Five months for PI decision at UPC local division Munich

It took the UPC local division Munich five months to accept the withdrawal of the PI by the plaintiff. The reason it took so long to reach a decision was the high workload of the Munich local division with PI cases.

The division headed by presiding judge Matthias Zigann, reporting judge Tobias Pichlmaier, Margot Kokke and technically qualified judge Dennis Kretschmann has, as far as is officially known, the most UPC cases among the local divisions. The decision in these proceedings was therefore issued later than expected.

The present proceedings concern a dispute between two competitors over pile driving tips used on construction sites with certain subsoils. Concrete is already poured into the subsoil when piles are driven. This special technique protects Tiroler Rohre’s EP2839083.

The SME had sued its competitor SSAB Swedish Steel and SSAB Europe at the UPC local division Munich for a PI. After the hearing, Tiroler Rohre requested to withdraw the action.

In UPC proceedings, plaintiffs cannot simply withdraw PIs after the hearing. They must request a withdrawal. In this case, the withdrawal was actually disputed. The plaintiff had already initiated parallel UPC main proceedings at the same chamber. At the same time, the defendant considered itself to have an advantage after the oral hearing, as the judges had expressed doubts about the legal validity of the patent. The defendant would have liked to read these doubts in writing in a judgment. However,the judges decided against it. In the present decision, they only mention that they had expressed doubts at the hearing about granting the PI.

Sensitive to costs

At the same time, the plaintiff had applied to not have to bear the costs of the entire PI proceedings. The court did not follow this. Instead, it ordered her to pay the costs while also referencing the fact that she had already initiated proceedings on the merits.

Overall, the proceedings are one of the first examples of what SMEs with a limited litigation budget can expect in UPC proceedings. Both parties opted to be represented by small, compact teams and did not conduct parallel side proceedings, as is often the case in extensive UPC proceedings.

The defendants SSAB Swedish Steel and SSAB Europe worked with a team from the Munich law firm Maiwald led by lawyer Christian Meyer and patent attorneys Michaela Weigel-Krusemarck and Alexander Ortlieb. SSAB has trusted Maiwald in infringement proceedings for several years.

The patent attorney only represents in UPC cases

The Tyrolean pipes have been a regular client of the Innsbruck-based patent law firm Torggler & Hofmann for over 40 years. The two patent attorneys Florian Robl and Markus Gangl have comprehensively represented the client without legal assistance.

They had already caused quite a stir in the market with this strategy a good year ago when, in the first UPC case before the UPC local division in Vienna, they defended their regular client Alpina in the dispute with CUP&CINO over milk frothers with the same line-up. These proceedings are now pending with three main proceedings at the UPC local division in Düsseldorf. In addition, the two patent attorneys are also mandated for one of the first proceedings at the UPC local division Milan for the company Progress Maschinen & Automation.

This makes the Innsbruck patent attorney team certainly one of the UPC’s surprises. Some law firms specializing in medium-sized clients secretly feared that patent attorneys might now represent their regular clients alone before the UPC. So far, Florian Robl and Markus Gangl are the only patent attorneys known to JUVE Patent who use this strategy. The fact that they have already been able to convince three clients is no small feat in a market comparison of actions brought by medium-sized companies.