UPC_CoA_5/2025; 237/2025; 7/2025 – Nicoventures v NJOY/Juul

Expert Commentary

Access to documents Background NJOY filed infringement proceedings against Juul. The case is currently pending before the Court of Appeal, with NJOY as the appellant and Juul as the respondent. Nicoventures requests access to all written pleadings and evidence. In its request, Nicoventures wants: a. certain specific documents, b. all further written pleadings or evidence, and c. all written pleadings and evidence in the CMS when the order is granted. Nicoventures wants the documents because it is opposing the same patent in proceedings before the Board of Appeal. NJOY argues that Nicoventures cannot get more than what is currently on file. The JR 1. The JR refers to UPC_CoA 404/2023 (Ocado), which indicates that Nicoventures has a specific interest in this case. 2. If the request also covers documents filed after the request is made but before a decision on access is made and the other party has commented on them then these documents are included in the granted request. 3. The unspecified request under (c) is not allowed, as it would require the Court to search the CMS, and the parties would not know on what specific request to comment. 4. The Court can, on its own motion and in the general interest, impose certain conditions. 5. The request is granted for the specified documents, redacted for personal data, on the condition that as long as the appeal proceedings are not terminated, the documents cannot be filed in other proceedings (such before the Boards of Appeal of the EPO), although mentioning the content and source is permitted. Comment 1. This all makes practical sense, although I do not see why such documents could not be filed in another jurisdiction (Integrity of the Court of Appeal proceedings? Copyright infringement of the work of the party (representative) who filed the pleading?). Anyway, a good attorney or patent attorney likely wouldn't file the documents directly but would instead use the arguments and prior art (if relevant) in the foreign court. 2. Would I have followed Nicoventures' complicated (and expensive) path? No. I would have called counsel for Juul and explained that it would be in their client's best interest if the patent were revoked by the Board of Appeal (or, in fact, stayed revoked, as the Opposition Division had already revoked it). I would then ask if they could send me all relevant pleadings and evidence in their possession to help achieve this. 3. As long as pleadings and evidence are not covered by a confidentiality regime nothing would prevent, in my opinion, a party to divulge the contents of such pleadings and evidence submitted by the other party. Am I wrong and implies the fact that the public has to ask access, that I am not allowed to divulge the content of the pleadings of the other party? In my own (not so liberal?) country the public has no access to pleadings (except the Statement of Claim in invalidity proceedings) but I would have no problem to help in a similar situation Nicoventures.

Full Decision Text

1 Decision of the Court of Appeal of the Unified Patent Court issued on 25 April 2025 request for access to written pleadings and evidence (R. 262.1 (b) RoP) HEADNOTES: - Written pleadings or evidence that were not yet in the casefile at the time when the request for access was made, but were added to the casefile before a party commented on the request, can be covered by a decision granting access, provided that the request made clear that such documents were encompassed. This reduces the need for further separate requests, while ensuring that the parties are consulted. The parties can comment on what is in the casefile at the time when they submit their comments. - By contrast, blanket requests for access to written pleadings or evidence that may be added to the casefile after comments, or after the decision granting or denying access has been issued, are not admissible. The member of the public will have to make a new request for access to such documents. - A request for access to written pleadings or evidence, insofar as such documents are not explicitly mentioned by the member of the public, although the request could potentially be understood to encompass unspecified documents in related proceedings, is not admissible. - Immediate access to written pleadings and evidence has been granted based on a reasoned request by a member of the public who is party to concrete legal proceedings concerning the validity of the patent at issue, with a stated direct interest in the said validity. - The Court may, for the purpose of appropriate protection of the integrity of proceedings, impose certain conditions on granting access. Since this is a matter of the general interest, it can be done on the Court’s own motion (see CoA, 10 April 2024, UPC_CoA_404/2023, APL_584498/2023, Ocado, at para 54). - The granting of immediate access to written pleadings or evidence has been accompanied by the condition that the member of the public is not allowed to file the written pleadings in question, or parts thereof, with other courts or judicial instances such as the EPO Boards of Appeal, or distribute them elsewhere, until the present appeal has been adjudicated or UPC Court of Appeal UPC_CoA_5/2025 APL_289/2025 App_13365/2025 2 otherwise closed. This does not prevent the member of the public from informing itself of the arguments brought forward in the case before the Court, including prior art, and if it chooses to, use the same arguments or prior art before the Boards of Appeal or elsewhere to support its own cases, or inform the Boards of Appeal that the arguments or prior art have been brought forward in the UPC proceedings. KEYWORDS: Access to written pleadings and evidence, admissibility, immediate access, imposition of conditions for access APPLICANT Nicoventures Trading Limited, London, UK represented by: Samuel Keyes (D Young & Co LLP, London, UK) APPELLANT ( AND D EFENDANT BEFORE THE COURT OF FIRST INSTANCE ) Juul Labs International, Inc., San Francisco, USA (hereinafter Juul Labs) represented by: European Patent attorney Bernhard Thum, Thum & Partner, Munich, Germany, and by other representatives from that firm, as well as by representatives from Bardehle Pagenberg, Munich, Germany R ESPONDENT ( AND CLAIMANT BEFORE THE COURT OF FIRST INSTANCE ) NJOY Netherlands B.V., Amsterdam, The Netherlands (hereinafter NJOY) represented by: attorney-at-law Dr Henrik Holzapfel, McDermott Will & Emery, Düsseldorf, Germany P ATENT AT ISSUE EP 3 498 115 P ANEL AND D ECIDING JUDGE Panel 2 This order has been adopted by Ingeborg Simonsson, legally qualified judge and judge-rapporteur IMPUGNED O RDER OF THE COURT OF FIRST INSTANCE Central Division Paris, 5 November 2024, revocation action ACT_571669/2023, UPC_CFI_309/2023 L ANGUAGE OF THE P ROCEEDINGS English 3 T HE REQUEST 1. Nicoventures has requested immediate access to all written pleadings and evidence in APL_289/2025 submitted by Juul Labs and NJOY. The request is for at least the following written pleadings and evidence (the documents are stated as named by the party submitting them): - UPC CFI 309_2023 - ACT_571669_2023 - EP 115 - Statement of appeal - Appeal pleading – English - PR_APL_289_2025 - UPC CoA 5_2025 - Formal response to the request for amendments -Formal response to the request for amendments - English To the extent it is different from the above documents, also: - PR_APL_289_2025 - UPC CoA 5_2025 - EP 115 - Corrected Statement of appeal of 4 January 2025 - Amended pleading - English The request encompasses the specific documents listed above, and any additional documentation not listed but constituting written pleadings or evidence submitted by either NJOY or Juul Labs. 2. Moreover, Nicoventures has requested immediate access to all written pleadings and evidence submitted by both parties to APL_289/2025, as are contained in the CMS at the point in time at which the order on the request is granted. S UBMISSIONS OF THE PARTIES Nicoventures 3. Nicoventures has submitted that it is a party to concrete legal proceedings concerning the validity of the patent at issue, with a direct interest in the said validity. This is because it has opposed the grant of the patent before the EPO, resulting in revocation by the opposition division in a decision dated 4 March 2024 and appeal proceedings are currently pending before the EPO Boards of Appeal. The reason for requesting access to the written pleadings and evidence is to be able to submit these, at the earliest opportunity as required, in respect of the parallel EPO appeal proceedings against the same patent. Nicoventures has finally requested an opportunity to comment before any final order is issued, should either party object to its application being granted in any way. Juul Labs and NJOY 4. Juul Labs and NJOY have been consulted on Nicoventures’ request for access to written pleadings and evidence with reference to R. 262.1(b) RoP. 5. Juul Labs has requested that the request be rejected. Juul Labs has submitted that R. 262.1(b) RoP only relates to written pleadings and evidence that was lodged and recorded and thus not to pleadings and evidence which might be lodged and recorded in the future. Furthermore, it is to be expected or - at least - there remains a substantial likelihood that Nicoventures copy-pastes passages from the written pleadings and evidence lodged in the present proceedings before the Court of Appeal and reproduces these passages in the parallel EPO opposition appeal proceedings as quotations in the briefs filed with the EPO. Those briefs automatically become open to the public due to their unconditional publication in the online register of the EPO. According to Juul Labs, this would clearly contravene the interests of the parties to the present UPC proceedings and undermines the principle of the UPCA to keep the pleadings and evidence of the parties confidential. 4 6. NJOY has objected to the application as far as it goes beyond of what is currently on file, stating that the application is excessively broad and has no legal basis as far as it concerns future materials that are not on file and not even known yet and could include documents on which the Court has not yet heard the parties as to their confidentiality interests. R EASONS 7. R.262.1(b) RoP provides that, without prejudice to several articles and rules that provide for the protection of confidential information mentioned in R.262.1 RoP, the redaction of personal data pursuant to Regulation (EU) 2016/679 (hereinafter referred to as protection of personal data) and redaction of confidential information according to R.262.2 RoP, written pleadings and evidence, lodged at the Court and recorded in the Registry, shall be available to the public upon reasoned request to the Registry; the decision is taken by the judge-rapporteur after consulting the parties. 8. The following principles apply insofar as is relevant here (see CoA, 10 April 2024, UPC_CoA_404/2023, APL_584498/2023, Ocado): - When a request for access is made, the interest of the member of the public to obtain access must be balanced against the general interests in Art. 45 of the Agreement on a Unified Patent Court; protection of confidential information and personal data, and of justice, including the protection of the integrity of proceedings, and public order. - These interests are usually properly balanced and duly weighed against each other, if access to written pleadings and evidence is given to a member of the public after the proceedings have come to an end by a decision of the court. - A member of the public may also have a more specific interest in the written pleadings and evidence of a particular case, than the general interest mentioned above. This is in particular so where he has a direct interest in the subject-matter of the proceedings, such as the validity of a patent that he is also concerned with as a competitor or licensee. When a member of the public has such a direct legitimate interest in the subject-matter of certain proceedings, this interest does not only arise after the proceedings have come to an end but may very well be immediately present. 9. Written pleadings or evidence that were not yet in the casefile at the time when the request for access was made, but were added to the casefile before a party commented on the request, can be covered by a decision granting access, provided that the request made clear that such documents were encompassed. This reduces the need for further separate requests, while ensuring that the parties are consulted. The parties can comment on what is in the casefile at the time when they submit their comments. 10. By contrast, blanket requests for written pleadings or evidence that may be added to the casefile after comments, or after the decision granting or denying access has been issued, are not admissible. The member of the public will have to make a new request for access to such documents. 5 11. When Juul Labs and NJOY submitted their comments, on 31 March 2025, the Statement of grounds of appeal together with an exhibit, TP-15, had already been lodged. This means that the request for those documents is admissible. 12. As regards Nicoventures’ request for any additional documentation not listed but constituting written pleadings or evidence submitted by either NJOY or Juul Labs, it is not clear what Nicoventures means by “not listed”. If this request is to be understood as documents in related proceedings, it would put a great strain on the Court if such requests were admissible, since it would require searching in the extended casefile for documents that might be there, but have not been explicitly requested by the member of the public. Similarly, the parties would be hard pressed to know what to comment on. The request is not admissible in this part. 13. Insofar as Nicoventures’ request is admissible, what it has submitted about its interest in access fulfils the criteria for immediate access. 14. What Juul Labs has submitted does not lead to any other conclusion. However, Juul Labs has made a valid point about the risk that Nicoventures would, for example, include passages from the written pleadings and evidence lodged in the present proceedings before the Court of Appeal and reproduce these exact passages in the parallel proceedings before the Boards of Appeal. This risk can however be mitigated. The Court may, for the purpose of appropriate protection of the integrity of proceedings, impose certain conditions on granting access. Since this is a matter of the general interest, it can be done on the Court’s own motion (see Ocado, at para 54). 15. In the present case, it is appropriate that the granting of access is accompanied by the condition that Nicoventures is not allowed to file the written pleadings in question, or parts thereof, with other courts or judicial instances such as the EPO Boards of Appeal, or distribute them elsewhere, until the present appeal has been adjudicated or otherwise closed. This does not prevent Nicoventures from informing itself of the arguments brought forward in the case before the Court of Appeal, including prior art, and if it chooses to, use the same arguments or prior art before the Boards of Appeal or elsewhere to support its own cases, or inform the Boards of Appeal that the arguments or prior art have been brought forward in the UPC proceedings. It will however restrict Nicoventures from filing the written pleadings (or parts of them) with other courts or judicial instances. 16. There is no reason to allow Nicoventures to comment on Juul Labs’ and NJOY’s submissions. 17. The documents shall be redacted of personal data prior to making them available to Nicoventures. The Registry shall see to this. There is no information available to the effect that there is any confidential information in the documents. No R. 262.2 RoP requests have been made by either of the parties in respect of the documents that Nicoventures requests access to. 6 D ECISION 1. The following written pleadings in the casefile of the Court of Appeal, UPC_CoA_5/2025, shall be made available to Nicoventures after redaction of personal data: - UPC CFI 309_2023 - ACT_571669_2023 - EP 115 - Statement of appeal - Appeal pleading – English - PR_APL_289_2025 - UPC CoA 5_2025 - Formal response to the request for amendments - Formal response to the request for amendments – English - PR_APL_289_2025 - UPC CoA 5_2025 - EP 115 - Corrected Statement of appeal of 4 January 2025 - Amended pleading – English - PR_APL_289_2025 - UPC CoA 5_2025 - EP 115 - Statement of Grounds for appeal_TuP_signed.pdf - Exhibit TP-15 - EP 115 - Additional Auxiliary Requests XII to XX.pdf 2. Access pursuant to paragraph 1 above is granted with the following conditions: Nicoventures shall not be allowed to file the written pleadings, or parts thereof, with other courts or judicial instances such as the EPO Boards of Appeal, or distribute them elsewhere, until the present appeal has been adjudicated or otherwise closed. 3. The remainder of Nicoventures’ request is dismissed. 4. This decision closes the application. Issued on 25 April 2025 Ingeborg Simonsson, legally qualified judge and judge-rapporteur

Key Holdings

• Access to specified documents granted to third party.
• Access to unspecified future documents denied.
• Documents cannot be filed in other proceedings (e.g., EPO) while appeal is pending.

Tags

• Access to Documents
• Public Access
• Third Party

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