UPC_CFI_336/2024; 605/2025_July29 – Maxeon v Aiko c.s.

Expert Commentary

Cost ceiling Facts There are 8 defendants. Defendants 1, 2, and 4, and defendants 3 and 5 to 8 are represented by different representatives. Defendants 3 and 5 to 8 ask for security for legal costs. They refer to the (reasons for the) order already in place for defendants 1, 2, and 4 (security order for € 100,000). The Court 1. R. 158.1 RoP clearly states that you can ask for security at any time during the proceedings. It is therefore irrelevant that defendants asked for security 9 months after the other defendants asked for it. 2. The doubts about claimant’s solvency during the first order remain in view of the financial results for Maxeon group's fourth quarter of 2024. 3. As to the amount, the Court weighs the claimant’s right to an effective remedy against defendants’ interest in security. 4. The ceiling for recoverable costs for all defendants in this case is € 200.000. 5. Orders a security of € 100.000. Comment 1. A textbook decision on security for costs. Also because I did not see from the decision that Maxeon argued that they would not be able to pursue their claim for infringement. 2. Moreover, if you have a good case as a claimant, you should be able (at a cost!) to find finance for starting proceedings.

Full Decision Text

1 Düsseldorf Local Division UPC_CFI_336/2024 UPC_CFI_605/2024 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 29 July 2025 concerning EP 3 065 184 B1 Headnotes: When a claim is brought against multiple defendants without specifying their respective lia- bility for damages, their share of the amount in dispute is irrelevant when determining the cost ceiling. All defendants must have an equal opportunity to first defend themselves against the alleged infringement as a whole and then against the alleged damages. Keywords: Rule 158 RoP; groups of defendants; determination of the cost ceiling 2 Claimant: Maxeon Solar Pte. Ltd., represented by its CEO, 8 Marina Boulevard #05-02, Marina Bay Financial Centre, 018981 Singapur Represented by: Attorney-at-law Christian Harmsen, Attorney-at-law Dr Bastian Selck, Bird & Bird LLP, Carl-Theodor-Straße 6, 40213 Düsseldorf, Germany Electronic address for service: christian.harmsen@twobirds.com Contributing: Patent Attorney Dr Felix Harbsmeier, Patent Attorney Cameron Walker, Bird & Bird LLP, Am Sandtorkai 50, 20457 Hamburg, Ger- many Tjibbe Douma und Carlos van Staveren, Bird & Bird (Netherlands) LLP, Gustav Mahlerlaan 42, 1082 MC Amsterdam, The Nether- lands Defendants: 1. Aiko Energy Germany GmbH, represented by its CEOs Dr Christian Frank Peter und Haojie Lu, Niederkasseler Lohweg 18, 40547 Düsseldorf, Germany 2. Solarlab Aiko Europe GmbH, Dr Christian Frank Peter, Berliner Allee 29, 79110 Freiburg im Breisgau, Germany 3. Memodo GmbH, represented by its CEOs Enrico Brandmeier, Daniel Schmitt und Tobias Wenleder, Eichenstraße 11 a-d, 85445 Oberding, Germany 4. Aiko Energy Netherlands B.V., represented by its CEO, Schiphol Boulevard 201 – 1118 BG - Schipol, The Netherlands 5. Libra Energy B.V., represented by its CEO Bram van Duijn, Eendrachtsstraat 199, 1951 AX Velsen-Noord, The Netherlands 6. VDH Solar Groothandel B.V., represented by its CEO, Finlandlaan 1, 2391 PV, Hazerswoud- edorp, The Netherlands 7. PowerDeal SRL, represented by its CEO, Rue du Fond des Fourches 41, 4041 Herstal, Belgium 8. Coenergia Srl a Socio Unico, represented by its CEO, Foro Buonaparte 55, 20121 Milan, Italy Defendants 1., 2. and 4. represented by: Attorney-at-law Gertjan Kuipers, Attorney- at-law Hendrik Jan Ridderinkhof and other Representatives before the UPC of Hogan Lovells International LLP, Strawinskylaan 4129, 1077 ZX Amsterdam, The Netherlands Electronic address for service: upc-hub@hoganlovells.com 3 Contributing: Attorney-at-law Dr Henrik Lehment, Attor- ney-at-law Vanessa Zipperich and other Representatives before the UPC of Hogan Lovells LLP, Dreischeibenhaus 1, 40211 Düs- seldorf, Germany Patent Attorney Dr Andreas Schmid, Patent Attorney Cedrik Rohr and other Representa- tives before the UPC of Hogan Lovells Inter- national LLP, Karl-Scharnagl-Ring 5, 80539 Munich, Germany Defendants 3. and 5. to 8. represented by: Attorney-at-law Dr Constantin Kurtz, Attor- ney-at-law Dr Stefan Eck, Attorney-at-law Maximilian Reif, Klaka Rechtsanwälte Part- nerschaft mbB, Delpstraße 4, 81679 Munich, Germany Electronic address for service: ckurtz@klaka.com Contributing: Patent Attorney Dr Markus Herzog, Patent Attorney Manuel Millahn, Weickmann & Weickmann Patent- und Rechtsanwälte Part- mbB, Richard-Strauss-Straße 80, 81679 Mu- nich, Germany PATENT IN SUIT: EUROPEAN PATENT NO. 3 065 184 B1 PANEL/DIVISION: Panel of the Düsseldorf Local Division DECIDING JUDGES: This order was issued by Presiding Judge Thomas acting as judge-rapporteur, the legally qualified Judge Dr Thom, the legally qualified judge Dr Zhilova and the technically qualified judge Dr Schmidt. LANGUAGE OF THE PROCEEDINGS: English SUBJECT: R. 158 ROP – Request for security of legal costs SUMMARY OF FACTS AND STATEMENT OF FORMS OF ORDER SOUGHT BY THE PARTIES: 1. On 30 May 2025, the Defendants 3. and 5. to 8. have lodged a request for security of legal costs. 2. The Defendants 3. and 5. to 8. point out that all relevant factors for ordering security for 4 legal costs have been demonstrated by the Defendants 1., 2. and 4. in the application lodged on 21 August 2024 and confirmed by the order of the Düsseldorf Local Division of the Court of First Instance of the Unified Patent Court issued on 14 April 2025 in this case (App_48223/2024 under main file reference ACT_36426/2024). 3. Furthermore, the Defendants 3. and 5. to 8. argue that the Claimant's financial situation has not improved. They cite the company's reported figures for the last quarter of fiscal year 2024, which clearly show that the Claimant is experiencing significant financial loss. 4. The Defendants 3. and 5. to 8. request that the Claimant be ordered to provide adequate security in the amount of EUR 100,000 to cover the costs incurred and to be incurred by them in these proceedings, as well as other expenses. This amount aligns with the aforementioned order issued by the Düsseldorf LD on 14 April 2025 (marginals 17–21). 5. According to the Claimant, the request is unfounded. 6. The Claimant argues that the Defendants 3. and 5. to 8. clearly have no need for legal protection, as they filed their request for security for costs nine months after Defendants 1., 2., and 4. requested it, and only after the Court issued the order of 14 April 2025. Therefore, it appears that the Defendants' 3. and 5. to 8. sole intention is to harm the Claimant, which constitutes a massive breach of good faith and is contrary to public policy. 7. The Claimant states that there is no reason to doubt its solvency and notes that the security deposit of EUR 100,000 granted to Defendants 1., 2., and 4. has been paid well before the Court-set deadline. 8. Based on the foregoing, the Claimant argues that imposing further securities would no longer constitute fair proceedings and would be unjustified. 9. Finally, the Claimant considers the required security to be too high, pointing out that the present legal dispute is conducted by the AIKO companies and the Defendants' 3. and 5. to 8. sales are significantly lower and will likely play a smaller role in the amount in dispute. Therefore, the Claimant deems it appropriate to set the security amount at no more than 10 % - 20% of that granted security for costs to Defendants 1., 2., and 4. 10. In a subsequent written statement, the Defendants 3. and 5. to 8. object to the arguments of the Claimant, presenting reasons for their unfoundedness. Furthermore, the Defendants 3. and 5. to 8. note that until now they have already charged attorney’s fees on all of them of more than EUR 85,000 in total. Together with the preparation of the oral hearing and the attendance at the oral hearing the attorney’s fees are likely to exceed the ceiling of EUR 100,000. INDICATION OF THE PARTIES’ REQUESTS: 11. The Defendants 3. and 5. and 8. request to order the Claimant, within a period to be determined by the Court at its discretion, to provide security in the amount of EUR 100,000 for the costs of the legal dispute and the other costs incurred by them, by way of bank guarantee, deposit or other appropriate means of security. 5 12. The Claimant requests to dismiss the request for security according to Rule 158 RoP. GROUNDS OF THE ORDER: 13. The Defendants’ 3., and 5. to 8. request is admissible and well founded. A. Legal framework 14. The Court has the discretion to order a security for legal costs and other expenses. In accordance with the case law of the UPC (see CoA, Order of 17 September 2024 in case UPC_CoA_217/2024, Audi v. NST), the Court, when exercising its discretion under Art. 69(4) UPCA and Rule 158 RoP, must determine, in the light of the facts and arguments brought forward by the parties, whether the financial position of the claimant gives rise to a legitimate and real concern that a possible order for costs may not be recoverable and/or the likelihood that a possible order for costs by the UPC may not, or in an unduly burdensome way, be enforceable. Proof of only one of the two conditions is sufficient for the imposition of a security for costs. The burden of substantiation and proof why an order for security for costs is appropriate in a particular case is on the Defendant making such a request, but that – once the reasons and facts in the request have been presented in a credible manner – it is up to the Claimant to challenge these reasons and facts and in a substantiated manner, especially since that party will normally have knowledge and evidence of its financial situation. It is for the Claimant to argue that and why a security order would unduly interfere with its right to an effective remedy (see also CoA, Order of 29 November 2024 in case UPC_CoA_548/2024, Aarke v. SodaStream). B. Necessity of providing security 15. The Claimant's assertion that the Defendants 3. and 5. to 8. do not need protection against the risk of the Claimant's financial difficulties because they filed the request too late is without legal basis. Rule 158.1 RoP clearly states that security for costs may be requested at any time during the proceedings. The Defendants 3. and 5. to 8. may exercise their right to request security for costs at that point, when they deem it appropriate as this action is entirely at their discretion and not bound by specific deadlines. Economic logic dictates that the request should be made when the Defendants 3. and 5. to 8. have sufficient grounds to believe that their costs may not be paid if they win the case. Therefore, waiting for the Claimant's annual financial results and the Court's ruling on the request for security for costs filed by Defendants 1., 2. and 4. cannot be considered an abuse of rights or bad faith conduct intended to harm the Claimant. 16. In its order of 14 April 2025, the Court found that the Claimant's financial situation raised doubts about its solvency. The financial information provided by Defendants 3. and 5. to 8. and not disputed by the Claimant, based on the Maxeon Group’s published fourth quarter and fiscal year 2024 results, confirms this conclusion. The Claimant did not present any evidence to overcome the concerns about its financial situation. The fact that the security deposit determined by the Court in favour of Defendants 1., 2., and 4. has been paid is not sufficient to justify a conclusion of financial stability of the Claimant. Therefore, the Claimant must provide adequate security for the legal and other costs of the Defendants 3. and 5. to 8. 6 C. Amount of security 17. In exercising its discretion, the Court has also to take into account that an order to provide security can, depending on the circumstances, limit the Claimant’s right to an effective remedy and to a fair hearing as guaranteed under Union law, including Art. 47 of the Charter and the Enforcement Directive (UPC_CFI_239/2023 (LD The Hague), Order of 13 February 2024, Arkyne v. Plant-e Knowledge). This must be avoided. Therefore, the Defendants’ interest in security on the one hand and the Claimant’s interest in the effective enforcement of its patent rights must always be balanced. 18. Based on the value in dispute of EUR 1,000,000 for both, the infringement action and the counterclaim for revocation, and therefore EUR 2,000,000 in total, pursuant to the Guidelines for the Determination of Court Fees and the Ceiling for Recoverable Costs adopted by the Administrative Committee of the UPC on 24 April 2023, the ceiling for recoverable costs is EUR 200,000. By its order of 14 April 2025, the Court decided to divide the ceiling equally among the two groups of Defendants in the present case that not only have a different representative, but their relationship to each other as well as their relationship to the alleged infringement is disputed (Group 1: Defendants 1., 2. and 4. and Group 2: Defendants 3. and 5. to 8.). Each group of the Defendants has been entitled to EUR 100,000 of the ceiling. 18. Given the division of the ceiling among the various groups of Defendants, the Claimant's complaint that imposing a second security for costs would place an undue burden on it and violate its right to a fair trial is unfounded. In fact, the ceiling was distributed precisely to balance the interests of the Defendants and the Claimant, and to ensure the fairness of the proceedings. 19. Finally, the Claimant's request that the security be set at no more than 10 % - 20 % of the security granted to Defendants 1., 2., and 4. is also unfounded, since the sales of the Defendants 3. and 5. to 8. are likely to play less of a role in the amount in dispute. When the claim is brought against multiple defendants without specifying their respective liability for damages, their share of the amount in dispute is irrelevant when determining the cost ceiling. Both groups of defendants must have an equal opportunity to first defend themselves against the alleged infringement as a whole and then against the alleged damages. The Court sees no reason to treat the two groups of defendants differently when determining the amount of security for costs, depending on their involvement in the infringement. 20. Due to the division of the ceiling between the two groups of defendants, it can be expected that the costs of Defendants 3. and 5. to 8. will exhaust that part of the ceiling which is attributable to them. In view of this, Defendants 3. and 5. to 8. have a corresponding interest in security. It is not apparent that imposing such a security would unreasonably hinder the Claimant in enforcing its patent. 20. Based on the foregoing and considering the parties’ submissions, the Court considers it fair, reasonable and proportionate to order the Claimant to provide a security in the amount of EUR 100,000, either as a deposit to the UPC account dedicated to security deposits or in form of a bank guarantee from a bank licensed in the European Union. The Claimant may choose which form of security it prefers to provide. 7 D. Time period for providing security 22. As to the time period, the Claimant has to provide security within six weeks of the date of service of the present order. This period is deemed sufficiently long for the Claimant to make the necessary arrangements. E. Granting of leave to appeal 23. Leave to appeal is granted with a view to ensuring a consistent application and interpretation of the Rules of Procedure (Preamble RoP, no. 8). ORDER: For these grounds, having heard the parties on all aspects of relevance for the following order, the Court - orders the Claimant to provide security for legal costs and other expenses to the De- fendants 3. and 5. to 8. in the amount of EUR 100,000 (one hundred thousand euros) either by way of deposit on the UPC account dedicated for security deposits, alterna- tively by way of bank guarantee issued by a bank licensed in the European Union to be chosen by the Claimant within six weeks from the date of service of this order; - grants leave to appeal. INFORMATION UPON SPECIFYING THE TIME LIMIT Pursuant to Rule 158.4 RoP, the Claimant is informed that if it fails to provide the aforementioned security within the time stated a decision by default may be given, in accordance with Rule 355 RoP. 8 DETAILS OF THE ORDER: App_25845/2025 under main file references ACT_36426/2024, CC_57043/2024 and CC_57310/2024 UPC number: UPC_CFI_336/2024 and UPC_CFI_605/2024 Type of procedure: Infringement action and counterclaim for revocation Issued in Düsseldorf on 29 July 2025 NAMES UND SIGNATURES Presiding Judge Thomas Legally Qualified Judge Dr Thom Legally Qualified Judge Dr Zhilova Technically qualified Judge Dr Schmidt

Key Holdings

• Security for costs ordered (€100k).
• Request can be made at any time.
• Solvency doubts justified security.

Tags

• Costs
• Security for Costs
• Solvency

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