OrthoApnea v *** (CoA, 21 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 21 November 2024 (UPC_CoA_456/2024, APL_44633/2024), the Court of Appeal (K. Grabinski, presiding, P. Blok, rapporteur, and E. Germano) held inadmissible the appeal by OrthoApnea and Vivisol B against the order of the judge-rapporteur of the Brussels Local Division of 8 July 2024, and dismissed their appeal against the panel’s review order of 19 July 2024. The patentee was entitled to plead infringement by equivalence in the alternative in its Reply, without leave under Rule 263 and without breaching Rule 13.

The order matters in practice on two counts: it confirms that the remedy against a procedural decision of the judge-rapporteur is a request for panel review, and it holds that equivalence, based on the same patent and directed at the same product, does not change the subject matter of the dispute.

Facts and procedure

The respondent, proprietor of European patent EP 2 331 036 for an intra-oral device against snoring and sleep apnoea, whose name is redacted in the published version, alleges that OrthoApnea’s NOA product infringes claim 1, in particular feature 1.2.4. A saisie had been ordered by the Brussels Local Division on 21 September 2023, the expert could not establish whether the tilted position tested occurs in actual use. In their Statement of defence, the defendants denied literal infringement, arguing that this position does not occur in practice. The patentee then argued, in its Reply and in the alternative, infringement by equivalence (paragraphs 5 to 17).

On 8 July 2024 the judge-rapporteur (UPC_CFI_376/2023, ORD_37783/2024) declined to exclude that argument and extended the time limit for the Rejoinder to 1 August 2024. On 19 July 2024 the panel (ORD_42503/2024) dismissed the request for review and granted leave to appeal. On 26 July 2024 the request for suspensive effect was refused. The defendants appealed both orders.

The applicable law

Rule 263 requires leave of the Court to amend a claim or extend the case. Rule 13 sets out the content of the Statement of claim. The Court of Appeal reads it together with the last sentence of point 7 of the Preamble to the Rules of Procedure, which requires parties to set out their full case as early as possible (paragraph 26). Rule 333.1 provides for a panel review of procedural decisions of the judge-rapporteur. The extent of protection is governed by Art. 69(1) EPC and its Protocol on interpretation.

Question

Does an appeal lie directly against the judge-rapporteur’s order? Does a new argument of infringement by equivalence raised in the Reply amount to an amendment of the claim requiring leave, or a breach of Rule 13?

Decision

On admissibility, the remedy against the judge-rapporteur’s procedural decision is a review under Rule 333.1, not an appeal, as the Court of Appeal had already held on 21 March 2024, the appeal against the order of 8 July is inadmissible, while the appeal against the review order is admissible (paragraphs 20 and 21).

On Rule 263, a claim is changed only where the nature or scope of the dispute changes (paragraph 23). Equivalence rests on the same patent, targets the same product and falls, like literal infringement, within the extent of protection under Art. 69(1) EPC, no leave was required (paragraphs 24 and 25). Where a new argument does not change the claim, the other party may still challenge its admissibility, and the Court may decide the point, if need be of its own motion, at the interim or final stage, and may reflect an inadmissible argument in costs (paragraph 28).

On Rule 13, it does not bar every new argument after the Statement of claim. Admissibility depends on the circumstances and the Court of First Instance has a margin of discretion, which the Court of Appeal reviews only to a limited extent (paragraph 27). The argument responded to the Statement of defence and built on the literal case, already focused on feature 1.2.4 (paragraph 29), the defendants could answer it in the Rejoinder, for which time was extended, and at the hearing (paragraph 30), the patentee could not reasonably have anticipated the tilted position objection (paragraph 31). As the order does not end the proceedings, no costs decision is made (paragraph 32).

Key points for practice

• Against a procedural decision of the judge-rapporteur, the remedy is a Rule 333.1 review, an appeal lies only against the panel’s order.
• An equivalence argument based on the same patent and directed at the same product is not a change of claim under Rule 263.
• The admissibility of a late argument is a matter for the Court of First Instance, having regard to the course of the pleadings and the other party’s opportunity to respond.
• Practical point: where the defence raises an unforeseeable objection to literal infringement, the patentee may answer in the Reply with an alternative equivalence argument, without seeking leave.

Provisions applied

Rules of Procedure

Rules 13, 223, 263.1 and 333.1, Preamble, point 7

European Patent Convention

Art. 69(1) and Protocol on its interpretation

Case law cited

Court of Appeal, 21 March 2024, UPC_CoA_486/2023, APL_595643/2023 (parties not named in the order).

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.