UPC-CFI-329/2023 – Mr xxxxxxx v OrthoApnea S.L.

Court
Local Division Brussels
Date
Outcome
Granted
Sector
Pharma/Bio
Decision Type
PROCEDURAL

Expert Commentary

Full Decision Text

Order ex R.192 RoP to protect evidence and make description Brussels local chapter Command of the Court of First Instance of the Unified Patent Court (UPC) Local division in Brussels Given on 21 September 2023 Concerning EP 2 331 036 REQUESTING PARTY Mr xxxxxxx, residing in Schilde, Belgium; hereinafter referred to as the applicant; Represented by Mter. C. Ronse and Mter. K. Claeyé, lawyers at Havenlaan 86C, B414, 1000 Brussels, and Mter. M.W. Rijsdijk and Mter D.E. Colenbrander, lawyers at Amstelplein 1 (Rembrandt Tower, 28th floor), 1096 HA Amsterdam; DONE(N) OrthoApnea S.L., a company incorporated under Spanish law, with its registered office at Flauta Mágica 22, 29006 Malaga, Spain, and its OrthoApnea NOA products; Hereinafter: defendant or OrthoApnea PATENT(S) TO WHICH THE DISPUTE RELATES: Patent no. Patent holder(s) EP 2 331 036 xxxxxxx EP 2 331 036 B1 is entitled 'Device for treating night time breathing problems' and is hereafter referred to as EP 036 or the patent. EP 036 was applied for on 6 July 2009. The patent invoked the priority of the Belgian patent application with application number BE 200800374 and filing date 7 July 2008. EP 036 was granted Case number: Type of case: Request number: UPC-CFI-329/2023 Protection evidence 574133/2023 2 on 6 November 2019 and is effective in Belgium, Germany, France, Luxembourg and the Netherlands (in addition to the UK). PANEL/DIVISION Panel: n/a Department: Brussels local branch DECIDING JUDGE(S): M.E. Kokke (as standing judge for local division Brussels under R. 194.4 RoP) LANGUAGE OF THE PROCEEDINGS: Dutch 1. THE PROCEDURE 1.1 The petition was received on 20 September 2023 at 19:38. The petition should be attached to this decision and forms part of it. 1.2 No proceedings on the merits relating to this request are yet pending. The request relates to the taking of ex parte measures to be taken on 22 and/or 23 September 2023. 1.3 Given the extreme urgency of this request, it is handled by the duty judge (standing judge). 2. SUMMARY OF THE FACTS 2.1 The applicant is holder and inventor of the patent which relates to a device to be placed in the mouth for counteracting nocturnal breathing problems, also known as snoring or sleep braces. In particular, the invention according to the patent relates to an improved snoring brace that is user-friendly and comfortable to wear. The patent is in several originally signed off and is currently still valid in the countries participating in the Unified Patent Court (hereinafter UPC) Belgium, Germany, France, Luxembourg and the Netherlands. 2.2 The defendant is a Spanish company offering a device for the treatment of breathing problems. OrthoApnea offers this device under the product name OrthoApnea NOA ('NOA'), which is as follows: 2.3 The applicant claims that the defendant's NOP product infringes claims 1, 9 and 10 of EP 036. For an explanation of the patent and the alleged infringement thereof, see the application to be attached to this decision. For an explanation of the claims contained in the patent 3 embodied invention, reference is made to marginal numbers 7 - 13 and for infringement, reference is made to marginal numbers 23-39. 2.4 On 22-23 September 2023 [NB in marginal 19 of the request, it reads 23-24 September; this appears to be an obvious typo as shown in the annexes, court] the association iBEDSSMA is organising a annual symposium in Knokke-Heist (hereafter: the symposium). iBEDSSMA stands for "interdisciplinary Belgian Dental & Surgical Sleep Medicine Academy" and is an association aiming at an multidisciplinary approach to sleep-disordered breathing. It is expected that OrthoApnea, which is "Gold Sponsor" of this symposium, will in all likelihood promote, offer and exhibit several of its NOA products at this Symposium. 3. THE MEASURES REQUESTED 3.1 The applicant requests, to impose evidence protection and description measures in accordance with Art. 60(2) UPCA and rules R. 192 and 196.1(b) and (c) RoP, to be implemented during the symposium without hearing the defendant. In particular, it requests, summarised, 3.1.1 make an immediate injunction requiring the precautionary seizure of the allegedly infringing NOA products and the relevant technical, promotional and commercial documentation relating thereto; and 3.1.2 to appoint an expert and order it to prepare a reasoned report detailing the characteristics of the NOA products and the relevant technical, promotional and commercial documentation in this regard, 3.1.3 one and all with additional requests. 4. REASONS FOR THE DECISION 4.1 The UPC has international jurisdiction to take cognisance of the request as the measures are based on a granted European patent that is also in force in Belgium, an agreement- closing member state (which has ratified the UPCA). No opt-out has been registered. The local branch in Brussels is already competent to take the requested protective measures because the alleged infringing acts threatened to take place in Belgium. (arts. 32.1(c) and 33.1(a) UPCA). The applicant has indicated its intention to bring the main case, which is not yet pending, before the Brussels local division, so local jurisdiction also follows from rule 192.1 RoP. 4.2 The request is urgent in view of the symposium taking place on 22 and 23 September 2023 and the expectation that the evidence will not be available in the relevant territory thereafter. This is not altered by the fact that the documents show that the applicant was already aware of the defendant's expected attendance at the symposium on 30 June 2023. It is unfortunate, however, that this request was made at the last possible moment. 4.3 The application is granted without hearing the respondent under rule 197.1 RoP. The applicant has sufficiently explained that irreparable damage may occur to her if Respondent is heard because it is feared that, in that case, the infringing products will no longer be available at the symposium (rule 192.3 RoP). Since the defendant will not be heard, it may request a review of this decision (rule 197.3 RoP). This will be stated in the decision. 4.4 The applicant has made it plausible that it holds a valid patent and that the defendant is threatening to infringe it in Belgium with the NOA products. The applicant's interest in preservation of evidence relating to that alleged infringement by the measures to be granted prevails, as irreparable harm to the applicant can be expected if the application is rejected because evidence disappears from the territory where the patent is valid. 4 4.5 The protective measure must be implemented according to Belgian national procedural rules, i.e. using a judicial officer, as requested (rule 196(4) RoP). There is also cause for appointment of an expert, as requested, to make a detailed technical description and report thereon. 4.6 Contrary to the request, it is ordered that the report be filed as soon as it is ready, but not later than one week after the execution of the protective measures, in the manner mentioned below on account of the time limit for bringing the case on the merits. Since no attachment is sought on confidential materials and will seize materials publicly available during a symposium, there is no reason to impose a confidentiality regime and the report can be sent directly to the parties. Should this be otherwise, the defendant or the expert should request this from the court. 4.7 In the absence of any basis for doing so, the order for cooperation is dismissed by the defendant on pain of a penalty. 5. THE DECISION The Court of First Instance, Brussels Local Division, granted the application for interim protective measures in view of the plausibility of imminent infringement of claims 1, 9 and 10 of the patent, as follows: 5.1 authorises the applicant, through the body competent in Belgium (the bailiff), to seize for evidentiary purposes, during the two-day iBEDSSMA Symposium "Multidisciplinary Treatment of Sleep- disordered Breathing" taking place on Friday 22 and Saturday 23 September 2023 at Réserve Resort, Elizabethlaan 160, 8300 Knokke-Heist, Belgium, to seize (or cause to be seized) the NOA products referred to in the petition, and all technical, promotional and commercial documentation relating thereto, offered by OrthoApnea there; 5.2 appointed Stephanie Sarlet, from the firm Pitch as an expert, with the option of being replaced by a fellow firm member; 5.3 allows the bailiff to be assisted by the expert in taking the measures referred to in 5.1; 5.4 orders the expert to prepare a reasoned report containing a detailed description of the characteristics of the NOA products and the relevant technical, promotional and commercial documentation relating thereto, and to submit this report via the CMS to the Brussels local branch of the UPC, and also to send this report to the parties or to their counsel, all within one week from the day of enforcement of this decision; 5.5 determines that the aforementioned report may only be used for the time being in the case on the merits; 5.6 provides that this decision and the petition must be served on the defendant in accordance with national rules at the latest when the measures are implemented; 5.7 Allows counsel and a technical adviser of the applicant, to the extent necessary (when it does not concern publicly available products and information to which any person may be present/accessed), to be present at the implementation of the protective attachment; 5 NAMES AND SIGNATURES 5.8 determines the time limit for initiating proceedings on the merits, as provided for in rule 198.1 RoP, on 31 calendar days after service of the decision on the defendant, failing which of which the court may, at the defendant's request, order that such decision be revoked or otherwise cease to have effect. 5.9 Orders the applicant, if it has not already done so, to pay the 'fixed fees' under rule 317.3 RoP by Monday 25 September 2023; 5.10 declares this decision to be immediately enforceable. 5.11 The decision on costs is stayed until the main case. 5.12 The defendant may, within 30 days of the commencement of enforcement of the measures, apply for a review of this decision under rule 197.3 RoP; 5.13 This decision may be appealed within 15 days of notification to the applicant (arts. 72.2 (a) and 60 UPCA; rules 220.1 (c) and 224.2 RoP). Done on 21 September 2023 APPEAL INFORMATION

Key Holdings

  • authorises the applicant, through the body competent in Belgium (the bailiff), to seize for evidentiary purposes, during the two-day iBEDSSMA Symposium [...] the NOA products referred to in the petition, and all technical, promotional and commercial documentation relating thereto, offered by OrthoApnea there
  • appointed Stephanie Sarlet, from the firm Pitch as an expert, with the option of being replaced by a fellow firm member
  • orders the expert to prepare a reasoned report containing a detailed description of the characteristics of the NOA products and the relevant technical, promotional and commercial documentation relating thereto, and to submit this report via the CMS to the Brussels local branch of the UPC, and also to send this report to the parties or to their counsel, all within one week from the day of enforcement of this decision
  • determines the time limit for initiating proceedings on the merits, as provided for in rule 198.1 RoP, on 31 calendar days after service of the decision on the defendant, failing which of which the court may, at the defendant's request, order that such decision be revoked or otherwise cease to have effect
  • declares this decision to be immediately enforceable

Tags

  • Evidence
  • Infringement
  • Interim Measures

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