UPC_CFI_837/2024; UPC_CFI_349/2025; UPC_CFI_394/2025 – American Wave v Surftown
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Denied
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Review order JR Facts 1. The defendant requested an extension of two months for their Rejoinder, arguing that the claimant had in fact two months extra for its Reply due to the confidentiality procedure. 2. The JR refused. 3. The defendant sought revision of the JR’s refusal. The Court 1. The only reason cited for the extension of time was that the claimant was given more time to reply due to the confidentiality procedure. 2. These are not compelling reasons for an extension of time. 3. It would encourage parties to file confidentiality requests, if this led to longer time periods for their submissions later on. 4. The request was dismissed. Comment 1. Again a waste of the Court’s time and the client’s money. The defendants failed to even state why they needed more time! 2. Revisions are (almost) never successful, and if the rules are revised, the possibility of revision should be removed, since in the exceptional case that the JR is wrong, a discretionary review by the Court of Appeal remains possible.
Full Decision Text
Düsseldorf Local Division UPC_CFI_837/2024 UPC_CFI_349/2025 UPC_CFI_394/2025 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 12 November 2025 concerning EP 2 728 089 B1 CLAIMANT: American Wave Machines, Inc., 224 South Cedros, Suite C, Solana Beach, CA 92075, United States of America represented by: Attorney-at-law Roland Küppers, LL.M., Taylor Wessing Part-GmbB, Benrather Straße 15, 40213 Düsseldorf, Ger- many Electronic address for service: r.kueppers@taylorwessing.com DEFENDANTS: 1. Surftown GmbH, Lilienthalstr. 12, 85399 Hallbergmoos, Germany 2. WhiteWater Era GmbH, Zielstattstraße 11, 81379 München, Germany 3. WhiteWater West Industries Ltd., 180-6651 Fraserwood PI, Richmond, BC, V6W 1J3, Canada 4. Endless Surf Ltd., 180-6651 Fraserwood PI, Richmond, BC, V6W 1J3, Canada Defendant 1. represented by: Attorney-at-law Dr Philipp Neuwald, Lorenz Seidler Gossel, Widenmayerstrasse 23, 80538 Munich, Germany Electronic address for service: neuwald@lsg.eu Defendant 2. – 4. represented by: Attorney-at-law Dr Tobias Wuttke, Bardehle Pagenberg, Prinzregentenplatz 7, 81675 Munich, Germany Electronic address for service: wuttke@bardehle.de PATENT IN SUIT: EUROPEAN PATENT NO. EP 2 728 089 B1 1 PANEL/DIVISION: Panel of the Düsseldorf Local Division DECIDING JUDGES: This order was issued by Presiding Judge Thomas, legally qualified Judge Dr Thom acting as judge- rapporteur and legally qualified judge Rinkinen. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: R. 333.1 RoP – Application for review case management order SUMMARY OF THE FACTS AND REQUESTS OF THE PARTIES: The Judge Rapporteur dismissed Defendants´ requests to extend the time period for lodging a Rejoinder to the Claimant’s Reply, a Reply to the Claimant’s Defence to the Counterclaim for Revocation and a Defence to the Claimant’s Application to amend the patent-in-suit until 8 February 2026 by Order of 4 November 2025. The Defendants are seeking a review of the order, mainly arguing that the Claimant factually had more than two additional months to prepare its Reply to the Statement of Defence and in particular their Defence to the Counterclaim for Revocation due to a delay based on the confidentiality procedures. Defendants state that it is not fair that the Claimant could prolong its deadline by raising unfounded objections against the confidential treatment of Defendants’ proprietary information, while Defendants would then have to reply within the statutory deadlines to submissions which were prepared within a disproportionate longer period. The Claimant responds by arguing that the Defendants fail to recognise that there must be compelling reasons for an extension of time periods, such as a hindrance or complication of legal defence. Such reasons do not arise from the fact that one party has more time than the other, but from the fact that the complication of legal defence requires that deadlines be extended, contrary to the time period regime of the Rules of Procedure. Based on that, the Defendants are not disadvantaged in any way. There is no comparable limitation of the Defendants' legal defence. Their situation corresponds to the standard case for which the time limit regime in the Rules of Procedure is conclusive. It is simply not clear why the Defendants should be granted an extension of the time limit when they are not subject to any restrictions in preparing their defence. Finally, the Claimant argues that the Defendants have filed an application for confidentiality, knowing full well that the decision on this matter could delay the proceedings, to the detriment of the Claimant seeking a decision. Granting an extension of time periods in the present case would result in Defendants being able to file applications for confidentiality in the future well knowing that any delay caused by their application would additionally grant them longer time periods for their further submissions. The Defendant´s approach would lead to parties having to decide whether to accept any requested confidentiality protection without objection in order to ensure that the proceedings proceed swiftly, or to accept that the other party would be granted time period extensions caused by the delay from arguing on confidentiality issues. According to the Claimant such a result cannot be considered desirable. 2 The Defendants request, the order of 4 November 2025 be set aside via panel review according to R. 333 RoP and the time period for Defendants to lodge a Rejoinder to the Claimant’s Reply, a Reply to the Claimant’s Defence to the Counterclaim for Revocation and Defence to the Claimant’s Application to amend the patent-in-suit be extended until 8 February 2026, in the alternative until 12 December 2025 and in the further alternative until 26 November 2025. GROUNDS FOR THE ORDER: The Defendants´ request is admissible, but unfounded. 1. The present request for review is admissible as the requirements of R. 333.2 and .3 RoP have been met. 2. However, the request is unfounded. a) First of all, Defendants´ statements concerning Claimant´s unfounded objections against the confidential treatment of Defendants´ information are irrelevant in the case at hand. The Judge- Rapporteur already dealt with these issues in the R. 262A RoP -requests which had been finally decided upon. b) Further, the order of the Court of Appeal (Order of 13 October 2023, UPC_CoA_320/2023, Sanofi ./. Amgen) cited by the Defendants deals with the situation where exhibits attached to the statement of claim were not available for the Defendants and therefore the time periods in R. 19.1 and R. 23 RoP have been extended accordingly. Having said that, Defendants´ first citation is out of context and therefore misleading. The reiterated reference to the order of the Court of Appeal in the application for review is in so far incomplete, as (already pointed out by the Judge- Rapporteur in her order) the fundamental principles of fairness and equity require the same or at least similar circumstances as a basis for a corresponding decision. So does the principle of equality of arms. The Defendants didn’t point out the reasons why they needed an extension of time neither in the request for extension nor in their panel review request. Their sole argument can be deduced to the fact that the Claimant had more time to file a brief than the Defendants. This argument is flawed. Beside the fact, that the Rules of Procedures accept different time periods for different briefs, their argument also ignores that the Claimant had put forward reasons for their time extension at the time. Claimant rightly points out that Defendants´ approach would lead to situations where parties would be able to file applications for confidentiality in the future well knowing that any delay caused by their application would additionally grant them longer time periods for their further submissions. This approach does not serve the purpose of procedural equality of arms, but would rather render the statutory time periods set by the law meaningless. Finally, it would contradict any effective case management and undermine the objective of the Rules of Procedures to reach a final decision as swiftly as possible. Defendants failed to name any hindrance or complication of 3 legal defence on the merit which could have reasoned their request for extension. Such reasons do not arise from the mere fact that one party has more time than the other. ORDER: The Defendants´ request is dismissed. Issued in Düsseldorf on 12 November 2025 Ronny Digital unterschrieben Presiding Judge Thomas von Ronny Thomas Thomas Datum: 2025.11.12 11:18:07 +01'00' Anna Digital unterschrieben von Legally Qualified Judge Dr Thom Bérénice Anna THOM Bérénice Dr. Dr. THOM Datum: 2025.11.12 12:08:21 +01'00' Allekirjoittaja Petri Olavi Rinkinen Legally Qualified Judge Rinkinen Päivämäärä: 11/12/25 12:41:01 PM 4
Key Holdings
- Defendant requested time extension for Rejoinder citing Claimant's extra time due to confidentiality.
- JR refused extension; Defendant sought revision.
- Court dismissed revision request: confidentiality delays are not compelling reasons for extension.
Tags
- Added Matter
- Confidentiality
- Rejoinder
- Review