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UPC – Avago v. Tesla – on standing to sue and requirements for order to produce evidence

24 Jun 2024

Michael Kobler

Bardehle Pagenberg

Avago Technologies International Sales Pte. Limited v Tesla Germany GmbH et al. (UPC, Local Division of Hamburg) – standing to sue pursuant to Rule 8.5 RoP and requirements for order to produce evidence pursuant to Rule 190.1 RoP

Avago Technologies International Sales Pte. Limited (hereinafter: “Avago”) filed an infringement action based on EP 1 612 910 (“EP ‘910”) against Tesla Germany GmbH and Tesla Manufacturing Brandenburg SE (together: “Tesla Germany”) before the Hamburg Local Division of the Unified Patent Court in 2023. From the facts of the case, it becomes clear that EP ‘910 had been assigned by another company (“X”, presumably Broadcom Corporation) to Avago Technologies General IP (Singapore) Pte. Ltd. in March 2017.

In order to show that they had standing to sue, Plaintiff Avago provided two expert opinions with their complaint, referring to a “Power of Attorney” by Avago and a “Power of Attorney” by X showing that the respective signatory was authorized to sign the assignment agreement re. EP ‘910; upon Tesla Germany’s request, Avago even voluntarily provided both “Power of Attorney” documents.

Subsequently, Tesla Germany requested that the Court orders further documents to be produced pursuant to Rule 190.1 RoP, which were referenced in the “Power of Attorney” documents, namely (1.) a resolution by Avago’s Board of Directors granting the authority to act on Avago’s behalf and (2.) a further resolution authorizing the assignment of EP ‘910, and corresponding resolutions (3. and 4.) by X’s Board of Directors.

By order of June 4, 2024, the Local Division of Hamburg, through Judge-rapporteur Dr. Schilling, ordered the production of three of the four requested documents (1., 3., and 4.).

The written reasoning of the order first addresses the question of “standing to sue” for asserting annex claims based on a European Patent. The Court assumes that, similar to German law (cf. the FCJ’s decision in the “Fräsverfahren” case, FCJ GRUR 2013, 713, marginal no.s 57 et seq.) there is a rebuttable presumption that the “person shown in each national patent register and the European Patent Register kept by the European Patent Office is the person entitled to be registered” and, thus, “shall be treated as the proprietor” equaling having standing to sue in UPC proceedings based on European Patents (Rule 8.5, lit.(c) and (a) RoP). In this course, reference is made to the Court of Appeal’s decision of February 26, 2024, regarding European patents with unitary effect (UPC_CoA 335/2023).

The Court finds that, in order to be able to dispute standing to sue, Defendants may request pursuant to Rule 190.1 RoP that Plaintiff is ordered to produce specific documents that Plaintiff themselves have made reference to, since Defendants have no access to the Plaintiff’s internal decision-making process. However, there still has to be a potential relevance to the question at hand – therefore, the Court denied Tesla Germany’s request regarding document 2., because according to Avago’s “Power of Attorney”, the authorization by Avago’s Board of Directors was only required for the assignment of “Patent IP owned” by Avago, but not for being assigned patents.

The decision by the Hamburg Local Division can be accessed here (only in German language).

Take aways:
In accordance with previous case law, the Court applies a broader interpretation of Rule 190.1 RoP, and in particular the term “in support of its claims”, including ob-jections by the Defendant, such as disputing standing to sue.

Furthermore, while it is in principle necessary for such order to show that the re-quired evidence would substantiate such claims (e.g. lack of standing to sue), the Court takes into consideration to what extent both sides have access to the required evidence and may order a Party referring to specific internal documents to produce them.

With respect to standing to sue, it will be interesting so see which hurdles have to be taken to actually rebut the presumption in Rule 8.5 lit.(c) RoP.