MUNICH CENTRAL DIVISION Law and Practice Contributed by: Julia Traumann and Ulrich Blumenröder, Grünecker
Reasonable Number of Auxiliary Requests (Kunststoff KG Nehl v Häfele) In its order issued on 18 April 2025 (UPC 526/2024, ACT_51533/2024, ORD_18972/2025), the CD Munich (Judge-Rapporteur Kupecz) addressed the question of what constitutes a “reasonable” number of auxiliary requests filed by a defendant in an isolated revocation action. The legal context is provided by Rule 50 (2) RoP in conjunction with Rules 30 (1) and 30 (2) RoP, which require that conditional proposals to amend a patent must be reasonable in number, considering the circumstances of the case. The court found that determining what qualifies as a reasonable number of auxiliary requests depends on several factors, including the com - plexity of the technology, the number of prior art documents, the nature and number of validity challenges, and the manner in which the aux - iliary requests are presented and structured. According to the court, the existence of parallel proceedings concerning the patent or other pat - ents from the same family is, for example, not a relevant factor in this assessment. While the RoP do not specify a sanction for submitting an excessive number of auxiliary requests, the CD Munich stated that it would be disproportionate and too far-reaching to reject the request to amend outright. Instead, it announced its intention to address the auxiliary requests – should they become relevant – in the order submitted, up to a point where the number is still considered reasonable. It further indicated that a total of up to ten auxiliary requests would, in all likelihood, still be regarded as reasonable. In light of these considerations, and with a view to streamlining the proceedings and facilitating preparations for the oral hearing, the defendant was invited to limit and/or re-order its proposed amendments. This should ensure that the fall-
back positions the defendant considers most relevant receive appropriate consideration by the court. Just to mention: In the revocation decision Meril v Edwards Lifesciences (UPC_CFI_255/2023, UPC_CFI_15/2023, decision issued on 19 July 2024), the CD Paris had held that 84 auxiliary requests based on nine conditional amendments would be an extremely high number, potentially hindering the efficiency of the UPC proceedings, but nevertheless considered this number of 84 auxiliary requests not “unreasonable”, consider - ing the “extreme complexity of the case”, the “importance of the patent” and the “interrela - tionship with other proceedings”. It appears that the two sections of the Central Division applied at least slightly different criteria. Conclusion of Actions, in Particular By Way of Settlement (Astellas Institute v Healios et al) In its order issued on 23 July 2024 (UPC 75/2023 and UPC 80/2023) the CD Munich found that parties may at any time conclude their action by way of settlement, which “shall” be confirmed by a decision of the court, Article 79 UPCA. Rule 365 RoP clarifies that the court shall confirm the settlement only if requested by the parties. This is in line with the principle of party disposition, Articles 76 (1) and 43 UPCA. Thus, the parties may at any time conclude their action by way of settlement, also without seeking a confirma - tory court decision according to Rule 365.1 RoP. There are alternative options to conclude an action: The parties may agree that the plaintiff shall apply to withdraw the action (with the con - sent of the defendant) in accordance with Rule 265 RoP – or, as the parties did in this case, the parties can request unanimously that the court disposes of the action as it has become devoid of purpose, and there is no longer any need to
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