Carrier v BITZER (UPC_CoA_22/2024)
Decision date:
28 May 2024
Osborne Clarke summary
- Carrier is the proprietor of a patent relating to an adaptive sensor sampling of a cold chain distribution system. In the main proceedings at first instance, Bitzer filed a revocation action in the Paris CD the day after filing a notice of opposition against the patent at the EPO. Carrier requested that the EPO accelerate the opposition proceedings. Shortly after that, Carrier lodged a request pursuant to Rule 295.1(a) RoP and Article 33(10) UPCA seeking a stay of the proceedings pending the outcome of the opposition proceedings at the EPO, which Bitzer opposed. The Paris CD rejected the request to stay the proceedings and granted leave to appeal.
- The Court of Appeal rejected the appeal against the Paris CD's refusal of the stay. The court stated that pursuant to Article 33(10) UPCA and RoP 295(a) the UPC can stay proceedings if there is a "rapid decision" expected from the EPO. The Court of Appeal agreed with Bitzer that these provisions must be applied and interpreted in accordance with the fundamental right to an effective legal remedy and a fair and public hearing within a reasonable time. They must also be applied and interpreted in accordance with Article 41(3), 42 and 52(1) UPCA on the basis of the principle of proportionality, flexibility, fairness and equity.
- In accordance with these principles, the Court of Appeal stated that UPC proceedings must be conducted in a way that normally allows the final oral hearing at first instance to take place within one year, while recognising that complex actions may take longer. It therefore follows that, as a general rule, the court will not stay proceedings. The mere fact that the revocation proceedings before the UPC relate to a patent that also has pending EPO opposition proceedings is not sufficient to allow an exception to the rule.
- Carrier had argued that the parallel proceedings were placing an unreasonable burden on it and is unnecessary as the opposition subsumes the revocation action in terms of territorial and substantive scope. The court rejected this argument. If claim 1 was upheld in whole or in part in the opposition proceedings, it is likely that Bitzer will seek to conclude the revocation proceedings, but it could not be ruled out that the UPC may reach a different conclusion.
- The Court of Appeal noted that unnecessary duplication of proceedings could only be avoided by a long-term stay, and such a long term stay would be at odds with the UPC guidelines of having an oral hearing within a year and Bitzer's legitimate interest in obtaining a UPC decision to determine its freedom. The EPO accelerating the opposition proceedings did not alter the court's assessment. Even with the acceleration, it could not reasonably be expected to be decided earlier than the revocation action.
Issue
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