Toyota Motor Europe NV/SA (Claimant) v Neo Wireless GmbH & Co. KG (Defendant)
(Case number: ACT_579176/2023)
SUMMARY
By way of Order dated 25 April 2024, the Paris Central Division has rejected a request for a stay of revocation proceedings before the UPC, pending the outcome of European Patent Office (EPO) Opposition proceedings concerning the same patent.
By way of background, the Defendant filed a notice of Opposition against the patent in suit (which concerns an apparatus for overlaying signals in a broadband wireless communication system) before the EPO and the accelerated proceedings are expected to be heard in October/ November 2024. Relying on Article 33(10) of the UPCA, the Defendant argued that this gave ground for the Paris Central Division to stay the UPC proceedings. Article 33(10) of the UPC Agreement (UPCA) gives the Court discretion to stay proceedings when a rapid decision may be expected from the European Patent Office (EPO).
In exercising its discretion, the judge sided with the Claimant and rejected the Defendant’s application for a stay of proceedings, making reference to and applying the reasoning of the Munich Central Division in Order no.579577 of November 2023 which interpreted when a decision is “rapidly” expected (pursuant to Article 33(10)) as follows:
[T]he use of the word ‘rapid’ (…) as an adjective to “decision” suggests that there should be a concrete expectation (i.e. a known date in time) for a decision which date should be in the near future such that it is clearly expected to be delivered before unexpected decision by the UPC.
In the same decision, the Munich Central Division appeared to set an indicator in its reasoning, declaring that it was unlikely that a decision expected by the EPO in over three months’ time, would be considered “rapid”.
Applying this threshold and considering that in this case a decision was expected by the EPO in over three months’ time, with no set hearing date and with grounds for the decision likely to be released months thereafter, the Court denied the request for a stay.
COMMENTARY
In referring to the Munich Central Division in Order no.579577 and following its reasoning, there is now a line of authority concerning the scope of Article 33 of the UPCA, with the “three month” threshold appearing to be a factor of consideration for UPC judges and a potential basis upon which they may make decisions with respect to applications for stay. Whilst each case will of course be decided on its facts, this decision indicates, again, that parties will not be prevented from initiating and pursuing a UPC revocation claim, when EPO opposition proceedings are already on foot in relation to the same patent.
Potter Clarkson LLP acted for Astellas Institute for Regenerative Medicine, the respondent to the request to stay within the Munich Central Division decision (Order no.579577 of case number ACT_465342/2023).
