On 20 November 2024, the Court of First Instance Düsseldorf Local Division (“LD”), denied Magna’s applications for rectification. The Court ruled that although the applications were admissible, they were unfounded.
The Orders concerned two applications for rectification based on R. 353 RoP filed by Magna in relation to the preliminary injunctions (“PI”) granted to Valeo on 31 October 2024 in respect of two European patents. The reasoning is the same in both Orders.
Background of the case
Valeo and Magna are both active in the automotive industry. Valeo is the proprietor of European patents EP 3 320 602 B1 (EP602) and EP 3 320 604 B1. It issued applications for PIs to stop Magna from making, offering, or using the alleged infringing products in Germany and France on 1 July 2024. On 2 August 2024, Valeo filed infringement actions against Magna at the Düsseldorf LD. It also filed national vindication (or entitlement) actions in France in respect of EP602 on 22 August 2024, and in respect of EP604 on on 13 September 2024, concerning the French, German and Slovak part of the patents. Magna filed revocation actions at the Paris Central Division on 4 October 2024.
On 31 October 2024 (to be read here and here), the Düsseldorf LD granted the requested PIs, but allowed Magna to fulfil existing obligations to BMW under strict conditions. The Orders mention that Magna had already implemented the challenged embodiments in five BMW models. On the basis of the balance of interests, the Court determined the scope of the existing delivery models, following supply obligations on 8 October 2024. In its Orders, the Court as allowed Magna to supply the X1, X2, 1 Series, 1 Series Active Tourer, and Mini Countryman to BMW as a carve out to the PIs.
On 6 November 2024, Magna filed applications for rectification, based on R. 353 of the RoP with the main point being that the Court had not included the “2 Series Gran Coupé” model to the list of exceptions (on which more later). The Düsseldorf LD granted Valeo two weeks to respond, which it did on 12 November 2024. Valeo, however, did serve bank guaranties for enforcement securities on 13 November 2024 to Magna, i.e. prior to a decision by the Dusseldorf LD regarding the applications for rectification.
For this reason, Magna sought a suspensive effect of the PIs under R. 223.4 RoP with the Court of Appeal. On 14 November 2024 (to be read here), Court of Appeal judge Rian Kalden found that ‘Magna’s interest in maintaining the status quo until the decision on the request for correction is rendered exceptionally outweighs Valeo’s interest in immediate enforcement’ and granted the suspensive effect until the Dusseldorf LD decided on the requests for rectification. The effect of the Orders were suspended until the Dusseldorf LD decided in the requests for rectification, insofar as the exception to the PIs issued therein does not include the “BMW 2 Series Gran Coupé” model. The Orders published on 20 November concern the requests for rectification.
Magna’s arguments for the requested rectifications
As mentioned, Magna filed an application for rectification based on R. 353 RoP. This Rule states that ‘The Court may, by way of order, of its own motion or on application by a party made within one month of service of the decision or order to be rectified, after hearing the parties, rectify clerical mistakes, errors in calculation and obvious slips in the decision or order.’ (emphasis added)
Magna requested three amendments to be made, of which the first is the most important. This concerned the argument that the “2 series Gran Coupé” should be added to the list of exceptions. According to Magna, this was an ‘obvious slip’ in the list. Magna argued that it was the ‘clear and unambiguous’ intention of the Court to ensure the full compliance with Magna’s current obligations with respect to BMW. Apparently, the 2 Series Gran Coupé was also subject to the supply obligations on 8 October 2024.
The second was to clarify that the national vindication action filed in France expands to the German and Slovak parts of the patent in suit as well. In its Orders, the Düsseldorf LD had only mentioned France. According to Magna, this was ‘erroneous and contrary to the Court’s intention’, since the vindication actions not only covered the French part, but the German and Slovak part of the patent as well, as could be seen in one of the Exhibits. The third is that in its Orders, the Court incorrectly states the parties did not agree on an obligation to update a list mentioned during the proceedings. This would follow from one of the Exhibits.
The Courts’ analysis: obvious slips and omissions
The Court started by determining that the applications for rectification are admissible, in particular because it was filed within the deadline pursuant to R. 353 RoP. However, when applying R. 353 RoP it finds that the applications are unfounded.
The Court repeated the explanation as was given in myStromer/Revolt Zycling (UPC_CFI_177/2023, Order dated 30 June 2023, under II.1.) , which is that ‘“Obvious slips” within the meaning of R. 353 RoP are all incorrect or incomplete statements of what the Court actually intended in the order or decision. In other words, the declaration of the Court’s intention in the decision or order must deviate from the intention that existed when the decision was made.’ It then applies these principles in a clear and concise, and perhaps somewhat stern, manner.
The Court stated that the model “2 Series Gran Coupé” were not introduced into the proceedings by Magna, before their application for rectification of 6 November 2024. It held that this is true, also in light of the Exhibit mentioned by Magna. It is interesting to note that the Court emphasised that it is ‘not obliged to search for further information in the exhibits if it is not expressly referred to in the briefs and pleadings’.
In the current case, the Court stated that ‘a search would have led nowhere.’ Magna did not mention the model in the corresponding brief, nor in the written submissions, nor in the oral hearing itself. ‘At the time of the Order’, the Court said, ‘the Court simply did not have the information to link any vehicle codes to any of the models, particularly those not mentioned.’
For both the second and third argument brought forward by Magna, the Court was brief. As R. 353 RoP merely speaks ‘of clerical mistakes, errors in calculation and obvious slips’, the Court found no room to read ‘omission’ into it. Nor is the omission of Germany and Slovakia an incomplete statement, according to the Court. Only France was mentioned, and no other parts. The Court ‘did not need to do so because it is not important for the reasons given’, making the statement as such not wrong in itself. The third argument is found invalid for rectifying the order.
Important to note is that the party submissions, which were filed outside of the time limit, were not taken into account pursuant R. 9.2 RoP.
Key takeaways
Now that the Dusseldorf LD has decided on the requests for rectification, the suspension granted by the Court of Appeal will cease to exist and the PIs will be in effect.
From the decisions on 31 October and 14 November 2024, it is clear that the UPC will keep an eye on the balance of interests when rendering judgments.
In its decisions on 20 November, the Düsseldorf LD clarified the criteria for rectification under R. 353 RoP. This rectification should be seen as limited to clerical mistakes, errors in calculation, and ‘obvious slips’ (as defined further in myStromer/Revolt Zycling). R. 353 does not cover omissions or incomplete statements, unless they deviate from the Court’s original intention. Therefore, UPC representatives would do well to remember that they should expressly refer to crucial information in briefs and pleadings.
Furthermore, as we have seen many times, the importance of precise and timely submissions is underscored. When filed outside of the time limit, the Courts have the authority to disregard submissions pursuant R. 9.2 RoP, and are not hesitant to do so.
