Tag: Opium

Case No. UPC_CFI_177/2023 | ‘ex parte PI / Opium’

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Stromer is one of the most renowned e-bike brands; their claim is to write e-bike history. They recently locked jaws with a Swiss competitor, i.e., Revolt Zycling. The latter’s premium e-bike brand is Opium. Both are pretty cool, aren’t they?

The bone of contention is the dropout of the Opium bikes. myStromer (the company behind the Stromer brand) is co-owner of EP 2 546 134, together with the Taiwanese company Fairly Bike Manufacturing. I understand that Fairly supplies the frames and other components for the Opium e-bikes. The juicy thing is that Stromer had also relied on Fairly frames, at least in the past.

As reported e.g. in Velojournal, there was a showdown at the EuroBike in Frankfurt when Stromer effectively shut down the Opium booth on the third day of the fair. myStromer had secured the very first ex parte PI issued by the Unified Patent Court. They filed their request with the Local Chamber Düsseldorf on 22 June 2023, and the court issued the ex parte PI on the same day. Notably, Revolt Zycling had submitted a protective brief to the court well in advance, on 19 June 2023. To no avail: The UPC held that validity and infringement of EP 134 was sufficiently credible.

That’s the very public part of the story: A desertic booth on the final weekend of the EuroBike fair and the published order of the UPC. But the Swiss FPC has been pretty busy, too. Nothing has been officially published yet, but from the ex parte PI of the UPC it is clear that a saisie helvétique was conducted on 19 June 2023 at the premises of Revolt Zycling in Switzerland:

Note that it was exactly on that day when Revolt Zycling had submitted its protective brief to the UPC. Clearly, something was brewing. Velojournal reported on 11 July 2023, with reference to the CEO of Revolt Zycling, that myStromer had also sought an ex parte PI in Switzerland in the aftermath of the saisie, but the FPC dismissed this request:

It’s not much out of the ordinary that no ex party PI was issued under the circumstances. An ex parte PI is a rare animal in Switzerland anyway, for procedural reasons. I understand from this piece in Velojournal that inter partes summary proceedings are now ongoing at the FPC. Further, the dropout of the Opium bikes has meanwhile been redesigned, to be on the safe side (without any admittance of a legal obligation to do so, in my understanding).

Now, what’s it all about

Let’s have a closer look at the patent at stake. Here’s claim 1 of EP 134:

I understand from the order of 22 June 2023 that the critical bit in terms of (non-)infringement is this:

[…], while the second fork (12) is recessed with an internal thread hole (121) corresponding axially to the through hole [(110)], […]

Revolt had argued in their protective brief that this feature was not fulfilled by their design of the dropouts. I have included Fig. 2 and 3 of EP 134 below. The second fork (12) is on the right side of Fig. 3:

EP 134, Fig. 2

EP 134, Fig. 3

Here’s a colored visualization of a subsection of Fig. 3 that shows the recessed second fork (12):

I have colored the internal thread hole (121) in green; the part where I believe that it can be best seen how the second fork is recessed is marked in blueish. The external thread (320) of the axle is marked in orange.

Now, here’s what the ex parte PI says about infringement. It’s just one paragraph:

The PI holds that it does not matter whether the internal thread is directly in a hole of the fork or in a sensor (presumably a torque sensor) attached on the fork. The patent would not exclude a fork being made of multiple components.

That’s a pretty quick conclusion, isn’t it? I feel that Revolt Zycling had disputed in their protective brief that their fork (12) is recessed with an internal thread hole; see the citation from the protective brief above. It is not fully clear to me how this is dealt with in the analysis of infringement. But, maybe, the order is just too simplified for a non-party to fully grasp the details.

Anyway. Here’s how the Opium dropouts look like:

dropout left

dropout right

The relevant fork is the right one. It will be interesting to learn more about the actual design of the inner thread hole in that fork (or in a sensor that the court considered to be a part of the fork), and how the fork (or the sensor part of it) is recessed. We shall see when the FPC publishes its decision(s).

The ex parte PI further notes that that there is a license agreement in place between Revolt Zycling and Fairly. However, the judgment holds that this license agreement does not extend to the specific assemblies of EP 134 (and notes in passing that the Swiss FPC had held the same in an order of 8 June 2023; unpublished), i.e. no exhaustion occured:

What about Austria?

It appears that myStromer had forgotten to include Austria in the list of countries in their auxiliary request for injunctive relief that had been allowed. They attempted to have this corrected later and argued that this was an error in the decision (which it was not); to no avail. See the court order of 30 June 2023.

final thoughts

Since this is the very first ex parte PI issued by the UPC, it triggered some thoughts with me: How does this compare to Switzerland?

Speed

The ex parte PI was issued lightning-fast, on the day of receipt of myStromer’s request. That’s truly amazing! In particular for a panel of three judges actually taking a decision on the technical merits — and in a distributed set-up like the UPC. Chapeau!

Content

Now that I have cheered the speed: Is it at the expense of thoroughness?

I don’t know yet, to be honest.

At the face of it, the ex parte PI is very well structured (thanks to templates), which is greatly appreciated. There are some glitches, e.g., concerning the name of the co-applicant of the patent in suit, etc. However these kind of things can easily be overlooked as blemish.

But the actual assessment of infringement is very short. Too short, in my opinion. It is merely stated that the patent does not exclude a multi-part construction of the second fork; see above. But … why is that? What made the judges believe that this understanding of a fork is the correct one? Frankly, I am missing the claim construction. Apparently, Revolt Zycling had a different understanding. I have no reason to assume that the outcome is wrong. I just don’t know. Let’s assume it’s right. I fully appreciate that it’s hard to come up with a well-reasoned infringement analysis on this short notice, in writing. But it would have been great to understand from a self-contained court order why Revolt Zycling’s claim construction was effectively dismissed.

Note that the Swiss FPC may issue ex party PIs without the need to provide rushed / half-baked reasons right away. Reasons can be given within 10 days thereafter, if a party requests so; Art. 239 CPC. I like that. I am not sure whether this is possible at the UPC(?).

Composition of panels

Here’s the panel of judges that issued the ex parte PI:

At first glance, I was missing a technically qualified judge. I understand that judges RICHTER and KLEPSCH are legally qualified. Judge KUPECZ had initially been appointed as technically qualified judge, but he has meanwhile been appointed as legally qualified judge. Judge KUPECZ has a background in biotechnology (see here). Which is not really what this case is all about. Don’t get me wrong: Chemists / biotechnologists are great people; they can do everything. (Guess my technical background! 😎)

I understand that the composition of the panel with three legally qualified judges is in full accordance with Art. 8 UPCA. But, I wonder:  When there are about two dozens of technically qualified judges with a background in mechanical engineering or physics available, wouldn’t it make sense to have at least one of them on the bench for a decision on the technical merits of an ex parte PI? I find it a bit strange that the undoubtedly available technical competence of the TQJs is not relied on in such cases.

Costs

The PI has been issued with immediate enforceability subject to a deposit of EUR 500’000,– to be provided within 10 days:

That’s … not cheap. Note that Revolt Zycling had requested that a deposit shall be required, but they had not specified the amount. The court came up with 500k. I have a vague feeling that PIs at the UPC will be used only by the big guys with the deep pockets. myStromer provided the deposit in due time.

The Swiss FPC has a much less restrictive approach; see the judgment S2021_005 of 15 December 2021 (¶¶68-69). In that case, Novartis secured a PI against Mepha, kicking a deferasirox generic out of the market. Mepha had requested that the PI was issued only subject to a deposit of 500k, but the FPC did not follow that request. The FPC ruled out that Novartis would not be in a position to pay damages to Mepha in case the PI turned out later as unfounded (which it did, btw) — and calculation of the damages is notorious difficult anyway, with or without a deposit. My best guess is that myStromer would not have been considered cash-strapped, either.

Anonymization

I trust this is GDPR at its best: The ex parte PI spells out the names of the parties and the law firms of their representatives, but the names of the individual lawyers / patent attorneys are omitted.

I am tempted to write inappropriate things …

✍ MW

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BIBLIOGRAPHY

Case No. UPC_CFI_177/2023 | ‘ex parte PI / Opium’

myStromer AG
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Revolt Zycling AG

Panel of Judges: [or: Single Judge:]

• • Ronny THOMAS
  • Sabine KLEPSCH
  • András KUPECZ

• Representative(s) of Plaintiff:

• • n/a (Hoyng ROKH Monegier)

Representative(s) of Defendant:

• • n/a (Tarvenkorn Wickord & Partner)

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UPC PUBLICATIONS

Ex parte PI of 22 June 2023:

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Order of 30 June 2023 re correction / AT:

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Order of 3 July 2023 re deposit:

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PATENT IN SUIT

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