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 ARM Limited & Others is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Align Technology, Inc.vsAngelalign Technology Inc. a. o.
The Düsseldorf Local Division dismissed the Defendants' request for security for legal costs in provisional measures proceedings concerning European Patent EP 4 346 690 B1. The court held that the Defendants failed to meet their burden of substantiation regarding the alleged difficulty of enforcing a costs order in the United States, as their reliance on a prior Munich Local Division order was insufficient to establish facts specific to this case.
beMatrix NVvsYaham Recience Technology Co., Ltd.
beMatrix NV, the proprietor of European Patent No. 3 757 442 B1 concerning a display module for temporary exhibition stands, applied for provisional measures against Yaham Recience Technology Co., Ltd. before the Düsseldorf Local Division, alleging that Yaham's "Sytaq RA" modular LED display system infringed the patent. After Yaham's CEO declined to cooperate when approached at the EuroShop trade fair in Düsseldorf, the court granted the preliminary injunction ex parte. The court subsequently issued a rectification order on the same day to correct a clerical error that had mistakenly named the Applicant instead of the Defendant in the operative paragraph.
bioMérieux UK Limited and OthersvsLabrador Diagnostics LLC
The Court of Appeal of the Unified Patent Court refused the bioMérieux appellants' requests to stay revocation appeal proceedings pending parallel EPO opposition proceedings and to extend the deadline for filing their Statement of grounds of appeal. The court held that a rapid EPO decision was not sufficiently imminent to justify a stay, and that no exceptional circumstances existed to warrant extending the strict deadline regime under the Rules of Procedure.
BSN Medical GmbHvsBrightwake Ltd., Advancis Medical Deutschland GmbH, and Advancis Medical Nederland B.V.
This is a decision of the Court of First Instance of the Unified Patent Court, Local Division Munich, concerning the confirmation of a settlement agreement and a confidentiality order. BSN Medical GmbH had sued the defendants for infringement of European patents EP 3 033 058 and EP 3 831 350, but the parties subsequently settled the dispute. The court confirmed the settlement, ordered that the details of the settlement be treated confidentially, and ruled that each party bears its own costs as agreed in the settlement.
Ona Patents SLvsGoogle Ireland Limited a.o.
The Düsseldorf Local Division of the Unified Patent Court dismissed both the infringement action and the counterclaim for revocation concerning EP 2 263 098 B1, a patent relating to methods for determining location estimates using positioning engines and signalling devices. The court held that the patent was valid but not infringed by Google's products, as the alleged infringing products did not embody every claimed component required for direct infringement. Costs were ordered against the Claimant for the infringement action, with a split for the counterclaim costs.
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.