The wood, the trees and the separation of proceedings in O2016_003

Well, shame on me, I haven’t seen the wood for the trees: The procedural decision in the matter O2016_003 (reported here) obviously relates to the suit filed by Illumina and Verinata Health against Genoma; see this Blog here.

“EP 000” is  EP 0 994 963 B2. Opposition/appeal proceedings have been concluded with decision T 0146/07; see EPO Register for details.

“EP 111” is EP 1 981 995 B1. The hearing before the OD is scheduled for 18 November 2016; see EPO Register for details.

“EP 222” is EP 2 183 693 B1. The hearing before the OD is scheduled for 08 June 2016; see EPO Register for details. [UPDATE 29 July 2016: The OD has decided to maintain the patent in amended form on the basis of the first auxiliary request.]

“EP 333” is EP 2 514 842 B1 which has only been granted on 24 February 2016; see EPO Register for details.

Reported by Martin WILMING

Separation of proceedings in view of co-pending EPO proceedings

Case No. O2016_003 ¦ Order of 02 May 2016 ¦ “Prozessaufteilung”

Entities A and B (in a joinder of parties) have sued C for patent infringement. Four European patents are at stake (EP 000, EP 111, EP 222 and EP 333). A and B are exclusive licensees of the patents: Entity A is licensee of EP 000, EP 222 and EP 333; B is licensee of EP 111. The case has been separated in view of the different status of proceedings at the EPO (don’t be misled by the german term ‘Rechtsstand’ used in the decision; the formal status of all the patents is obviously granted): Opposition proceedings at the EPO have already been concluded for one of the patents (EP 000). For two other patents (EP 111 and EP 222), oral proceedings are scheduled for September and June 2016, respectively. The last patent in suit has only been granted in February 2016 and it is thus still open for opposition (EP 333).

line_spliting_50The FPC held that the case would be ready for decision at very different points of time, depending on the status of proceedings at the EPO. Thus, the FPC ordered the separation of the jointly filed action in order to simplify the proceedings; Art. 125 CPC, lit. b:

  • The suit based on EP 000 (plaintiff A) will be continued under case ID O2016_003;
  • The suit based on EP 111 (plaintiff B) will be separately continued under case ID O2016_004;
  • The suit based on EP 222 and EP 333 (plaintiff A) will be separately continued under case ID O2016_005.

Another issue at stake is the choice of the language to be used by the parties. The plaintiffs used the English language and have submitted a letter allegedly confirming the agreement of the defendant with the use of the English language. However, the letter was apparently not issued by the defendant itself but a parent company. This letter was thus not considered as a consent of the defendant in accordance with Art. 36(3) PatCA; such consent is still outstanding.

Reported by Martin WILMING


Case No. O2016_003 ¦ Order of 02 May 2016 ¦ “Prozessaufteilung”

A. (n/a)
B. (n/a)


C. (n/a)

Board of Judges:

  • Dr. Dieter BRÄNDLE

Court Clerk:


Reporting Judge:

  • n/a

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • n/a


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