TRUMPF v IPG Laser (UPC_CFI_733/2024 & UPC_CFI_255/2025)

• This was another procedural order in relation to an infringement action brought by TRUMPF, in which IPG filed a revocation counterclaim. TRUMPF filed a subsequent request for amendment of its patent and requested that this version of the patent be taken as the basis for its infringement proceedings under Rule 36 RoP.
• Under Rule 30.2 RoP, any subsequent request to amend the patent (that is, requests that follow the amendment proposed pursuant to a request under Rule 30.1 RoP) can only be admitted into the proceedings with the permission of the court.
• In exercising its discretion, the court must consider the principles of proportionality, flexibility, fairness and equity. The court should avoid allowing the patentee, by successively filing amendments, to deprive the opponent of the opportunity to react at an early stage and the court of the opportunity to deal with the requests in an appropriate manner. Thus, the court must take into account whether the new amendments would have been necessary at an earlier stage in response to arguments already submitted by the revocation claimant and whether the late request will cause delays in the proceedings.
• To allow the court to strike a reasonable balance between the conflicting interests, the patentee must substantiate its request, explaining why the later amendment is necessary and why it could not have been filed at an earlier date.
• In this case, the Düsseldorf LD rejected both of TRUMPF's requests, noting that it had not provided sufficient justification to enable the court to allow the amendment of the patent under Rule 30.2 RoP.

This analysis is based on a machine translation of a decision not available in English.