Short Summary
ICPillar LLC appealed a Court of First Instance order requiring it to provide security for costs (EUR 400,000) in its patent infringement action against ARM entities before the Paris Local Division. The Court of Appeal rejected the appeal, holding that the Insurance Policy submitted for the first time on appeal would be disregarded under R.222.2 RoP, and that a bank guarantee from a US-licensed bank did not constitute adequate security under R.158 RoP.
Detailed Summary
On 22 December 2023, ICPillar LLC (Houston, Texas, USA) brought a patent infringement action against multiple ARM entities based on European patent EP 3 00 0239 before the Paris Local Division of the Unified Patent Court. On 26 April 2024, ARM filed an application under R.158.1 RoP requesting the Court of First Instance to order ICPillar to provide adequate security for legal costs. The Court of First Instance granted the application, ordering ICPillar to provide a bank guarantee from a bank licensed to operate in the EU, set at EUR 400,000. ICPillar was granted leave to appeal on 30 May 2024.
In its appeal, ICPillar made two principal arguments. First, it argued that an Insurance Policy it had taken out—which included an Anti-Avoidance Endorsement making it non-voidable and non-cancellable—provided security equivalent to a cash deposit or bank guarantee and should exempt it from the security requirement. ICPillar submitted the Insurance Policy for the first time in the appeal proceedings, along with a R.262A RoP application for confidentiality protection, which was rejected on 23 July 2024. Second, as an auxiliary request, ICPillar argued that if security were required, it should be permitted to provide a bank guarantee from a US-licensed bank, relying on the non-discrimination principle under Article 2.1 of the Paris Convention.
ARM opposed the appeal, arguing that the Insurance Policy was submitted too late and that it was disadvantaged by the late production, particularly because the policy was initially submitted in heavily redacted form and was subject to English law requiring specialist knowledge to evaluate within short time limits.
The Court of Appeal, exercising its discretion under R.222.2 RoP, decided to disregard the Insurance Policy. The Court reasoned that under R.172.1 RoP, there is a duty to provide evidence already available to a party, and ICPillar should have submitted the Insurance Policy during the first instance proceedings. The Court noted that while it had discretionary power under R.172.2 RoP to request production of evidence, it was not obliged to do so. Weighing the relevant circumstances under R.222.2(a)-(c) RoP—including the stage of the proceedings, the relevance of the evidence, and the disadvantage to ARM—the Court found the balance tipped against admitting the late evidence.
On the substantive question, the Court of Appeal agreed with the Court of First Instance that ICPillar had not disputed the risk that it lacked financial resources to pay ARM's costs if unsuccessful, justifying the security order under R.158 RoP. Regarding the auxiliary request, the Court held that a bank guarantee from a US-licensed bank did not provide adequate security under R.158 RoP, and that this conclusion was based on substantive grounds rather than nationality, so it did not violate any non-discrimination principle.
The Court of Appeal rejected the appeal and denied ARM's request for a cost decision, as the order was not a final order concluding the action.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Luxembourg (LU). Understanding the court's reasoning in ICPillar LLC vs SVF Holdco, Arm France SAS, Arm lreland Limited, Arm Poland Sp. z.o.o, Simulity Labs Limited, Arm Germany d.o.o, Arm Germany GmbH, Apical Limited, Arm Sweden AB, ARM Limited is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
ASTELLAS INSTITUTE FOR REGENERATIVE MEDICINEvsHELIOS K.K, RIKEN, OSAKA UNIVERSITY
In this legal proceeding before Munich (DE) Central Division - Section (decision issued on 2023-10-11) under reference UPC-001695, ASTELLAS INSTITUTE FOR REGENERATIVE MEDICINE appeared in dispute with HELIOS K.K, RIKEN, OSAKA UNIVERSITY concerning patent rights and legal remedies.
Dainese S.p.A.vsRespondent
This preliminary procedural order was issued by the Court of First Instance, Milan Local Division, on February 7, 2025, in proceedings brought by Dainese S.p.A. against multiple defendants including Alpinestars entities and retailers. Dainese sought an extension of its deadline for filing its Defence to Counterclaims for revocation and its Reply to the statements of defence filed by Defendants 2 and 6, from February 13, 2025 to February 27, 2025, citing coordination with an EPO oral hearing scheduled for February 13, 2025. The Court granted the extension, finding that the same coordination reasons previously accepted for Defendant 1 applied equally to the Claimant, and emphasized the principle of parity between attacking and defending parties.
N.J DIFFUSION SARLvsRespondent
1 Division locale de Paris UPC_CFI_363/2024 Ordonnance de procédure du Tribunal de première instance de la Juridiction unifiée du brevet, rendue le 20/01/2025 REQUÉRANT N.J DIFFUSION SARL 44 Rue Paul Valéry 75016 PARIS - FR Représenté par Catherine Mateu INTIMÉ - DEFENDEUR GISELA MAYER GmbH Litzelsd
Panasonic Holdings CorporationvsRespondent
This procedural order concerns the review of the amount of court fee reimbursement following the withdrawal of patent infringement actions and counterclaims after an out-of-court settlement. The plaintiff, Panasonic Holdings Corporation, sought a 60% reimbursement of court fees, but the presiding judge as rapporteur had granted only 40%, reasoning that the withdrawals occurred after the completion of the written procedure. Panasonic argued that the parties had not been informed of the completion of the written procedure before withdrawing. The panel confirmed the rapporteur's orders, maintaining the 40% reimbursement.
SSAB Europe Oy, SSAB Swedish Steel GmbHvsTiroler Rohre GmbH
This case concerns a cost-setting decision by the Local Chamber Munich following the withdrawal of an application for interim measures. The applicants, SSAB Swedish Steel GmbH and SSAB Europe Oy, sought reimbursement of approximately €91,568.76 in costs from Tiroler Rohre GmbH, who had been ordered to bear the costs after withdrawing the interim measures application. The respondent argued the costs were excessive and requested a cap of €30,000, contending that the number of representatives and hours billed were disproportionate to the case's complexity.
Dealing with a patent challenge?
Whether it's a Section 3(d) rejection, a post-grant opposition, or a FRAND dispute, Arctic's patent litigation team has handled it. Get a strategy call.
Disclaimer: This page contains an automated summary based on publicly available judicial records. The content is generated for informational purposes only and does not constitute legal advice. Always verify details against the original source judgment before relying on this information for any legal purpose. If you believe any information is inaccurate, please contact us.