment (subject to a case-by-case analysis -- and the Court of Appeal or other divisions may still view this differently).
The Munich LD made a panel decision early last week that allows Heraeus Electronics to amend an infringement complaint against Vibrantz Technologies Inc. not only by adding Romania (which joined on September 1) to the territorial scope of the action but also some indirect infringement arguments based on methods claims from the patent-in-suit.
Previously, in his capacity as judge-rapporteur, Presiding Judge Dr. Matthias Zigann had disallowed that amendment because Heraeus could have asserted those method claims in the original complaint. Apparently, the panel decision reverses that part not because his side judges outvoted him but simply because he himself concluded that there was new appellate case law warranting a different outcome. The decision points to the CoA's recent Orthoapnea decision (see https://www.linkedin.com/feed/update/urn:li:activity:7266470639102795777/, referenced by item 1.2 of https://ipfray.com/upc-roundup-1-week-frand-equivalence-and-various-other-questions-addressed/) and just states the wrong date: the order says "21.09." when it was actually a *November* 21 decision), which said a plaintiff could make an equivalence-based argument after the original complaint and the Court of First Instance would then decide whether to allow it, but it was not an amendment that necessarily required leave.
The Munich LD then applied that case law analogously. Here, it was not about a plaintiff adding equivalence-based arguments to a complaint that was initially just about literal infringement, but the addition of indirect infringement claims, based on method claims not asserted in the original complaint that was all about product claims.
Whether the Munich LD's analogy becomes a new UPC standard for permissible new arguments will have to be resolved by the Court of Appeal. There is some analogy, but the Munich LD's decision in Heraeus's favor may have stretched the envelope too much, given that DOE-based infringement arguments do not amend the set of asserted patent claims.
A plaintiff could also start with a set of method claims and argue indirect infringement, but later have more information on the table and assert some product claims in addition so as to argue direct infringement.
Panel: Presiding Judge Dr. Matthias Zigann, Judge Tobias Pichlmaier, Judge Edger Brinkman (The Hague, Netherlands) and Technically Qualified Judge Graham Ashley.
Counsel for Heraeus: CBH Rechtsanwälte's Paul Szynka.
Counsel for Vibrantz: Jones Day's Christian Paul.
This message was published Thursday, December 12th 2024 at 3:03AM Eastern Standard Time (US)