Kunststoff KG Nehl & Co v. Häfele SE & Co. KG, UPC Central Division (Munich Section), 18 April 2025, Case No. 526/2024
The Munich Seat of the UPC Central Division has issued a pragmatic case management order, which once again highlights the front-loaded nature of UPC proceedings and the need for parties to plead their full case early on. It also emphasises the value the court places on cooperation between the parties, as well as encouraging settlement discussions in multi-jurisdictional proceedings.
Background
Kunststoff KG Nehl & Co (“Kunststoff”) initiated a revocation action against Häfele SE & Co KG (“Häfele”) in respect of the Unitary Patent EP3767151 (“EP151”), which relates to a cabinet levelling apparatus and height-adjustable leg for cabinets.
There are multiple proceedings ongoing in relation to EP151 as well as other patents in the same family, including before the UPC, the Düsseldorf Regional Court and the EPO. On 25 November 2024, the Munich Local Division denied Häfele’s request for a preliminary injunction in respect of EP151 on the basis that, although the patent was likely infringed, the court had doubts over its validity.
In this revocation action, Kunststoff challenged validity on the basis of lack of novelty, obviousness, insufficiency and added matter. Häfele filed an application to amend the patent, which included 80 auxiliary requests. Kunststoff submitted that the application to amend is inadmissible.
With the written procedure having now being completed, the court issued this case management order with directions for the action going forward. The order addressed a number of issues, and this article will address those with wider relevance.
Case Management Issues
Value of the case and costs
Kunststoff valued the proceedings at EUR 500,000, which Häfele did not contest and which the court accepted, noting that in a stand-alone revocation action, the value of the proceedings is relevant only for determining the ceiling of recoverable costs (which, in this case, would be EUR 56,000). Notwithstanding this determination, the Judge-Rapporteur encouraged parties in general to agree on the amount of costs deemed reasonable and proportionate or on how to allocate costs depending on the outcome of a case. Such agreement would, in principle, be respected by the court. This is a useful reminder to parties to maintain a cordial dialogue in UPC proceedings.
Reasonableness of auxiliary requests
Häfele submitted 40 sets of claims as auxiliary requests, each in two alternative forms, totalling 80 auxiliary requests. The court must weigh all relevant circumstances to determine whether this number is reasonable in the context of a case (Rule 50.2 RoP in connection with Rules 30.1 and 30.2 RoP). On the facts, the court agreed with Kunststoff that the number of auxiliary requests and the way in which they were presented would make it unreasonably difficult for Kunststoff to focus its arguments against the requests and for the court to prepare the oral hearing. In particular, the court noted that the existence of multiple related proceedings in relation to EP151 and other patents in the same family before other fora, some of which are far more advanced than the UPC action, should actually enable Häfele to limit the number of auxiliary requests to only the most relevant.
Despite this finding, the court found that it would be unreasonable and too far reaching to reject the application to amend altogether. In the circumstances of this case, including the number of validity attacks and the technology involved, the court indicated that it intended to deal with the auxiliary requests in the order they were submitted until a reasonable number is reached (which the court proposed to be “up to 10”). As such, the court provided Häfele with the opportunity to limit and/or re-order its proposed amendments. This would not, the court determined, harm Kunststoff because it had already had the opportunity to set out its full case against all the auxiliary requests originally filed.
Late filed arguments
In the Reply to the defence to revocation, Kunststoff introduced an additional inventive step attack based on a piece of prior art (document D16), which had already been submitted with the Statement for Revocation. Emphasising the front-loaded nature of UPC proceedings which required parties to set out their full case as early as possible, the court found that this additional argument could and should have been introduced earlier. Introducing it at this later stage hindered Häfele’s defence and the court’s preparations. As such, the court would disregard the new inventive step arguments based on this prior art.
The court also considered that Kunststoff’s attempts to use its final written pleading, the Rejoinder to the reply to the defence to the application to amend (the “RA”) to address claim construction, the new inventive step attack, and further replies to Häfele’s arguments concerning the EP151 as granted, should not be allowed. Kunststoff argued that certain aspects of the rejoinder to the reply and Häfele’s main request also affect the auxiliary requests. The court found that while the debate about the validity of the patent as granted can be relevant for the auxiliary requests, the RA should be limited to matters raised in Häfele’s Reply to the defence to the application to amend (Rule 32.3 RoP). The purpose of the RA is not to re-open the debate in relation to the patent as granted.
The court emphasised the fact that the UPC Rules of Procedure foresee front-loaded proceedings with a limited number of pleadings. While a party may make a reasoned request for a further exchange of pleadings, Kunststoff had not done so, and therefore the Court intended to disregard the additional arguments contained within the RA.
These findings serve as a reminder of the front-loaded nature of UPC proceedings to enable procedural efficiency, and for parties to include all arguments upfront where possible.
Settlement
The court opined that this case may be suitable for settlement out of court, notably due to the fact that the parties are involved in multiple proceedings across different forums, the resolution of which will take time and cause the parties significant expense. To facilitate a potential settlement, the court offered to use the date and time scheduled for the interim conference for an informal discussion to explore the possibility of a settlement, demonstrating the UPC’s pragmatism and role in offering alternative means of resolving a dispute.
Comment
This is a practical case management order, which highlights the need for parties to plead their full case up front, with new arguments only being allowed in limited circumstances. The order also highlights the high bar that must be overcome in order to justify a large number of auxiliary requests.
The order is here.
