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.
- The costs of the attorney/expert were also unnecessary, as the numerous attorneys on the team could have done the same.
- Costs incurred to recover costs are not reimbursable.
Comment
- Not much can be learned with respect to the actual costs from this case. What were the hourly rates of UK solicitors, barristers, patent attorneys, representatives etc. and what was spent on travelling (except that about at least 20 “fee earners” worked on the case)?
- The reason for this lack of transparency is that these data were considered confidential. So, the public (and, more importantly, a potential UPC litigant) does not know what the total costs have been.
- It is interesting to see that the JR considers the cost procedure as summary proceedings for which you cannot claim reimbursement of costs. Quite frankly, to make a summary of all the costs (which should be more the work of a firm’s internal accountancy/financial department), can be quite a job, and arguing about what was necessary and what was not can again involve (expensive) lawyers’ hours. However, the Court of Appeal has already decided the issue. Like the JR, it decided that you cannot claim such costs (see hereabove in the Tiroler Rohre case)
- Finally, what representatives should try to do in the interest of efficiency is to agree on costs!
9 July 2025
Court of Appeal, Chint v Jingao
Security for costs
Background
Jingao started infringement proceedings against Chint. Chint lodged an appeal for security of costs because it argued that in China, it would be impossible or unduly burdensome to enforce a cost decision. The Local Division in Hamburg refused the request due to a lack of concrete evidence and stated that the experiences of national courts were not sufficient evidence. Chint appealed.
Court of Appeal
Jingao failed to file its response in time. The Court can but does not have to give an immediate decision in such a case. In this case, the Court held an oral hearing. The Court ignored the response but based its decision on Jingao’s facts and arguments during the first instance proceedings. The fact that Jingao does not have a registered office in the EU or the European Economic Area is a relevant factor, as the laws of that area guarantee enforcement of decisions. Chint presented evidence that serving statements of claims in China is practically not possible and that enforcement of judgments of national courts also encounters difficulties. The conclusion is that it is likely that enforcement will be unduly burdensome. The Court of Appeal reverses the decision of the Local Division Hamburg.
Comment
- A logical decision, as it is quite clear that enforcing a cost decision in China will be practically impossible.
- Note the short period for a response in appeal. The representative was late by one day. Again, if you act as a representative, make sure you know the Rules of Procedure!
9 July 2025
Local Division Mannheim, InterDigital v Walt Disney
Service of an anti-anti-suit injunction (AASI)
Facts
- On 27 May 2025, InterDigital requested an anti-anti-suit injunction (AASI) against Walt Disney, which was granted on 28 May 2025. Using the present parties as an example: an AASI entails asking the Court to prevent Disney from filing a request for an anti-suit injunction in a different (e.g. US) court (in an attempt to forbid InterDigital from starting proceedings against Disney in a court other than the court which issues the anti-suit injunction).
- The Court had ordered the AASI to be served electronically upon Disney’s lawyers in Germany via the German electronic lawyers’ mail. Disney’s lawyers have stated that this service is not valid as, at the time, they were not asked to represent their client with respect to the AASI proceedings. In the main proceedings, they were registered in the CMS as representatives of Disney. However, the representative had not indicated in the CMS system that he was the representative in relation to the AASI (in doing so, trying to avoid service of the AASI decision).
The JR
You cannot be the representative in the main proceedings and then claim you are not the representative in the AASI proceedings, which are, of course, directly connected to the main proceedings. This is contrary to the Code of Conduct for representatives, Art. 2.2, and can lead to removal of the representative from the proceedings (R. 291.1 RoP). The representative shall, within two weeks, accept the service and register in the CMS as representative. If not, a penalty sum of €100,000 may be forfeited.
Comment
- The JR apparently does not like the games Disney likes to play! How can Disney think that it can avoid a lawsuit before the UPC with respect to the infringement of European patents? Apparently, by filing an anti-suit injunction in the US. If that fear is real, then the AASI is fully justified.
- The Court is threatening disciplinary action against the representative. Sometimes a representative would have to tell a client that they cannot do certain things, like obstructing justice.
9 July 2025
Local Division Mannheim, Total v Texas Instruments
Preparation oral hearing
Background
The JR gives a detailed agenda for the oral hearing and the points to be discussed. The JR refers explicitly to a decision of 2 April 2025 (UPC_CFI_359/2023), which is under appeal. According to that decision, the Local Division in Mannheim also requires an auxiliary request if a patentee wants to defend the validity of dependent claims in case claim 1 is invalidated.
Comment
- This is an excellent example of a good preparation of an oral argument, ensuring a structured debate, so that all the points the Court considers relevant are debated.
- I have already indicated that I do not understand why one has to file an auxiliary request if one wants to defend a claim that has been granted!
- Warning to representatives: if you want to make an argument or raise a point or a fact which is not covered by the agenda of the Court, make sure you do so, because if you do not do so, you may not be able to do so on appeal.
10 July 2025
Court of Appeal, OTEC v Steros
No suspensive effect
Facts
The Division in Hamburg issued an injunction against OTEC. OTEC requested suspensive effect due to exceptional circumstances and the fact that the decision was manifestly erroneous, because of:
- ignoring statements made by the representative of OTEC during the oral hearing (without giving any reason);
- considering a product to infringe which, in all relevant aspects, was similar to a product sold in the prior art;
- that in PI proceedings with respect to a prior use defense, the Court used the same very strict burden of proof as in main proceedings and not the “more likely than not” standard of PI proceedings.
Decision of the JR
The JR refused suspensive effect as OTEC failed to establish manifest errors, and whether or not there are errors is for the Court of Appeal to decide.
Comment
- The decision shows that it is virtually impossible to obtain suspensive effect. The JR is not willing to look even summarily into the case itself. “Manifest” means that without any further examination of the case, it is immediately clear that the decision is wrong.
- Although it is understandable that one cannot expect the JR to study the entire file, the question is how strictly “manifest” should be applied.
- In this case, the JR answers the complaint that the Court had not taken into consideration the remarks of OTEC’s representative during oral argument with the obvious remark that they may have done so implicitly. That sounds convincing. However, if that remark of the representative takes away the whole basis for the decision, then, of course, that is different.
- If the Court allows a patentee to injunct prior art, that of course is a manifest error.
- However, it is clear that this requires at least a superficial study of certain parts of the file, and the question is whether the Court of Appeal should do that.
- I think that if a party signals clearly manifest errors in a request for suspensive effect and motivates this in a few lines, then perhaps the Court should take a (superficial) look.
- We should realize that injunctions in the first instance that should not have been granted are very often used to coerce a settlement out of the defendant who cannot afford to leave the market. On the other hand, it is important that a justified injunction cannot be postponed by an appeal without merit.
- The difficulty is to find a good balance where clearly unjustified injunctions cannot be misused.
12 July 2025
Court of Appeal, Suinno v Microsoft
Security for costs
Facts
- Suinno filed infringement proceedings in the Central Division in Paris against Microsoft. It stated in its Statement of Claim that the value of the litigation is € 5 to 6 million.
- Microsoft requested an order to provide security at the amount of € 800k, or alternatively € 600k. The Court ordered Suinno to provide security for € 300k, stating that Suinno had not shown that it has sufficient assets.
- Suinno filed an amendment of claim in which it asked € 2 million instead of € 5 to 6 million in damages, which was granted.
- The Court did not change the security amount, as it considered the request for the amendment of claim was not an application to amend the security.
- The Central Division granted leave for appeal.
Appeal
- Suinno filed an appeal and requested the amount for security to be set on € 100k instead of € 300k.
- In parallel proceedings the Court of Appeal decided that Suinno was not validly represented (UPC_CoA_563/2024).
- A representative who could validly represent Suinno finally signed the grounds for appeal. In a side letter the representative requested to set the security to zero, arguing that the security would lead to a refusal to access to justice and violation of fundamental right.
Decision of the Court of Appeal
- The Court of First Instance has a margin of discretion which means the review by the Court of Appeal is limited.
- The decision of the Central Division based on Suinno’s own original estimate with respect to the value of the litigation was reasonable. The argument that the real work would not cost Microsoft more than € 100k because that is the experience in other UPC cases, is not a valid argument, because it does not address the amount of legal costs and other expenses to be incurred by Microsoft in this particular case.
- The fact that Suinno filed an amendment to reduce its claim for damages from € 5-6 million to € 2 million is not relevant because the value of the litigation is also based on the request for an injunction.
- The new arguments in the “side note” and during oral argument is refused, because they were filed/made outside the time limit for the grounds of appeal.
- They would anyway not have changed the outcome because even if Suinno’s rights would be limited this must be deemed necessary to protect the rights of Microsoft.
Comment
- A case in which an unexperienced representative did everything wrong.
a. He represented himself and his own company.
b. He filed a Statement of Claim in which he demanded a high amount of damages (apparently hoping that this would scare Microsoft into a settlement?).
c. He litigated with a company with apparently no assets with the idea that his risk was limited. However, that resulted together with the aforementioned high amount of damages in a high security amount.
d. He filed an amendment of claim and lowered the value of the case but did not file a request for amending the amount for security.
e. After he had found a representative that could act for the company, the appeal was pursued with arguments which he himself had not made in the Statement of Grounds for appeal.
f. He argued in appeal that in other UPC cases € 100.000 was sufficient for the work which has to be done by a defendant. He should have argued that in this specific case a reasonable representative and company would not have to spend more than € 100.000k accompanied by an expert statement of a reputable and experienced litigator/representative to confirm this. - The Court of Appeal states (in an obiter dictum) that the (argued) limitation of rights of Suinno must be deemed necessary to protect Microsoft’s rights. I find that not extremely convincing. Suinno is defending its fundamental ownership’s rights and I find that that should prevail over the right of Microsoft. Microsoft has not argued that it cannot defend itself (which is also a fundamental right) but that it should not have to bear the costs if it wins. However, the Rules are such that Microsoft under the Rules is indeed fully entitled to a security of costs, because if Suinno cannot afford granting such security, it should have asked for legal aid before starting the litigation (R. 374 RoP et seq.).
12 July 2025
Court of Appeal, Microsoft v Suinno
Decision by default
Background
- The Central Division ordered Suinno to provide security for costs of € 300.000 within one month after service of the order.
- After one month, during which Suinno did not provide security, Microsoft asked for a decision by default (R. 158.4 RoP).
- The CFI refused because it ruled that it had not sufficient information for judging validity and infringement.
- Microsoft appealed.
The Court of Appeal
- The appeal is justified and the Court of Appeal gives a decision by default against Suinno which has to pay the costs of first instance and appeal.
- The CFI mixed up R. 355.1 RoP and R. 355.2 RoP. It applied R. 355.2 RoP but that is written for a default decision against a defendant.
- In this case the security was ordered in the infringement case in which Suinno is the claimant and apart from exceptional circumstances (not put forward by Suinno) failing to provide security should lead to a decision by default.
Comment
- An absolutely correct decision of the Court of Appeal, which also points to the fact that R. 365 RoP gives the possibility to set such decision by default aside, meaning that the consequences of such decision can be mitigated.
- The difference between a decision by default against the claimant and defendant are obvious. If also against a defendant a decision by default would be “automatic” it would mean that the Court would have to give judgments which are wrong, such as granting an injunction to sell a product which was already on the market before the priority date of the patent!
– All comments above are Prof. Hoyng‘s personal opinions –
For all decisions of the UPC’s Court of Appeal from the start in 2023 until 1 January 2025, Willem Hoyng’s more comprehensive summaries and comments are bundled in the book “Case law – Court of Appeal of the UPC 2023-2024”.