Right of defence of defendants key to Court’s decision on the addition of a new party and amendments to an existing case

AIM Sport Development AG v TGI Sport Suomi Oy & Ors. (UPC_CFI_214/2023)[1]

Order of 11 February 2025 (ORD_6926/2025)

The Helsinki Local Division considered AIM Sport Development AG’s (“AIM Sport”) application and allowed the addition of a party as long as the right of defence of the defendants (“Supponor”), including the new party, were sufficiently guaranteed (R.305 Rules of Procedure of UPC (“RoP”)). Furthermore, it permitted amendments to the case (R.263 RoP) as long as the frontloaded procedure of the UPC was protected and, again, the rights of the defendants to defend themselves were guaranteed.

Background to the Application

The parties, AIM Sport as the Applicant and TGI Sport Suomi Oy (previously Supponor Oy) and various other Supponor entities as the Defendants have been embroiled in litigation before the UPC since 2023. The Helsinki Local Division initially dismissed the infringement action brought by AIM Sport based on the lack of competence of the UPC[2] (October 2023). The Court of Appeal overturned this decision and referred the action back to the Helsinki Local Division in November 2024[3].

AIM Sport’s Application and Grounds for the Order

On 8 January 2025, AIM Sport filed an application for leave to amend its case based on R.263 RoP and on 9 January a further submission under R. 305 RoP concerning a new defendant, TGI Sport Virtual UK Limited. AIM Sport’s application sought to: (1) add the new defendant based on knowledge gained by AIM Sport since the original Statement of Case (SoC) that this new defendant was involved in infringing acts in Germany; (2) extend the infringement case to Spain based on the same patent and the same infringing acts as the original claim; (3) update information on alleged infringing activities regarding joint actions of the Supponor group companies and make a secondary claim that the Supponor group companies are liable as intermediaries; and (4) modify the original SoC to reflect judgments from parallel cases in the UK and Germany.

In coming to its decision on AIM Sport’s application, the Court considered the relevant legal framework in R.305 RoP and R.263 RoP, and the guidance provided by the Court of Appeal on application of R.263 RoP (UPC_CoA_456/2024, APL_44633/2024)[4] (the “Court of Appeal Guidance”).

When addressing the admissibility of changes in a case, it is clear that the Court will look to ensure (i) that the nature of the frontloaded procedure in the UPC is protected; and (ii) that during the process there are no changes which compromise the defendant’s right to defence. If these two principles (the “Key Principles”) are protected, then it is up to the Court’s discretion whether changes are accepted.

The Circumstances in this Case

The Court was satisfied that the Key Principles were not compromised in this case and went on to consider whether the changes should be allowed.

The Court noted that the circumstances of AIM Sport’s application to amend its case were quite different to “normal” situations. Particularly as the Claimant had requested to change the SoC before the Defendants had filed their Statement of Defence and thus essentially the case was starting from the beginning.

In assessing the parties’ submissions and the relevant legal framework, the Court surmised that the changes to the SoC came down to three main amendments: (1) adding a new defendant; (2) expanding the territory where infringement is claimed to Germany; and (3) Spain. Additional amendments were either based on those three main amendments or as a result of the passage of time and new knowledge gained in that time since the original hearing.

The New Defendant

The Court allowed TGI Sport Virtual UK Limited to be added to the proceedings. The claims were based on the same patent and on the same products of the Defendants. The Court reasoned that if it did not permit this new party to be added to the case, then there was a risk that the Claimant would initiate separate proceedings against that party in the UPC or other courts. If brought in the UPC there would be the risk of irreconcilable and inconsistent decisions arising. It would also be highly likely that the Court would join the cases to ensure procedural economy and aim to avoid contrasting decisions.

The Addition of Germany

Supponor argued that the addition of Germany was not sufficiently explained in AIM Sport’s application. The Court discounted this line of argument and was instead satisfied that AIM Sport’s explanation in its application that the new defendant’s actions occurred in Germany was prima facie sufficiently clear in explaining why acts relating to Germany had now been added to the SoC. With the added fact that the Defendants had three months to reply to the SoC, the Court allowed for all the changes in the grounds relating to Germany.

The Addition of Spain

AIM Sport looked to expand the claims relating to Spain from preliminary injunctions to permanent injunctions. Supponor argued that no plausible justification had been provided to explain why AIM Sport could not have made the amendment with reasonable diligence at an earlier stage (R.263.2(a) RoP).

The requirement of R.263.2(a) is to protect the frontloaded nature of UPC proceedings. The Court decided in this unusual case where the case effectively restarted that rule should not be interpreted on a literal interpretation. Thus, Supponor’s argument failed. The Court also added that it could be viewed that there was no earlier stage where this amendment could have been made.

Even if the Court was wrong in its interpretation of the rules, and the amendments were not to be accepted, AIM Sport could initiate separate proceedings, and the same issues as mentioned above regarding the new defendant would arise. With that, the amendments relating to Spain were permitted.

Further Amendments

Infringement by equivalents and Intermediaries

The Court of Appeal Guidance permitted equivalence claims even without a R.263 RoP application in situations where the patent and the infringing acts are the same as for literal infringement claims. The Court applied this same argument to the amendments to include as an alternative that certain defendants should be considered intermediaries if not primary infringers. And therefore, these amendments too were permitted.

Actions during 2023 – 2024

Further amendments relating to actions that occurred during 2023 – 2024 (after the initial SoC) were also permitted.

[1] https://www.unified-patent-court.org/en/node/60478

[2] https://eip.com/uk/latest/article/opt_out_withdrawal_ineffective_choices_have_consequences/

[3] https://eip.com/uk/latest/article/upc_court_of_appeal_overturns_helsinki_on_opt_out_withdrawal/

[4] OrthoApnea SL v Vivisol B BV on 21 November 2024, https://www.unified-patent-court.org/en/node/1263