UPC_CFI_336/2024; 605/2024 – Maxeon Solar v Aiko
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
No bifurcation Order by the whole panel As in the previous Düsseldorf case, an early decision on bifurcation was made. Comment 1. If there are no special circumstances, the rule is no bifurcation, which is logical. It is more efficient to handle both infringement and validity in the same proceedings, which also means that the same claim interpretation is used for both. 2. It is a bit strange that Judge Thomas states that he is acting as JR while the whole panel issues the order. Judge Thomas is in the panel acting as Presiding Judge but not as JR. Being the JR in the panel is different from acting alone as JR, but I agree, I may be starting to be too picky!
Full Decision Text
1 Düsseldorf Local Division UPC_CFI_336/2024 UPC_CFI_605/2024 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 23 April 2025 concerning EP 3 065 184 B1 Claimant: Maxeon Solar Pte. Ltd., represented by its CEO, 8 Marina Boulevard #05-02, Marina Bay Financial Centre, 018981 Singapur Represented by: Attorney-at-law Christian Harmsen, Attorney-at-law Dr Bastian Selck, Bird & Bird LLP, Carl-Theodor-Straße 6, 40213 Düsseldorf, Germany Electronic address for service: christian.harmsen@twobirds.com Contributing: Patent Attorney Dr Felix Harbsmeier, Patent Attorney Cameron Walker, Bird & Bird LLP, Am Sandtorkai 50, 20457 Hamburg, Ger- many Tjibbe Douma und Carlos van Staveren, Bird & Bird (Netherlands) LLP, Gustav Mahlerlaan 42, 1082 MC Amsterdam, The Nether- lands Defendants: 1. Aiko Energy Germany GmbH, represented by ist CEOs Dr Christian Frank Peter und Haojie Lu, Niederkasseler Lohweg 18, 40547 Düsseldorf, Germany 2. Solarlab Aiko Europe GmbH, Dr Christian Frank Peter, Berliner Allee 29, 79110 Freiburg im Breisgau, Germany 3. Memodo GmbH, represented by its CEOs Enrico Brandmeier, Daniel Schmitt und Tobias Wenleder, Eichenstraße 11 a-d, 85445 Oberding, Germany 4. Aiko Energy Netherlands B.V., represented by its CEO, Schiphol Boulevard 201 – 1118 BG - Schipol, the Netherlands 5. Libra Energy B.V., represented by ist CEO Bram van Duijn, Eendrachtsstraat 199, 1951 AX Velsen-Noord, the Netherlands 6. VDH Solar Groothandel B.V., represented by its CEO, Finlandlaan 1, 2391 PV, Hazerswoud- edorp, the Netherlands 2 7. PowerDeal SRL, represented by its CEO, Rue du Fond des Fourches 41, 4041 Herstal, Belgium 8. Coenergia Srl a Socio Unico, represented by its CEO, Foro Buonaparte 55, 20121 Milan, Italy Defendants 1., 2. and 4. represented by: Attorney-at-law Gertjan Kuipers, Attorney- at-law Hendrik Jan Ridderinkhof and other Representatives before the UPC of Hogan Lovells International LLP, Strawinskylaan 4129, 1077 ZX Amsterdam, the Netherlands Electronic address for service: upc-hub@hoganlovells.com Contributing: Attorney-at-law Dr Henrik Lehment, Attor- ney-at-law Vanessa Zipperich and other Rep- resentatives before the UPC of Hogan Lovells LLP, Dreischeibenhaus 1, 40211 Düsseldorf, Germany Patent Attorney Dr Andreas Schmid, Patent Attorney Cedrik Rohr and other Representa- tives before the UPC of Hogan Lovells Inter- national LLP, Karl-Scharnagl-Ring 5, 80539 Munich, Germany Defendants 3. and 5. to 8. Represented by: Attorney-at-law Dr Constantin Kurtz, Attor- ney-at-law Dr Stefan Eck, Attorney-at-law Maximilian Reif, Klaka Rechtsanwälte Part- nerschaft mbB, Delpstraße 4, 81679 Munich, Germany Electronic address for service: ckurtz@klaka.com Contributing: Patent Attorney Dr Markus Herzog, Patent Attorney Manuel Millahn, Weickmann & Weickmann Patent- und Rechtsanwälte Part- mbB, Richard-Strauss-Straße 80, 81679 Mu- nich, Germany PATENT IN SUIT: EUROPEAN PATENT NO. 3 065 184 B1 PANEL/DIVISION: Panel of the Düsseldorf Local Division DECIDING JUDGES: This Order was issued by Presiding Judge Thomas acting as judge-rapporteur, legally qualified 3 Judge Dr Schumacher on behalf of Judge Dr Thom, legally qualified Judge Zhilova and technically qualified judge Dr Schmidt. LANGUAGE OF THE PROCEEDINGS: English SUBJECT: R. 37.1 RoP, Art. 33 (3) UPCA ORDER: Pursuant to R. 37.2 RoP, the local division takes an earlier decision on the question of how to pro- ceed with regard to Art. 33(3) UPCA within the meaning of Art. 33(3)(a) UPCA before the end of the written procedure. According to R. 37.2 RoP, the panel may take an earlier decision by order, provided that it takes into account the party´s submissions and gives them the opportunity to be heard. In the present case, the local division exercises its discretion to hear both the infringement action and the counterclaim for revocation (Art. 33(3)(a) UPCA). Such a joint hearing of the infringement action and the counterclaim seems to be appropriate in particular for reasons of efficiency. It is also preferable because it allows both issues – validity and infringement – to be decided on the basis of a uniform interpretation of the patent by the same panel composed of the same judges. An early decision on the bifurcation issue will set the framework for possible issues. This will enable the parties and the Court to manage the case accordingly. DETAILS OF THE ORDER: ORD_17892/2025 referring to main file references ACT_36426/2024, CC_57043/2024 and CC_57310/2024 UPC number: UPC_CFI_336/2024 and UPC_CFI_605/2024 Type of procedure: Infringement action and counterclaim for revocation Issued in Düsseldorf on 23 April 2025 NAMES UND SIGNATURES Presiding Judge Thomas Legally qualified Judge Dr Schumacher 4 Legally qualified Judge Zhilova Technically qualified Judge Dr Schmidt
Key Holdings
- Early decision against bifurcation.
Tags
- Bifurcation
- Case Management