Bayerische Motoren Werke Aktiengesellschaft v ITCiCo Spain S.L. (UPC_CFI_412/2023)

Order dated 16 September 2024 (ORD_51965/2024) concerning EP 2 796 333

The patent in suit EP 2 796 333 relates to the field of speed detection of a vehicle, and more precisely, to detecting a speeding condition, i.e., a travelling speed of the vehicle above a location-based imposed speed limit, and also to providing a warning or a control signal to a vehicle based upon the location and current travelling speed of the vehicle

On 6 November 2023, the Claimant Bayerische Motoren Werke Aktiengesellschaft filed a revocation action against Defendant ITCico Spain SL concerning the patent at issue (EP ‘333) before the Paris seat of the Central Division. The written pleading was served on the Defendant on 25 November 2024.

On 25 January 2024 the Defendant requested that the Court, pursuant to R. 9 and/or 334 RoP, extend the time for lodging a Defence to revocation to 29 February 2024. After having heard the parties, the judge-rapporteur rejected the request [1] and no application for application for review of that order had been submitted to the panel. In the meanwhile, on 2 February 2023 the Claimant requested a decision by default.

Following these conditions, it was at the discretion of the Court whether to issue a decision by default or not (R. 355 RoP). In the present case, the Central Division, exercising its discretionary powers, considered it appropriate to issue such a decision.

In its decision, the Central Division assesses in detail whether the facts and attacks put forward by the claimant justify the remedy sought. Hence, the court did satisfy itself that the objections to the Claimant were well founded - it did not just automatically revoke the patent for non-response of the Defendant.

The Claimant argued in its revocation action inter alia that independent claims 1 and 8 would lack novelty in view of prior art document D9. Among several teachings, D9 discloses a method for identifying speeding violations by a vehicle's monitoring system, which obtains the current vehicle speed data and the speed limit data for the current street from the speed-by-street database and compares the vehicle speed.

In its assessment, the Central Division comes to the conclusion that all features of claim 1 of EP ‘333 are disclosed in D9. The same arguments explained with regard to claim 1 were also considered to preclude the patentability of independent claim 8, which describes a method whose features are congruent with the features of claim 1, except for some features of claim 1 which are not listed in claim 8.

Further, the Central Division also considered the challenges brought by the claimant against the dependent claims to be successful, because these claims were either considered to be not new or to lack inventive step.

In summary, patent EP ‘333 was revoked in its entirety with regard to the territories of the UPC Member States for which the European patent had effect at the date of the filing of the revocation action, because the Defendant did not file a Defence to revocation and the court considered the facts put forward by the Claimant to justify the remedy sought.

[1] Reported here: https://eipamar.com/en/knowledge-hub/article/a-caution-on-the-availability-of-extensions/