UPC_CFI_104/2025; UPC_CFI_364/2025 – IMI v Belparts

Court
Central Division Paris
Date
Outcome
Denied
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Facts 1. On 13 December 2024, Belparts started infringement proceedings in the Local Division Munich against IMI SA and IMI AB, located in Switzerland and Sweden respectively. IMI SA and IMI AB filed a counterclaim for revocation. 2. On 10 February 2025, the German IMI entity IMI GmbH filed a revocation action. 3. In the meantime, the opposition division (“OD”) of the European Patent Office (“EPO”) upheld the patent in amended form. Belparts appealed the decision of the OD. 4. The parties voted in the Local Division Munich against bifurcation and the LD Munich sets the dates for the interim conference and oral hearing on 24 March and 18 June 2026 5. The CD Paris has set the dates for the interim conference and oral hearing on 11 December 2025 and 5 February 2026. 6. Both parties wanted the LD Munich to transfer the case to the CD Paris, but that was impossible according to R. 302.3 RoP. 7. On 2 October 2025, Belparts requested that: a. the counterclaim for infringement in Paris shall be heard together with the pending infringement case in Munich; and b. if “a” is granted and the infringement cases are heard together, the revocation cases are to be heard together by the CD Paris. The IMI companies agreed. Order of the JR The JR cites R. 340 RoP regarding “Connection Joinder” which provides the possibility for panels to determine that actions shall be heard together, and decides that the request is not “in the interest of the proper administration of justice and of avoiding inconsistent decisions” as required by said rule. Conflicting decisions after the grant of the requests remain possible. The JR refuses the request. Comment 1. The JR is right that the request still result in multiple hearings and moreover can lead to complicated situations. If the Paris Division revokes the patent (partly) and an appeal is lodged what should the Munich Division do etc. 2. I read between the lines of the JR’s decision that the parties who caused the mess themselves should find a better solution which also does not waste the JR’s time. The parties should simply withdraw their Paris case. They can also agree to withdraw the Munich case and that IMI SA and IMI AB will be bound to the Paris decision as if they are a party in these proceedings. If they cannot agree which case to withdraw, then there is a simple solution: draw a straw. They should stop wasting unnecessary time of the Court and money of their clients trying to play games with the (I agree, somewhat complicated) system of bifurcation and jurisdiction of the UPC!

Full Decision Text

Central Division Paris Seat UPC_CFI_104/2025 UPC_CFI_364/2025 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 31 October 2025 CLAIMANT IMI Hydronic Engineering Deutschland GmbH Represented by Clemens (Claimant) - Völlinghauser Weg 2 - 59597 - Bauer, Müller Schupfner & Erwitte - DE Partner mbB DEFENDANT Belparts Group N.V. Represented by Florian Henke, (Defendant) - Wingepark 4 - 3110 - Rotselaar Eisenführ Speiser PartGmbB - BE PATENT AT ISSUE Patent no. Proprietor EP3812870 Belparts Group N.V. 1 DECIDING JUDGES This order is issued by the presiding judge and judge-rapporteur Marjolein Visser, the legally qualified judge Maximilian Haedicke and the technically qualified judge Andrea Perronace. COMPOSITION OF PANEL FULL PANEL Presiding judge and judge-rapporteur Marjolein Visser Legally qualified judge Maximilian Haedicke Technically qualified judge Andrea Perronace LANGUAGE OF PROCEEDINGS: English SUBJECT Revocation action UPC_CFI_104/2025 Counterclaim for infringement UPC_CFI_364/2025 R.340.1 RoP - Connection Joinder App_36631/2025 UPC_CFI_364/2025 SUMMARY OF FACTS AND PROCEDURES 1. On 13 December 2024, Belparts Group NV (Belparts) commenced an infringement action (ACT_65882/2024 UPC_CFI_801/2024) against IMI Hydronic International SA (IMI SA) and IMI Hydronic Engineering AB (IMI AB) before the LD Munich. IMI SA and IMI AB filed a counterclaim for revocation (CC_20608/2025 UPC_CFI_392/2025) on 30 April 2025. 2. On 10 February 2025, IMI Hydronic Engineering Deutschland GmbH (IMI GmbH) commenced a revocation action (ACT_6739/2025 UPC_CFI_104/2025) against Belparts before the CD Paris. Belparts lodged a counterclaim for infringement (CC_19180/205 UPC_CFI_364/2025) on 23 April 2025. 3. Clemens Bauer, representative of IMI in both UPC cases, filed an opposition against the patent at issue at the European Patent Office (EPO). The Opposition Division upheld the patent in amended form. Mr. Bauer and Belparts both appealed this decision. Mr. Bauer has withdrawn the appeal. Belparts continued the appeal. The EPO Boards of Appeal (BoA) have scheduled the oral hearing on 27 November 2025. 4. The LD Munich has consulted the parties on bifurcation. Both parties voted against bifurcation. By order dated 15 May 2025, the LD Munich has decided to proceed with both the infringement action and the counterclaim for revocation. Taking into account the date of the oral hearing at the BoA and the scheduling of the case in the CD Paris, the LD Munich has set the dates for the interim conference and oral hearing on 24 March 2026 and 18 June 2026. 5. By order dated 10 June 2025 the CD Paris, taking into account the date of the oral hearing at the BoA, has set the dates for the interim conference and the oral hearing on 11 December 2025 and 5 February 2026. 2 6. Pursuant to R. 302.3 RoP, Belparts requested the referral of the counterclaim for infringement to the LD Munich. IMI SA and IMI BA consented to the request. By order dated 4 September 2025, the LD Munich rejected the request, because the cases are not pending before the same division, as is required according to R. 302.3 RoP. 7. On 11 September 2025, Belparts has filed an application (App_ 36648/2015) in the infringement action before the LD Munich and an application (App_36631/2025) in the proceedings relating to the counterclaim for infringement before the CD Paris. Belparts requested that the counterclaim for infringement lodged at the CD Paris would be heard together with the infringement action before the Local Division Munich. Belparts also described this request as a request for referral of the counterclaim for infringement to the LD Munich, resulting in a decision by that division. IMI SA, IMI AB and IMI GmbH consented to the request. 8. In the order dated 23 September 2025 - in summary - the following issues were addressed: - would allowing the request serve the underlying principles of R. 340.1 RoP, being the interests of the proper administration of justice and of avoiding inconsistent decisions; - how should hearing together in R. 340.1 RoP be interpreted and would R. 340.1 RoP in conjunction with Art. 33 UPCA allow for an action being referred to another division or panel for decision - other than a referral according to Art. 33(3) UPCA. 9. The parties were invited to comment on the issues raised, to reformulate the request and to elucidate in which way the (amended) request would be in accordance with the underlying principles and scope of R. 340.1 RoP (in connection with Art. 33 UPCA). 10. On 2 October 2025, Belparts submitted the following amended requests: 1. The counterclaim for infringement pending before the CD Paris (CC_19180/2025 / UPC_CFI_364/2025) shall be heard together with the pending infringement action before the LD Munich (ACT_65882/2024 / UPC_CFI_801/2024). 2. Conditioned upon the grant of request 1., the counterclaim for revocation (CC_20608/2025 / UPC_CFI_392/2025) pending before the LD Munich shall be referred to the CD Paris and be heard together with the revocation action pending before the CD Paris (ACT_6739/2025 / UPC_CFI_104/2025). 11. IMI GmbH (and IMI SA and IMI AB) consented to the amended requests. 12. Belparts - in summary - argues: - Belparts understands that, according to the view of the Court, Rule 340.1 RoP has to be interpreted in accordance with Art. 33 UPCA. Therefore, the counterclaim for infringement pending before the CD Paris cannot be referred to the parallel infringement proceedings pending before the LD Munich while in contrast the counterclaim for revocation in the Munich infringement proceedings could be referred to the revocation action before the CD Paris. 3 - The referral of the counterclaim for revocation from the LD Munich to the CD Paris for being heard together with the already pending revocation action before the CD Paris is to - The joint hearing of the counterclaim for revocation before the LD Munich with the pending revocation action before the CD Paris would avoid contradicting decisions. Furthermore, the referral of the counterclaim for revocation helps to conduct the proceedings more economically, as the hearing date is prior to the hearing date in the proceedings before the LD Munich so that the LD Munich could base its decision on infringement on a patent, which is considered to be valid by the CD Paris. - The CD Paris could carve out the question of infringement in its oral proceeding on 5 February 2026 in a first step and focus on validity. The joint hearing of the infringement action by the LD Munich and the counterclaim for infringement by the CD Paris could then take place in the oral proceeding already scheduled on 18 June 2026. - The parties are still of the opinion that the LD Munich is the more pertinent court with regard to the assessment of infringement, inter alia as in the proceedings before the LD Munich, which commenced first, the more relevant group companies are sued. - The joint hearing of the infringement action by the LD Munich and the counterclaim for infringement by the CD Paris would avoid contradicting decisions and help to conduct the proceedings more economically. - The prerequisites of Rule 340.1 RoP are given at least with regard to the intention of a joint hearing. It would contribute to a consistent application of UPC law, as both divisions can base their decision on the same impressions from the same oral hearing. GROUNDS FOR THE ORDER 13. R. 340 RoP reads: R. 340 Connection Joinder 1. In the interests of the proper administration of justice and of avoiding inconsistent decisions, where more than one action concerning the same patent (whether or not between the same parties) is pending before: (a) different panels (whether in the same or different divisions); or (b) different panels of the Court of Appeal, the panels may by agreement, at any time, after hearing the parties, order that two or more actions shall, on account of the connection between them, be heard together. Article 33 of the Agreement shall be respected. 2. The actions may subsequently be disjoined. 14. Pursuant to this rule the panels have the discretion to, by agreement, apply R. 340.1 RoP in a situation where this would be in the interests of the proper administration of justice and of avoiding inconsistent decisions. 4 15. Reference is made to the order of 23 September 2025. Request 1), even when seen in conjunction with conditional request 2), is not in full accordance with the interests of the proper administration of justice and of avoiding inconsistent decisions. As a result of (procedural) choices the parties made, allowing the request(s) would still result in multiple oral hearings and multiple decisions concerning the same patent and (partly) the same parties, whereby the infringement actions and the revocation actions are not being heard and decided at the same time. 16. In the light of the foregoing, R. 340.1 RoP will not be applied and request 1) will be rejected. Consequently, the condition under which request 2) is made, is not fulfilled. Furthermore, deciding on request 2) is within the discretion of the LD Munich. A decision on request 2) will therefore not be taken. 17. Following the rejection of the request, the proceedings will continue as scheduled. ORDER 18. Request 1) is rejected. 19. The proceedings will continue as scheduled. Visser, Presiding judge and Judge-rapporteur Haedicke, Legally qualified judge Perronace, Technically qualified judge 5 ORDER DETAILS Action number: ACT_6739/2025 CC_19180/2025 Application number: App_36631/2025 UPC number: UPC_CFI_104/2025 UPC_CFI_364/2025 Action type: Revocation action Counterclaim for infringement 6

Key Holdings

  • Parallel infringement (Munich) and revocation (Paris) actions.
  • Request to join counterclaim for infringement in Paris with Munich case refused.
  • JR held joinder not in interest of proper administration of justice (R. 340 RoP).
  • Conflicting decisions remain possible.

Tags

  • Bifurcation
  • Infringement
  • Joinder
  • Revocation

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