UPC_ CFI_351/2024; UPC_CFI_595/2024 – Canon v Katun

Expert Commentary

Results of interim conference Facts 1. The JR stated that the penalty payments be phrased as “up to” and not as fixed amounts. 2. The JR reiterated that the Court had already decided on the request for further written submissions. 3. The defendant dropped its argument that one defendant was not properly served. 4. The value of the dispute was postponed to the oral hearing. 5. The JR decided on the breakdown of the claim in the different claim elements. 6. The parties agreed about the time for argument during the oral hearing: both parties 60 minutes in first instance and 30 minutes for reply and rejoinder. 7. Parties were asked to submit a preliminary estimate of the legal costs. 8. The deadline for further submissions following the interim conference was discussed. 9. In a confidential setting, a settlement was discussed. Comment 1. The German JR insists on the national German labels to formulate the penalty sums in the “up to” formulation. See also the previous decision of the day by the same Local Division. The Local Division states “to have more flexibility”. I wonder on which Article of the UPCA this is based. Why can the claimant not claim a fixed penalty to which the defendant can react and the Court decide? This avoid time consuming proceedings for fixing the forfeited penalties. The way I read the Court of Appeal’s decision in Belkin v Philips, this is also the preferred way of the Court of Appeal. 2. The way the JR asks to submit preliminary estimated legal costs is in my opinion also too vague. First of all, it would be good to remind parties that the preferred way of dealing with costs is an agreement. If that is not possible, then follow the example of the Loca Division in The Hague. File your costs (including further expected costs) two weeks before the hearing and the other party has a week to react. That enables a cost decision in the decision avoiding the extra costs (for clients) and effort of cost proceedings. 3. Further submissions after the interim conference? About what? The written phase is closed. If the JR allows a further written submission, it should be clear why and about what. 4. Very good that the JR takes one of the goals of the interim conference seriously, in the sense that she tried to have the case settled.

Full Decision Text

Düsseldorf Local Division UPC_CFI_351/2024 UPC_CFI_595/2024 Order of the Court of First Instance of the Unified Patent Court issued on 10 December 2025 concerning EP 3 686 683 B1 CLAIMANT: Canon Kabushiki Kaisha, represented by its chief executive officer Mr Fujio Mitarai, 30-2, Shimomaruko 3-chome, Ohta-ku, Tokyo, 146-8501, Japan represented by: Attorney-at-law Boris Kreye LL.M., Attorney-at-law Anika Boche, Attorney-at-law Lukas Wosnitza, Maximiliansplatz 22, 80333 Munich, Germany, with support by: Patent Attorney Dipl.-Ing. Rainer Böckelen, Patent Attorney Dipl.-Ing. Tobias Schob, TBK, Bavariaring 4-6, 80336 Munich, Germany, electronic address for service: UPC_Canon@twobirds.com DEFENDANTS: 1. Katun Germany GmbH, represented by its managing directors Mr Thomas Arthur Meij and Mr Robert Henry Moore, Hammfelddamm 4a, 41460 Neuss, Germany 2. Katun (E.D.C.) B.V., represented by its managing director Mr Robert Henry Moore, De Prinsenhof 11, 4004 LN Tiel, The Netherlands 3. Katun Corporation, represented by its chief executive officer Mr Robert Henry Moore, 7760 France Ave. So., Suite 340, Minneapolis, Minnesota 55435, United States of America 4. General Plastic Industrial Co., Ltd., represented by its chairman Mr Jack Wang and its presi- dent Mr Jerry Wang, 50, Tzu-Chiang Road, Wu-Chi Dist., Taichung, Taiwan 43547 Defendants 1-4 represented by: Attorney-at-law Dr Thure Schubert, Attorney-at-law Dr Mat- thias Jentsch, Attorney-at-law Luisa Huber, Patent Attorney Arnold Asmussen, Patent Attorney Dr Axel Leins, Vossius & Partner, Patentanwälte, Rechtsanwälte mbB, Siebertstraße 3, 81675 München, Germany, 1 electronic address for service: vb-katun-canon@vossiusbrinkhof.eu PATENT AT ISSUE: European patent n° EP 3 686 683 B1 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This order was issued by Judge Dr Schumacher acting as judge-rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: R. 105.5 RoP – Order following interim conference BACKGROUND AND FACTS: 1. An interim conference was held before the judge-rapporteur on 4 December 2025. This conference was held via Webex and was audio-recorded (R. 105.1, R. 106 RoP). 2. The following attendees were present at the interim conference: Court: • Legally qualified judge Dr Schumacher, judge-rapporteur Claimant: Legal representatives:  Attorney at law Boris Kreye, LL.M. (lead representative)  Attorney at law Anika Boche  Attorney at law Ioana Hategan  Patent attorney Dipl.-Ing. Rainer Böckelen  Patent attorney Dipl.-Ing. Tobias Schob Participants Claimant:  Mr Daisuke Abe, General Manager of Patent Enforcement Team  Mr Tadanori Kamatsuka, Manager of Patent Enforcement Team  Mr Takumi Yuasa, Manager of Patent Enforcement Team  Ms Fuko Suzuki, Patent Enforcement Team 2   Mr Yasunao Otomo, General Manager of Patent Prosecution Team  Mr Shigeo Watanabe, Manager of Patent Prosecution Team  Mr Kazumasa Nohsho, Patent Prosecution Team Participants Canon Europe:  Mr Matthew Hitching, Senior Director Intellectual Property  Mr Sogo Kuroiwa, Director Intellectual Property Defendants: Legal Representatives:  Attorney at law Dr Thure Schubert (lead representative)  Patent attorney Arnold Asmussen  Attorney at law Luisa Huber  Patent attorney Dr Axel Leins Participants Defendants  Ms Laurie Young, Katun Corporation, Senior Intellectual Property Counsel  Mr William F. McIntyre, Katun Corporation, General Counsel 3. The following questions were discussed: 1. Claimant’s requests in the Statement of claim Requests II, III, IV and V (penalty payments) 4. The judge-rapporteur informed the Claimant that the penalty payments should be phrased as ‘up to’ requests instead of a fixed amount. The amounts can remain the same. 5. The Claimant’s lead representative declared the Claimant’s consent. Request VI. (destruction) 6. The phrasing of request VI. (destruction) was discussed. The judge-rapporteur expressed doubts about the clarity of the term ‘and/or materials’. 7. The Claimant’s lead representative argued that this phrasing merely repeats the wording of Art. 64 UPCA and addresses parts/components that can be used in the products. However, he declared that the Claimant is prepared to delete this part of the request. 3 Request VII. (reimbursement of damages) 8. The term ‘including interest’ in request VII. was discussed. The Claimant’s representative stated that this could also be deleted, as it is unnecessary. Request VIII. (interim damages) 9. The judge-rapporteur stated that, regarding the spelling mistake in request VIII. (‘the amount of security’ instead of ‘the amount of such damages’), no further action is required. 2. Request for leave to change claim or amend case pursuant to R. 263 RoP 10. The Claimant’s request for leave to change the claim in the reply was discussed. This request relates to indirect infringement (on an auxiliary basis), an extension to the request for information and to joint and several liability for interim damages. 11. The judge-rapporteur pointed out that the Court had already ruled that it would decide on the Claimant’s requests during the main proceedings (order of 4 March 2025), and that this decision is still intended to be made by the entire panel. 3. R. 36 RoP 12. It was noted that the Claimant’s request to submit a further pleading pursuant to R. 36 RoP had already been ruled on in an order dated 20 November 2025. The issues in question concern the submission of the EPO’s preliminary opinion, a summary of the EPO’s reasoning, and an additional test purchase. 4. Service on Defendant 3 13. The issue of service on Defendant 3, which was contested by the Defendants, was discussed. The main points of discussion were the Court of Appeal’s order of 5 August 2024 (Panasonic v. Xiaomi), and the fact that the Defendants’ representatives had used the access code to log in to the CMS on behalf of Defendant 3, and had filed a statement of defence and a counterclaim for revocation. The content of the ‘Letter to accompany service’ was also discussed. 14. The Defendants’ lead representative declared that the Defendants are willing to drop this point in order to reach an amicable solution. The Claimant’s lead representative stated that he understood that service was no longer contested. The Defendants’ lead representative confirmed this. 5. Value of dispute 15. The value of dispute was discussed. No decision was taken on this aspect. 16. The Claimant will have the opportunity to respond to the Defendants’ arguments in their rejoinder during the oral hearing. 4 6. Feature breakdown 17. The judge-rapporteur informed the parties that the feature breakdown provided by the Defendants will be used during the oral hearing. However, feature 1.6 will be broken down further. 18. The feature breakdown of claim 1 reads as follows: 1.1 A developer supply container detachably mountable to a developer receiving apparatus (8) including a developer receiving portion (11) provided with a receiving opening (11a) for receiving a developer, and a supported portion (11b) integrally displaceable with the developer receiving portion (11), said developer supply container (1) comprising: 1.2 a developer accommodating portion (2c) accommodating the developer; 1.3 a discharging portion (700) provided with a discharge opening (3a4) in a bottom side of said discharging portion (700) for discharging the developer accommodated in said developer accommodating portion (2c); 1.4 a supporting portion (30) provided at said discharging portion (700) and capable of supporting the supported portion (11b), characterized in that 1.5 said supporting portion (30) is movable relative to said discharging portion (700), and in that 1.6 said developer supply container (1) further comprises a moving mechanism (4f, 30b; 30Ca, 30Cb; 60, 61; 70, 71; 90) for moving said supporting portion (30) upwardly relative to said discharging portion (700) 1.6.1 while supporting said supported portion (11b) to move the developer receiving portion (11) toward the developer supply container (1) 1.6.2 so as to bring said receiving opening (11a) into communication with said discharge opening (3a4) with a mounting operation of said developer supply container (1) to the developer receiving apparatus (8). 19. In addition to the discussion at the interim conference, the parties are informed that the Court intends to use the following feature breakdowns of claims 5 and 6: Claim 5: 5.1 A developer supply container according to Claim 1, 5.2 wherein said moving mechanism includes a guiding means for guiding said supporting portion (30B) in a direction of bringing the receiving opening (11a) into communication with said discharge opening (3a4), and 5.3 a sliding operation portion for moving said supporting portion (30B) along said guiding means with said mounting operation. 5  Claim 6: 6.1 A developer supply container according to Claim 5, 6.2 wherein said guiding means includes 6.2.1 a rib (3i) provided on one of said discharging portion and said supporting portion (30B), 6.2.2 a holding portion (30Bd) provided on the other end engaged with said rib (3i) to slidably support said supporting portion (30B). 20. The parties are requested to use these feature breakdowns during their pleadings. 7. English translations 21. Both parties requested that a judicial note be made if English translations of any of the exhibits are required. 22. The judge-rapporteur informed the parties that the court requires English translations of all documents not submitted in English, and that requests to waive this requirement are rejected. 8. Course of the oral hearing 23. The judge-rapporteur informed the parties of the intended course of the oral hearing. 24. The parties were informed that the Presiding Judge would probably set time limits and that an order to this effect could be expected before the hearing. The parties were invited to propose time limits. 25. Both parties agreed that time limits of 60 minutes for the first pleading of each party and 30 minutes for the respective response would suffice. The judge-rapporteur informed the parties that this would be communicated to the Presiding Judge, who will make the final decision on this matter. 26. The parties were requested to upload any sketches or documents that they wish to refer to at the oral hearing, but which have not yet been submitted to the file. 27. Both parties agreed that they would only use information during the oral hearing that had already been shared. 28. The parties pointed out that a hybrid hearing will be requested. The judge-rapporteur confirmed that participation via Webex will be possible. 9. Preliminary estimate of legal costs 29. The parties were requested to submit a preliminary estimate of the legal costs that they will seek to recover. 10. Deadline for all submissions before the oral hearing 30. The deadline for further submissions following the interim conference was discussed. To allow the Court to prepare the case, all submissions should be filed by 18 December 2025. 6 31. The parties agreed to share any sketches or documents they intend to use during the oral hearing by 5 January 2025. 11. Settlement 32. The possibility of a settlement was discussed. 33. During the discussion, the judge-rapporteur ordered that the interim conference shall be confidential. After concluding the discussion on this issue, the judge-rapporteur ordered that the interim conference shall be public again. SUMMARY OF THE ORDERS TAKEN AT THE INTERIM CONFERENCE: 1. The parties’ requests that documents need not be translated are rejected. Both parties are ordered to provide translations of documents submitted in languages other than English by 18 December 2025. 2. The parties are requested to submit a preliminary estimate of the legal costs that they will seek to recover (R. 104 (k) RoP) by 18 December 2025. 3. At the end of the aforementioned period, the interim procedure will be closed automatically. Once the interim procedure has been closed, the Presiding Judge will take over management of the case. 4. The parties are requested to upload any sketches or documents to the CMS that they wish to refer to for clarification during the oral hearing and that have not yet been submitted to the file. They have agreed to do this by 5 January 2025 at the latest. 5. Any other decisions will be made by the panel after hearing the parties at the oral hearing. Issued in Düsseldorf on 10 December 2025 NAMES AND SIGNATURES Judge Dr Schumacher Digital unterschrieben Jule Kathrin von Jule Kathrin Schumacher Schumacher Datum: 2025.12.10 14:38:20 +01'00' 7

Key Holdings

• The JR stated that penalty payments should be phrased as 'up to' a maximum amount, rather than fixed sums, for flexibility.
• The value of the dispute was postponed to the oral hearing, and parties agreed on time limits for arguments during the hearing.
• Parties were asked to submit preliminary estimates of legal costs.
• The commentator criticized the 'up to' penalty formulation and the vagueness of cost estimate requests, advocating for fixed penalties and detailed cost submissions before the hearing.

Tags

• Case Management
• Costs
• Interim Measures
• Penalty Payment
• Procedural Issues

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