1. Key takeaways

Admissibility of extending the action by including claims from a further patent-in-suit after terminated limitation proceedings

The requirements for an extension of the complaint by including claims from a further patent-in-suit are exclusively subject to Rule 263 RoP and not to national provisions. In the present case the plaintiff waited for the outcome of the limitation proceedings before the EPO before extending the statement of claim. The Court considered these requirements as fulfilled as the plaintiff's earlier assertion of the restricted claims before the termination of the limitation proceedings would have triggered the risk of a further counterclaim for revocation of the second patent. As a separate means of attack, the counterclaim is not limited to a version of the claim that may have been asserted in the infringement
version of the claim. The defendants could therefore have easily challenged the legal validity of the patent-in-suit in its originally granted version with a counterclaim,
although this will no longer be relevant at all. Since no decisions of the UPC on the admissibility of such counterclaims for revocation and their cost implications exist, the patentee did not have to take such a risk.

Deadline for filing statement of defence in response to extension of action

The Defendants must be granted the same deadline for filing a statement of defence in response to an extension of the action as would have been granted if the action had been filed as a separate action (but not longer). The (non-extended) deadline for filing a defence starts to run when the extension of the action is admitted.

2. Division

Local Division (Section Munich)

3. UPC number

UPC_CFI_9/2023

4. Type of proceedings

Infringment Action

5. Parties

Claimant:

  1. NETGEAR Deutschland GmbH (München, DE)
  2. Netgear Inc. (San Jose; US)
  3. Netgear International Limited (Cork, IE)

Defendant: Huawei Technologies Co. Ltd. (Shenzhen, CN)

6. Patent(s)

EP3611989

EP3678321

7. Body of legislation / Rules

R. 263.1 RoP; R. 333 RoP.

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