Scandit v Hand Held Products (CoA, 1 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 1 November 2024 (UPC_CoA_520/2024, APL_51079/2024, App_57474/2024), the judge-rapporteur of the Court of Appeal (E. Gougé), in Scandit’s appeal against the Munich Local Division’s order of 27 August 2024 granting Hand Held Products provisional measures for indirect infringement of claims 1 and 10 of EP 3 866 051, rejected Scandit’s request for leave to file a reply to the response to the appeal. The order confirms that the written phase on appeal is tightly confined.

Question

May the appellant obtain leave under Rule 36 to reply to the response to the appeal and to introduce new prior art on appeal?

Decision

The request is admissible but unfounded (paragraph 13). The written phase on appeal is limited to the statement of grounds and the response. Review is based on what was submitted at first instance, and new matters may be disregarded unless the discretion under Rule 222.2 is exercised (paragraphs 14 and 15). Further exchanges are provided for only where there is a cross-appeal, and late new grounds are inadmissible (Rule 233.3) (paragraphs 16 to 18). Rule 36, which applies mutatis mutandis on appeal as the Court held on 17 June 2024, allows further pleadings on a reasoned request where fairness, efficiency or the right to be heard so require (paragraphs 19 and 20). Scandit did not explain why the respondent’s reference to a single paragraph of the description called for further argument. It could have addressed augmented reality in its statement of grounds and may do so at the oral hearing (paragraph 21). Nor did it show that the new prior art could not reasonably have been filed at first instance (paragraph 22).

Key points for practice

• Practical point: on appeal, arguments and prior art belong in the statement of grounds, a reply is allowed only on a reasoned request showing a genuine need.

Provisions applied

Rules of Procedure

Rules 36, 222.1, 222.2, 224.2, 226, 233.3, 236.1(d), 237 and 238

Case law cited

Court of Appeal, 17 June 2024, UPC_CoA_222/2024, APL_25928/2024, App_34219/2024.

Related decisions

• Scandit AG v Hand Held Products, 27 August 2024, Munich Local Division provisional measures order under appeal.

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.