IP Cases & Articles

UPC issues default judgment in infringement proceedings

The Unified Patent Court (UPC) has issued its first decision by default in an infringement proceeding. This decision highlights the importance of responding to a statement of claim and engaging with the UPC’s procedures.

The claimant, i-mop GmbH, is the owner of European patent EP 3 760 094 B1. i-mop filed its statement of claim on 25 April 2024, alleging direct infringement of its patent. The statement of claim was served on the defendant (ARCORA International GmbH) on 13 May 2024.

The deadline for filing a statement of defence is three months from the date of service of the claim (Rule 23 of the UPC Rules of Procedure). However, in this case ARCORA did not file a statement of defence by the deadline of 13 August 2024.

After the deadline passed, in a preliminary order dated 16 August 2024 (ORD_47439/2024) the judge rapporteur pointed out the requirements for issuing a default decision. The judge rapporteur also stated that, on the basis of i-mop’s submissions in the statement of claim, the court assumed that the use of claim 1 of the patent had been conclusively demonstrated and that no conduct on the part of ARCORA was apparent that would speak against issuing a default decision.

However, as the judge rapporteur had concerns with some of i-mop’s requests in its statement of claim, i-mop was provided with the opportunity to comment on these concerns within 14 days. The judge rapporteur also informed ARCORA that a default decision could be issued if i-mop addressed the court's concerns and if ARCORA did not submit a statement in response to i-mop’s written submissions.

i-mop filed written submissions on 30 August 2024, addressing the concerns raised by the judge rapporteur. A ten-day period for response by ARCORA was also set. However, ARCORA failed to file a response within this period.

In view of this, the court proceeded to consider the four conditions required for issuing a default judgment.

The first condition is that the claimant requests the issuance of a decision by default (Article 37(1) of the Statute of the UPC, Rule 355(1) of the UPC Rules of Procedure). This condition was found to be met as in both the statement of claim dated 25 April 2024 and its written submission dated 30 August 2024, the i-mop requested the issuance of a default judgment in the event that ARCORA did not respond or failed to take other ordered procedural steps.

The second condition is that the defendant has:

  • failed to take an action incumbent upon them within the time limit provided for by the Rules of Procedure and the Rules of Procedure in this respect provide for the issuance of decision by default (Rule 355(1)(a) of the UPC Rules of Procedure); or
  • has not filed a written reply to a document which initiates the proceedings (Article 37(1) Statute of the UPC).

In the present case, the second condition was found to be met because ARCORA failed to file a written reply to the statement of claim, and in this situation Article 37(1) of the UPC Statute expressly provides for the possibility of issuing a default decision.

The third condition is that the time limit for replying to the statement of claim has expired, thus ensuring that the claim has been served in such a way that the defendant has had sufficient time to defend itself (Rule 355(3) of the UPC Rules of Procedure). This condition was found to be met because ARCORA had three months to file a statement of defence, and had ten days to comment on i-mop’s written submissions of 30 August 2024.

The fourth condition is that the issuing of a default judgment is objectively justified. This is the case if the facts put forward by the claimant justify the asserted claim and the procedural conduct of the defendant does not preclude the issuing of a default judgment (Rule 355(2) of the UPC Rules of Procedure). This condition was found to be met, because according to i-mop’s conclusive and undisputed statement of facts, the contested embodiment made direct use of the technical teaching of the patent without the i-mop’s consent.

As a result of the direct infringement, an injunction was granted against the defendant.

It is therefore important that a defendant complies with the UPC procedures in order to defend itself. In particular, it is important not to disregard a service of a statement of claim, and to file a statement of defence within the three month deadline. Otherwise, as demonstrated by this decision, the UPC is prepared to issue a decision by default if the defendant does not take the opportunity to defend itself.

Case details at a glance

Decision level: Court of First Instance, Munich (DE) Local Division
Decision:
ORD_47439/2024
Parties:
i-mop GmbH v ARCORA International GmbH
Date:
11 October 2024
Decision:
dycip.com/ord-47439-2024-i-mop

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