2024-04-04 - LD Düsseldorf - Fujifilm v. Kodak - UPC_CFI_355/2023

1. R. 9.3 (a) of the Rules of Procedure authorises the Court to extend time periods. However, this possibility should only be used with caution and only in justified exceptional cases. 2. Such an exceptional case regularly exists if access to a pleading in the unredacted version was initially restricted to the representatives due to an application for protection of confidential information (R. 262A RoP). The only way to ensure that the party concerned can exchange information with its representatives, develop a strategy taking into account the arguments of the other party and, where necessary, provide technical and/or economic input, is to grant access to the information in question to the party's employees with the relevant knowledge. 3. The Rules of Procedure provide for a time period of two months for the filing of the Reply to the Statement of defence which includes a Counterclaim for revocation (R. 29 (a) RoP). This time period must be available to the claimant and its representatives in order to jointly develop a defence strategy based on all the facts and to file pleadings on the basis of that strategy. Therefore, an extension of the time period is, in principle, granted upon request. 4. The same applies to the Counterclaim for revocation. The principles of due process and the right to be heard require that a party must be able to reconcile its arguments on (non)-infringement with those on validity and possible amendment of the claims, in particular in its first submission on validity.

The Düsseldorf Local Division (Presiding Judge Thomas, acting as JR) granted FUJIFILM's R. 9.3(a) RoP request to extend the R. 29(a) RoP two-month deadline for its Reply to the Statement of Defence (which included a Counterclaim for Revocation and the defendants' private-prior-use defence), Defence to the Counterclaim, and Application to Amend the Patent. The order clarifies two important points: (i) under R. 29(a) RoP, the two-month clock runs from service of the Statement of Defence even where a R. 262A RoP confidentiality application has been filed (departing from LD Hamburg UPC_CFI_54/2023); (ii) fairness is preserved not by stopping the clock but by granting extensions under R. 9.3(a) RoP as 'justified exceptional cases' where the claimant's party-employees were initially barred from seeing the confidential pleadings. The order emphasises the R. 262A ground rule — at least one natural person per party and their representatives must access confidential material — especially where the confidential information goes to a key defence such as prior use, and stresses that defendants requesting confidentiality must accept the corresponding extensions as the trade-off.