The Hague Local Division takes pragmatic approach to bifurcation, by Sarah Taylor, Pinsent Masons
Plant-e Knowledge B.V & Plant-e B.V. v Arkyne Technologies S.L – Court of First Instance – The Hague (NL) Local Division, 15 February 2024, Case no. UPC_CFI_239/2023
A topic often discussed prior to the UPC’s opening was the prospect that local and regional divisions may elect to bifurcate proceedings where a revocation counterclaim was filed to an infringement action, and how this may impact timing of decisions and harmonisation of laws.
So far, however, the issue has not arisen, with the court taking a pragmatic approach to case management, and electing to not bifurcate proceedings.
(This is of course, separate to cases where a revocation action is filed before the Central Division, and a separate infringement action before a Local or Regional Division.)
The court’s pragmatic approach has been reinforced by a recent order by the Hague Local Division which decided to hear both the infringement action and revocation counterclaim in a dispute relating to technology for generating electricity with plants.
The claimants (‘Plant-e’) issued an infringement action before The Hague Local Division, and the defendant (‘Arkyne’) responded with a counterclaim for revocation. Article 33(3) of the UPC Agreement (‘UPCA’) provides the court with a number of options in such scenarios. The local or regional division concerned may either proceed with both actions (Article 33(3)(a) UPCA), refer the counterclaim for revocation to the Central Division and either stay or proceed with the infringement action (Article 33(3)(b) UPCA), or refer the entire case to the Central Division (Article 33(3)(c) UPCA).
In this case, as is required, the court invited the parties to comment on the application of Article 33(3) UPCA. Both the claimants and defendant asked the court to proceed with both claims. The court agreed with this approach, on the grounds that jointly hearing both actions was appropriate for reasons of procedural expediency and would avoid any delay caused by bifurcating, thus continuing to emphasise the UPC’s commitment to its aim of reaching decisions quickly.
The court commented that hearing both actions would be preferable to ensure a uniform interpretation of the patent in suit by the same panel composed of the same judges, demonstrating a commitment to the overall aim of harmonising laws.
Finally, the court noted that this course was also the parties’ preference.
While apparently unremarkable, the order is nevertheless of interest because it follows three earlier orders of a different local division – the Dusseldorf Local Division – which also chose not to bifurcate (myStromer AG v Revolt Zycling AG UPC_CFI_260/2023; N.V. Nutricia v Nestlé Health Science (Deutschland) GmbH UPC_CFI_201/2023; Franz Kaldewei GmbH v Bette GmbH UPC_CFI_7/2023 ).
While it is still early days, is perhaps starting to demonstrate a developing trend. However, these cases have followed the same reasoning, and it is notable that the approach taken was that preferred by the parties. Where the parties disagree on bifurcation will be the real test to the UPC’s approach, and with the increasing number of complex disputes coming before the UPC, this will likely arise in the future.
The order can be read here.
