Samsung Electronics Co. Ltd. and Others v. Headwater Research LLC (Language of Proceedings Order)

This order was issued by the President of the UPC Court of First Instance, Florence Butin, on 30 May 2024, in proceedings before the Local Division Düsseldorf (Case Nos. ACT_22729/2024 and 22744/2024, UPC_CFI_26/2024).

FACTS AND PROCEDURAL BACKGROUND:

On 26 January 2024, Headwater Research LLC (a US company) filed an infringement action against four Samsung entities—Samsung Electronics GmbH (Germany), Samsung Electronics France S.A.S. (France), Samsung Electronics Benelux B.V. (Netherlands), and Samsung Electronics Co. Ltd. (Republic of Korea)—based on European Patent EP3110069 entitled "Device-assisted service for protecting network capacity," which was granted in English. The proceedings were initially conducted in German, the official language of the Local Division Düsseldorf.

On 25 April 2024, Samsung filed an application under R. 323 RoP requesting that the language of proceedings be changed to English, the language in which the patent was granted. Headwater Research LLC opposed the application, submitting written comments on 13 May 2024.

SAMSUNG'S ARGUMENTS:

Samsung argued that the choice of German placed it at an undue disadvantage. It contended that the application was admissible under R. 323.1 RoP, which does not impose a specific timeframe. Samsung emphasized that a change of language should be allowed for reasons of fairness, particularly considering the defendants' position. It noted that Defendants 2 to 4 do not have their registered offices in Germany, that Defendant 1 (the German entity) cannot contribute to the technical issues in dispute, and that coordination and preparatory work among the defendants must be carried out in English. Samsung further argued that English is the general language in the relevant technical field (Android operating system), that Headwater would not suffer significant disadvantages as a US company already using English and represented by counsel who previously acted before the EPO, and that the change would serve the interests of the Court.

HEADWATER'S ARGUMENTS:

Headwater argued that the application should be rejected because Samsung was not significantly affected by the current language of proceedings, given that all defendants belong to an international group and none is based where English is an official language. It contended that German is a "neutral" procedural language for most defendants and that the Claimant does not derive any structural procedural advantage from its choice. Headwater further argued that Samsung only considers English "more suitable," which is insufficient under Art. 49(5) UPCA, and that considerations of expediency and efficiency are not relevant factors. It also pointed to parallel infringement proceedings in German in a closely related technical and legal domain and argued that the interest and efficiency of the Court favored retaining the official language of the Division.

COURT'S REASONING:

The Court applied Art. 49(5) UPCA and R. 323 RoP, which allow the President of the Court of First Instance to order that the language in which the patent was granted be used as the language of proceedings on grounds of fairness and after considering all relevant circumstances, particularly the position of the defendant. The Court referenced prior decisions (UPC CFI 225/2023 LD The Hague, UPC CFI 373/2023 LD Düsseldorf, UPC CFI 410/2023 LD Mannheim) and the Court of Appeal decision of 17 April 2024 (UPC_CofA_101/2024), which held that all relevant circumstances must be weighed, including the language most commonly used in the relevant technology and the parties' nationality, domicile, size, and potential impact of the change.

The Court noted that the emphasis on the defendant's position under Art. 49(5) UPCA is justified by the flexibility afforded to the claimant in choosing where and when to file, while the defendant is bound by strict deadlines. It found that the position of the defendants prevails when both parties are in a comparable situation. The Court observed that Headwater is a US company while the Samsung entities are located in Korea, France, the Netherlands, and Germany, and that English is their common working language, which was not disputed.

The Court further noted that English is the sole available language for the Nordic-Baltic Regional Division, one of the three languages used by the central division, and that prior art documents and relevant literature in the technology at issue would be in English. It concluded that the current use of German, although impairing both parties, was more detrimental to Samsung, which did not choose the language and needed to organize its defence in English before submissions are translated. In contrast, adopting English would not result in any inconvenience for Headwater, which already uses English in its communications and preparatory work. The Court also held that the nationality and native language of the judges cannot be considered in relation to the quality and efficiency of proceedings, given that English is an official language of the Division and commonly used by judges in the UPC framework.

OUTCOME:

The Court granted Samsung's application and ordered that the language of proceedings be changed to English, the language in which the patent was granted. The order was not made conditional on specific translation or interpretation arrangements. An appeal could be brought against the order within 15 calendar days of notification pursuant to Art. 73.2(a) UPCA and R. 220(c) RoP.