UPC_CFI_427/2024 ORD_53290/2024 – Qualcomm

Court
Central Division Paris
Date
Outcome
Denied
Sector
Electronics/SEP
Decision Type
PROCEDURAL

Expert Commentary

Background and decision Qualcomm asked the Court to annul a decision of the EPO (see for the tasks of the EPO, Art. 9 of Regulation (EU) 1257/2012). Before the Court decided, the EPO already did what Qualcomm requested. The Court then closed the case pursuant R. 91.2 RoP and ruled that there was no particular reason to reimburse (part of) the fee. In this case, Qualcomm requests the Court to rectify the above decision and to order reimbursement of (part of) the fee, arguing that the Court should have done so on its own motion (R. 91.2 jo. R. 370.11 RoP). The Court decides that it has already decided the issue and cannot review and decide in a different way. The Court (apparently) decides that this is an order by a single judge (and not a management order) and grants leave for appeal. Comment: 1. I assume that Qualcomm asked the (original) case to be heard by a single judge (R. 88 under f RoP), because normally these cases are heard by three legal judges (Art. 8(6) UPCA). 2. This means that it is not a management order and as the Court rightly indicates the order can directly be appealed. Moreover, a management order could have been altered or revoked (R. 335 RoP).

Full Decision Text

Paris Central Division Order of the Court of First Instance of the Unified Patent Court pursuant to R. 370 and 91 (2) RoP delivered on 24/10/2024 in the proceedings 52964/2024 - UPC_CFI_427/2024 HEADNOTE: -Court may, upon prior reasoned request, order full or partial reimbursement of the fee for the action pursuant to R. 88 RoP. -There is no possible review if the case is handled by a single judge. KEYWORDS: -Application pursuant to R. 370.11 RoP - reimbursement of fees APPLICANT QUALCOMM INCORPORATED 5775 MOREHOUSE DRIVE - 92121-1714 – San Diego – US Represented by: Francesco Celluprica PATENT AT ISSUE Patent no. Proprietor/s EP3516914 QUALCOMM INCORPORATED DECIDING JUDGE Presiding judge Florence Butin LANGUAGE OF PROCEEDINGS: English 1 SUMMARY OF FACTS By an application dated 19 July 2024 (App_42538/2024 UPC_CFI_427/2024), Qualcomm Incorpo rated (hereinafter “the Applicant”) requested the Court of First instance of the UPC – Paris Central division – to annul a decision of the European Patent Office in carrying out the tasks referred to in Art. 9 of Regulation (EU) No 1257/2012. By a notification issued on 13 August 2024 (EPO interlocutory revision No 46904/2024), the EPO: -informed the Court under R.91 (1) (b) that the contested decision dated 10 July 2024 had been rectified in accordance with the order or remedy sought by the Claimant; -provided the communication dispatched to Qualcomm Inc. accordingly. By an order dated 13 September 2024, the Court closed the case pursuant to R. 91.2 and held that there was no particular reason to order full or partial reimbursement on the fee for the action. INDICATION OF THE APPLICANT’S REQUEST: By a generic application filed on 23 September 2024 (No. App_52964/2024), Qualcomm Inc. asks the Court to: 1. Mainly, totally reimburse the fee paid; 2. Subsidiarily, reimburse 60% of the fee; 3. Further subsidiarily, reimburse 25% of the fee. The Applicant argues that according to R. 91.2 RoP in combination with R. 370.11 RoP, the Court should consider to reimburse the fee without any reference to a claimant request/activity and that: -the contested decision has been rectified in accordance with the request; -there is no rule that requires to mention particular circumstances in order to obtain a reimburse ment other than the prevailing in the proceeding; -the proceeding has been closed before the closure of the written procedure and has been handled by a single judge. GROUNDS FOR THE ORDER The disputed order was issued pursuant to R. 91.2 RoP, which reads as follows “where the court is informed that the contested decision has been rectified, it shall inform the Claimant that the action is closed and may order full or partial reimbursement of the fee for the action against a decision of the Office in accordance with part. 6”. According to this provision, the Court may order a reimbursement of the fee in total or in part along with the notification that the case is closed – thus in the same decision – while pursuant to R.370.11 (Part.6 of the RoP referred to in above) “[t]he party seeking reimbursement under para graphs 9 and 10 shall lodge a reasoned Application for reimbursement to the Court. The Court shall deal with the application without delay and if satisfied that the reimbursement is appropriate shall direct the Registrar to make the payment as soon as practicable”. 2 Moreover, R.370.9 states that “fixed and value-based fees may be reimbursed as follows: (a) If the action is heard by a single judge [Rule 345.6.] the party liable for the Court fee will be reimbursed by 25 % of the fee. (b) (…) (c) If the parties have concluded their action by way of settlement the party liable for the Court fees will be reimbursed by: (i) 60 % if the action is settled before the closure of the written procedure”. It results from these provisions that the Court may, upon prior reasoned request, decide on the reimbursement of the court fees incurred in total or partly. Even if it is foreseen by R. 370.11 RoP that an application may also be filed at a later stage, it remains in the present case that the Court of First Instance cannot review its previous order on the same subject-matter and decide in a dif ferent way, considering – should it be a case management order – that the decision was taken by a single judge (without possible panel review) and the Order can be appealed. It follows from the above that the Application for reimbursement must be dismissed. ORDER 1- The Application for reimbursement pursuant to R. 370.11 is dismissed; 2- An appeal may be brought against the present order pursuant to R.220 (b) RoP. Issued on 24 October 2024 Florence Butin – Presiding Judge ORDER DETAILS ORD_53290/2024 issued in ACTION NUMBER: App_52964/2024 UPC number: UPC_CFI_427/2024 Action type: Application pursuant to R. 370.11 RoP (reimbursement of fees) 3

Key Holdings

  • Qualcomm's request to annul an EPO decision became moot as the EPO had already complied with the request.
  • The Court closed the case and refused to order reimbursement of fees, stating it could not review or alter its previous decision.
  • The decision was classified as an order by a single judge, not a management order, and thus leave for appeal was granted.
  • The case highlights the principle that a court cannot revisit an issue it has already decided.
  • The distinction between appealable orders by a single judge and non-appealable management orders is clarified.

Tags

  • Appeal
  • Costs
  • EPO
  • Mootness

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