UPC_CFI_44/2024 – Centripetal v Keysight

Court
Local Division Mannheim
Date
Outcome
Granted
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Amendment of case Facts The claimant states that parts of its reply are further legal arguments or arguments which had already been raised in their Statement of Claim but asked (if the Court considered these arguments as an amendment of case) for leave to amend their case, stating that the (new?) statements were in response to a prior use defence which the claimant did not know of when they started the proceedings. The defendant stated that this was an amendment of case which should be refused. The Judge-Rapporteur (JR) 1. The JR postponed the decision to the oral hearing and gave an extension for the rejoinder for reacting to the (allegedly) new arguments. 2. The JR stated that the decision basically depended on whether the new attacked embodiments raised the same or similar infringement arguments as stated in the Statement of Claim, which should be resolved during the oral argument, which then could lead to a further hearing or written submissions. Comment 1. This case shows the dilemma between, on the one hand, the front-loaded character of UPC proceedings and, on the other hand, the desire to be efficient and doing justice. Assuming that indeed there was a “surprise” defence as to the “prior use” which prompted the new facts in the reply, then what to decide? 2. However, the Rules of Procedure are very flexible, and you can grant a further extension or a new round of written submissions or resolve the dilemma during the interim conference while still meeting the date for the final oral hearing. 3. I think a postponement until the oral hearing is not the preferred way of handling this. It is better (and the JR left that possibility open) to do this during the interim conference (maybe with the whole panel present). 4. The problem is planning and being very busy (and maybe old national practice under which – in Germany at least – interim conferences are unknown). 5. I think that the best way of dealing with a case is setting at the beginning of the proceedings the date for a potential interim conference about four to six weeks after the foreseen closure of the written proceedings (which allows for some flexibility), which should give enough time between the interim conference and the oral argument to allow for certain orders as a result of the interim conference. All judges should keep the date of the interim conference free so that if necessary the whole panel can participate. 6. I realize that this may require that the judges study the whole case twice, and indeed in a busy division that is not possible. As I have said before, a better spread over all the different divisions is important for reaching the goals of the UPC as a truly international and efficient court.

Full Decision Text

Local Division Mannheim UPC_CFI_414/2024 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 14 May 2025 CLAIMANT Centripetal Limited, Galway Technology Centre, Mervue Business Park -7XPF+6C -Galway –IE Represented by Ralph Nack DEFENDANTS 1) Keysight Technologies, Inc. (Applicant) - 1400 Fountaingrove Parkway - 95403 - Santa Rosa - US Represented by Klaus Haft 2) Keysight Technologies Deutschland GmbH (Applicant) - Herrenberger Straße 130 - 71034 - Böblingen - DE Represented by Klaus Haft PATENT AT ISSUE European Patent No. EP 3 821 580 PANEL/DIVISION Panel of the Local Division in Mannheim DECIDING JUDGES: This order was issued by the legally qualified judge Prof. Dr.Tochtermann acting as presiding judge and judge-rapporteur. LANGUAGE OF PROCEEDINGS: English SUBJECT-MATTER OF THE PROCEEDINGS: Patent infringement action – Application pursuant to R. 263 RoP BRIEF SUMMARY OF THE FACTS AND THE REQUEST: Claimant applied for leave to amend its case pursuant to R. 263 RoP on 13 March 2025 in parallel to submitting its Reply to the Statement of Defence (App 12235/2025) in case the court should regard new submissions contained in the Reply not as further legal arguments only. In the application, it copied the Reply and highlighted those parts in red, which relate to submissions, which possibly might be considered to require such leave. The respective parts of the Reply (cf. 91-114 and 169-188) refer to the alleged software solution “Threat Simulator” and the alleged further gateway component “ThreatARMOR”. To have clarity on the scope of the proceedings and the need to defend against the new submissions, defendants submitted a request to be heard on whether or not the new allegations and/or arguments require leave and if such leave shall be granted (App 15688/2024). In that workflow both sides were allowed to comment. Meanwhile, upon their request, the time limit for the rejoinder had been extended until 13 June 2025 in the light of the new submissions in the Reply (App 15766/2025). In their comments, Claimant submits that no leave to amend the case were necessary as the submissions related to facts only which had already been part of the SoC. Therefore it were to be qualified as additional arguments only which had been triggered by defendant’s prior-use right defence alone. The prior-use defence were solely based on internal documents of defendants so that the defence would have been unforeseeable by Claimant. If qualified as an amendment to the case, the prerequisites of R. 263 RoP were met. Neither were defendants deprived of their possibility to defend adequately, nor could the inclusion of Threat Simulator and ThreatARMOR in the Attacked Embodiments have been made with reasonable diligence at an earlier stage. Procedural economy would mandate to grant such leave as the consequence were superfluous additional separate proceedings. Defendants argue to the contrary and submit that leave were necessary in the first place as the new submissions concerned additional attacked embodiments. However, such leave could not be granted as due to previous US proceedings Claimant would have had all reason to already include the submissions concerned in its SoC. For further details of the parties’ arguments reference is made to the exchanged submissions in the cited workflows. Claimant applies only in the event that the Court holds a differing opinion, e.g. with regard to the newly addressed Threat Simulator software and ThreatARMOR (see above, sections C.IV, C.V and D.II, D.III, i.e. see mn. (91)-(114) and mn. (169)-(188), highlighted in red in the Reply version submitted in the R. 263 RoP workstream), Claimant requests leave to amend the case. Defendants apply to dismiss the Claimant’s Application for leave to amend its case. REASONS FOR THE ORDER: The final decision on whether to grant leave to amend the case according to Claimant’s application is postponed until the oral hearing at the latest. Pending that decision, Defendants are given the opportunity to respond to the amendments in substance with the already extended time period (13 June 2025). No further rounds of briefs will be allowed in response to defendant’s Rejoinder as far as it addresses the before mentioned points in the present proceedings before the closure of the written procedure. The court reserves the right to either proceed under Rule 114 RoP in a further hearing, make orders under Rule 103, 334 (f), (g), (i), 104(a),(b) RoP during the Interim Procedure or to decide upon the newly addressed Threat Simulator software and ThreatARMOR in separated proceedings where further submissions may then be allowed if deemed necessary. 1. When assessing whether leave pursuant to R. 263 RoP is granted, the conflicting interests of the parties must be weighed, taking into account all the circumstances of the individual case. In the case at hand, one of these circumstances may be as to whether the new explicitly attacked embodiments have the same actual characteristics with regard to the features of the relevant patent claim as the attacked embodiments listed in the statement of claim and whether they will thus be covered by the operative part of a decision on the merits or not or if they qualify as distinct attacks. Even if there were relevant differences in the characteristics, it may be decisive whether such differences are only a matter of nuances or lead to a completely different product. Whether this is the case can only be assessed with certainty once the construction of the patent and the relevant facts of the case had been established by the panel. The same holds true for the question whether or not the new submissions were solely triggered by the scope of the prior use rights defence in the SoD. 2. When postponing the final decision on an application pursuant to R. 263 RoP, the interests of the parties have to be considered, taking into account all the circumstances of the individual case. In the proceedings at hand, Defendants are not unduly hindered in their possibility to defend themselves by the postponement. The time limit for the Rejoinder had already been extended to allow for more time to respond to the new submissions. Even if a moderated further extension should be deemed necessary and applied for as the defendants only now have clarity to what they will have to respond in the Rejoinder, the oral hearing date (9/10 October 2025) leaves room for such moderate extension. ORDER The final decision on whether or not to grant leave to amend the case according to Claimant’s application of 13 March 2025 and whether such leave is necessary is postponed until the oral hearing at the latest. Issued in Mannheim on 14 May 2025 NAME AND SIGNATURE Tochtermann Presiding judge and judge-rapporteur ORDER DETAILS Order no. ORD_16635/2025 in ACTION NUMBER: ACT_41285/2024 UPC number: UPC_CFI_414/2024 Action type: Infringement Action Related proceeding no. Application No.: 15688/2025 Application Type: Generic procedural Application

Key Holdings

  • Decision on amendment of case deferred to oral hearing.
  • Extension granted for rejoinder.
  • Dilemma between front-loading and responding to new defences (prior use).

Tags

  • Amendment of Claim
  • Case Management
  • Front-loaded Proceedings
  • Oral Hearing

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