2025 Week 4
In the usual run of patent litigation, there is a claimant and a defendant and the rest of the world watches the case with polite interest. In reality, some of the rest of the world will be way more interested than average in the outcome of the case, to the extent of wanting to have their say in the case. There is a way to barge your way into UPC proceedings: by filing an intervention. But this may leave you with less room for manoeuvre than you expect.
By way of contrast, a third party can intervene in a pending EPO opposition (under Article 105 EPC) and become a party in the opposition. In order to intervene in this way, either the third party must be being sued for infringement under the patent or should have started proceedings for a declaration of non-infringement of the patent.
At the UPC, a third party can intervene in UPC proceedings where they have “a legal interest in the result of the action”. The procedure is governed by Rules 313-317 of the UPC Rules of Procedure. However, unlike an EPO opposition intervention, a UPC intervener can only be in support of a claim, order or remedy already sought by one of the existing parties.
The intervener files their application to intervene, essentially explaining why they have a legitimate interest in the outcome of the case. The other parties can comment on this. If the court agrees that the application to intervene is admissible, then the intervener gets to file their statement in intervention, i.e. their statement of case, and the intervener is treated as a party to the proceedings. Interestingly, if the court decides that the intervention is not admissible, this decision cannot be appealed.
The court can also issue an invitation to a third party to intervene, or even a forced intervention where one of the parties wants a third party to be bound by the decision of the court in the case.
Have we seen UPC interventions already?
Some of the early case law showed that merely being interested in the outcome of a decision was not enough to intervene (UPC Court of Appeal in Ocado v Autostore). Also, relevance to a parallel UPC case may not be enough to intervene (Eoflow v Insulet).
A licensee can intervene where they can show a direct and present interest in the outcome of infringement and revocation proceedings (Seoul Viosys v expert e-Commerce). Also, in the context of SEPs, a manager of a patent pool may be allowed to intervene where the claimant has contributed their patent to the pool (Dolby v HP and NEC v TCL).
Intervention in preliminary injunction proceedings may in principle be possible but in view of the intended speed of the proceedings it may be difficult (Eoflow v Insulet). However, intervention in an appeal is possible – in Daedalus v Xiaomi, the grounds for intervention were that the confidential information at issue in the appeal proceedings related to the architecture of the intervener’s processors. The Court of Appeal considered that the intervener had a direct and present interest in the grant of the order or decision as sought in the appeal.
Procedural gymnastics to attempt a revocation counterclaim
A recent decision, though, highlights some potential pitfalls of intervention in UPC proceedings. A potted history of the case explains it all.
Seoul Viosys launched infringement proceedings in December 2023 against Laser Components under EP 3404726 B1, which was not opposed at the EPO. The supplier of the alleged infringing product was Photon Wave. In February 2024, Laser Components were successful in their application for Photon Wave to be forced to intervene in the proceedings, apparently in order to rely on a warranty or indemnity from Photon Wave. However, the UPC Local Division Paris were clear in their order in March 2024 that the enlargement of the proceedings to include the intervener should not provide Laser Components with an excuse to file its defence late.
Laser Components filed a defence to the infringement on time in March 2024 but did not file a counterclaim for revocation.
Photon Wave engaged with the proceedings and asked the court to clarify whether an intervener is allowed to bring grounds of defence and attack that the defendant could have raised, even if they had not. In particular, Photon Wave were seeking permission to file a counterclaim for revocation with an extension of time – the defendant’s time limit for that had passed. In May 2024, the court decided that this should not be allowed – the intervener cannot adopt a procedural position different to that of the defendant in the main proceedings.
Photon Wave then filed an independent action for revocation of the patent at the UPC Central Division. Photon Wave came back to the Local Division to ask that the infringement proceedings be stayed pending the outcome of the revocation action. The Local Division were very clear in their refusal (in July 2024) to stay the infringement proceedings. The Local Division noted that, as an intervener, Photon Wave are a party to the infringement proceedings and so Article 33.4 UPCA says that when an infringement action is pending, a revocation action between the same parties must be brought before the same division as the infringement action. Photon Wave tried to appeal this but the UPC Court of Appeal declared the appeal inadmissible.
So, with a revocation action having been filed, the UPC Central Division had to work out what to do with it. On 6 January 2025, they issued their decision on the admissibility of the revocation action – ordering that the revocation action should be transferred to the Local Division in view of the operation of Article 33.4 UPCA.
The Local Division therefore got the revocation action onto their docket and on 24 January 2025 issued their decision on its admissibility. They did not hold back. Critical of Photon Wave’s “dilatory” attempts to slow the procedure and “circumvent” the strict time limits for filing a counterclaim for revocation, the Local Division decided that the action for revocation was inadmissible.
The main lesson here really is to work with and stick to the tight deadlines imposed by the UPC Rules of Procedure. Had Photon Wave been involved earlier, they probably could have ensured that a counterclaim for revocation was filed on time. Interestingly, had Laser Components not formally brought Photon Wave into the infringement proceedings as an intervener, it seems clear that Photon Wave would have been free to pursue the independent revocation counterclaim at the Central Division, in parallel with the infringement proceedings at the Local Division, because then the two actions would not have had “the same parties”.
