UPC_CFI_583/2025 – Bostik v Henkel

Expert Commentary

Production of evidence Facts 1. The case concerns an infringement action with a counterclaim for revocation. 2. Bostik asked the Court to order Henkel to submit Technical Data sheets on certain products both through the CMS and by email to Bostik’s representatives. The Court 1. The Court refers to Article 49.1 of the UPCA and R. 190 RoP. 2. The Court accepts Bostik’s arguments that it is practically impossible to get the evidence of infringement as the technical information provided on Henkel’s website and written materials are insufficiently detailed. 3. Furthermore, the Court considers the requested materials exist and are necessary for Bostik to be able to respond to Henkel’s defence. 4. The Court orders Henkel to produce the data sheets via the CMS. 5. It refuses to order that the materials should also be communicated by email and to impose penalty payments in case of refusal by Henkel. 6. The Court considers R. 36 RoP (request to file additional submissions) is not applicable at this stage but both parties will be able to comment on the new materials with their next submissions. Comment 1. This decision is in all aspects well-reasoned. 2. Indeed, the UPC can order the production of specified evidence in the possession of the defendant or a third party to (further) prove the alleged infringement. 3. Obviously, such a “self-incriminating” measure should only be granted if on the basis of the applicant’s submissions, there is a (clear) suspicion of infringement. The requirement that the request targets “specified” evidence is meant to avoid fishing expeditions and US-style discovery proceedings. 4. The Court is also right to refuse to impose penalties in case of non-compliance: Henkel may choose not to produce the documents but then the court can draw any conclusion from such refusal. 5. The Court is also right about R. 26 RoP which addresses the need for further exchanges after all the written submissions have been filed. In this case, I assume parties can react on the Rejoinder and the Reply.

Full Decision Text

1 ORDER of the President of the Court of First Instance in the proceedings before the Local Division MANNHEIM Pursuant to R. 323 RoP (language of the proceedings) Issued on 26 January 2026 KEYWORDS - Change of the language of the proceedings – Art. 49 (5) UPCA and R. 323 RoP APPLICANTS (DEFENDANTS IN THE MAIN PROCEEDINGS): 1- Amazon.com, Inc. Corporation Service Company, 251 Little Falls Drive, 19808, Willmington, County of New Castle, State of Delaware - US 2- Amazon Europe Core S.a.r.l 38 avenue John F. Kennedy, L-1855, Luxembourg - LU 3- Amazon EU S.a.r.l. Marcel-Breuer-Str. 12, 80807, Munich - DE 4- Amazon Technologies, Inc. Corporation Service Company, 112 North Curry Street, 89703, Carson City, Nevada - US 5- Amazon Media EU S.à.r.l. 38 avenue John F. Kennedy, L-1855 , Luxemburg - LU UPC_CFI_2045/2025 Local Division Mannheim 2 6- Amazon.com Services LLC c/o Amazon EU S.a.r.l. 38 avenue John F. Kennedy, L-1855, Luxembourg, LU Represented by: Klaus Haft, Martin Köhler, Sven Krause, Nico Schur, Michiel de Baat, Andrew Lin – HOYNG ROKH MONEGIER RESPONDENT (CLAIMANT IN THE MAIN PROCEEDINGS): InterDigital Madison Patent Holdings, SAS 20 rue Rouget de Lisle, 92130, Issy-les-Moulineaux, FR Represented by: Julius Winkler, Lisa Rieth, Cordula Schumacher, Arno Riße, Tuğçe Altun - ARNOLD RUESS PATENT AT ISSUE: EP2803191 SUMMARY OF FACTS By a statement of claim filed on 18 December 2025, InterDigital Madison Patent Holdings, SAS brought an infringement action against the abovementioned Applicants (hereinafter collectively referred to as “Amazon”, or “the Defendants” with regard to their status in the main proceedings) based on EP2803191 titled “Method and device for coding an image block, corresponding method and decoding device”. By a generic procedural application dated 19 January 2026, the Defendants, 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 and by an order dated 20 January 2026, the Claimant in the main action 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. 3 InterDigital Madison Patent Holdings, SAS submitted its written comments on 21 January 2026. The panel of the LD Mannheim has been consulted in accordance with R. 323.3 RoP. INDICATION OF THE PARTIES’ REQUESTS AND POINTS AT ISSUE: The Defendants request that the Court change the language of the proceedings from German to English pursuant to R. 323.3 RoP. The Applicants first state that according to the existing consistent case law, their request is admissible even though not being submitted with the Statement of Defence. A more restrictive interpretation of R. 323.1 RoP would not ensure a flexible and balanced application of this provision. On the merits of the Application, they contend that a change of the language of the proceedings from German to the language in which the patent was granted is justified on grounds of fairness and considering all relevant circumstances pursuant to Art. 49 (5) UPCA and R. 323 RoP, for the following reasons: - None of the Defendants are based in Germany. The fact of being sued in a language they don’t master is a decisive disadvantage. - The circumstances of the case require a uniform and coordinated work of the Defendants who need to efficiently and rapidly communicate in English. Moreover, all technical support is generally provided by employees located in the US. - There is no indication that the requested change would disadvantage the Claimant that generally uses English and can handle the dispute in this language. - English is the language used in the relevant technical field of technology – namely image processing – which is reflected by the prior art documents and relevant literature. - FRAND negotiations – expected to play a significant role in the present proceedings – were conducted in English. - Strategic considerations for the Claimant to choose a given language should not be taken into account in weighing the respective interests of the parties. - The adoption of English as language of the proceedings is likely to facilitate the organisation of the Court’s activities and serves the objective of procedural efficiency. 4 InterDigital Madison Patent Holdings, while still of the opinion that the requested change is not necessary for grounds of fairness, stated that it commented extensively on the same issue in the context of previous application without its comments being accepted. The Respondent therefore refrains from presenting its arguments again in the present case against the background of the orders previously issued in UPC_CFI_86/2025 and UPC_CFI_87_2025, to save judicial resources. GROUNDS FOR THE ORDER: 1- Admissibility of the Application The admissibility of the Application is not disputed in the present case. 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 Madison Patent Holdings does not substantiate any circumstances of the case or relating to the parties which could justify not changing the language of the present proceedings. They merely refer to previous comments submitted in the context of other infringement actions before the Mannheim and Düsseldorf Local Divisions that they will not reiterate, considering that their arguments have not been decisive in the respective orders dated 30 April 2025 (Nos. APP_11333/2025 and 17395/2025 - UPC_CFI_87/2025 – LD Düsseldorf) and 2 May 2025 (No. APP_17389/2025 - UPC_CFI_86/2025 – LD Mannheim). In the absence of further arguments and objections raised by Madison Patent Holdings in the main proceedings and given the position stated by Amazon 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. 5 The present order shall not at this stage be conditional on specific translation or interpretation arrangements, which are not requested. 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. 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 26 January 2026 NAME AND SIGNATURE Florence Butin President of the UPC Court of First Instance

Key Holdings

• Parties will have the opportunity to comment on newly produced materials in subsequent submissions.
• Requests for evidence production must target 'specified' evidence to prevent fishing expeditions and US-style discovery.
• The UPC can order the production of specified evidence (Art. 49.1 UPCA, R. 190 RoP) if there is a clear suspicion of infringement and the evidence is necessary.
• The court may draw adverse conclusions from non-compliance with a production order, rather than imposing penalty payments.

Tags

• Discovery
• Evidence
• Infringement
• Procedure

Related Cases

• UPC_CFI_808/2025 – Guardant Health v Sophia Genetics
• UPC_CFI_813/2024_Mar24_Saisie – Tiru v Maquin
• UPC_CFI_163/2024_May23_Infringement – Hurom v NUC
• UPC_CFI_813/2024 – Tiru v Maquin
• UPC_CFI_440/2023 – Seoul Viosys v Laser Components