In a decision issued on 16 September 2024 by the Paris Central
Division of the Unified Patent Court (UPC), BMW secured a decision
by default against ITCiCo Spain S.L. in a revocation action. The
Court’s ruling to revoke ITCiCo’s patent came after ITCiCo
failed to meet procedural deadlines and BMW presented strong
invalidity arguments.

1. Failure to Submit a Defence on Time

ITCiCo was formally served BMW’s statement of claim on 25
November 2023, according to the Case Management System (CMS),
although postal records show the claim was delivered as early as 23
November 2023, giving ITCiCo two extra days. Instead of submitting
a defence, ITCiCo requested an extension of time on the last day of
the two-month deadline of 25 January 2024. BMW applied on 2
February 2024 to have ITCiCo’s extension request rejected and,
at the same time, requested a decision by default.

2. Unsuccessful Extension Request

ITCiCo requested an extension for filing its defence, citing
difficulties with the Court’s Case Management System (CMS) and
issues with its legal representation. However, the Court rejected
this request on 9 February 2024, noting that ITCiCo had provided
insufficient evidence to support these claims. ITCiCo also argued
that certain appendices/exhibits were missing from the statement of
claim, but the Court ruled that the absence of appendices was
irrelevant because, under Rule 271, a statement of claim is valid
if it allows the defendant to grasp the core issues of the case,
even without the exhibits. The appendices were considered
evidentiary and not crucial for understanding the case and,
therefore, should not have prevented ITCiCo from preparing a
defence. The court also noted that requesting an extension only on
the due date, especially when it was apparent to ITCiCo that they
were not in a position to file their defence, did not comply with
the principle of fairness that must guide the procedural activities
of the parties.

3. Conditions for a decision by default

A decision by default can be granted under Rule 355 when:


The defendant fails to take necessary procedural steps within
the deadline.

The claimant requests the decision.

The claimant’s facts justify the remedy sought.

In this case, ITCiCo failed to act within the time limits. At
the same time as requesting the rejection of ITCiCo’s extension
request, BMW also argued that the independent claims of
ITCiCo’s patent lacked novelty, specifically citing a US prior
art that closely resembled the system described in ITCiCo’s
patent. The grounds for invalidity, particularly the allegation of
lack of novelty, were accepted by the panel. As a result, the Court
found that the conditions for a default ruling were met and decided
to revoke the patent in its entirety.

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