UPC_CFI_43/2025 – Advanced Brain Monitoring v Philips

Court
Local Division The Hague
Date
Outcome
Granted
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Amendment of case Facts The claimant's Statement of Claim mentioned the B1 version of the patent, while a B2 version of the patent had already been issues after opposition. The claimant now wants to change this by filing a request for an amendment to the case to change it to the B2 version. The JR The JR found this request unnecessary, as the B2 version automatically becomes the valid version from the day of the grant. She allowed the replacement of the B1 version with the B2 version. The defendant did not object. Comment 1. This is a practical solution. 2. The JR stated that the request to amend was devoid of purpose and that R. 360 RoP, though written for actions, should also apply to applications. That seems correct to me. 3. However, I understand why the claimant asked for it: one could argue that the claimant was invoking a non-existent patent, making infringement impossible and causing the claimant to lose without an amendment.

Full Decision Text

1 The Hague - Local Division UPC_CFI_43/2025 Preliminary Order of the Court of First Instance of the Unified Patent Court delivered on 10/07/2025 regarding R.263 APPLICANT/ CLAIMANT IN THE INFRINGEMENT PROCEEDINGS 1) Advanced Brain Monitoring, Inc. (“Claimant”) - 2237 Faraday Ave - CA 92008 - Carlsbad - US Represented by Wim Maas RESPONDENTS/DEFENDANTS IN THE INFRINGEMENT PROCEEDINGS 1) Koninklijke Philips N.V. High Tech Campus 52 - 5656 AG Eindhoven - NL 2) Philips RS North America LLC 1001 Murry Ridge Lane - PA 15668 - Murrysville - US 2 3) Respironics Deutschland GmbH & Co. KG Gewerbstraße 17 - 82211 - Herrsching am Ammersee - DE All respondents/defendants (“Defendants”) are represented by Hendrik Ras. PATENT AT ISSUE Patent no. Proprietor/s EP2437696 ADVANCED BRAIN MONITORING INC DECIDING JUDGE Judge-rapporteur LANGUAGE OF PROCEEDINGS: English POINTS AT ISSUE 1. The Claimant in the main action filed this R.263 application (as App_32667/2025, the “Application”) requesting leave to change its claim or amend its case. The requested amendment is that the claims be based on the B2 version of the patent, instead of on the B1 version that was mentioned in the statement of claim (“SoC”). The SoC was filed within one month after the EPO maintained the patent in the amended B2 form. 2. The JR understands that the Application is filed on the condition that the court deems such amendment necessary, e.g. because it does not accept that Claimant has based, or has meant to base, its claims on the B2 version of the patent from the start. 3. The condition is not met. Art. 68 European Patent Convention (“EPC”) clarifies that from the outset the patent shall be deemed not to have had the effects specified in Art. 64 and Art. 67 EPC to the extent that the patent is limited. Therefore, already on the date on which the SoC was filed, the B1 version of the patent no longer existed and had been replaced by the B2 version with retroactive active effect. Thus, the B2 text is deemed to exist/be valid from the date on which the patent was first granted. 4. The Defendants were given the opportunity to be heard. The JR thereby indicated her intention to dismiss the Application to amend as being devoid of purpose (cf. R.360, which refers to actions, but there is no reason not to apply this to Applications). The JR also proposed to admit the revised SoC submitted as annexes TW04 and TW05 (with and without track changes, the latter reflecting the amendments due to the B2 version) with the Application, into the proceedings for easy reference. TW04 is then to replace the SoC as originally filed, to reflect the correct text of the patent. 5. The Defendants replied on 22 July 2025, stating that they do not object to this. 3 ORDER 1. The R.263 Application to amend the case is dismissed. 2. Annex TW04 is admitted into the proceedings to replace the SoC as originally filed. 3. Annex TW05 (with track changes) is also admitted into the proceedings. ORDER DETAILS Order no. ORD_32723/2025 in Action Number: ACT_3301/2025 UPC number: UPC_CFI_43/2025 Action type: Infringement Action Application No.: 32667/2025 Application Type: Application for leave to change claim or amend case/pleading (RoP263)

Key Holdings

  • Formal amendment of case deemed unnecessary for B1 to B2 patent version update.
  • B2 version automatically valid from grant.
  • Correction allowed; R. 360 RoP applied by analogy.

Tags

  • Amendment of Claim

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