Oppo case reveals UPC’s balance of speed versus language

The Unified Patent Court (UPC) has thirteen local divisions and one regional division where claims for patent infringement and counterclaim for revocation of a patent can be brought. Until now the vast majority of those actions have been brought in the German local divisions.

The claimant chooses the language of the litigation from the languages available in the division of his choice. All local divisions allow for litigation in English next to litigation in their national languages, whereas the Nordic regional division only allows litigation in English.

The language in which the claimant lodges the Statement of Claim determines the language of the litigation. The German government took the decision to allow litigation in English in the local divisions based in Germany only very briefly before the start of the UPC on June 1, 2023.

As a consequence, German lawyers who were already preparing UPC actions had drafted their Statement of Claim in German and therefore German is the language of many currently pending actions.

This may change over time, as I also hear from German UPC litigators. The number of UPC judges who are fluent in German is limited, whereas all of them have a good grasp of English.

The UPC is very determined to issue judgments on the merits within 12 to 14 fourteen months, but a large volume of actions in German might be a challenge. Also, the majority of European patents are drafted in English and most of the prior art that needs to be considered is in English.

Finally, only a limited number of lawyers and patent attorneys from other countries who are registered as UPC representatives are sufficiently fluent in German.

Changing the language of proceedings

The UPC Rules of Procedure allow for a change of the language of proceedings. If this is a joint request by the parties, it can be decided by the judge-rapporteur on the basis of Rule 322 RoP, as has been done in an order of the Munich local division of November 3, 2023, in Amgen v Sanofi (from German to English).

If the claimant objects to the change, it can be decided by the President of the Court of First Instance on the basis of Rule 323 RoP, as has been done in an order of the president of October 18, 2023, in Arkyne Technologies v Plant-e (from Dutch to English).

In an appeal in 10x Genomics v Nanostring Technologies, the hearing before the Court of Appeal on December 18, 2023, was done in English at the request of the judges (to which the parties agreed), but the language of the litigation remains German.

Oppo requests expedited response to appeal

Panasonic has brought several infringement actions against Oppo, three of which are pending in the Mannheim local division. The language of the litigation is German. In one of those actions Oppo is represented by German lawyer Andreas Kramer of Vossius, in the other two by Dutch lawyer Rien Broekstra of Brinkhof firm.

In all three actions Oppo filed a request with the President of the Court of First Instance under Rule 323 RoP to change the language to English. These requests were denied by yet unpublished orders of November 27,  2023, against which Oppo appealed.

The deadline for such procedural appeals is 15 calendar days (Rule 224.1(b) and 300(e) RoP) and, different from appeals against judgments on the merits, the grounds for the appeal should be filed within that same deadline (Rule 224.2(b) RoP).

The Statement of Appeal can also contain a request for an order for expedition of the appeal under Rules 225(e) and 9.3(b) RoP. The defendant can file a Statement of Response within 15 calendar days of service of the grounds of appeal (Rule 235.2 RoP).

Because all litigation at the UPC is done online through the case management system, documents can be lodged on any day of the week, on official holidays (Rule 300(f) RoP), and at any time of the day. Weekends and official holidays are only excluded if a term is expressly calculated in working days.

Oppo used the full 15 days to lodge its appeal and file the grounds, which were filed on Tuesday 12 December (“outside office hours”) and which contained a request to shorten the deadline for the response to five working days.

The reason for this request apparently was to have an outcome of the appeal and possibly a change of the language to English before Oppo had to lodge its Statement of Defence, which has to be done within three months of service of the Statement of Claim (Rule 23 RoP) and in these cases had to be filed on December 22, 2023.

Oppo also requested the Court of Appeal to render a decision on the appeal itself at least three days before the expiration of that deadline. This meant that Oppo requested that Panasonic should file its response ultimately by December 19 and that the Court of Appeal should decide on the change of the language also ultimately by December 19.

Appeals court denies Oppo’s request

In three orders of 18, 19 and 20 December the Court of Appeal denied the request to shorten the deadlines for Panasonic. Because the Court of Appeal was asked to decide this with extreme urgency, it was faced with the problem of assembling a panel. According to Article 9.1, UPCA such a panel shall consist of three legally qualified judges and two technically qualified judges.

The legally qualified judges have a standing appointment and are readily available. Technically qualified judges have to be selected from a pool on a case-by-case basis, which takes time. The Court of Appeal held that, since this procedural request involved no technical issues, it could act in accordance with the logic of the UPC Agreement and deviate from its text by allocating the case to a panel of just three legally qualified judges.

In the view of the court, the decision also ensures the cost effectiveness of proceedings and efficiency, thus ensuring expeditious decisions and is in line with the principles of proportionality, flexibility, fairness and equity, all of which are principles underlying the Agreement.

Of course, these decisions cannot be appealed further. The only remedy would be an appeal to the European Court of Human Rights in case of a violation of Article 6 of the European Convention on Human Rights, but I don’t see any grounds for such appeal in this case.

The court held that there was no need to consult the respondent about the request to shorten the deadlines. This makes sense because the request was denied. It held that, even if the request would have been granted the very next day, Panasonic would only have four working days left to file its response on the merits (as the deadline is not calculated from the date of the order, but from the date of service of the appeal) and the court would have to decide on that same day.

This would “insufficiently take into account the interests of the respondent to be given sufficient time to properly prepare its statement of response, in proportion to the time the appellant has itself taken to prepare its Statement of grounds of appeal”.

It also held that it “is aware that this means that the statement of defence will shortly have to be lodged in the contested language of proceedings (German) in the proceeding before the Court of First Instance, but is of the opinion that under the circumstances at hand the interests of the respondent and the principles of due process outweigh the interests of the appellant”.

In my view this latter reason is yet another indication that the UPC is determined to conclude cases on the merits within around a year as enabled by the deadlines provided by the Rules of Procedure. The UPC tries to avoid any delay and the parties need to be prepared for this.

Wouter Pors is a partner at Bird & Bird in Amsterdam. He can be contacted at wouter.pors@twobirds.com