UPC_CFI_685/2024; UPC_CFI_157/2025; UPC_CFI_1849/2026; UPC_CFI_1861/2026 – Teleflex v Speed Care

Expert Commentary

Costs Facts 1. The proceedings concern an infringement action and a counterclaim for revocation with respect to EP 2 077 811. 2. On 27 April 2026, the LD Hamburg dismissed the infringement action and revoked claims 1, 2, 3 and 7 of the patent. 3. Defendant requested a higher value of the litigation, which was refused. The value remained EUR 1 million for the infringement action and EUR 1 million for the counterclaim, which resulted in a EUR 200.000 cost ceiling. 4. The defendant specified costs of more than EUR 200.000 and claims EUR 11.000 in court fees. 5. The claimant agrees to EUR 200.000 and the court fees. The Court The Court awards the cost ceiling of EUR 200.000 and the court fees of EUR 11.000. Comment This decision is a must-read for representatives who want to know what and how to claim costs, as this JR provides a comprehensive overview of all the principles relating to cost recovery. This service is provided to UPC representatives and followers, even though the judge could have simply stated that the parties had agreed and awarded the requested amounts!

Full Decision Text

Unified Patent Court Local Division Hamburg Case No. UPC_CFI_685/2024, UPC_CFI_157/2025 Decision 9 July 2026 Patent at issue: EP 2 077 811 PANEL/DIVISION: Panel of the Local Division Hamburg DECIDING JUDGE: This order has been delivered by the judge-rapporteur Sabine Klepsch LANGUAGE OF THE PROCEEDINGS: English SUBJECT-MATTER OF THE PROCEEDINGS: Infringement – Counterclaim for Revocation **CLAIMANT:** Teleflex Life Sciences II LLC, represented by the executive management, Mr. Jesper Kristian Jacobsen and Mr. Mogens Vedel Hestbæk, and the board of directors, 251 Little Falls Drive, Wilmington, Delaware, USA, Representatives: all attorneys-at-law of Grünecker PartG mbB admitted in the Federal Republic of Germany and to a Unified Patent Court (UPCA), especially Mr. Ulrich Blumenröder, Mr. Sebastian Ochs and Ms. Elvira Bertram, Leopoldstrasse 4, 80802 Munich, European patent attorneys of Grünecker PartG mbB who have the necessary qualifications pursuant to Article 48 (2) of the Agreement on a Unified Patent Court (UPCA), especially Mr. Thomas Laubenthal and Mr. Alexander Stumvoll, Leopoldstrasse 4, 80802 Munich Electronic address: Rechtsanwaltspostfach@grunecker.de **DEFENDANT:** Speed Care Mineral GmbH, represented by Siegfried Kruse and Ulf Peer-Ole Pommerening, Genzkowerstraße 7, 17034 Neubrandenburg, Germany, Representatives: Attorney-at-law Peter-Michael Weisse, Dr. Alexander Reetz, Dr. Eva-Maria Thörner, Jan-Caspar Maiers, Wildanger Kehrwald Graf v. Schwerin & Partner mbB, Couvenstraße 8, 40211 Duesseldorf, Electronic address: Teleflex-speedcare-ep811@wildanger.eu LANGUAGE OF THE PROCEEDINGS: English SUBJECT-MATTER OF THE PROCEEDINGS: Application pursuant to Rule 151 RoP – Cost Decision **SUMMARY OF FACTS:** 1. The Claimant is the proprietor of the European Patent EP 2 077 811 B1 (hereinafter: patent in suit or the patent) and filed an infringement action against the Defendant due to marketing of the Defendant’s contested embodiment SpeedM emergency hemostatic dressing. The proceedings were being conducted under the file number UPC_CFI_685/2024. The Defendant filed a counterclaim for revocation (UPC_CFI_157/2025). 2. On 27 April 2026, the Local Division Hamburg dismissed the infringement action and revoked the patent in suit to the extent of claims 1, 2, 3, 7 and 9. According to the decision, the costs of the proceedings – infringement and counterclaim for revocation - are borne by the Claimant. The decision has become final. 3. The value for the infringement action and the Counterclaim for revocation was set at € 1.000.000,00. The Defendant requested the Court to increase the value in dispute for the counterclaim for revocation from € 1.000.000,00 to € 1.5000.000,00 auxiliary to another reasonable amount above € 1.000.000,00. The Court has rejected this request with order of June 1, 2026. With decision of June 10, 2026 the Court of Appeal denied the Defendant’s request for discretionary review. The ceiling for recoverable costs for a value in dispute up to € 2.000.000,00 is € 200.000,00. 4. On 26 May 2026, the Defendant submitted an application for a cost decision (UPC_CFI_1849/2026), claiming the costs for the infringement action and the Counterclaim for revocation. The claimed costs were broken down to legal fees and billing of the patent attorneys. Furthermore, with its supplementary application for costs (UPC_CFI_1861/2026) of May 27, 2026 the Defendant claimed that the Claimant has to reimburse the court fee in the amount of € 11.000,00. **REQUEST:** 5. The Defendant requested originally the court to order the Claimant to reimburse the Defendant the costs of representation in the amount of € 400.000,00. With its submission of May 27, 2026, entered into the CMS on July 6, 2026 the Defendant confirmed that the applicable ceiling for recoverable costs is € 200.000,00 and the court fee is € 11.000,00 and requests to reimburse € 200.000,00 and € 11.000,00. The Claimant did not dispute the costs of representation in the amount of € 200.000,00 and court fees in the amount of € 11.000,00. **POINTS AT ISSUE:** 6. The Defendant is of the opinion that the requested amount of costs is justified. The total amount of legal fees incurred for the defence against the action are much higher than the requested amount. As this amount exceeds the ceiling for recoverable costs according to the table pursuant to R. 152.2 RoP at a value of the proceedings of € 2.000.000,00, the requested amount is justified. It submitted invoices as Exhibit WKS AC 1 to 14. 7. The Claimant did not contest the amount of legal fees and court fee with regard to a ceiling for recoverable costs of € 200.000,00. **GROUNDS FOR THE ORDER:** 8. The application for a cost decision is admissible and justified. **I. Principles** 9. According to Art. 69(1) UPCA, reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity requires otherwise, up to a ceiling in accordance with the Rules of procedure. 10. For representation costs, this principle is specified in R. 152.1 and .2 RoP to the effect that the applicant shall be entitled to recover reasonable and proportionate costs for representation, whereby the Administrative Committee shall adopt a scale of ceilings for recoverable costs by reference to the value in dispute. Regarding expert costs, R. 153 RoP stipulates that the compensation for costs of experts of the parties exceeding the expenses referred to in R. 180.1 RoP shall be based on the rates that are customary in the respective sector, with due regard to the required expertise, the complexity of the issue and the time spent by the expert for the services. 11. The costs of the legal dispute are those that have actually been incurred in the specific pending or disputed proceedings. These include the costs listed in R. 151(d) RoP, in particular. Other costs are those that have not been incurred in the pending proceedings, but which are directly and closely related to them (see UPC_CFI_696/2024 (LD Munich, Panel 2), Decision of 19 March 2025 – MSG Maschinenbau v EJP Maschinenbau; UPC_CFI_363/2023 (LD Düsseldorf, Decision of 14 April 2025 – Seoul Viosys v expert; UPC_CFI_16/2024, Decision of 22 April 2025, mn. 16 – Ortovox v Mammut). 12. To be eligible for reimbursement, the costs in question must be cumulative reasonable and appropriate, which is always a matter of individual assessment. These criteria are intended to safeguard the objectives set out in Art. 3 and 14 of the Directive 2004/28, namely to ensure a high level of protection for European patents and to prevent an injured party from being deterred from taking legal action to enforce its rights. They also aim to ensure that the measures, procedures and remedies necessary for the enforcement of intellectual property rights are not unnecessarily costly (ECJU, 28 April 2022 – C-531/200 – NovaText/Ruprecht-Karls-Universität Heidelberg; ECJU, 28 April 2022 – 559/20 – Koch Media/Funke; ECJW, 28 July 2016 – C-57/15 – United Video Properties/Telenet; UPC_CFI_16/2024 (LD Düsseldorf), Decision of 22 April 2025, mn. 17 – Ortovox v Mammut). This also applies for the legal defence. 13. Taking this into account, “reasonable” essentially means “necessary”. From the perspective of a reasonable and rational party, the decisive factor is whether the measure that incurred the costs was objectively necessary and appropriate for achieving the legitimate object of the proceedings. Therefore, the measure must be relevant to the pursuit or defence of legal rights (UPC_CFI_16/2024 (LD Düsseldorf), Decision of 22 April 2025, mn. 18 – Ortovox v Mammut). 14. The focus of appropriateness is primarily on the amount of costs incurred. The costs incurred by the necessary measure must not be disproportionate. In particular, they must not exceed the value in dispute, the significance of the case, the difficulty and complexity of the relevant legal and factual issues, and the measure’s prospects of success. An ex ante assessment is also appropriate here (UPC_CFI_696/2024 (LD Munich, Panel 2), Decision of 19 March 2025, mn. 18 – 22 – MSG Maschinenbau v EJP Maschinenbau; see also UPC_CFI_363/2023 (LD Düsseldorf), Decision of 14 April 2025 – Seoul Viosys v expert; UPC_CFI_16/2024 (LD Düsseldorf), Decision of 22 April 2025, mn. 19 – Ortovox v Mammut). **II. Reimbursement in the present case** 15. Following these principles, the Court acknowledges costs in the requested amount of the € 211.000,00 (legal fees and court fees). 16. The Claimant neither challenged that the costs have actually arisen nor that these costs were not reasonable and proportionate. The Claimant solely disputed the applicable scale of ceilings for recoverable costs. According to the Scale of Ceilings for Recoverable Costs of the Administrative Committee, for a value in dispute up to € 2.000.000,00 the ceiling for recoverable costs is € 200.000,00 instead of the requested € 400.000,00. The Defendant confirmed that the applicable ceiling for recoverable costs is € 200.000,00. The fact that costs of representation in the amount of € 200.000,00 and court fees in the amount of € 11.000,00 are reimbursable is undisputed. **ORDER:** 1. The Claimant shall reimburse the Defendant for costs totalling € 211.000,00. 2. Reimbursement shall be made within three weeks of this decision being served. **INFORMATION ON APPEAL:** A party adversely affected by a decision referred to in R. 157 RoP may lodge an application for leave to appeal to the Court of Appeal within 15 days of service of the decision of the Court (R. 221.1 RoP).

Key Holdings

• The Local Division Hamburg awarded the cost ceiling of EUR 200,000 and court fees of EUR 11,000.
• The decision provides a comprehensive overview of principles relating to cost recovery in UPC proceedings.
• The value of litigation for infringement and revocation counterclaims was set at EUR 1 million each, leading to a EUR 200,000 cost ceiling.
• Parties' agreement on cost amounts can simplify the court's decision on cost awards.
• Infringement actions and revocation counterclaims are subject to cost ceilings based on the value of litigation.

Tags

• Costs
• Infringement
• Revocation
• Procedural Law

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