UPC_CFI_583/2024 – ArcelorMittal v Xpeng

Expert Commentary

Applicant: Posco Application for inspection Background Ongoing proceedings. Posco (a third party) seeks access to a submission and evidence (R. 262.1 RoP). Judge-Rapporteur Decision 1. Both the claimant and the applicant are active in steel manufacturing for the automotive industry. 2. The applicant has filed an opposition at the EPO against the patent invoked in this case. 3. The applicant is interested in claim construction in these infringement proceedings, as it could be relevant to the (accelerated) opposition proceedings currently before the Board of Appeal. 4. The JR grants access to the claimant’s Statement of Claim. Comment A logical decision in line with the Court of Appeal’s guidelines in UPC_CoA_335/2023 https://www.unified-patent-court.org/sites/default/files/upc_documents/576355-2023%20AnordnungEN.final_.pdf and UPC_CoA_1/2024 https://www.unified-patent-court.org/sites/default/files/files/api_order/Anordnung%20SES%20Hanshow%20fin%20EN.pdf .

Full Decision Text

1 Paris Local Division UPC_CFI_583/2024 Procedural Order of the Court of First Instance, delivered on 19/02/2025 APPLICANT POSCO (Goedong-dong) 6261, Donghaean-ro, Nam-gu Pohang-si, Gyeongsangbuk-do - 37859 - Seoul - KR Represented by Jasper Werhahn PARTIES IN PROCEEDINGS CLAIMANT ArcelorMittal 24-26 Boulevard d'Avranches 1160 Luxembourg, Luxembourg Represented by Camille Pecnard, Cabinet Lavoix DEFENDANTS XPENG INC No. 8 Songgang Road, Changxing Street, Cencun, Tianhe District 510640 - Guangzhou, Guangdong – Chine XPENG EUROPEAN HOLDING BV Hoogoorddreef 11 1101BA - Amsterdam – Pays-Bas XPENG MOTORS FRANCE SARL 92 route de la reine 92100 - Boulogne-Billancourt – France JEAN LAIN AUTOMOBILES SAS 2 ZI des Landiers Ouest, 158 rue des épinettes 73290 - La Motte-Servolex – France E-LAIN SAS ZI des Landiers Ouest, 158 rue des épinettes 73290 - La Motte-Servolex – France XPENG MOTORS (Netherlands) BV Hoogoorddreef 11 1101BA - Amsterdam – Pays-Bas ASIAN MOTORS SALES BV Plesmanstraat 36 3905KZ - Veenendaal – Pays-Bas XPENG MOTORS (Germany) GmbH Frankfurter Ring 81 80807 - München – Allemagne MOLL GmbH & Co.KG Am Seestern 3a 40547 - Düsseldorf – Allemagne Autohaus Adelbert Moll GmbH & Co. KG Rather Straße 78-80 40476 - Düsseldorf - Allemagne XPENG MOTORS (Sweden) AB Pyramidvägen 7 169 56 Solna - Stockholm – Suède BILIA AB Box 9003 40091 - Göteborg – Suède XPENG MOTORS (Danemark) ApS Lodbrogsvej 4A 3400 - Hillerød – Danemark EJNER HESSEL A/S Jyllandsvej 4 7330 - Brande – Danemark 3 HEDIN AUTOMOTIVE LUXEMBOURG S.A. 12, rue Guillaume Schneider 2522 - Luxembourg – Luxembourg Represented by David Mulder, Taylor Wessing N.V. XPENG MOTORS (Belgium) Sarl De Kleetlaan 4 1831 - Machelen (Brab.) – Belgique HEDIN AUTOMOTIVE SA Industriepark Noord 2 9100 - Sint-Niklaas – Belgique Represented by Christian Dekoninck, Taylor Wessing N.V. PATENT AT ISSUE: Patent Number Proprietor(s) EP3290200 ArcelorMittal DECIDING JUDGE Presiding judge and Judge-rapporteur Camille Lignieres LANGUAGE OF PROCEEDINGS: English ORDER An infringement acƟon based on the patent EP 3 290 200 (“EP’200”) was iniƟated by ArcelorMiƩal (“the Claimant”) against several companies that are part of the XPENG group ("the Defendants"). On 23 January 2025, POSCO (“the Applicant”), a member of the public, filed an applicaƟon via CMS pursuant to Rule262-1 b) RoP for inspecƟon of the wriƩen pleadings and evidence lodged at the Court in the main proceedings (“the ApplicaƟon”). Following a Preliminary Order issued by the Judge-Rapporteur on 28 January 2025 the parƟes pro- vided their comments to the Court on 4 February 2025. In support of its request, the Applicant states that: 4 - the Claimant and the Applicant are both acƟve in the field of steel manufacturing, with a parƟc- ular focus on steel manufacturing for the automoƟve industry and both parƟes are currently en- gaged in several opposiƟon proceedings before the European Patent Office (EPO). - the Applicant has filed an opposiƟon against the claimant’s European Patent EP 3 290 200, which is the patent at issue in the infringement proceedings ACT_54607/2024. - the opposiƟon proceedings regarding EP 3 290 200 are now accelerated ex officio at the appeal stage because of the parallel infringement proceedings before the UPC and that the validity discus- sion of the patent at issue in the pending opposiƟon appeal proceedings before the EPO is depend- ent on the interpretaƟon of mulƟple claim features. The Applicant requires access to wriƩen pleadings and evidence of the infringement case to ana- lyse the Claimant’s claim interpretaƟon in the pending infringement proceedings before the UPC, which is mandatory pursuant to Rule 13.1n RoP, and which is immediately relevant for the validity discussion in the parallel opposiƟon appeal case before the EP’200. In their comments in reply to the present ApplicaƟon, the Defendants (XPENG’s companies) leave the decision on whether to allow or not POSCO’s access request for the Court’s discreƟon. ARCELORMITTAL requests that POSCO’s applicaƟon to access the register be refused. The Claimant contests the ApplicaƟon for the following reasons: 1) a lack of direct interest in the subject maƩer of the proceedings, arguing that: - the main acƟon at the UPC level is an infringement acƟon, - for now, there is no discussion on the validity of EP’200, -contrary to POSCO’s allegaƟons, there is thus no discussion about the interpretaƟon of the fea- tures of EP’200, -the wriƩen pleadings and the evidence solely relate to a product considered by ARCELORMITTAL as infringing EP’200, not to the validity of the patent. 2) a lack of a “reasoned request”, arguing that, in the case at hand, the procedure has not ended, and that POSCO has no direct interest in the subject maƩer of the proceedings. In the Claimant’s view, the Court should weigh in favour of refusing access to the register, taking into account the following: - The interest of the parƟes, i.e. the protecƟon of the confidenƟality of the statement of claims and the documents cited in support that contain laboratory analysis, technical documents, bailiff re- ports etc.; all related to the demonstraƟon of the infringement). - The interest of JusƟce, i.e. the efficiency of the proceedings that will be slowed down if the re- quest is granted, and terminaƟng the proceedings will take more Ɵme. -The interest of the public, i.e. access to documents in an infringement acƟon is not in the public’s interest. - The interest of public order, i.e. the integrity of the proceedings and dispuƟng abusive claims that serve no legiƟmate purpose but only delay proceedings. 5 Legal Framework ArƟcle 45 UPCA – Public proceedings: The proceedings shall be open to the public unless the Court decides to make them confidenƟal, to the extent necessary, in the interest of one of the parƟes or other affected persons, or in the general interest of jusƟce or public order. Rule 262 – Public access to the register: 1. Without prejudice to ArƟcles 58 and 60(1) of the Agreement and subject to Rules 190.1, 194.5, 196.1, 197.4, 199.1, 207.7, 209.4, 315.2 and 365.2, and following, where applicable, redacƟon of personal data within the meaning of RegulaƟon (EU) 2016/679 and confidenƟal informaƟon ac- cording to paragraph 2 (b) wriƩen pleadings and evidence, lodged at the Court and recorded by the Registry shall be avail- able to the public upon reasoned request to the Registry; the decision is taken by the judge-rappor- teur aŌer consulƟng the parƟes. Grounds A reasoned request is a concrete, verifiable and legiƟmate reason. The UPC Munich Central Division has rightly stated: “To ensure the proper balance of interests, the applicant of a R.262.1(b) request must set out the reasons why he has an interest to access. It follows that ‘reasoned request’ means a request that not only specify the scope but also the purpose and why the informaƟon requested is necessary to that aim”. (UPC_CFI_1/2023 – 20/09/23 – CD Munich – Sanofi v Amgen) In assessing the applicaƟon based on R 262-1 RoP, the Judge-Rapporteur must balance the appli- cant's interest as explained in its applicaƟon against the principle of the integrity of the infringe- ment proceedings brought by the Claimant against its compeƟtor XPENG involving commercial and technical informaƟon that may fall within the scope of trade secrets. In the present applicaƟon, POSCO's request is clearly explained; it is made to pursue a procedural strategy in the context of the EPO's parallel proceedings, which deal solely with the validity of the patent as granted, which is the same as that on which the infringement acƟon before this Division is based. The Applicant referred to an order of the UPC Paris Central Division, which had been seized by an acƟon for revocaƟon, according to which the existence of opposiƟon proceedings before the EPO, in which the applicant was involved, made access to the documents legiƟmate. (CD Paris, ACT_n°571808/2023-UPC number: UPC_CFI_316/2023) ARCELORMITTAL has correctly noted in its wriƩen comments that the current acƟon is not a revo- caƟon acƟon but rather an infringement acƟon that is sƟll in its early stages. Only the Statement of Claim (SoC) has been filed, while the Statement of Defence (SoD), along with a potenƟal coun- terclaim for revocaƟon, has yet to be submiƩed. Therefore, there is currently no challenge to the validity of the patent, and no discussions on this maƩer have occurred between the parƟes. At this stage, no documents have been exchanged that would reveal the content of any debate regarding the validity of the patent—such as a counterclaim and the response to it, possibly including a re- quest for amendments to the patent. 6 However, the Applicant expresses interest in the explanaƟons provided by the Claimant in its State- ment of Claim regarding the interpretaƟon of the claims that underpin the infringement acƟon. The Court notes that the interpretaƟon of claims proposed by a party in an infringement acƟon should be consistent with the interpretaƟon used in a revocaƟon acƟon. This principle was high- lighted by the UPC Court of Appeal when establishing the standard for patent interpretaƟon (UPC_CoA_335/2023 and UPC_CoA_1/2024). The UPC Court of Appeal stated: “In applying these principles, the goal is to ensure adequate protecƟon for the patent holder while providing sufficient legal certainty for third parƟes. These principles for interpreƟng a patent claim are applicable to both the assessment of infringement and the validity of a European patent.” Consequently, the Applicant demonstrates a legiƟmate interest in having access to the statement of claim and the related exhibits, provided that these exhibits are not covered by a confidenƟality order, such as Exhibit 8, which is the subject of a confidenƟality order dated 18/02/2025 (Order nº ORD_8266/2025 in AcƟon Nº: ACT_54607/2024) and which, in any event, has no bearing on the scope of protecƟon defined by the applicant for infringement based on its patent EP’200. The other wriƩen pleadings, which relate to procedural maƩers (alignment of service dates and change of languages), do not concern the claim construcƟon of the patent in suit. Considering these elements, the Judge-rapporteur orders that: - POSCO is granted access to the following wriƩen pleadings and evidence submiƩed by the Claim- ant as currently contained in the CMS in acƟon UPC_ CFI_583/2024: -the statement of claim submiƩed by ARCELORMITTAL, -and the exhibits supporƟng the statement of claim, except for Exhibit 8, which is enƟrely protected by a confidenƟality order (Order nº ORD_8266/2025 in AcƟon Nº: ACT_54607/2024) - This order may be reviewed according to R. 333 RoP. Issued in Paris, on 19 February 2025. C. Lignieres, judge-rapporteur. ORDER DETAILS Order nº ORD_8329/2025 in Action Nº: ACT_54607/2024 UPC nº : UPC_CFI_583/2024 Action Type: Infringement Action Related proceeding n°: 3790/2025 Application Type: APPLICATION_ROP262_1_b

Key Holdings

• Third parties can be granted access to submissions and evidence (e.g., Statement of Claim) under R. 262.1 RoP.
• Access may be granted if the applicant demonstrates a legitimate interest, such as the relevance of claim construction to parallel EPO opposition proceedings.
• The decision aligns with established Court of Appeal guidelines on public access to court documents.

Tags

• Evidence
• Opposition Proceedings
• Public Access
• Rules of Procedure

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