UPC_CFI_163/2024 – Hurom v NUC Electronics
- Court
- Local Division Paris
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Further exchanges of written pleadings Background After the exchange of written pleadings, the Judge-Rapporteur announced on January 21 that she intended to close written procedure on 27 January 2025. On 24 January 2025, Hurom requested permission to file further written statements. Order of the Judge-Rapporteur: The request is allowed (maximum of 8 pages) to respond to new arguments in the Rejoinder, with the opposing party permitted to respond within 5 days. Comment: 1. The JR states that this short delay does not affect the duration of the proceedings, and her decision seems fair. 2. However, the more appropriate approach would have been to disallow new arguments in a Rejoinder and require the claimant to object. That said, determining what constitutes a "new" argument is not always straightforward, and the JR opted for a practical solution— - assuming, of course, that the defendant’s response does not introduce yet another round of new arguments! -
Full Decision Text
1 Paris Local Division UPC_CFI_163/2024 Procedural Order of the Court of First Instance of the Unified Patent Court delivered on 05/02/2025 concerning further exchanges of written pleadings (R. 36 RoP) APPLICANT - CLAIMANT 1) Hurom Co., Ltd 80-60 Golden root-ro, Juchon-myeon 62184 - Gimhae-si, Gyeongsangnam-do - KR Represented by Sabine Agé RESPONDENTS - DEFENDANTS 1) NUC Electronics Co., Ltd 280, Nowon-ro 41548 - Buk-gu, Daegu - KR Represented by Didier INTES 2) NUC Electronics Europe GmbH Schwalbacher Straße 76 65760 - Eschborn - DE Represented by Didier INTES 3) Warmcook 73 boulevard Gay Lussac 13014 - Marseille - FR Represented by Didier INTES PATENT AT ISSUE Patent no. Proprietor EP3155936 HUROM Co., Ltd 2 DECIDING JUDGE Presiding judge & Camille Lignières Judge-rapporteur LANGUAGE OF PROCEEDINGS: English ORDER Facts and history of the proceedings HUROM (the “Claimant” or the “Applicant” in this applicaƟon) filed an infringement acƟon based on patent EP’ 936 against the NUC enƟƟes and WARMCOOK (the “Defendants” in the main acƟon and this applicaƟon). The parƟes have already exchanged their statements, as follows: -Statement of Claim from HUROM on April 3, 2024, -Statement of Defence and counterclaims for revocaƟon of the Patent from NUC and WARMCOOK, on July 17, 2024, -Reply from HUROM, including an applicaƟon to uncondiƟonally amend the Patent, on September 17, 2024, -Rejoinder from NUC and WARCOOK on November 14, 2024, -the Claimant Rejoinder from HUROM on December 16, 2024, -the UlƟmate Rejoinder from NUC and WARMCOOK on January 15, 2025. On January 21, 2025, the judge rapporteur informed by email the parƟes that, according to Rule 35 of the Rules of Procedure, she planned to close the wriƩen procedure in this case on January 27, 2025. On January 24, 2025, HUROM submiƩed a request under R.36 RoP for further statements, asking the Court to: - declare that the secƟons of the Claimant's Rejoinder challenged by the Defendants are admissi- ble, - alternaƟvely, permit both ParƟes to submit further statements to address the new points raised by the Defendants in their Rejoinder. On January 27, 2025, the judge rapporteur issued a preliminary order requesƟng the defendants to provide their wriƩen comments on HUROM's request. On the same day, NUC and WARMCOOK filed their comments requesƟng the rejecƟon of the HU- ROM applicaƟon, arguing the following: -the admissibility of the allegedly new arguments filed by the Defendants in the Rejoinder (dated November 14, 2024) has not been challenged by the Claimant in the Claimant Rejoinder, while the Claimant raised other inadmissibility issues, 3 -the allegedly new arguments filed by the Defendants in the Rejoinder actually consist in mere clarificaƟons or answers to the Reply filed by Hurom, in the context of the uncondiƟonal amend- ment of the Patent by the Claimant, -as defendants in infringement proceedings, the Defendants shall have the last word and be the latest party to present its arguments regarding the materiality of the infringement and the reme- dies. Legal framework “Rule 12 – Exchange of wriƩen pleadings (infringement acƟon) 1. The wriƩen procedure shall consist of: (a) the lodging of a Statement of claim (by the claimant) [Rule 13]; (b) the lodging of a Statement of defence (by the defendant) [Rules 23 and 24]; and, opƟonally (c) the lodging of a Reply to the Statement of defence (by the claimant) [Rule 29(b)]; and (d) the lodging of a Rejoinder to the Reply (by the defendant) [Rule 29(c)]. 2. The Statement of defence may include a Counterclaim for revocaƟon [Rule 25.1]. 3. If a Counterclaim for revocaƟon is lodged: (a) the claimant and any proprietor who becomes a party pursuant to Rule 25.2 (hereinaŌer in this Rule 12 and Rules 29 to 32, “the proprietor”) shall lodge a Defence to the Counterclaim for revo- caƟon [Rule 29(a)], which may include an ApplicaƟon to amend the patent by the proprietor [Rule 30]; (b) the defendant may lodge a Reply to the Defence to the Counterclaim [Rule 29(d)]; and (c) the claimant and the proprietor may lodge a Rejoinder to the Reply to the Defence to the Coun- terclaim [Rule 29(e)]. 4. If an ApplicaƟon to amend the patent is lodged by the proprietor, the defendant shall lodge a Defence to the ApplicaƟon to amend the patent in the Reply to the Defence to the Counterclaim, the proprietor may lodge a Reply to the Defence to the ApplicaƟon to amend and the defendant may lodge a Rejoinder to such Reply [Rule 32]. 5. The judge-rapporteur may allow the exchange of further wriƩen pleadings, within Ɵme periods to be specified [Rule 36].” Rule 32.3 RoP: “The proprietor may lodge a Reply to the Defence to the ApplicaƟon to amend the patent within one month of service of the Defence and the defendant may within one month of the service of the Reply lodge a Rejoinder to the Reply. The Rejoinder shall be limited to the maƩers raised in the Reply.” Grounds As foreseen by Rule 12 RdP, the rules of procedure divide the wriƩen procedure into several suc- cessive stages: 4 - workflow 1, relaƟng to the infringement claim itself comprising a set of 4 statements, - followed by workflow 2 dedicated to the validity of the patent in the event of a counterclaim for revocaƟon of the patent at issue, - finally, workflow 3 is specifically dedicated to the amendment of the patent at issue, if re- quested. In workflow 1, the defendant in the infringement claim has the last word, in this case, NUC and WARMCOOK. In workflow 2, the defendant in the aƩack on the validity of the patent in quesƟon has the last word, in this case, HUROM. Finally, in workflow 3, in the event of a request to amend the patent in quesƟon, the defendant to this request has the last word, in this case, NUC and WARMCOOK. These workflows, with strict deadlines, are aimed to ensure the most efficient and economical procedure before the UPC, in accordance with point 4 of the Preamble. In parƟcular, R 32-3 RdP in fine expressly states that “The Rejoinder shall be limited to the mat- ters raised in the Reply.” In the case at hand, NUC and WARMCOOK had the last word in workflow 1 dedicated to the in- fringement and its remedies, in their statement lodged on 16/11/2024. In HUROM's statement filed on December 16, 2025, which is part of workflow 3 of the wriƩen procedure, the Claimant was required to respond solely to the validity of the patent including the proposed amendment issues, presented in their statement from NUC and WARMCOOK dated No- vember 14, 2024. If HUROM considered that new arguments regarding the infringement issue needed further submissions, it was up to HUROM to submit a reasoned request to the judge-rap- porteur pursuant to R 36 RoP. Thus, the judge-rapporteur notes that the Defendants rightly considered in their ulƟmate Rejoin- der dated January 15, 2025, that the new arguments on infringement put forward by HUROM in its Rejoinder dated December 16, 2024, were inadmissible at this stage, concerning these secƟons: -SecƟon 2 “On the infringement” (p. 48 to 51) of the Claimant Rejoinder; and -SecƟon 3 “On the remedies” (p. 52 to 56) of the Claimant Rejoinder; and -the supporƟng pieces of evidence referred to in this SecƟon (Hurom Exhibits No. 27.1 and 27.2). In accordance with the main principle of fairness (point 2 of the preamble), R 36 RoP allows the parƟes to request further wriƩen submissions to the judge-rapporteur upon reasoned request. Under R 36 RoP, the parƟes have the right to ask for further statements before the closure of the wriƩen procedure. The Defendants did not contest that they raised new arguments on infringement issues in their statement dated November 16, 2024. According to HUROM, their last response should be concise (no more than 8 pages). To secure fairness and equity of the proceedings, and regarding the short Ɵmeline requested by the Applicant, the judge-rapporteur considers that HUROM’s request can be granted without af- fecƟng the Ɵmeframe of the proceedings (Interim Conference is scheduled for 11 March 2025). 5 Considering all these elements, the judge-rapporteur: -Declares that arguments menƟoned in secƟons 2 and 3 in HUROM’s statement of 15/01/2025 are inadmissible, -Authorises further exchanges of wriƩen pleadings, as follows: -Last statement from HUROM, strictly dedicated to responding to the new arguments presented by the Defendants in their Rejoinder dated November 14, 2024, regarding infringement and its remedies, (maximum of 8 pages), due by 10 February 2025, -Response from NUC and WARMCOOK, strictly dedicated to addressing the points raised by HU- ROM in its latest statement (maximum of 8 pages), due by 15 February 2025. The wriƩen procedure will be closed at the end of this last exchange. This order may be reviewed pursuant to Rule 333 RoP. Issued in Paris, on 5 February 2025. C. Lignieres, Judge-rapporteur ORDER DETAILS Order no. ORD_4336/2025 in ACTION NUMBER: ACT_17434/2024 UPC number: UPC_CFI_163/2024 Action type: Infringement Action Related proceeding no. Application No.: 4027/2025 Application Type: R 36 application
Key Holdings
- A request for further written statements (maximum 8 pages) was allowed to respond to new arguments introduced in a Rejoinder.
- The opposing party was granted 5 days to respond to these additional statements.
- The Judge-Rapporteur's decision aimed for a practical solution to manage new arguments late in the written procedure, without significantly affecting the proceedings' duration.
Tags
- Case Management
- Pleadings
- Written Procedure