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

• This was a procedural order in an infringement action brought by TRUMPF against IPG, in which IPG filed a revocation counterclaim.
• TRUMPF filed a duplicate reply in the revocation counterclaim and in filing its reply in the proceedings for amendment of its patent.
• IPG filed a request that parts of TRUMPF's pleading should be disregarded under Rule 9.2 RoP. It also argued that, in accordance with Rule 32.3 RoP, TRUMPF was only allowed to comment on the response to the request for amendment of the patent and no longer on the patent in suit as granted. The validity of the patent as granted was the subject of the counterclaim and not of the request for amendment. IPG maintained that TRUMPF's submission on the validity of the patent in suit as granted was late, which unduly hindered IPG's conduct of the proceedings.
• In response to IPG, TRUMPF requested its waiver of claims be admitted to the infringement action under Rule 36 RoP. IPG countered that TRUMPF's submission on the waiver of claims did not specifically concern the request to amend the patent.
• Under Rule 9.2 RoP, the court may disregard procedural steps, facts, evidence or arguments that have not been taken or submitted within the time limit set by the court or in the RoP. Rule 36 RoP also states that any pleading that goes beyond the pleadings provided for the RoP must be authorised by the court. As such, the court can exercise its discretion to disregard unsolicited pleadings beyond those provided for in the RoP and the content of pleadings specified in the RoP that goes beyond the content permitted under the RoP. However, the court must also always take into account that the parties are required to present their arguments in full as early as possible in the proceedings.
• On IPG's application to disregard TRUMPF's submissions under Rule 9.2 RoP, the court exercised its discretion to take into account two sections of TRUMPF's submissions because those parts were not only relevant for the infringement action, but also for the revocation action. The Düsseldorf LD held that it was clear that these submissions were a reaction to IPG's submission in the reply to the revocation counterclaim within the meaning of Rule 29(e) RoP. In light of this, there was no violation of the principle of parties setting out their arguments in full as early as possible.
• However, in relation TRUMPF's waiver of claims, the court held these should be disregarded under Rule 9.2 RoP. It also rejected TRUMPF's request for admission of the waiver of claims under Rule 36 RoP. In exercising its discretion under Rule 36 RoP, the court must take into account whether admission of a further pleading appears to be necessary for reasons of fairness, equity and efficiency as well as the right to be heard. The court was satisfied that TRUMPF had not explained which specific arguments of IPG made it necessary for a further written statement. Accordingly, the Düsseldorf LD rejected TRUMPF's application.

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