Extension of time period for filing defence in view of parallel EPO appeal proceedings
Dainese S.p.A. v. Alpinestars S.p.A., Alpinestars Research S.p.A., Omnia Retail S.r.l., Horizon Moto 95 – Maxxess Cergy, Zund.Stoff Augsburg/Ulrich Herpich E.K., Motocard Bike S.I. (UPC_CFI_472/2024[1])
Decision of 15/01/2025 (ORD_1495/2025)
Background
The claimant lodged an infringement action against the defendants on the basis of two patents, EP3498117 ("EP'117") and EP4072364. Alpinestars S.p.A. ("Defendant 1") had previously opposed EP'117 at the European Patent Office (EPO) and subsequently appealed the rejection of their opposition. These opposition-appeal proceedings were ongoing when the Claimant instigated infringement proceedings.
The normal deadline for filing a defence to an infringement claim, including any counterclaim for revocation, is three months from the service of the claim. Defendant 1 requested an extension of this deadline under Rule 9 RoP, until after the Oral Proceedings in the parallel opposition-appeal.
The original deadline was set to expire on 20/01/2025, with oral proceedings for the opposition-appeal case scheduled for 13/02/2025. Defendant 1 requested an extension until 27/02/2025, i.e. an extension of 38 days in total and 14 days from the conclusion of oral proceedings.
Under Article 33(10) UPCA and Rule 295(a) RoP, the Court may stay proceedings when a "rapid" decision is expected from the EPO in relation to parallel opposition proceedings, including subsequent appeals. Defendant 1 argued that their requested extension would better serve procedural efficiency than such a stay.
The Judge rapporteur invited the other parties to respond to this request. The Claimant requested that that the Court either deny Defendant 1's request, or, if the Court was minded to grant an extension, grant an extension until only 20/02/2025 (i.e. 7 days after the conclusion of oral proceedings). The Claimant argued that Defendant 1 had been aware of the date of oral proceedings in relation to the pending opposition-appeal proceedings since 02/09/2024 but had waited until just before the deadline for filing the statement of defence to request an extension. Additionally, the Claimant argued that if Defendant 1's request was granted then Defendant 1 would be in an advantageous position, not only with respect to the Claimant, but also with respect to the other Defendants.
Decision
The Judge rapporteur ordered that Defendant 1's request be granted and that the deadline be extended until 27/02/2025. The Judge rapporteur held that coordination between appeal proceedings before the EPO and proceedings before the UPC, alongside procedural efficiency, was best served by extending the time limit for filing the defence and counterclaim for revocation. The Judge rapporteur agreed that an extension of 14 days was an appropriate amount of time to consider the opposition-appeal outcome.
Additionally, the Judge rapporteur stated that the other parties may seek a period to submit their observations on the EPO's decision in accordance with Rule 36 RoP. Thus, no party would obtain an unfair advantage.