UPC_CFI_297/2025 – Walt Disney v Interdigital
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Change of language Background One of the eleven defendants requested a change of language to English. None of those eleven defendants are German, and the claimant is a French company. A month after the application was filed, all other defendants indicated they joined the application. Decision The President ordered a change of language from German to English. Comment The same situation already occurred in a similar case (UPC_CFI_86/2025). One has to wonder why a French company files in German in a German Division against US and Dutch companies. It seems very strange, especially since the patent and prior art were both in English. Why not file in a less busy Division like The Hague, where local judges are fluent in English and representatives are perfectly happy to file in English, and would certainly not suggest filing in the local language (in this case, German)?
Full Decision Text
1 ORDER of the President of the Court of First Instance in the proceedings before the Local Division DÜSSELDORF Pursuant to R. 323 RoP (language of the proceedings) Issued on 18/06/2025 HEADNOTE - The position of all parties potentially affected by the requested change must be heard in the context of an application pursuant to R. 323 RoP. KEYWORDS - Change of the language of the proceedings – Art. 49 (5) UPCA and R. 323 RoP APPLICANT (2) AND DEFENDANTS IN THE MAIN PROCEEDINGS: 1- The Walt Disney Company Limited 3 Queen Caroline Street, Hammersmith - W6 9PE - London - GB 2- The Walt Disney Company (Benelux) B.V Asterweg 15S - 1031 HL - Amsterdam – NL 3- The Walt Disney Company 500 S Buena Vista St - CA 91521 - Burbank - US 4- Disney Interactive 500 S Buena Vista St - CA 91521 - Burbank – US 5- Disney Electronic Content, Inc. 500 S Buena Vista St - CA 91521 - Burbank - US No. APP_22462/2025 UPC_CFI_297/2025 2 6- Disney Platform Distribution, Inc, 500 S Buena Vista St - CA 91521 - Burbank – US 7- Disney Enterprises, Inc. 500 S Buena Vista St - CA 91521 - Burbank - US 8- Disney Streaming Services LLC 500 S Buena Vista St - CA 91521 - Burbank - US 9- Disney Media & Entertainment Distribution LLC 500 S Buena Vista St - CA 91521 - Burbank – US 10- Disney Entertainment & Sports LLC 500 S Buena Vista St - CA 91521 - Burbank - US 11- BAMTech LLC 1211 Avenue of the Americas - New York 10036 - New York - US Represented by: Dietrich Burkhard Kamlah Taylor Wessing PartGmbB (authorized representatives Christian Lederer, Michael Schächinger, Leoni König, Taylor Wessing Partnerschaftsgesellschaft mbB, Isartorplatz 8, 80331 Munich, DE) RESPONDENT (CLAIMANT IN THE MAIN PROCEEDINGS): InterDigital CE Patent Holdings, SAS 20 rue Rouget de Lisle - 92130 - Issy-les-Moulineaux – FR Represented by: Jan Wergin, Arno Riße, Cordula Schumacher, Lisa Rieth, Julija Kravtova, Victoria Thüsing, Rechtsanwälte (ARNOLD RUESS Rechtsanwälte PartmbB, Königsallee 59a, 40215 Düsseldorf, DE) PATENT AT ISSUE: EP2080349 3 SUMMARY OF FACTS By a statement of claim filed on 3 April 2025, InterDigital CE Patent Holdings SAS brought an infringement action against the Applicant and abovementioned Defendants, based on EP 2080349 (ACT_15249/2025 UPC_CFI_297/2025). By a generic procedural application dated 13 May 2025, The Walt Disney Company (Benelux) B.V., referring to R. 323 RoP, requested a change of the language of proceedings from German to English. The request was forwarded to the President of the Court of First Instance of the UPC pursuant to R. 323.1 RoP by an email dated 13 May 2025. By an order dated 13 June 2025, the Claimant in the main action (No. ACT_15249/2025 UPC_CFI_297/2025) was subsequently invited, in accordance with R. 323.2 RoP, to state its position on the admissibility of the Application and on the use of the language in which the patent was granted, namely English, as language of the proceedings. InterDigital CE Patent Holdings, SAS submitted its written comments on 13 June 2025. All other defendants indicated by statement dated 16 June 2025 that they joined in the Application filed on 13 May 2025 and arguments developed therein. The panel of the LD Düsseldorf has been consulted in accordance with R. 323.3 RoP. INDICATION OF THE PARTIES’ REQUESTS: The Defendants request that the Court change the language of the proceedings from German to English pursuant to Art. 49 para. 5 UPCA and R. 323 RoP. InterDigital CE Patent Holdings SAS requests that all Defendants submit a corresponding application or alternately be given the opportunity to be heard before any decision based on R. 323 is issued. 4 POINTS AT ISSUE: The Applicants first state that their request, despite not being submitted with the Statement of Defence, is admissible as it is beneficial that the decision can be taken at an earlier stage in the course of the proceedings. On the merits of the Application, they refer to previous decisions issued in parallel proceedings (order dated 30 April 2025, App_11333/2025 and 17395/2025; order dated 2 May 2025, App_17389/2025), which allowed a change of the language of the proceedings to the language in which the patent at issue was granted. They further contend that a change of the language of the proceedings from German to the language in which the patent was granted is equally required in the present case on grounds of fairness and considering all relevant circumstances pursuant to Art. 49 (5) UPCA and R. 323 RoP, for the following reasons: - The Defendants belong to the US-group The Walt Disney Company whose business language is English. - The Claimant also uses English as its working language and therefore has no legitimate interest in conducting the proceedings in German, which is reflected by the absence of translation regarding the patent and literature submitted on the technical background (Annex AR-T 05). It can consequently be assumed that the prior art in the relevant field of technology is also published almost exclusively in English. - According to the case law cited (CoA 10x Genomics v. Curio Bioscience, order of 17 April 2024, UPC_CoA_101/2024 ApL_12116/2024) in the event of a balanced result taking into account all the circumstances, the position of the defendant would be the decisive factor in deciding on the change of the language of proceedings to the language in which the patent was granted. InterDigital CE Patents Holdings SAS, while still of the opinion that the requested change is not necessary for grounds of fairness, stated that it will refrain from presenting its arguments again in the present case against the background of the above-mentioned orders previously issued in order to prioritize judicial resources. Following an Order dated 16 June 2025 pursuant to R. 323.2 RoP – according to which “the other party” shall be consulted – all other Defendants indicated by a statement dated 16 June 2025 that they support and join the Application dated 13 May 2025 for the same reasons. 5 GROUNDS FOR THE ORDER: 1- Admissibility of the Application The admissibility of the Application is not disputed. 2- Merits of the Application According to Art. 49(1) UPCA, the language of the proceedings before a local division must be an official language of its hosting Member State or alternately the other language designated pursuant to Art. 49 (2). It is further provided by R. 323 RoP that “If a party wishes to use the language in which the patent was granted as language of the proceedings, in accordance with Article 49(5) of the Agreement (…) [t]he President, having consulted [the other parties and] the panel of the division, may order that the language in which the patent was granted shall be the language of the proceedings and may make the order conditional on specific translation or interpretation arrangements”. InterDigital CE Patent Holdings SAS doesn’t put forward any circumstances of the case or relating to the parties which would – for the purpose of the assessment to be made in the context of the Application – differ from the situation addressed in the previous orders dated 30 April 2025 (Nos. APP_11333/2025 and 17395/2025 - UPC_CFI_87/2025) and 2 May 2025 (No. APP_17389/2025 - UPC_CFI_86/2025). In the absence of further arguments and objections raised by the Claimant in the main proceedings, and given the position stated by all Defendants in support of the request, the Court expressly refers to its reasoning developed in the above-mentioned orders. On the same grounds, the language of the present proceedings shall therefore be changed to the language in which the patent at issue was granted – namely English. The present order shall not at this stage be conditional on specific translation or interpretation arrangements, considering that an English version of the Statement of Claim was already provided and that a considerable proportion of exhibits is submitted in this language. ON THESE GROUNDS 1- The language of the proceedings shall be changed to the language in which the patent was granted, namely English. 2- The present order shall not be conditional on specific translation or interpretation arrangements. 6 3- An appeal may be brought against the present order within 15 calendar days of its notification pursuant to Art. 73. 2 (a) UPCA and R.220 (c) RoP. INSTRUCTIONS TO THE PARTIES AND TO THE REGISTRY The next step requires the Applicants to file the Statement of Defence within the time period prescribed by the Rules of Procedure. ORDER Issued on 18 June 2025 NAME AND SIGNATURE Florence Butin President of the UPC Court of First Instance
Key Holdings
- Change of language to English ordered by President.
- Request made by non-German defendants in case with French claimant.
Tags
- Case Management
- Language of Proceedings