LD Hamburg, May 14, 2024, order, UPC_CFI_151/2024

Art. 69.4 UPCA explicitly refers to proceedings for the application of provisional measures pursuant to Art. 62 UPCA. R. 158 RoP is thus also applicable in the proceedings for provisional measures.

The request for a security for costs is in line with the EU law and international treaties as long as the application of the relevant provisions is not discriminatory and allows to consider the specific facts of the case.

Enforcement risks is not the relevant parameter if a claimant is domiciled within the EU. As the UPC is deemed to be a Court of a Member State according to Art. 71a Brussels I, its decisions are directly enforceable in EU Member States in accordance with Art. 82 UPCA.

The insolvency risk of the plaintiff is the relevant factor.

The LD Hamburg also considered that the patent was recently assigned to the claimant but this happened months after the assignor entered into a pre-trial correspondence about a possible patent infringement with two of three defendants.

Considering the insolvency factor and the history of patent transfer, the LC Hamburg weighted the interests of the defendants higher than those of the claimant (possibility of limitation of the claimant’s access to justice) and decided that the claimant is not in a position to claim protection for small and midsize businesses.

The security for costs has to be based on the amount of the legal costs and other expenses incurred and/or to be incurred by the requesting party, which the other party may be liable to bear. Other financial harms are not mentioned in R. 158.1 RoP.

There is no automatism that the security has to follow the ceiling for recoverable costs, however, it gives a guidance for the maximum amount of reimbursable costs.

The criteria for the determination of the value in dispute are the interests of the claimant, especially based on a licence fee assessment.

An allocation of a technically qualified judge is not mentioned in the RoP, but it is possible in the proceedings for provisional measures.

In the present case, the LD Hamburg dismissed the request for an allocation as the technology was thoroughly explained in the parties’ present submissions and the members of the panel considered themselves familiar enough with the technology to decide the case.