Mala Technologies v. Nokia Technology GmbH, UPC Court of Appeal, Luxemburg, 21 June 2024, Case nos. APL_26889/2024, UPC_CoA_227/2024
This decision concerned what is required by a “reasoned request” under Rule 21.2 RoP. In particular, the Court of Appeal held that a statement that did not explain the reasons why first instance proceedings should be stayed was not a reasoned request.
Mala is the proprietor of EP 2 044 709 B1, which is valid only in Germany. A Nokia company, Nokia Solutions, had commenced revocation proceedings in the German Federal Patent Court, which upheld the patent in its entirety on 18 July 2023. Following receipt of the full written decision of the German Federal Patent Court, Nokia Technology filed a revocation action with the UPC CFI (Paris Central Division) on 15 December 2023. On 15 January 2024, Nokia Solutions filed an appeal against the decision of the German Federal Patent Court.
On 16 February 2024 Mala filed a preliminary objection in the UPC revocation action, requesting inter alia that the CFI decline its jurisdiction for the revocation action, alternatively that the CFI should stay the revocation proceedings until a final decision of the German Federal Patent Court had been issued in the German proceedings. Mala further requested that the CFI should stay the revocation proceedings before it pending a final decision on its preliminary objection.
The CFI rejected the preliminary objection and Mala’s associated requests. Mala appealed this decision and made various requests, including that a reference to the CJEU should be made, and further requested the UPC Court of Appeal should stay the first instance UPC revocation proceedings until a final decision on the preliminary objection had been made.
An interim conference was held on 17 June 2024, which led to the current decision of the judge-rapporteur. Mala’s request to stay the CFI revocation proceedings was held to be inadmissible: Rule 21.2 RoP permitted the Court of Appeal to stay proceedings pending an appeal of a rejection of a preliminary objection if the appellant makes “reasoned request”. However, Mala had failed to set out the reasons why a stay should be granted in its statement and grounds of appeal. This was not something that could be remedied by the arguments made by Mala at the interim conference. Nokia had the right to be able to prepare its defence and it was not appropriate for arguments to be raised at the interim conference for the first time. In any event, the arguments presented by Mala at the interim conference was rejected on their merits.
This decision highlights the importance of full compliance with the provisions of the rules of procedure.
The decision (in English) can be read here.
