UPC_CFI_566/2024; 39/2025 – Syngenta v Sumi Agro

Expert Commentary

International jurisdiction Request The claimant applies to amend their claim and to include Poland, the UK, and the Czech Republic. JR The JR allows the request as Syngenta could not have made these requests before the decision by the Court of Justice of the EU (”CJEU”) in BSH v Electrolux and because Sumi Agro will have enough time to react in the written proceedings. The JR sets the dates for the interim conference and the oral hearing and amends the time schedule for further submissions. Comment 1. Although already in 2022 during the training of the judges Pierre Veron and I said that the UPC had jurisdiction for such cases and claimants (such as Fuji – see Fuji v. Kodak –) already had included non-UPC countries in their Statement of Claim, I can only applaud the fact that now after CJEU BSH v Electrolux there seems to be a realization that at least for companies established in the UPC-area, the UPC is the Court to go to for dealing with European Patents for all countries where the European patent has been validated. 2. As in the majority of cases against defendants established in the UPC also infringement and validity in the UPC has to be dealt with, the task of the Court to deal with these non-UPC countries is in general not difficult. All these countries are signatories of the European Patent Convention (EPC), which means (see Art. 2(2) EPC) that infringement (Art. 69 and the Protocol) and validity (Art. 138) also govern infringement and validity in these countries. Except if a defendant is able to prove that the case law in such a non-UPC country is different from the UPC, the Court can give the same judgment for such countries as for the UPC. For EU countries (and because of comity, I would do the same for non-EU countries), I suggest giving (in case invalidity is raised) a conditional judgment that the patent is not held totally or partially invalid by a final decision of the competent (national) court. 3. It remains to be seen if CJEU BSH v Electrolux is also applicable to co-defendants. In my view, that question could certainly be answered positively for co-defendants who have their residence in the EU, as comity aspects do not play a role there. If I am right, then that would be an even stronger argument for EU countries that have not yet joined the UPC to do so, as this would mean that the UPC (as an example) could not only grant an injunction against UPC companies not to infringe in Spain but also grant such injunctions against Spanish companies sued as co-defendants in UPC proceedings. 4. Are there ways for third parties to avoid such wide jurisdiction for the UPC? Yes, there are, but they are complicated and expensive, and a clever claimant can neutralize them. It would require a much longer comment to discuss all that.

Full Decision Text

Order of the Court of First Instance of the Unified Patent Court Local Division Munich issued on 14 April 2025 CLAIMANT Syngenta Limited Jealott’s Hill International Research Centre, RG42 6EY, Bracknell, Berkshire – GB represented by: Benjamin Grzimek, Dr. Jörn Peters, Aylin Cremers (Fieldfisher) Prof. Dr. Aloys Hüttermann (Michalski, Hüttermann & Partner) Dr. Filip Alois J. De Corte, Dr. Christopher Andrews (Syngenta Crop Protection AG) DEFEFDANTS 1) Sumi Agro Limited, Bürgermeister-Neumeyr-Str. 7 - 85391 - Allershausen – DE 2) Sumi Agro Europe Limited, Bürgermeister-Neumeyr-Str. 7 - 85391 - Allershausen – DE represented by: Gareth Williams (Marks & Clerk) Johannes Heselberger, Dr. Axel B. Berger, Dr. Kerstin Galler (Bardehle Pagenberg) PATENT AT ISSUE European patent n° 2 152 073 PANEL/DIVISION Panel 1 of the Local Division Munich Local Division Munich UPC_CFI_566/2024 UPC_CFI_39/2025 UPC_CFI_566/2024 UPC_CFI_39/2025 2 DECIDING JUDGES This order has been issued by the presiding judge Dr. Matthias Zigann acting as judge- rapporteur, the legally qualified judges Dr. Walter Schober and Tobias Pichlmaier and the technically qualified judge Xavier Dorland-Galliot. LANGUAGE OF THE PROCEEDINGS English SUBJECT-MATTER OF THE PROCEEDINGS R. 37.2 RoP Application for leave to change claim or amend case/pleading (RoP263) - App_15498/2025 UPC_CFI_566/2024 REQUESTS Syngenta requests (brief dated 31 March 2025): The Claimant respectfully requests the court to grant leave to amend its claim to the territories of the Republic of Poland, the Czech Republic and the United Kingdom in accordance with R. 263 RoP. Sumi Agro requests (brief dated 14 April 2025): i. Syngenta’s application for leave to amend its claim is dismissed; and ii. Syngenta pay Sumi Agro’s costs of the application. In the alternative, if the Court is minded to grant permission to amend the claim: iii. Sumi Agro file submissions in response to the amended claim by 31 July 2025, at the same time as its Rejoinder on infringement, Reply to the Defence on revocation and Defence to the Application to amend the patent; iv. The deadline for Sumi Agro to file its Rejoinder on infringement, Reply to the Defence on revocation and Defence to the Application to amend the patent is extended by two months to 31 July 2025; and v. Leave to appeal is granted. ARGUMENTS OF THE PARTIES Syngenta argues that that it has only been able to request the Amendment at this stage following the decision of the European Court of Justice in BSH Hausgeräte GmbH v. Electrolux UPC_CFI_566/2024 UPC_CFI_39/2025 3 AB (C-3999/22), as it was “the general opinion that this Court was not competent to hear cases concerning the infringement of a Polish or Czech or UK part of the patent-in-suit” and that the “claimant therefore would very likely have had to bear the costs for a dismissal of the complaint for these three countries”. Sumi Agro argues that Syngenta could have made the amendment with reasonable diligence when it started the proceedings in September 2024. The BSH decision did not break new ground with regard to the jurisdiction of national courts or the UPC to consider questions of infringement of foreign patents and there was nothing to preclude Syngenta from including the amendment in its original Statement of Claim prior to the decision, as litigants in other UPC cases did. Notably, the Advocate General in the BSH case issued opinions in February and September 2024 which largely foreshadowed the BSH decision. GROUNDS FOR THE ORDER On R. 37.2 RoP: Both parties requested the Court to hear both the infringement action and the counterclaim for revocation. In the absence of any good reason to the contrary, the Panel decides to hear both. On R. 263 RoP: The amendment in question could not have been made earlier with reasonable diligence (R. 263.2.a RoP). As already held by the Court of Appeal, even if it was not impossible, Syngenta could not have been expected to include the non-UPC territories in the original statement of claim in the main proceedings according to the established case law following the ECJ decision in GAT v Luk (C-4/03) (UPC_CoA_169/2025 APL_ 9191/2025, nr. 23). The panel is of the opinion that Syngenta was not obliged to include the territories in question already in the original statement of claim on the basis of the opinions of AG Emiliou, as these opinions are not binding on the Court of Justice of the European Union and the legal uncertainty resulting from this is a good reason not to base procedural decisions on opinions of the AG. As regards the adjustment of the timetable for the exchange of further written pleadings, the amendment will not unduly hinder Sumi Agro in the conduct of its case. The date for the interim conference has been set for 6 October 2025 and the date for the oral hearing has been set for 10 December 2025. Sumi Agrio has requested a two-month extension of the existing schedule. This will be granted. Leave to appeal is not granted as the Court of Appeal has already ruled on the issues relating to the amendments triggered by the recent decision of the ECJ. As indicated above, only a case-by-case application of these principles is required in this case. UPC_CFI_566/2024 UPC_CFI_39/2025 4 ORDER 1. The Local Division Munich will proceed with both, the infringement action and the counterclaim for revocation. 2. Parties as summoned to the interim conference on both via videoconference on 6 October 2025, 10.00 a.m., and the oral hearing in person on both on 10 December 2025, 9.00 a.m., Denisstraße 3 in Munich. 3. Syngenta’s application for leave to amend its claim is granted. 4. The timetable for the exchange of further written submissions is adjusted as follows: a. Sumi Agro 31 July 2025 b. Syngenta 01.09.2025 c. Sumi Agro 01.10.2025 5. Sumi Agro is to file submissions in response to the amended claim by 31 July 2025, at the same time as its Rejoinder on infringement, Reply to the Defence on revocation and Defence to the Application to amend the patent. 6. Parties are invited to suggest topics for the interim conference by 1 October 2025. 7. The written procedure will be closed on 1 October 2025. INFORMATION ABOUT ORAL HEARING HELD IN COURT The oral hearing shall be open to the public unless the Court decides to make it, to the extent necessary, confidential in the interests of one or both parties or third parties or in the general interest of justice or public order (R. 115 RoP). INFORMATION ABOUT AUDIO RECORDING The oral hearing shall be audio recorded. The recording shall be made available at the premises of the Court to the parties or their representatives after the oral hearing (R. 115 RoP). INFORMATION ABOUT ABSENCE OR DELAY OF A REPRESENTATIVE A decision by default may be given, upon request, against a party that was duly summoned but fails to appear at the oral hearing (R. 355.1 (b) RoP. INFORMATION ABOUT DECISION BY DEFAULT Should a party fail to comply with the present Order within the time period specified, a decision by default may be given in accordance with R. 355 RoP (R. 103.1, last subparagraph and .2 RoP). UPC_CFI_566/2024 UPC_CFI_39/2025 5 INFORMATION ABOUT APPEAL IN CASE OF AN ORDER FALLING UNDER ART. 73(2)(B) UPCA The present order may either - be the subject of an appeal by any party which has been unsuccessful, in whole or in part, in its submissions together with the appeal against the final decision of the Court of First Instance in the main proceedings, or - be appealed by any party which has been unsuccessful, in whole or in part, in its submissions at the Court of Appeal with the leave of the Court of First Instance within 15 days of service of the Court of First Instance’s decision to that effect (Art. 73(2)(b) UPCA, R. 220.2, 224.1(b) RoP) DETAILS OF THE ORDER Order no. ORD_16126/2025 in ACTION NUMBER: ACT_53813/2024 UPC number: UPC_CFI_566/2024 Action type: Infringement Action Related proceeding no. Application No.: 15498/2025 Application Type: Application for leave to change claim or amend case/pleading (RoP263) Done in Munich on 14 April 2025 Dr. Zigann Presiding Judge Dr. Schober Legally Qualified Judge Pichlmaier Legally Qualified Judge Dorland-Galliot Technically Qualified Judge

Key Holdings

• Claim amendment to include non-UPC countries allowed.
• Delay justified by recent CJEU BSH v Electrolux decision.
• Jurisdiction extends to non-UPC EPC countries for UPC-domiciled defendants.

Tags

• Amendment of Claim
• Cross-Border
• Jurisdiction
• Non-UPC States

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