Short Summary
The Court of Appeal of the Unified Patent Court rejected expert's application for leave to appeal a cost decision of the Local Division Düsseldorf. The Local Division had declared expert's application for cost assessment inadmissible as time-barred under R. 151 RoP, having been filed more than one month after the main decision was served via the CMS. The Court of Appeal held that no preliminary reference to the CJEU was necessary, finding that the one-month deadline under R. 151 RoP is not disproportionate and does not violate Art. 69 UPCA or Art. 47 of the EU Charter.
Detailed Summary
This case concerns an application for leave to appeal (R. 221 RoP) and a request for a preliminary reference to the Court of Justice of the European Union under Art. 267 TFEU, filed by expert e-Commerce GmbH and expert klein GmbH against Seoul Viosys Co., Ltd.
Background: Viosys had sued expert for infringement of EP 3 223 320 before the Local Division Düsseldorf. expert contested infringement, and expert klein GmbH filed a counterclaim for revocation. On 10 October 2024, following the counterclaim, the Local Division revoked the patent for Germany, France, Italy, and the Netherlands, dismissed the infringement claim, and ordered Viosys to pay expert's costs. On 12 December 2024, expert filed an application for a cost decision seeking €111,000 (€61,000 to expert klein GmbH and €50,000 to expert as joint creditors).
Viosys objected that the application was filed after the one-month deadline under R. 151 RoP. expert argued that the deadline could not apply because it would violate the rule of law principle and the right to an effective remedy, contending that the RoP is subordinate to the UPCA, that Art. 69 UPCA grants a substantive right to cost reimbursement without a deadline, and that the limitation period should be governed by the five-year period of Art. 72 UPCA or, alternatively, by German national law (three-year period). expert further argued that R. 151 RoP contradicts the UPCA and violates Art. 47 of the EU Charter and Art. 6(1) ECHR.
On 14 April 2025, the Local Division rejected the application as inadmissible, finding that the underlying decision had been uploaded to the CMS on 10 October 2024 and thus served on expert on that date (R. 276.1 RoP in conjunction with R. 271.1(c) and R. 271.2 RoP). The Local Division found no discrepancy between the RoP and the UPCA and held that the one-month deadline under R. 151 RoP was not an undue disadvantage, particularly since it could be extended upon reasoned request under R. 9(3) and (4) RoP.
expert sought leave to appeal and requested a preliminary reference to the CJEU on four questions concerning whether R. 151 RoP limits the substantive cost reimbursement right under Art. 69 UPCA, whether it is compatible with Art. 69 UPCA, before which court the substantive claim can be enforced, and whether R. 151 RoP violates Art. 47 and/or Art. 17 of the EU Charter.
Court's Reasoning: The standing judge, Ingeborg Simonsson, addressed several preliminary points: (1) interpretation of EU law may be required when the UPCA or RoP implements or refers to EU directives, regulations, or international agreements such as the Lugano Convention, to which the EU is a party; (2) the UPC must interpret its own substantive and procedural law in conformity with EU law and, in rare cases where this is not possible, must disapply any provision conflicting with directly effective EU law; (3) however, the UPC cannot request the CJEU to interpret the UPCA, as it is an international agreement forming part of public international law; (4) the UPC also cannot request the CJEU to interpret the RoP based on EU law; and (5) a preliminary reference is not necessary when the legal question has already been clarified by settled CJEU case law or where there is no room for reasonable doubt as to the application of the principles.
Applying these principles, the court found that the questions raised by expert had already been clarified by the Court of Appeal in its earlier decision in Hanshow v. VusionGroup. The court applied settled CJEU case law (including Getin Noble Bank, C-28/22, and Provident Polska, C-321/22), holding that procedural rules with certain requirements do not deprive a party of effective judicial protection unless they are so complex and burdensome as to go beyond what is necessary to achieve their objective. The one-month deadline under R. 151 RoP was found to be neither complex nor disproportionate, particularly given that R. 320 RoP provides for reinstatement (restitutio in integrum). The court also rejected expert's equivalence argument comparing the one-month deadline to a (purported) three-year period under German law, noting that a proper comparison should be made with other similar provisions in the RoP, as done in Hanshow v. VusionGroup.
Decision: The application for leave to appeal was rejected. The court concluded that the question regarding R. 151 RoP had already been clarified by the Court of Appeal, including the non-applicability of R. 9 RoP, and that there was no reason to refer questions to the CJEU under Art. 267 TFEU.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Luxembourg (LU). Understanding the court's reasoning in expert e-Commerce GmbH & expert klein GmbH vs Seoul Viosys Co., Ltd. is valuable context for structuring arguments or assessing risk in similar proceedings.
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