UPC_CFI_666/2024; UPC_ CFI_199/2025 – Adeai v Walt Disney

Court
Local Division The Hague
Date
Outcome
Partially Granted
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Order after interim conference The JR 1. The value of litigation is set at € 12 million for the claim and € 12 million for the counterclaim. 2. Regarding costs, it was agreed that each party will submit a cost estimate two weeks before the hearing and one week before each party may comment on the costs submitted by the other party, unless the parties settle on the amount. 3. The hearing is scheduled on 29 January 2026. 4. The request regarding the confidentiality club is granted. 5. The late filed prior art documents D8 and D9 are accepted as reaction to claim amendments. During the hearing it will be decided if D8 and D9 are accepted as prior art for the granted claims. Disney has to explain in no more than 3 pages why it thinks Adeai changed its claim interpretation. Comment Again a (Dutch) JR encourages parties to agree on costs which in Dutch national proceedings almost always is achieved between reasonable representatives. As the outcome of the case is uncertain it should be not difficult to agree on costs. It saves parties a lot of work (“cost proceedings”) and saves their clients’ money. Litigating about costs is not the most gratifying work for representatives or for a court that wishes to focus with true patent questions. So a win-win for everyone involved – especially the clients!

Full Decision Text

UPC_CFI_666/2024 UPC_CFI_ 199/2025 Procedural Order of the Court of First Instance of the Unified Patent Court Local Division The Hague delivered on 3/11/2025 concerning: order after interim conference (R. 105.5) Date of receipt of Statement of claim : 07/11/2024 The Walt Statement Disney of claim Company served on (Benelux) B.V. 19/11/2024 (Defendant) - Asterweg 15S - 1031 HL - Amsterdam - NL Disney Statement Interactive of claim Studios, Inc. served on (Defendant) - 05/12/2024 500 South Buena Vista St, - 91521 - Burbank, California - US The Walt Statement Disney of claim Company served on Limited 11/12/2024 (Defendant) - 3 Queen Caroline Street - W6 9PE - Hammersmith, London - GB REFERENCE CODE ECLI: Not provided 1 CLAIMANT/S 1) Adeia Guides Inc. Represented by Prof. Dr. (Claimant) - 3025 Orchard Parkway - CA 95134 Tilman Müller-Stoy - San Jose - US DEFENDANT/S 1) The Walt Disney Company (Benelux) B.V. Represented by Dietrich Burkhard (Defendant) - Asterweg 15S - 1031 HL - Kamlah Taylor Wessing PartGmbB Amsterdam - NL 2) Disney Interactive Studios, Inc. Represented by Dietrich Burkhard (Defendant) - 500 South Buena Vista St, - Kamlah Taylor Wessing PartGmbB 91521 - Burbank, California - US 3) The Walt Disney Company Limited Represented by Dietrich Burkhard (Defendant) - 3 Queen Caroline Street - W6 Kamlah Taylor Wessing PartGmbB 9PE - Hammersmith, London - GB PATENT AT ISSUE Patent no. Proprietor/s EP1969839 Adeia Guides Inc. DECIDING JUDGE Presiding judge Edger Brinkman Judge-rapporteur Edger Brinkman LANGUAGE OF PROCEEDINGS: English 2 SUBJECT-MATTER OF THE PROCEEDINGS Infringement claim and counterclaim for revocation GROUNDS FOR THE ORDER Today the interim conference was held. Online were present: Claimant: Adeia Guides Inc. Prof. Dr. Tilman Müller-Stoy, UPC Representative for Claimant Dr. Georg Anetsberger, UPC Representative for Claimant Dr. Marius Fischer, UPC Representative for Claimant Julia Bernatska, UPC Representative for Claimant Michael Schwartz, Senior Vice President, Litigation at Claimant Efrain Staino, Vice President, Litigation at Claimant Rowena Young, Vice President, IP Rights Management/OTT Lead at Claimant Michael Stevenson, Senior Vice President, Media Strategy & Litigation – EMEA at Claimant Defendant: The Walt Disney Company (Benelux) B.V. et al. Dr. Dietrich Kamlah (attorney-at-law) Dr. Christian Lederer (attorney-at-law) Dr. Michael Schächinger (attorney-at-law) Dr. Joel Naegerl (patent attorney) Dr. Lorenz Walder-Hartmann (patent attorney) Pursuant to the summons of 30 October 2025, the following topics were discussed: - R. 104.d Parallel litigation is pending in UPC LD Munich (OH 15 January 2026), in German national court (OH 25 February 2026). Also, litigation is pending in the US and Brazil on the merits, which will take years to resolve. In BR, a PI is in place. - R. 104.i-k Parties discussed the value of the dispute, also – as requested by the JR – In respect of the enforcement security requested by Disney to the amount of 500 million Euros. Disney indicated 12 million may be more appropriate. The JR decided to follow the defendants and set the value at 12 million for both the claim and the counterclaim. This also means more fees should be paid to the Court. Regarding the costs, it was agreed that each party will submit a cost estimate two weeks before the hearing, and one week before each party may comment on the costs submitted by the other side (max. 5 pages). Or parties settle on an amount. 3 - the requested postponement of the hearing Defendants indicated that the intervening hearing of 28 Jan is no longer applicable so the OH may proceed on 29 January 2026 as scheduled. - enforcement security and late filed submission as to the amount requested by Defendants, namely in their submission of 6 October 2025 and exhibit TW7 (by claimant) As to the confidentiality, Disney agreed to the confidentiality club proposed by Adeia. The JR granted the request. No penalty enforcement is needed according to Disney. Adeia indicated that Disney regardless did not substantiate why Adeia would not be good for the money in case an injunction would be overturned. Disney contested. This decision is for the panel. - late filing of the prior art references D8 and D9 (by claimant) Disney indicated that the two weeks late filing after the rejoinder was a clerical mistake and that Adeia applied for an extension of two weeks on this ground, which was granted. The two-week late argument was therefore already resolved. Disney further argued that D8/D9 were submitted as a response to the amendment to the patent filed by Adeia and to that Adeia changed its position on interpretation of the granted claim. Disney will explain in 3 pages within two weeks what change in position it refers to. So, the decision to accept D8/D9 for the granted claims was deferred to the OH. For the amended claims, D8/D9 were accepted by the JR. ORDER The Court: - Sets the value of the main claim and the counterclaim at € 12,000,000 and orders Adeia to pay the fee difference for the main claim within 10 days from service (R. 371.4) - Grants the request for confidentiality as submitted by Disney; - Refers for the rest to the grounds above. Digitally signed Edger by Edger Frank Frank BRINKMAN Date: 2025.11.03 BRINKMAN 15:06:58 +01'00' 4

Key Holdings

  • The value of litigation was set at €12 million for both the claim and counterclaim.
  • Parties were encouraged to agree on cost estimates, with submissions due two weeks before the hearing and comments one week prior.
  • A request for a confidentiality club was granted.
  • Late-filed prior art documents D8 and D9 were accepted as a reaction to claim amendments, with a final decision on their acceptance as prior art for granted claims reserved for the hearing.

Tags

  • Confidentiality
  • Costs
  • Patent Amendment
  • Prior Art
  • Procedural Issues

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