3 July 2025
Court of Appeal, Tiroler Rohre v SSAB
Costs after withdrawal
Facts
After the oral argument in preliminary injunction (PI) proceedings, Tiroler Rohre withdrew its claim. SSAB initiated cost proceedings. Tiroler Rohre argued that they should not pay costs, as cost proceedings can only follow a decision, not an order. The Judge-Rapporteur (JR) ordered payment of €84,033.76, and Tiroler Rohre obtained leave for appeal.
The Court of Appeal
Following a withdrawal (R. 265 RoP), the Court determines who bears the costs, and subsequently, the costs must be established in cost proceedings (R. 265.2(c) RoP). This also applies on appeal. The decision in cost proceedings will only be marginally reviewed and tested on appeal. Costs incurred in the cost proceedings themselves cannot be claimed (see Court of Appeal 6 June 2025, UPC_CoA_618/2024, in Hanshow v Vusion Group).
Comment
- I regret that a Court cannot make a final decision about costs in the case of a withdrawal. It was always the intention of the Drafting Committee that the cost proceedings of R. 150 RoP et seq. were not mandatory, which I believe is also clear from R. 150 RoP (“A cost decision may be the subject of separate proceedings”).
- Certainly, if parties wish to end proceedings by withdrawal, it would of course be preferable for all parties involved if there was an agreement on costs. However, if that is not possible, why can the Court (especially in simple cases) not decide immediately on costs?
- It is understandable that the Court of Appeal will only marginally review cost decisions.
- Representatives of private persons or SMEs should be aware that initiating PI proceedings and then withdrawing can be very expensive for the client (in this case, €84.000). Therefore, it is better to prepare thoroughly and not be overly optimistic!
3 July 2025
Court of Appeal, Jef Nelissen v OrthoApnea
Costs after withdrawal
Facts
The Local Division of Brussels dismissed Jef Nelissen’s infringement action and ordered him to pay costs. OrthoApnea initiated a cost procedure. Thereafter, Jef Nelissen filed an appeal against the lost infringement action. The Brussels Division suspended the cost procedure pending the appeal. Nelissen subsequently withdrew the appeal (R. 265 RoP).
The Court of Appeal
As long as there is no decision on appeal, a claimant can withdraw its claim (if the defendant does not object). This implies that Nelissen is deemed to have lost the appeal and will have to pay the costs of the appeal as well. The costs to be paid for the appeal must be established in cost proceedings. The Court of First Instance must (also) decide on the costs of the first instance.
Comment
- This is in line with the decision reported above (which I regret). After withdrawal, the costs have to be established in cost proceedings by the Court of First Instance.
- As the cost proceedings with respect to the first instance were stayed pending appeal, it is for the Court of First Instance to end the stay and decide on these costs as well.
- One wonders why all these procedural complications are necessary. Why can representatives not reach a reasonable agreement on these costs, which, according to what is reported, concerned a few thousand euros?
3 July 2025
Local Division Munich, Avago v Renault
Change of language
Facts
Avago, a Singaporean company, filed an infringement suit in German against two French Renault companies and the local German Renault company. Renault requested a change of language to English, the language in which the patent was granted. Avago requested dismissal of the request.
The President of the Court of First Instance
The President, referring to the Court of Appeal decisions of 17 April 2024 (UPC_CoA_101/2024) and 8 September 2024 (UPC_CoA_354/2024), ordered a change of language to English. The President, referring to the usual arguments (English being the working language of international companies, English being the common language used in the field of technology, etc.), held that, in balancing the interests of the parties, arguments referring to the conditions under which the final decision may be enforced in the territory where the alleged infringement takes place are irrelevant, as they relate to the outcome of the case and not to the respective situation of the parties during the procedure.
Comment
- Avago, a Singaporean company, should never have filed in German. If you know the case law of the Court of Appeal, you know this case should be conducted in English.
- This is not the first time we have seen that it is apparently only in the interest of the German representative that the case is filed in German. The English-speaking client, if they want to know what their representative will file, has to pay for all the translation costs. So, it is clearly not in the client’s interest, and the argument that German judges can be better addressed in German is not a valid argument. There are no judges in the UPC who do not master the English language, and the Court of Appeal has already clearly refused such argumentation.
3 July 2025
Court of Appeal, Network System Technologies (NST) v Qualcomm
UPC_CoA_221/2025; UPC_CoA_222/2025; UPC_CoA_223/2025
Protection of confidential information
Background
NST filed an infringement action based on three patents. Qualcomm filed an application for the protection of confidential information. The request was granted by the JR of the Local Division, with the exception that he refused access to four US attorneys of NST. He allowed access to two NST employees and a technical expert acting for NST. After review by the panel, one of the US attorneys was also granted access to the confidential information. Both parties appealed. NST wanted one more US attorney to get access, while Qualcomm wanted no access for US attorneys.
The Court of Appeal
The JR has discretionary power. The Court of Appeal can only set aside an order of the JR if the JR has disregarded legal principles or has exceeded its discretionary powers. The Court of Appeal refers to its decision of 25 February 2025 (UPC_CoA_621/2024). A decision must be made on the basis of the following criteria:
- all the relevant circumstances of the case;
- including the role of the person for whom access is requested in the proceedings before the Court;
- the relevance of the confidential information for performing that role;
- the trustworthiness of the person;
- as a general rule, a party is free to decide which attorneys it wishes to engage.
The Court of Appeal held that allowing one US attorney access was reasonable and sufficient. The appeal was dismissed.
Comment
- Parties should realize that appeals (after review by the full panel) of a JR’s decision will only be successful in extreme cases (“disregarding legal principles”, “exceeding discretionary powers”).
- In this case, the decision after the review by the panel was well-balanced, so the appeal could not succeed.
- Reminder: the persons who gain access to confidential information do not have to be employees of the party who will not get access. They may also be foreign lawyers or experts hired by that party if there is an interest in these persons having access. If they were to violate confidentiality, the party by whom they are hired would be held responsible, apart from their own responsibility.
3 July 2025
Local Division Munich, Lenovo v Asustek
UPC_CFI_302/2024; UPC_CFI_667/2024
Extension of term
Facts
Lenovo requested an extension of the term for filing their submission because their term expired on 7 July 2025, and the CMS would be down from 3 to 8 July 2025.
Decision of the JR
There is no ground for this request, because the term is automatically extended due to R. 301.2 RoP. These rules state that for documents filed in electronic form that cannot be received by the Court, the term for filing will be extended until the end of the next working day during which filing is possible again.
Comment
- It is not the first time that I advise lawyers who want to litigate before the UPC to study the Rules of Procedure before wasting the Court’s time.
- I agree that R. 301 RoP is very much at the end of the Rules of Procedure and may not yet be studied, but what about R. 4 RoP: You could have just (first) filed a hard copy on 7 July 2025 with the (sub)registry.
- This case again shows two international companies litigating (for the ease of the representative?) in German.
3 July 2025
Local Division Munich, Headwater v Motorola
Security for costs
Background
Infringement proceedings were initiated. Four of the five defendants filed a counterclaim for invalidity. The case with one defendant was settled. All parties requested security for costs.
The JR
Claimants are not entitled to security. The claimants must provide defendants 1-3 with a security of €200,000 and defendant 5 with a security of €100,000. The JR, among other things:
- Refers to Article 69 (4) UPCA and the case law of the Court of Appeal (Emboline v Aortic of 20 June 2025, UPC_CoA_393/2025), from which it becomes clear that a claimant cannot ask for security. Only a defendant can ask for security, also when acting as a claimant in a revocation counterclaim.
- The burden of proof is on the party requesting security.
- Here, we have a non-practicing entity. As such, that is not sufficient reason for security, but the counter-argument that it has a portfolio of patents is not enough on its own.
- The fact that the claimant also litigates in the US does not automatically mean that it has enough money.
- The value of the case determines the ceiling of recoverable costs, which is independent of the number of defendants.
Comment
- A very elaborate order from the JR that deals with all aspects of security for costs.
- After the defendant has provided an expert report concluding that the claimant is financially weak, the claimant must present more than just having a portfolio of patents. So, unlike in the US, a non-practicing entity in the UPC must show that it can pay the costs of the defendant(s) (up to the ceiling) in case it loses. In the US, generally, an NPE does not have to pay costs if it loses.
3 July 2025
Court of Appeal, Tandem v Roche
Return of fees
Background
Tandem failed to have Roche’s patent revoked. Parties settled the case during the appeal proceedings. On 3 June 2025, the Court of Appeal confirmed the settlement. On 24 June 2025, Tandem requested reimbursement of 60% of the appeal fee.
The JR
As the case was settled before the end of the written procedure, a 60% refund was ordered (See R. 370.9(c)(1) RoP).
Comment
- As the Court should in principle be self-financing, the Budget Committee is studying this payback scheme.
- As I have written before, this reimbursement Rule was never discussed in the Committee which drafted the Rules, and many member states do not have such a payback scheme. I am a strong advocate for its abolishment. If you want to use the Court (to win or reach a settlement), you know what you have to pay. If that is too much, then do not start proceedings.
- Even after abolishment of this return of fees, it is expected that the UPC will only be self-supporting for 50%.
- A good and competent court (such as the UPC) indirectly stimulates innovation, which is in the interest of us all, as it is a driving force for our economy. More economic activity means more jobs and more tax income. No national court is self-financing. So the fact that the member states would have to pay 50% of the costs is not unreasonable, certainly not in the light of the benefits for the economy of a good functioning patent court.
3 July 2025
Court of Appeal, Advanced Bionics v Med-El
UPC_CoA_176/2025; UPC_CoA_175/2025
Appeal fees
Background
- 27 September 2023: Advanced Bionics AG started a revocation action in the Paris Central Division.
- 2 November 2023: Med-El started an infringement action against Advanced Bionics GmbH and SarL in the Local Division Mannheim. The GmbH and Sarl filed a counterclaim for revocation.
- 10 July 2024: Mannheim referred the counterclaim to the Paris Central Division.
- 26 December 2024: The Paris Central Division, in one judgment after hearing the two cases together, maintained the patent on the basis of an auxiliary request.
Both parties lodged two appeals each and paid a court fee of €20,000 for each appeal. On 2 June 2025, parties settled, and each party requested 60% of one court fee and 100% of the other court fee to be reimbursed, arguing that the appeal which was withdrawn before the end of the written procedure concerned, in fact, one case.
Decision
The Court of Appeal held that the payment of two appeal fees (one for the counterclaim for revocation and one for the revocation case) was justified because these were two different cases. The fact that the Paris Central Division decided the two cases in one decision did not change this. Therefore, the Court returned 60% of each court fee.
Comment
- In my view, that is a correct decision. The fact that the Court decides two cases in one decision does not mean that suddenly there would have been only one case.
- This is important for representatives because it means that even though two cases are argued during the same oral argument (and are materially, in fact, the same), it does not mean that if you appeal, you would only have to file one appeal.
8 July 2025
Local Division Milan, Progress v AWM
UPC_CFI_178/2024; UPC_CFI_432/2024
Value of the case
Background
Parties had been asked by the JR to agree on the value of the case but informed the JR that they could not come to an agreement.
The JR
The JR decided to accept the value (€2 million) stated by the plaintiff in the Statement of Claim for both the infringement and the revocation case, citing (amongst others), the complexity of the case concerning complicated machines of high commercial value. However, the JR stated that the panel may change this after the oral hearing.
Comment
None of the parties had provided any evidence about their proposed value. In general, the claimant has a certain interest in putting a high value in the Statement of Claim in order to later justify a substantial damage claim. A higher value also means a higher ceiling with respect to recoverable costs. On the other hand, a higher value means higher court costs. A defendant (and one sees this in this case) tends to downplay the importance (and thus the value) of the case. It is not easy for a JR to decide if there are no objective data put forward by the parties. So, in this case, the JR first tried to get the parties to agree and then made the best of it!
9 July 2025
Local Division Düsseldorf, FUJIFILM v Kodak
UPC_CFI_355/2023; UPC_CFI_186/2025
Costs
Facts
FUJIFILM sued Kodak for infringement. Kodak counterclaimed for revocation. On 28 January 2025, the Düsseldorf Division revoked the patent and dismissed the infringement action. In view of the value of the dispute, the total recoverable costs had a ceiling of €1,500,000 (after a 25% increase by the Court). On 25 February 2025, Kodak requested a cost decision and claimed additional costs for the cost procedure itself.
The dispute
Parties disagreed (amongst others) on:
- the 25% increase of the ceiling of the recoverable costs because FUJIFILM stated that no application was made;
- travel costs because FUJIFILM stated that a number of attorneys working on the case could have attended by videolink;
- an (apparently very expensive) advice by a UK barrister;
- a (so-called expert) advice by an attorney;
- the cost for the cost proceedings.
The JR
- The JR set out the principles, citing the UPCA, the Enforcement Directive, and the Rules, and concluded that costs which are objectively necessary and appropriate are reimbursable.
- The JR decided that the increase of the ceiling was agreed during the oral argument.
- The costs of the UK barrister were unnecessary, as two UK solicitors were already included in Kodak’s legal team.