Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC. Interested in more of this? Stay tuned and subscribe here for weekly updates.
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”.
24 February 2025
Local Division Munich, Bruker v 10x Genomics
Cost proceedings
Background
This decision concerns the cost proceedings following PI proceedings between the parties. 10x Genomics won in first instance, Bruker (formerly: Nanostring) won the appeal.
The Court of Appeal by decision of 26 February 2024) stated: 10x Genomics has to bear the costs of the proceedings.
On 26 March 2024, Bruker asked the Court of Appeal to reopen the appeal proceedings and to extend the one-month period for starting cost proceedings until four weeks after the termination of the Chapter 11 proceedings in the US in relation to the restructuring of Nanostring into Bruker.
The JR of the Court of Appeal decided on 25 July 2024 that there is no reason to decide about the costs of the proceedings and the requested extension of time until a decision about reopening of the appeal proceedings.
On 6 August 2024, the request to reopen the appeal proceedings was refused.
The cost proceedings
On 14 August 2024 Bruker requested in the Local Division Munich (where the PI proceedings had been started) to hand down a cost award of € 337.431,50, calculated and specified according German national law.
10x Genomics responds:
1. cost proceedings after a PI case is not possible;
2. the term (of one month for starting cost proceedings) cannot be extended. Cost proceedings should have been started on 26 March 2024 at the latest.
The JR ordered the following on 3 December 2024:
1. The requested extension is granted;
2. Bruker has to inform the Court within three days after the Chapter 11 proceedings have been terminated about its termination.
On 6 December 2024, Bruker stated that the Chapter 11 procedure had not ended, that it nevertheless wanted to proceed, and that the cost specification of 6 August 2024 was requested as provisional cost claim.
10x Genomics responds:
1. extension of time is not possible;
2. Bruker is anyway late because the Chapter 11 proceedings have been terminated more than 4 weeks ago;
3. Bruker can only get what you claimed on 6 August 2024.
Decision
- There is no article in the UPCA or Rule which excludes cost proceedings to establish the costs in PI cases.
- The Court of Appeal in its judgement of 26 February 2024 meant to say that the costs of the first instance and of the appeal had to be borne by 10x Genomics.
- Before the end of the one-month term, extension of the period was requested and granted.
- Different from what 10x Genomics stated, the Chapter 11 proceedings had not ended when the request on 6 December 2024 by Bruker was made.
- As the costs demanded on 6 August 2024 were not formulated as “provisionally”, it is only possible to get the amount asked at that point.
Comment
- The cost calculation is made according German national law. This was not disputed by the (German) representative of 10x Genomics and was accepted by the Local Division Düsseldorf in a previous matter. This all conveys the wrong impression that in a dispute between international companies, we use a German Local Division and use the German language and use the German way of calculating costs. First of all it is not necessary to litigate in a German Local Division and/or in German. Parties can litigate in all Local Divisions and using the English language.
- Furthermore the UPC is an international Court which has its own procedural rules and does not apply German law but the law as indicated in Art. 24 of the UPCA.
- The Division in Munich of course does and did not apply German law, but as there was no dispute about the total of costs calculated in the German way, the Division accepted this as an application of Art. 69 UPCA and R. 150 et seq. RoP.
- The Division decided that cost proceedings can also be started after PI proceedings. That is of course especially important for defendants that win PI proceedings and when the PI proceedings are not followed by a case on the merits. Note that in this case, the original defendant lost in first instance and only won on appeal. So his entitlement to costs (also for the first instance) was only established in the decision of the Court of Appeal and the cost proceedings have to be commenced within one month of that decision.
- If, however, the defendant wins in first instance, the question is whether such cost decision has to be started already one month after that decision (see R. 151 RoP). That is certainly the case if the claimant does not file an appeal (and does not start proceedings on the merits within one month). However, if the claimant appeals, it is not entirely clear. The most practical interpretation of R. 151 RoP is in my opinion that “decision” in R. 151 RoP means final decision. After all, it does not make much sense to have cost proceedings when it is unclear if ultimately entitlement to costs exists. Until this is all clarified, it may be prudent for a defendant to ask the Division during the PI proceedings for an extension of the one-month term until there is a final decision.
- In this case Bruker, asked for an extension within the one-month term because of the Chapter 11 proceedings in the US. The Court grants such an extension. This was indeed a good reason for an extension and because it was asked within the one-month term, it was clear to 10x Genomics that they were still on the hook for costs. As I wrote earlier, an extension requested after the one-month term with retroactive effect should in my view not be granted.
24 February 2025
Local Division Munich, Hand Held v Scandit
Result interim conference
The JR (among others):
- The value of the counterclaim has to be 150% of the claim and is set on 4.5 million.
- The oral hearing is set on 29 April 2025.
- Until 27 March 2025, the parties are allowed to comment on the decision in appeal in the PI case between the parties and about the timing of the Opposition Proceedings.
Comment
- These (and other decisions such as documents in English do not have to be translated) are all housekeeping matters which show how useful such interim conference is and a good example for national proceedings which do not have a JR and an interim conference (such as in The Netherlands!).
- More interesting is that during the interim conference the JR asked the parties to agree on the costs of the representation before the oral argument (in effect: the cost of the proceedings). It cannot be a coincidence that during the interim conference, judge Kupecz participated who made already the same suggestion in an earlier case.
- I can only say that representatives who want to save money for their clients (and precious time for themselves and the Court) should follow such suggestion. Before the oral hearing, parties are uncertain about who is going to win and both have a good idea how much money was spent on the representation. If both representatives are reasonable, it is not difficult to find agreement on costs and all kind of complications and cost proceedings can be avoided (see the other case reported today regarding Bruker).
- As a member of the drafting committee of the Rules of Procedure, I have in vain protested against this complicated cost system. The only concession which was made was that costs proceedings are not a strict necessity and that costs can be decided together with the decision. I hope that in the future representatives agree on costs and/or that there will be a more efficient system, for example obliging parties to send the opposing party and the court a specification of their costs one week before the oral hearing, with an update regarding the work during the last week to be provided 24 hours before the hearing (including an estimate for the hearing itself). During the oral argument, parties can (if necessary) comment on the demanded costs. The Court can thereafter make a decision. That system is also fairer for the winning party (as it does not have to wait long before getting its money). The amounts are in principle immediately payable after each instance (of PI proceedings or cases on the merits).
25 February 2025
Local Division Munich, Panasonic v Xiaomi
Return of court fees
Background
The parties settled and the JR, stating that the settlement took place after the closure of the written proceedings, ordered reimbursement of 40% of the court costs (R.370.9(b)(ii) RoP) instead of 60% as requested for by the parties.
Panasonic requested review of the decision, because the parties had never been informed that the written phase had been closed.
Panasonic requested a 60% reimbursement (R. 370.9(b)(i) RoP)
The panel
1. It is not necessary to decide if a de facto end of the written procedure is sufficient in order to rule that the written procedure was closed.
2. The panel uses the possibility (R. 370.9(e) RoP) to not change the decision of the JR, citing the stage of the proceedings and the exceptional amount of time the Court spent on the case.
Comment
A very good decision! The fact that none of the defendants contested the decision of the JR shows that Panasonic did not know that Rules should be interpreted according to its purpose and not (always) to the precise letter. Anyway, in view of the substantial work the Court had done, it would have been courteous not to ask the Court to spend even more time on an amount which is probably peanuts compared to the costs of its representation. As I already wrote earlier, I hope that with the revision of the Rules this rule of reimbursement disappears. In the meantime, I encourage the Divisions to use R. 370.9(e) RoP more often. In cases like this one, the court costs are a fraction of the costs of representation and as the UPC is supposed to become self-financing the work of the Court should be properly remunerated.
26 February 2025
Local Division Düsseldorf, Grundfos v Hefei
Further pleadings
Request
The Chinese defendant asks to be allowed to make further written submissions before the closure of the written proceedings, because on 6 January 2025 the Chinese Patent Office has declared the parallel patent in China invalid and defendant wants to introduce this “very relevant” decision in the proceedings.
The decision of the JR
The JR refuses, as this would interfere with the date already set for the oral hearing, since the claimant should also get the opportunity to react to such further submission. Moreover, the decision is of 6 January 2025 and the request only of 19 February 2025, even without German translation attached to the request.
Comment
- Note: again two non-German companies are litigating in German (because the German representatives prefer to litigate in German?).
- In my opinion, the decision of the JR is justified. It is important that a case does not take more than 12-14 months, and in this case the defendant could have made the request far earlier and with a translation. In fact (with the absence of a translation) almost two months were lost! Furthermore, the decision of the Chinese Patent Office is of course of a limited interest. The Court has to make its own decision applying the applicable EPC provisions. Finally, nothing prevents the defendant to say during oral argument that its interpretation of the prior art is shared by the Chinese Patent Office.
27 February 2025
Nordic-Baltic Regional Division, Fapa Vital v Valentis Baltic
Settlement
Decision
The Court declares the PI proceedings closed. Although R. 370.9(b) and (c) refer to “Action” with respect to reimbursement of fees, the Court applies this also to the withdrawal of an “Application” for a PI and awards a 60% reimbursement (which is in line with decisions of the LD Düsseldorf and the LD Munich).
Comment
It is clear that no party will appeal such a decision. Quite frankly, I cannot see a justification for such reimbursement, which is not to be found in R. 370 RoP. A demand for a PI requires different (more urgent) actions of the Court and the stages of these proceedings are uncertain, basically depending of the urgency. The fee is very moderate. I do not see any reason to reimburse fees.
27 February 2025
Milan Central Division, SharkNinja v Dyson
Settlement
Order
The case was settled after the Statement of Claim and an earlier granted request of claimant to suspend the case because parties had reached agreement. The court allows withdrawal and declares the proceedings closed.
Comment
This case is a genuine R. 265 RoP case because only the claimant asked for withdrawal of the case. Although R. 265 RoP is not mentioned, the Court followed R. 265 RoP and checked if the defendant had a legitimate interest in continuing with the case (R. 265.2 RoP) by sending a draft order (in which the withdrawal was allowed) to the defendant for comments. When the defendant did not respond, the final order was issued. In my opinion the correct way to deal with it. You only wonder why Dyson did not indicate from the start that it agreed. It would have avoided unnecessary work for the Court.
28 February 2025
Local Division Munich, Esko-Graphics v XSYS
Amendment of claim
Background
The claimant sued for infringement in Belgium, Germany, France and Italy.
The Dutch part of the European patent was not in force in The Netherlands at the time of the Statement of Claim, but was subsequently restored.
The defendants filed a counterclaim for invalidity, in which they also requested invalidation of the Dutch part of the European patent (which in the meantime had been restored).
The request
The claimant wants to amend the claim and add The Netherlands to the Statement of Claim. Defendant asks for rejection of the request.
Decision of the JR
The JR rejects the request, because the JR is of the opinion that the request could have made earlier (see R. 263.2(a) RoP). According the JR it could have been made on 3 December 2024 (within four weeks after 17 November) and it was only made on 17 January 2025.
Comment
- I note that the JR also rules that the request will not unreasonably hinder the other party in the conduct of its action (R. 263.2 sub b RoP).
- In my view this is a rather formalistic literal reading of R. 263.2(a) RoP. The reason for this provision is that a request for amendment should not cause delay or unnecessary complications of the proceedings. This was of course not the case here. Furthermore it would have been very easy to rule that also in the light that the request did not hinder the defendant (which itself had even anticipated a claim for The Netherlands by including The Netherlands in its counterclaim for invalidity) and does not interfere with the length of the proceedings, there was no interest for defendants (except causing nuisance for the claimant) to raise this defence. There is a general principle in law: no interest no action.
- The result is that the claimant has to file a new action for The Netherlands and ask for a joinder of the cases!
- There are several other solutions in the national Court of The Netherlands. You may even get a PI for The Netherlands before the UPC decides!
– All comments above are Prof. Hoyng‘s personal opinions –
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