Key takeaways
1. Costs incurred in PI proceedings are reimbursable separately, even though the decision on the reimbursability of these costs is to be taken in a uniform cost procedure following the proceedings on the merits. Therefore, the ceilings for the PI proceedings and the proceedings on the merits must be determined separately (follow up to UPC_CFI_121/2025 (LD Düsseldorf), Decision of 22 April 2025, Headnote 2 – Ortovox v Mammut).
(mn. 23) The background to this decision was a case in which the Defendant argued that PI proceedings and the proceedings on the merits constitute a uniform proceeding which is why only a single ceiling, namely that of the main proceedings, could apply. The Court did not follow this approach and considered the costs incurred in the PI proceedings to be separately reimbursable. This requires the determination of a separate ceiling for the PI proceedings (UPC_CFI_121/2025 (LD Düsseldorf), Decision of 22 April 2025, mn. 50 – 52 – Ortovox v Mammut).
2. If the costs of the PI proceedings are reimbursable separately within a ceiling that applies specifically to these proceedings, this also means that the costs of both the PI proceedings and the main proceedings are capped by the applicable ceiling. It is inadmissible to mix the costs of the PI proceedings with those of the proceedings on the merits, or to shift them from one proceeding to the other, even if the results of the PI proceedings may be used in subsequent proceedings on the merits.
(mn. 24) (…) Rather, it is the applicant’s responsibility to ensure that it remains within the ceiling during the PI proceedings. This is all the more true as only reasonable and proportionate legal costs and other expenses incurred by the successful party may be recovered by the unsuccessful party. Therefore, the ceiling on the recoverable representation costs is only one of the safeguards against undue cost recovery (Decision of the Administrative Committee of 24 April 2024 on the scale of recoverable cost ceilings, Preamble, Section 1 – D – AC/10/24042023_E, hereinafter “Administrative Committee’s Decision”). Reaching the ceiling is therefore be the exception rather than the rule. In addition, the ceiling is based on the value of the proceedings in question. The Applicant has the power to influence the setting of this value by specifying a value that reflects its actual interest in the proceedings in question, and thus indirectly influence the ceiling, which covers its representation costs or at least for the most parts.
(mn. 25) In the case at hand, this means that the ceiling of € 200,000 applies for all representation costs in the PI proceedings. This ceiling does not apply for “other expenses” like for example translation costs or the costs for the interpreter in the oral hearing. Such “other expenses” are reimbursable separately. However, since the travel expenses claimed by the Claimant as “other expenses” are only mentioned in general and unspecific terms, their eligibility for reimbursement as “other expenses” cannot be confirmed. Consequently, they are to be regarded as “representation costs” that can only be reimbursed within the ceiling. As the Claimant bears the burden of presentation and proof, it would have had the opportunity to provide further justification that the respective travel costs are not being subject to the ceiling. However, the Claimant failed to do so.
3. In the event of partial success, the applicable ceiling shall correspond to the proportion of success of the party seeking cost recovery. Accordingly, in a first step, the reimbursable representation costs must be determined based on the quota set by the Court in accordance with Art. 69 UPCA in conjunction with R. 118.5 RoP. In a second step, the ceiling, which is also reduced in accordance with the quota set by the Court, must then be applied.
In mn. 26, the Court refers to Rule 152.2 RoP in conjunction with Art. 1(4) of the Administrative Committee’s decision in that regard.
Division
Local Division Düsseldorf
UPC number
UPC_CFI_658/2025
Type of proceedings
Cost reimbursement proceedings
Parties
Claimant: 10x Genomics, Inc. (Pleasanton, CA, USA)
Defendant: Curio Bioscience Inc. (Palo Alto, CA, USA)
Patent(s)
EP 2 697 391 B1
Body of legislation / Rules
Rule 150 RoP; Rules 151, 152 RoP; Art. 69 UPCA
