UPC_CFI_100/2024; UPC_CFI_411/2024 (Order 14 Oct) – Ona v Google
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Denied
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
We are in the UPC! Facts See above with respect to the decision of 13 October about the attempt of the claimant’s representative to make further arguments in UPC proceedings, ignoring the CMS system and the time periods in the Rules, and then trying to get an interim conference for this purpose. The Court refused such interim conference. The JR The JR deals with the unsolicited letter of 1 September 2025 which was not filed in the CMS system and after the closure of the written proceedings! However, the JR only allows the letter in as far as it corrected the work of the representative (the JR: “The claimant could have worked more carefully”), because it did not change the content of the proceedings. The JR did not allow the attempt to amend the case with the allegation of indirect infringement (ignoring CMS and the Rules), which could (and should) have been made much earlier. Comment Surprise, surprise! Instead of throwing this 57-pages letter in the bin, the JR reads it and even deals with it. The representative clearly does not like the new Rules and the new way of communicating with the Court, and should perhaps confine himself to national proceedings. The JR should buy a bin and forget about the old times of getting letters until the day of the hearing.
Full Decision Text
Düsseldorf Local Division UPC_CFI_100/2024 UPC_CFI_411/2024 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 14 October 2025 concerning EP 2 263 098 B1 CLAIMANT: Ona Patents SL, represented by its Managing Director Raúl Diaz Morales, Carrer de Calàbria 149 En. 1, 08015 Barcelona, Spain, represented by: Attorney-at-law Dr Christof Augenstein, Attorney-at-law Dr Ben- edikt Walesch, Attorney-at-law Dr Melissa Lutz, Kather Augen- stein, Bahnstraße 16, 40212 Düsseldorf, Germany Patent Attorney Dipl.-Ing. Benjamin Bubendorfer, Patent Attorney M. Sc. Andreas Rauscher, WBH Wachenhausen Patentanwälte PartGmbB, Müllerstraße 40, 80469 Munich, Germany electronic address for service: augenstein@katheraugenstein.com COUNTER-DEFENDANT 2: Ekahau Oy, represented by the Board of Directors Jeremy Rossen, Brian Conrad Stewart und Ari Olavi Tourunen, Jaakonkatu 5, 00100, Helsinki, Finland represented by: Attorney-at-law Dr Christof Augenstein, Attorney-at-law Dr Ben- edikt Walesch, Attorney-at-law Dr Melissa Lutz, Kather Augen- stein Rechtsanwälte PartGmbB, Bahnstraße 16, 40212 Düsseldorf, Germany Patent Attorney Dipl.-Ing. Benjamin Bubendorfer, Patent Attorney M. Sc. Andreas Rauscher, WBH Wachenhausen Patentanwälte PartGmbB, Müllerstraße 40, 80469 Munich, Germany electronic address for service: augenstein@katheraugenstein.com DEFENDANTS: 1. Google Ireland Limited, represented by its directors Elizabeth M. Cunningham, David M. Sned- don, Vanessa Hartley, Colin Goulding, Amanda Storey, Gordon House, Barrow Street 4, Dublin 4, D04 V4X7, Republic of Ireland 1 2. Google Commerce Limited, Gordon House, Barrow Street, Dublin 4, D04 E5W5, Republic of Ireland represented by: Attorney-at-law Dr Marcus Grosch, Attorney-at-law Dr Jesko Preuß, Attorney-at-law Dr Andreas Hahne, Quinn Emanuel, Her- mann-Sack-Straße 3, 80331 Munich, Germany electronic address for service: marcusgrosch@quinnemanuel.com PATENT AT ISSUE: European patent n° EP 2 263 098 B1 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This order was issued by Judge Dr Thom acting as judge-rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: R. 35, 36 RoP GROUNDS FOR ORDER The content of Claimant´s unsolicited submission of 1 September 2025 can be divided in two parts: 1) the translation of the main requests and the clarification, that injunctive relief is also sought for direct infringement according the auxiliary requests related to the amended form, and 2) the new auxiliary request indirect infringement and the auxiliary requests relating to the amended form of the patent concerning indirect infringement. 1. Admittedly, the Claimant could have worked more carefully by directly translating its main requests and formulating the corresponding auxiliary requests regarding the amendment of the patent in its Reply when it argued their infringement. Since the interpretation of the previous statements suggested that the Claimant also sought these auxiliary requests, the Court would have clarified this at the latest during the oral hearing. This clarification is just anticipated now. Given that, the translation of the main request and the clarification of Claimant´s auxiliary requests on the basis of the patent amendment concerning direct infringement are admissible. In this regard, the Defendants are not required to file a response, as this part of the submission did not alter the proceedings in terms of content. 2. The case is totally different with respect to any of the first-time made requests concerning indirect infringement which the Claimant introduced in its 57-pages long submission. Con- trary to Claimant´ s presentation this new requests do not serve solely to clarify and adapt the relief sought to possible outcomes of the patent proceedings. Indirect patent infringe- 2 ment is a different type of patent infringement with other and different requirements com- pared to direct infringement (Art. 26 UPCA). The Claimant is mistaken by stating it merely provides alternative legal characterization of the same underlying acts. Whether or not a request based on indirect infringement constitutes an amendment to the case can be left open. In any case, new arguments would be necessary to substantiate the requirements of Art. 26 UPCA. However, this leads to the fact that the Claimant wrote out- side of any case management regime and, in this respect, would have been obliged to file a R. 36-request first explaining why it was unable to file its brief earlier within the time period of the Reply (see UPC_CFI_733/2024, UPC_CFI_255/2025 (LD Düsseldorf), Order of 12 September 2025, TRUMPF ./. IPG Laser). The Claimant failed to do so. This is even more true as the Defendants rightly point out that they already noted in their Statement of De- fence the allegation of the direct patent infringement of the mobile phones being incon- clusive for the alleged realization of feature group 9.12 (controller) to the accessory devices which have not been accused by the Claimant. Therefore, the new filed requests are not admissible and are not taken into account. ORDER: 1. The auxiliary requests indirect infringement (B.) and the auxiliary requests relating to the amended form of the patent (C.) concerning indirect infringement are not admis- sible and therefore are not taken into account. 2. Defendants´auxiliary request in accordance with R. 36 RoP is dismissed. 3. An interim conference will not be held. With regard to the scope of the dispute, refer- ence is made to the reasons given in the Order of the Panel dated October 13, 2025. 4. The written procedure is closed. Issued in Düsseldorf on 14 October 2025 Judge Dr Thom Anna Digital unterschrieben Bérénice von Anna Bérénice Dr. THOM Dr. THOM Datum: 2025.10.14 12:44:11 +02'00' 3
Key Holdings
- Unsolicited letter filed outside CMS/deadlines partially admitted only for corrections.
- Attempt to amend case (indirect infringement) via letter rejected.
- Front-loaded nature of proceedings enforced.
Tags
- CMS
- Case Management
- Infringement
- Late Submissions