2024-10-10 - LD Düsseldorf - Seoul Viosys v. expert - UPC_CFI_483/2023

1. If the claimant wishes to bring an action against more than one defendant, the claimant has the choice of suing each defendant individually or bringing an action against several defendants. If the Claimant decides to do the latter, each action must be dealt independently. Each defendant conducts its own action formally and substantively independently of the others, without the respective action of one defendant causing advantages or disadvantages for the other defendant. 2. If Rule 25.1 of the Rules of Procedure requires the filing of a counterclaim for revocation, provided that the statement of defence includes an assertion that the patent alleged to be infringed is invalid, this applies separately to each defendant. This does not preclude the joint filing of a counterclaim for revocation by several defendants. However, if individual defendants decide not to file a counterclaim for revocation and this counterclaim is therefore expressly filed by individual defendants only, the validity argument is formally excluded for the defendants not involved in the counterclaim for revocation. Therefore they cannot successfully raise the lack of validity in their proceedings. However, as long as the Court does not separate the proceedings against several defendants, this has no de facto effect. 3. The answer to the question whether an order or decision made subject to the deposit of a security determined by the Court (R. 118.8 RoP) always requires a case-by-case examination in which the interest of the Claimant in the effective enforcement of his intellectual property right must be weighed against the interest in the effective enforcement of possible claims for damages in the event of a subsequent reversal of the judgement. Among the factors to be taken into account in deciding whether security should be required is the financial situation of the claimant, which may give rise to a legitimate and real concern that a possible claim for damages may not be enforceable and/or enforceable at all or only at a disproportionate cost. Whether and to what extend such factors exist must be determined based on facts and arguments presented by the parties.

The Düsseldorf Local Division decided that a defendant who decided not to file a counterclaim for revocation cannot rely on the patent's invalidity in the infringement proceedings. The Court clarified the specifics regarding the effects of a counterclaim for revocation in a constellation where there are multiple defendants of which not all have filed a counterclaim for revocation. The decision further touches on the requirement of a security. This is one of two parallel decisions (see UPC_CFI_363/2023).