2024 Week 33
The UPC has been doing a lot of stuff right. Litigators praise the preparedness of the judges in oral hearings and the speed of proceedings. And we are starting to see how the courts are developing their own approach to the application of substantive patent law.
Other than the terrible UPC case management software (which the UPC now plans to start over, with help from the EPO), there is one area that draws criticism: the transparency of proceedings, and in particular the public access provided to the UPC court file.
Public access to UPC court documents
We have commented before on this topic – see our take in UPC Weekly 2024 Week 15 on the UPC Court of Appeal decision in Ocado v Autostore. In that decision, the UPC CoA aimed to set out a compromise between the competing forces of privacy for the litigating parties and transparency to show the court working effectively. For proceedings which have concluded, access to the court file will generally be granted to a member of the public requesting it. However, where proceedings are ongoing, the UPC CoA decision indicated that there would be a presumption against granting access to the documents, at least based on a general public interest argument.
The UPC CoA was clear, though, that there should still be a way to get access to documents in an ongoing UPC case, but the threshold would be higher – the party requesting access would need to show stronger reasons. The UPC CoA said that a direct legitimate interest would be needed, such as being a competitor concerned with the validity of the patent or being at risk of similar infringement proceedings. Also, where access is granted for ongoing proceedings, the court has discretion to impose confidentiality requirements on the party accessing the documents, setting restrictions on how the information is subsequently used.
We wildly speculated that, for example, a party who had opposed the patent at the European Patent Office should be able to demonstrate the required direct legitimate interest in accessing ongoing UPC proceedings on the same patent.
How to demonstrate the required direct legitimate interest?
A recent order from the UPC Local Division Vienna hardens the view that the UPC would rather not provide access to the court file while proceedings are ongoing. SWARCO v STRABAG is an action for infringement of EP 2643717 B1, SWARCO being the patent proprietor and STRABAG the alleged infringer. The patent claims LED optical systems for use in outdoor colour display boards, such as for road signage.
A third party called DMV filed an application with the UPC Registry requesting copies of the pleadings and evidence in the case.
In April 2024, SWARCO had filed a patent infringement lawsuit against two companies (Kontron and DARS) in Slovenia, based on the same patent EP 2643717 B1. Apparently, in the written pleadings in the Slovenian case, SWARCO allege that one of the defendants was supplied with the alleged infringing products by DMV. DMV therefore argued that it had the required direct legitimate interest in seeing the UPC pleadings and evidence. This interest was effectively on the basis that DMV may fear that they would be accused of infringement next.
SWARCO filed arguments in response. Their main point was that DMV had not tried to show whether their product was in fact similar to the product being accused of infringement in the UPC action.
The UPC LD came down firmly on the side of refusing access to the court file. The order of the court sets out various point about GDPR and confidential information, but these seem irrelevant, because the parties are able to request that specific information is kept confidential. The court did not even appear to consider this. The court’s main concern was protecting the integrity of the proceedings, and this over-rode DMV’s interests.
Analysis
It seems to us that the general situation faced by DMV is pretty much exactly what the UPC CoA was getting at when suggesting that in special circumstances it should be possible to gain access to the UPC court file for ongoing proceedings. A “direct legitimate interest” surely includes a company who fears being sued next, in relation to similar products. If not such a company, then who?
DMV argued that one reason for wanting access to the court file was to help assess its own risk of infringement. The UPC LD unhelpfully responded by saying that this could be done simply by reviewing the patent. However, the main claim of the patent is not particularly clear, and is lengthy. It would be of significant interest to see how the patent proprietor proposes that the claim should be interpreted in order to argue infringement, and the written pleadings would shed light on this.
It should be noted that this is only a first instance order. If appealed, it seems possible that the UPC CoA could reverse the order, using the logic already set out in Ocado v Autostore.
Practical tips and future-gazing
At least based on the summary of the arguments set out in this UPC LD decision, what may have helped here would have been to set out detailed and concrete reasons to emphasise the direct legitimate interest in accessing the UPC court file. In this case, for example, the applicant could have set out further details of the similarity of the products in issue between the UPC and Slovenian proceedings. It may also have been helpful to explain the difficulty in interpreting the scope of protection of the patent in view of the lack of clarity of the claims.
For now, the presumption remains against public access to the UPC court file during ongoing proceedings. However, the UPC CoA has clearly stated that this should be possible – here are their words:
53. … a member of the public may also have a more specific interest in the written pleadings and evidence of a particular case … . This is in particular so where he has a direct interest in the subject-matter of the proceedings, such as the validity of a patent that he is also concerned with as a competitor or licensee, or where a party in that case is accused of infringing a patent by a product which is the same or similar to a product (to be) brought on the market by such member of the public. When a member of the public has such a direct legitimate interest in the subject-matter of certain proceedings, this interest does not only arise after the proceedings have come to an end but may very well be immediately present.
54. In weighing such a direct interest against the general interest of integrity of proceedings, the balance will generally be in favour of granting access to the written pleadings and evidence of such proceedings. The Court may, however, for the purpose of appropriate protection of the integrity of proceedings, impose certain conditions on granting access, such as the obligation for that member of the public to keep the written pleadings and evidence he was given access to confidential as long as the proceedings have not come to an end.
We must wait to see an example of a successfully argued direct legitimate interest that pries open the court file for ongoing UPC proceedings.
