UPC_CFI_5245_2025 – Asus v Oppo

Expert Commentary

This is the first case that I have seen in which the non-German judge in the panel of a German Local Division is acting as JR. I consider this as an excellent development for several reasons. First of all, it means that the heavy workload of the German Divisions is better divided over the panel. You immediately see the result in this case, because the decision of the JR is the result of very thorough procedural steps and the decision itself is very elaborately motivated. The second reason is that it emphasizes that the Division (and the UPC) is an international Court. This does not mean that this is an invitation to file in the already busy German Divisions. To the contrary: it is preferred that cases are (better) spread over all UPC Divisions for reasons of UPC acceptance (also in other UPC countries), the credibility of the UPC as a truly international Court, the quality of the UPC proceedings, and also for the users of the system.

Full Decision Text

Local Division Munich UPC_CFI_525/2025 Order of the Court of First Instance of the Unified Patent Court Local Division Munich issued on 12 December 2025 R. 158 RoP Security for costs application HEADNOTE Security for costs applica on against a claimant company established in Taiwan can be accepted as the facts provided in the case indicate that enforcing a cost decision in Taiwan would be at least unduly burdensome especially because neither Taiwanese legisla on nor any interna onal agreement provide certainty for such enforcement. KEYWORDS Security for costs CLAIMANT / RESPONDENT ON R. 158 ROP APPLICATION: ASUS Technology Licensing Inc., 2F., No. 11, Sec. 2, Beitou Rd, Beitou Dist, 112028 Taipei City, Taiwan (hereina er ASUS of Claimant) represented by: All UPC Representa ves of EIP Europe LLP including, in par cular, Dr. Christof Höhne, Isabelle Schaller, Dr. Sebas an Fuchs, Dimitri Kosenko, Maximilian Häger, Jerome Spaargaren, James Seymour, Neil Condon, Darren Smyth and Joanne Welch and further represented by: Dr. Marina Wehler, Dr. Arno Riße, Dr. Lisa Rieth, Victoria Thüsing, A orneys-at-Law, ARNOLD RUESS Rechtsanwälte PartmbB DEFENDANTS / APPLICANTS: 1. Guangdong OPPO Mobile Telecommunica ons Corp. Ltd, No. 18 Haibin Road, Wusha, Chang'an Town, Guangdong Province, Dongguan, 523860, China UPC_CFI_525/2025 2. OnePlus Technology (Shenzhen) Co., Ltd, 18/F, Tower C, Tai Ran Building, No.8 Tai Ran Road, Shenzhen, 518040, China 3. Realme Chongqing Mobile Telecommunica ons Corp., Ltd, No.178 Yulong Avenue, Yufengshan, Yubei District, Chongqing, 401120, China 4. OROPE Germany GmbH, Graf-Adolf-Platz 15, 40213 Düsseldorf, Germany 5. OTECH Germany GmbH, Graf-Adolf-Platz 15, 40213 Düsseldorf, Germany 6. Oleading B.V., Weena 505, 3013AL Ro erdam, The Netherlands 7. Reflec on Investment B.V., Hofplein 20, 3032AC Ro erdam, The Netherlands 8. OTech Italia s.r.l., Viale Dell'Innovazione 1, Milano (MI) CAP 20126, Italy 9. Realme Germany GmbH, Wiesenhü enstraße 11, 60329 Frankfurt am Main, Germany (hereina er all together as Defendants) represented by: Dr. Gisbert Hohagen, Taylor Wessing and all UPC Representa ves of Taylor Wessing Partnerscha sgesellscha mbB and all UPC Representa ves of Taylor Wessing N.V. PATENT AT ISSUE: European patent n° EP 3 346 616 LANGUAGE OF THE PROCEEDINGS: English PANEL: Panel 1 of the Local Division Munich DECIDING JUDGE: This order has been issued by the judge-rapporteur Petri Rinkinen POINTS AT ISSUE: R. 158.1 RoP applica on by Defendants SUMMARY OF FACTS 1. Defendants have on 25 August 2025 lodged an applica on for security for costs. 2. By an order dated 3 September 2025 by the Presiding Judge ac ng on behalf of the Judge- rapporteur, Claimant was given six weeks to provide an answer to the applica on. Claimant has on 15 October 2025 provided an answer to the applica on reques ng the court to reject the applica on. Claimant provided with their answer an expert opinion of a Taiwanese professor of law They also provided two wri en witness statements from the CEO of their license broker Celerity IP. 3. As the next steps of the procedure the Court heard the par es of their confiden ality requests as well as two applica ons by the Claimant to provide evidence. A er issuing orders on these ma ers the Court on 24 November 2025 requested the par es to provide further submissions. 2 UPC_CFI_525/2025 4. Defendants have on 1 December 2025 submi ed their second submission. 5. Claimant has on 4 December 2025 submi ed their second submission. REQUESTS OF THE PARTIES 6. Defendants request that Claimant is ordered to provide adequate security within a period to be determined by the Munich Local Division for the costs of the proceedings and other costs pursuant to Rule 158.1 RoP by way of deposit on the UPC account dedicated for security deposits, alterna vely by way of bank guarantee provided by a bank licensed in the EU, whereby the exact amount is subject to the discre on of the Munich Local Division but should be set by considering the maximum of reimbursable fees under the Rules of the UPC based on a value in dispute of 2.5 million EUR for the infringement claim and by taking into account the expected reimbursable fees and costs of a counterclaim for revoca on based on a value in dispute of at least further 2.5 million EUR. 7. ASUS is reques ng that the request for security for legal costs is rejected. SUBMISSIONS BY DEFENDANTS 8. Claimant has their registered office in Taiwan and therefore outside the territory of the Contrac ng Member States. Defendants see a substan al risk that a poten al claim for reimbursement of costs cannot, or can only in an unduly burdensome way, be sa sfied due to procedural difficul es regarding enforcement of foreign judgments in Taiwan. 9. The UPC Court of Appeal has noted that the mere fact of a party being registered outside the European Union or European Economic Area weighs against the likelihood of successfully enforcing a cost decision, par cularly in the absence of guarantees ensuring the recogni on and enforcement of such decisions (CoA, 9 July 2025, UPC_CoA_431/2025, Chint New Energy v. Jingao Solar, second headnote). 10. Taiwan is not a Contrac ng State to the Hague Service Conven on; service and enforcement ma ers are assessed case-by-case by Taiwanese courts. There is no bilateral agreement on the recogni on and enforcement of judgments. Recogni on depends on the principle of reciprocity and on individual judicial review, which means there are no automa c enforcement mechanisms. This creates a substan al risk for Defendants. 11. The expert opinion provided by Claimant supports Defendants’ posi on. It confirms that Taiwanese law does not guarantee that a cost decision can be enforced in Taiwan. In par cular, the opinion raises substan al doubts regarding the legality of enforcing a cost reimbursement claim encompassing a orney’s fees in Taiwan. The opinion further does not rebut the uncertainty of the current enforcement prac ce in Taiwan. Regarding the applica on of the local law in prac ce, prac ce has shown that enforcement in Taiwan is difficult. 12. According to the expert opinion, a ceiling exists for recovering a orney’s fee, but there is no informa on of the cap. Based on the opinion it also seems that also par al enforcement has been considered jus fied. Based on the opinion it is very likely that at least relevant part of a cost reimbursement order will not be enforced in Taiwan. 3 UPC_CFI_525/2025 13. In the absence of a binding interna onal contract and legal certainty provided by local law, enforcement is based on the expert opinion dependent on “recent trends and ini a ves”. Such trends, ini a ves, and efforts can change, as they are not subject to interna onal agreements but are rather uphold by mere poli cal will. Therefore, the current prac ce fails to provide the necessary legal certainty. There is a likelihood that a cost decision might not be enforced, par cularly if carried out by a Chinese counterparty. 14. Claimant has no undisputed monetary claims against Defendants. The mere possibility of a future payment obliga on does not establish a due and enforceable claim that can be offset against a procedural cost-reimbursement claim. The requirements for offse ng are thus not met. SUBMISSIONS BY CLAIMANT 15. The request for security for legal costs must be rejected for two reasons: (1) Defendants have no need for security because they can offset any cost claims against the FRAND license fees owed to Claimant, which undisputedly exceed any poten al cost reimbursement claims, and (2) according to the expert opinion obtained by Claimant, there are no difficul es in enforcing any claim for reimbursement of costs, inter alia because Taiwan complies with the provisions of the Hague Conven on, even though Taiwan was unable to accede to the Conven on due to the poli cal situa on. 16. Claimant has offered Defendants a FRAND license agreement of Claimant’s patent por olio. Defendants have indicated that the value of such license exceeds the amount of any poten al claim for reimbursement of costs by Defendants. Therefore, Defendants can indemnify themselves in the event of possible claim for reimbursement of costs deduc ng the reimbursement amount from license fee owed. 17. The expert opinion provided by Claimant demonstrates that the enforcement of a cost decision in Taiwan is not unduly burdensome. 18. Claimant’s financial posi on is not disputed by Defendants and hence there is no reason to suggest that a poten al order for costs may not be recoverable. 19. The burden of substan a on and proof why an order for security for costs is appropriate in a par cular case is on the defendant making such a request. Defendants have not provided such substan a on. 20. Defendants have not provided any evidence of the amount of their costs. The amount of the security should not be higher than 50% of the upper limit and no security should be accepted based on the revoca on claim which has not been filed. 4 UPC_CFI_525/2025 GROUNDS FOR THE ORDER 21. Defendants have requested the security for costs merely based on that Claimant is a company established in Taiwan and that the enforcement of costs decision would be unduly burdensome in Taiwan. There is no dispute about the financial situa on of Claimant. 22. Claimant has provided an expert opinion indica ng that the enforcement in Taiwan is not unduly burdensome and have also argued that the request should be rejected as Defendants owe them FRAND license fees and any cost decision could be offset against such fees. 23. According to Ar cle 69 (4) of the Unified Patent Court Agreement (“UPCA”), the Court may, on applica on by the defendant, order the applicant to provide adequate security for the legal costs and other expenses incurred by the defendant which the applicant may be liable to bear, in par cular in the cases referred to in Ar cles 59 to 62 UPCA. 24. According to R. 158.1 RoP, at any me during proceedings, following a reasoned request by one party, the Court may order the other party to provide, within a specified me period, adequate security for the legal costs and other expenses incurred and/or to be incurred by the reques ng party, which the other party may be liable to bear. Where the Court decides to order such security, it shall decide whether it is appropriate to order the security by deposit or bank guarantee. 25. It is the established case law of the Court that security for costs can be ordered based on the request of the defendant in an infringement case. Offse ng the security 26. Based on what the par es have presented it seems that Defendants may have in the future certain license fees to be paid to Claimant but the amount of such fees and also the payment schedule of such fees is totally open. Hence the Court finds that the possibility of such fees exis ng in the future does not as such present a claim that can be offset against the legal costs. Hence Claimant’s argument challenging the acceptance of the security for costs applica on based on such offse ng must be rejected. Enforcement in Taiwan 27. The UPC Court of Appeal has on its order 9 July 2025 given the following headnotes that can be considered guidance to the Court of First Instance: - The finding that – due to the recent establishment of this Court – there is currently no experience with enforcing costs decisions of this Court in a par cular country, does not rule out the possibility that enforcing a cost decision in that country may prove to be impossible or unduly burdensome. In the absence of such experience, the Court must examine the likelihood of successful enforcement on the basis of other facts and circumstances. 5 UPC_CFI_525/2025 - In the context of the assessment of the likelihood of successful enforcement of a cost decision, the fact that a party has its registered office in a country that is not a Member State of the European Union or the European Economic Area, is a relevant factor. Whereas Union law guarantees the recogni on and enforcement of judgements of courts of Member States, including this Court, in other Member States, similar guarantees may not be in place for the recogni on and enforcement in states that are not members of the European Union or the European Economic Area. 28. In the present case the registered office of Claimant is in Taiwan. There is no experience of enforcing UPC cost decisions in Taiwan that the Court would know of and hence the Court must examine the likelihood of successful enforcement on the basis on the facts and circumstances presented by the par es. 29. Claimant has provided an expert opinion by an expert whose creden als seem very reliable and whose credibility has not even been challenged by Defendants. At the same me the Defendants have challenged the conclusions that the expert and Claimant have drawn based on the facts presented in the opinion. 30. The expert opinion provides a conclusive picture of the situa on how foreign judgments are and can be enforced in Taiwan. The following are the main facts and conclusions of the opinion: - Summary by the expert: Although Taiwan law requires foreign court judgments to be first recognized by Taiwan courts before they may be determined as enforceable, there is no substan ve evidence suppor ng the existence of any significant procedural difficul es, or undue burdens, on the poten al enforcement of UPC judgment on claim for reimbursement of costs in Taiwan. - Enforcement in Taiwan requires recognizing the foreign judgment by the competent Taiwanese court. - Taiwanese law regarding the enforcement of foreign judgments was described in detail. - Taiwan is not a member of the Hague Judgment Conven on due to its poli cal status, but the Taiwanese courts almost always grant leave for the enforcement of foreign court judgments as a ma er of fact. - Based on sta s cs from 2020 to 2025 there has been 40 cases when enforcement has been requested. Out of those 12 pe ons were completely dismissed and they were all default judgments. - Most Taiwanese courts have been recognizing foreign judgments in the name of interna onal reciprocity with reasonable expecta on of future reciprocal recogni on by foreign jurisdic ons, crea ng an increasing trend toward recogni on and enforcement of foreign judgments. - Taiwanese courts rou nely permit the enforcement of foreign judgments without erec ng undue barrier. 6 UPC_CFI_525/2025 - A er the competent Taiwanese court has permi ed the enforcement, then the pe oner may submit for compulsory enforcement to the relevant enforcement court. - A orney’s fees are not generally included as reimbursable li ga on expenses in Taiwan but as an excep on to this rule a orney’s fees are accepted in intellectual property rights li ga ons. - A case-by-case analyses is performed and generally reimbursement of a orney’s fees would not contravene Taiwanese laws. - Timeframe of enforcement is generally approximately six months but can be anything up to six years depending on various factors such as the defences raised by the opposing party and whether the decisions are appealed. 31. The Defendants have noted that, based on the expert opinion, there are many uncertain es affec ng the enforcement process in Taiwan. For example, they note that not all Taiwanese courts recognise foreign judgments, even based on the expert opinion. Also, according to the expert opinion, a case-by-case review is performed, the outcome of which is uncertain. They also point out that the meframe for enforcement can be up to six years, which is an unacceptably long period. 32. The Court finds based on the expert opinion, which is the only basis to evaluate facts in this situa on, that the enforcement in Taiwan may in most cases be possible but that there are already based on the expert opinion uncertain es because the enforcement is not provided or protected as such by na onal Taiwanese laws or interna onal agreements. The par es seem to refer to different interna onal agreements but it is clear that Taiwan is not a member of any interna onal agreement which would govern the enforcement of foreign judgments in Taiwan. Based on the expert opinion also the meframe to be expected can vary significantly from a few months up to six years. Based on this the Court considers that the facts provided in this case indicate that enforcing a cost decision in Taiwan would be at least unduly burdensome. 33. Based on the above the Court finds the request of the Defendants to order the Claimant to provide adequate security for the costs of the proceedings and other costs acceptable in the form as presented in the order. Security concerning the counterclaim for revoca on 34. Based on the Court of Appeal order on 20 June 2025 (UPC_CoA_393/2025, Aor clab srl v. Emboline, Inc.) security for costs can be ordered based on the request of a defendant in an infringement case as well as based on a counterclaim filed by such defendant. Hence both requests of Defendants as such are poten ally admissible. Nevertheless, the Defendants have not as yet filed a counterclaim for revoca on and hence the applica on based on such counterclaim shall be rejected. The rules of procedure do not prevent an addi onal applica on a er the counterclaim for revoca on has been filed. 7 UPC_CFI_525/2025 The amount of security 35. Defendants have claimed that the amount of security should be the maximum amount for an infringement case of value of EUR 2,5 million. According to the UPC Administra ve Commi ee’s Scale of ceilings for recoverable costs (24 April 2023) the maximum amount would be EUR 400, 000. 36. Claimant has argued that the amount of security should not be more than 50% of the maximum. 37. Defendants have not provided any indica on of the amount of their costs in the applica on or in their second submission. Even though Claimant challenged the amount of the requested security only in their last submission it has been the duty of Defendants to provide informa on of their costs in their applica on. As this has not taken place, the Court finds that adequate security at this stage of the proceedings is 50% of the maximum as requested by Claimant i.e. EUR 200,000. ORDER 1. Claimant is ordered in case UPC_CFI_525/2025 to provide security in the amount of EUR 200,000 within a period of six weeks for the costs of the proceedings and other costs pursuant to Rule 158.1 RoP by way of deposit on the UPC account dedicated for security deposits or alternatively by way of bank guarantee provided by a bank licensed in the EU. 2. Other requests relating to the R. 158 RoP application by Defendants are rejected. 3. An appeal may be lodged in accordance with article 73 of the UPCA and R. 220.2 RoP (R. 158.3 RoP). 4. Claimant is advised that a default judgment may be issued in accordance with Rule 355 RoP if security is not provided within the specified period (R. 158.4 RoP). Issued on 12 December 2025 NAMES AND SIGNATURES Matthias Zigann Presiding judge Matthias Digital unterschrieben von Matthias ZIGANN ZIGANN Datum: 2025.12.12 12:58:21 +01'00' Tobias Pichlmaier Tobias Günther Digital unterschrieben von Tobias Legally qualified judge Günther Pichlmaier Pichlmaier Datum: 2025.12.12 12:55:18 +01'00' Petri Rinkinen Allekirjoittaja Petri Olavi Rinkinen Legally qualified judge, judge rapporteur Päivämäärä: 12/12/25 1:21:10 PM 8

Key Holdings

• Defendants applied for security for costs against a Taiwanese claimant.
• The Court referred to the Court of Appeal's guidance on the difficulty of executing cost decisions outside the EEA.
• Evidence presented confirmed that a costs decision could not be executed in Taiwan without undue burden.
• The Court ordered the claimant to provide security for costs in the amount of €200,000.

Tags

• Security for Costs

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