2025-07-22 - LD Paris - Tiru v. Maguin et al. - UPC_CFI_130/2025

On the bifurcation of the counterclaim for revocation: In accordance with the principle of procedural efficiency (point 7 of the preamble to the RoP), after balancing the respective interests of the parties to ensure a fair trial (point 5 of the preamble to the RoP), the panel considers that the claimant has an interest in obtaining an expeditious decision on the alleged infringement and that the defendants also have an interest in ensuring that the uncertainty of the ongoing litigation, which has delayed the allegedly infringing furnace from becoming operational, is resolved expeditiously by a decision on the merits. In this context, it is appropriate to order that the counterclaims for revocation of the patent be bifurcated in favour of the Central Division. Taking into account the fact that the Central Division was first seised of the application for revocation of the patent and should therefore render its decision more quickly, and that the arguments on the validity of the patent developed by the main claimant before the Central Division are almost identical to those developed in the counterclaims before the present Local Division. It is therefore for reasons of economy of means and efficiency that this bifurcation measure should be ordered in respect of the counterclaims only. On the stay of the infringement action: For the sake of efficiency, in order to avoid slowing down the infringement action, which is in the interest of the claimant, but also in the interest of the defendants, since the duration of this dispute inevitably has an economic impact, the request for a stay of proceedings in the infringement action will not be granted pending the outcome of the parallel action before the Central Division on the validity of the patent. The infringement action before the present Division will proceed, without extension of time, and will do so on the basis of the version of the patent as unconditionally amended by the patent’s owner before the Central Division, as account will also be taken of the interpretation of the claims as argued before the Central Division in the context of the validity attack for the assessment of infringement, in accordance with Article 69 EPC and the UPC case law on this point (UPC_CoA_335/2023 and UPC_CoA_1/2024).

The Paris Local Division ordered the joinder of two related cases and referred the counterclaims for revocation of the patent to the Paris Central Division. Although the defendants opposed the bifurcation, the panel found that procedural efficiency and fairness favored allowing the Central Division (which was already dealing with a parallel revocation action involving substantially the same arguments) to handle validity. The panel rejected the request to stay the infringement proceedings, emphasizing that both parties had an interest in a prompt resolution due to the economic impact of the ongoing dispute. The infringement action was to be assessed on the basis of the version of the patent unconditionally amended before the Central Division. This order was publishes twice for the parallel cases that were joined.