Samsung Bioepis NL B.V. v. Respondent

Alexion Pharmaceuticals, Inc., the proprietor of European Patent EP 3 167 888 B1, had applied for preliminary measures directed against the marketing of Samsung Bioepis NL B.V.'s contested embodiment Epysqli®. On 26 June 2024, the Local Division Hamburg dismissed the application for provisional measures and ordered Alexion to bear the costs of the proceedings. The value of the dispute was set at €100,000,000, with a ceiling for recoverable costs of €2,000,000.

Following this dismissal, Samsung Bioepis submitted an application for a cost decision on 27 July 2024, claiming costs for the first instance. The claimed costs included fees for two legal representatives, two patent attorneys, two English solicitors, travel and accommodation expenses for the oral hearing in Hamburg, expert costs for Prof. Kontermann who delivered two expert opinions, and costs for two Samsung Bioepis employees (Remco de Haas, Commercial Director, and Erne van Proosdij, Legal Manager) who attended the oral hearing.

Samsung Bioepis argued that the instruction of more than one legal representative and patent attorney was justified given the complexity and high value of the case. It further argued that the involvement of two English solicitors was reasonable because they coordinated proceedings across Europe, managed parallel nullity proceedings before English courts, and had been involved in EPO proceedings concerning patents from the same family. Samsung Bioepis contended that the English solicitors' involvement led to cost savings through identification of prior art, development of technical arguments, expert searches, expert interviews, preparation of expert opinions, and preparation of commercial witness declarations.

Alexion objected to the costs on several grounds: (1) the redacted invoices did not sufficiently demonstrate that costs were actually incurred in connection with the UPC proceedings; (2) the invoice included costs for Julia Mroz, who was not named as a legal representative; (3) costs for UK solicitors and their travel expenses were unreasonable; (4) travel expenses of patent attorneys from Hoffmann Eitle were unreasonably high, as they arrived two days before the oral hearing and booked a 'rooftop package' at the hotel; and (5) expert costs for Prof. Kontermann could not be verified due to lack of access to invoices.

The court applied Article 69(1) UPCA and Rules 152 and 153 RoP, holding that reasonable and proportionate legal costs shall generally be borne by the unsuccessful party. The court explained that 'reasonable' essentially means 'necessary'—whether the measure incurring the costs was objectively necessary and appropriate for achieving the legitimate object of the proceedings. Costs must be cumulatively reasonable and appropriate, which is always a matter of individual assessment.

The court found the application partially justified. It recognized the costs for two legal representatives and two patent attorneys as reasonable given the complexity and high value of the case. However, the court rejected the costs for the two English solicitors, finding that Samsung Bioepis failed to provide a comprehensible explanation as to why it was appropriate and necessary for two English solicitors to be involved. The court noted that the general statements about coordination across Europe and parallel proceedings did not provide concrete indication of specific value in the present proceedings. The court found it particularly problematic that the costs attributed to the two UK solicitors were higher than those incurred by the five legal representatives and patent attorneys, contradicting principles of efficiency.

The court recognized the expert costs for Prof. Kontermann as eligible for reimbursement, finding that Samsung Bioepis had sufficiently demonstrated the specific number of hours worked and costs claimed through the expert's invoices. Regarding travel expenses, the court found arrival on the day before the preparation of the oral hearing to be reasonable, ensuring proper preparation. The court did not consider the alternative calculation based on the German Lawyers' Fees Act (RVG) relevant, as different reimbursement principles apply under the UPC.

The court ordered Alexion to reimburse Samsung Bioepis for the recognized costs, with payment to be made within three weeks of service of the decision. In all other respects, the application for a cost decision was dismissed.