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