UPC_CFI_201/2023_July30 – Nutricia v Nestlé

Expert Commentary

Value of the action Facts Infringement proceedings and counterclaim for revocation. The patent in suit is revoked by the EPO. In the infringement action, claimant: - Requests to withdraw its claim and to declare the case closed. - To give a cost decision. - To decide that the revocation case is closed according to R. 360 RoP (no need to adjudicate). The defendant requests the Court to issue a cost decision and put the value of the litigation at €1 million for the claim and €1.5 million for the counterclaim. In an earlier procedural order, the Court had suggested a value of €250,000 and €500,000. Parties disagreed about the value. The Court 1. Refers to R. 22 RoP. For deciding the value of the litigation, the Court takes into account (for deciding the value of the litigation) the value assessed by the parties and its assessment of the value. The value shall reflect the objective interest pursued by the filing party at the time of the filing. 2. In cases where parties reach a settlement, it is not necessary to conduct thorough examination of each and every aspect. An estimated assessment based on the known circumstances is sufficient. 3. €250,000 for the infringement action and a 50% higher value for the revocation action because of the erga omnes effect is justified. 4. The Court decides € 250,000 for the infringement and € 500,000 for the revocation. 5. Nutricia has to pay the costs. Comment 1. Two large, sophisticated companies cannot agree. They let their lawyers fight and let the Court spend time on establishing litigation costs. 2. I would not be surprised if Nutricia is going to ask for rectification because of an obvious error. The Court states that the costs for the revocation should be 50% higher than for the infringement, which is € 375,000; not the € 500,000 the Court awards. Free advice for Nutricia: do not spend your money trying this. It is clear the Court wanted to stick to their earlier provisional suggestion. 3. We will probably now get a cost procedure, spending even more time and money. That all serves the representatives, but it should not be necessary. Just agree on costs. 4. The Court is absolutely right that parties cannot expect that after a settlement the Court is going to dive into each and every argument about the value of the litigation. They have better things to do.

Full Decision Text

1 Düsseldorf – Local Division UPC_CFI_201/2023 Decision and Order Court of First Instance of the Unified Patent Court issued on 30 July 2025 concerning EP 2 359 858 B1 Headnotes: In cases where the parties reach a settlement out of court, a thorough examination of each and every aspect that could affect the value of the action is not necessary. An estimated assessment based on the known circumstances is sufficient. Keywords: Rule 370.6 RoP; value of the action 2 CLAIMANT: N.V. Nutricia, represented by the Managing Director Lambertus Johannes Arie Wolfert, Eerste Sta- tionsstraat 186, 2712 HM Zoetermeer, The Netherlands represented by: Prof. Dr. Nils Heide, Dr. Jan Wohlfahrt, Angelika Link, Gleiss Große Schrell und Partner mbB, Leitzstraße 45, 70469 Stutt- gart, Germany electronic address for service: heide@gleiss-grosse.com DEFENDANT: Nestlé Health Science (Deutschland) GmbH, represented by the Managing Directors Dr. Arne Ingo Jurk and Carsten Hackel, Lyoner Straße 23, 60528 Frankfurt/Main, Germany represented by: Dr. Matthias Meyer, Dr. Daniel Misch as well as patent attor- neys Dr. Daniela Kinkeldey, Dr. Anne Halbach, Bird & Bird LLP, Carl-Theodor-Straße 6, 40213 Düsseldorf, Germany electronic address for service: matthias.meyer@twobirds.com PATENT AT ISSUE: European patent n° EP 2 359 858 B1 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This Order has been issued by Presiding Judge Dr Thomas, Legally Qualified Judge Dr Thom acting as judge-rapporteur, Legally Qualified Judge Agergaard and Technically Qualified Judge Hedberg. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: Patent infringement action – Counterclaim for revocation GROUNDS: 1. The patent in suit is finally revoked by now. The Claimant requests in the infringement action 1. to decide that the proceedings are closed according to Rule 265.2 lit. (a) RoP, 2. to order the decision to be entered on the registered according to Rule 265.2 lit. (b) RoP, 3 3. to issue a cost decision according to Rule 265.2 lit.(c) RoP, 4. to reimburse the court fees in accordance with Rule 370.9 lit. (b) RoP. The Claimant furthermore requests in the counterclaim for revocation to decide that the proceedings are closed according to Rule 360 RoP. The Defendant requests in the infringement action and the counterclaim for revocation to decide 1. to order the Claimant to bear the costs of the infringement proceeding, 2. to set the value of the infringement proceeding at EUR 1m, 3. to order the Claimant to bear the costs of the Counterclaim proceeding, 4. to set the value of the Counterclaim for Revocation at EUR 1.5m. In its preliminary procedural order the Court already informed the parties about its intended deci- sion and order and suggested values in dispute of EUR 250,000 for the infringement action and EUR 500,000 for the counterclaim for revocation. 2. Both parties still dispute about the amount of the values of the infringement action and the coun- terclaim for revocation. The Claimant argues that it limited the infringement action only against the Defendant as the Ger- man affiliate, focussed to one specific product and the distribution of its product information and that the patent will expire in August 2025. Further, the Defendant would be in the position to provide evidence, that the German affiliate has offered the specific product for the patented use also in other UPC countries and also failed to provide substantiated information about its turnover. With respect to the counterclaim, the Claimant relies on Defendant´s statement during the pro- ceedings that the patented indication has only a minor economic value and is rarely used, that there are no parallel enforcement actions based on the patent in suit and the patent term is only three years. The Defendant argues that the Guidelines do not establish a reasonable royalty as the only valid method for calculating the value of the infringement action but expressly state that they do not interfere with the liberty of judges to apply in a given case other methods which may be required by the circumstances of the case. As the Claimant does not invoke the patent in suit to its full extent so that it is appropriate to apply a surcharge of more than 50% on the value of the infringe- ment action when determining the value of the counterclaim for revocation. 3. Taking into account the additional Parties' submissions, the Court's view remains that the values of the dispute, set at € 250,000 for the infringement action and € 500,000 for the counterclaim for revocation, are appropriate. 4 a) Pursuant to R. 22 RoP, the Court shall take into account the value as assessed by the parties and its assessment of the value shall reflect the objective interest pursued by the filing party at the time of filing the action, R. 370.6 RoP (see CoA, Order of 23 December 2024, Microsoft vs. Suinno, UPC_CoA_826/2024). In cases where the parties reach a settlement out of court, a thorough ex- amination of each and every aspect that could affect the disputed value is not necessary. An esti- mated assessment based on the known circumstances is sufficient. b) At the case at hand, the pursued interest of the Claimant in the infringement action was to prohibit the recommendation or offer of the attacked product for use in the reduction of the occurrence of respiratory tract infection and/or respiratory tract infection disease in the member states of the UPCA except Bulgaria, Estonia, Finland, Lithuania, Luxembourg, Latvia, Slovenia and Malta. Addi- tionally, considering the patent term of three years and an occasionally use of the statements re- lating to the patented indication for RTI Use, the assessed value of the Claimant seems to be too low. The territorial scope of the decision and an estimated turnover in the remaining Contracting Member States in three years as a basis for a royalty still justify a value of dispute of EUR 250,000. As the Defendant is not an unknown player in the market for infants´ food supply the Court´s num- ber is more realistic then the Claimant´s suggestion. c) Regarding the counterclaim for revocation, the 50% raise remains also appropriate due to the erga omnes effect. The Court may assume that the patented indication has only a minor economic value and is rarely used. Even then, the value for a patented composition for a medical use is still low, as reflected in the notified value. DECISION AND ORDER: I. 1. The withdrawal of the infringement action is permitted at the request of the Claimant and with the consent of the Defendant. 2. The infringement action is declared closed. 3. This decision shall be entered in the register. 4. The Claimant shall bear the costs of the infringement action. 5. The Court orders the Registrar to reimburse to the Claimant, as soon as possible, 60% of the court fees it has paid in these proceedings. 6. The amount of the infringement action is set at € 250,000. II. 1. The counterclaim for revocation is disposed. 2. The Claimant shall also bear the costs of the counterclaim for revocation. 3. The amount of the counterclaim for revocation is set at € 500,000. 5 DETAILS OF THE ORDER AND DECISION: APP_6997/2023 related to the main proceeding ACT_544303/2023 APP_7294/2023 related to the counterclaim proceeding CC_576843 UPC-Number: UPC_CFI_201/2023 Subject of the Proceedings: Patent infringement action – Counterclaim for revocation Issued in Düsseldorf on 30 July 2025 Names and Signatures Presiding Judge Thomas Legally Qualified Judge Dr Thom Legally Qualified Judge Agergaard Technically Qualified Judge Hedberg For the Sub-Registry

Key Holdings

• Litigation value set for cost purposes (estimated assessment).
• Revocation value set 50% higher than infringement (erga omnes effect).
• Claimant ordered to pay costs.

Tags

• Litigation Value
• Revocation
• Security for Costs
• Settlement

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