UPC¬_CFI_815/2024 – Edwards v Meril
- Court
- Local Division Munich
- Date
- Outcome
- Denied
- Sector
- Pharma/Bio
- Decision Type
- PROCEDURAL
Expert Commentary
Request for partial stay Background The parties request for a partial stay of the cost proceedings. JR R. 295(c) RoP allows the Court to stay proceedings but does not provide for a partial stay. The JR found no advantage in ordering a partial stay. Meril’s application is dismissed. Comment 1. In the fourth order of the same day, Meril withdrew its request for a stay of proceedings in respect to confidential information. The JR closed the workflow. 2. These 4 decisions (see for the third one hereafter) all related to cost proceedings show that it is all very nice that the UPC aims to decide all cases on the merits (regarding infringement and/or invalidity) in 12-14 months. However, that is not the end of the story for the parties and the Court, if parties do not reach an agreement and want to fight over every eurocent with respect to costs. 3. This case is a good example. The case on the merits is on appeal, but Edwards (understandably) wants its costs for the first instance. Parties cannot agree on these costs and thus in the cost proceedings both parties go for confidentiality demands which may be justified, but they could have agreed to keep certain data confidential and resist any public disclosure requests under R. 262.2 RoP. 4. If Meril ultimately wins the appeal, all efforts and money spent on these cost proceedings will have been for nothing. 5. More efficient ways to deal with this include: a. Representatives being proactive to reach agreement on these issues. As to costs, I still cannot see why parties cannot agree just before the oral hearing in the case on the merits. This does not need calculations to the last cent, but a general reasonable amount. Parties know what time has been spent and what a reasonable amount is. b. During appeal, the Court could suspend the cost proceedings at the request of the defendant (who has lodged an appeal), if the defendant provides security for a reasonable amount. c. Ideally, cost proceedings would be unnecessary because the Court awards costs in the decision on the merits (which under the Rules of Procedure is possible). Both parties could submit cost statements two weeks before oral argument, with an update 24 hours before the oral hearing.
Full Decision Text
1 Intern gebruik Order of the Court of First Instance of the Unified Patent Court Local Division Munich concerning EP 3 646 825 delivered on 23 January 2025 CLAIMANT Edwards Lifesciences Corporation, 1 Edwards Way - 92614 - Irvine - US represented by: Boris Kreye, Elsa Tzschoppe (Bird & Bird) assisted by: Bernhard Thum, Dr. Jonas Weickert (Thum & Partner); Siddharth Kusumakar, Tessa Waldron and Bryce Matthewson (Powell Gilbert) DEFENDANTS 1) Meril Gmbh Bornheimer Straße 135-137 - 53119 - Bonn - DE 2) Meril Life Sciences Pvt Ltd. M1‐M2, Meril Park, Survey No 135/2/B & 174/2 Muktanand Marg, Chala, Vapi - 396 191 Gujara- Vapi – IN represented by: Dr. Andreas von Falck, Dr. Roman Würtenberger, Dr. Lukas Wollenschlaeger, Beatrice Wilden, Dr. Alexander Klicznik, Dr. Felipe Zilly (Hogan Lovells) assisted by: Peter-Michael Weisse, Ole Dirks, Dr. Eva Maria Thörner (Wildanger) PATENT AT ISSUE European patent n° 3 646 825. PANEL/DIVISION Panel 1 of the Local Division Munich. Local Division Munich UPC_CFI_815/2024 UPC_CFI_815/2024 2 DECIDING JUDGES This decision has been delivered by the presiding judge Dr. Matthias Zigann acting as judge- rapporteur. LANGUAGE OF THE PROCEEDINGS English SUBJECT-MATTER OF THE PROCEEDINGS Application for a cost decision (ACT_66577/2024 UPC_CFI_815/2024) Application for a confidentiality order (App_66581/2024 UPC_CFI_815/2024) Application for a stay – R 295.d RoP (App_2876/2025 UPC_CFI_815/2024) PARTIES` REQUESTS Meril seeks: I. the proceedings concerning Claimant's application for a cost decision, filed on 16 December 2024 in workflow App_66577/2024 (UPC_CFI_815/2024), be stayed pending a decision of the Court of Appeal in case APL_1926/2025 (UPC_CoA_21/2025) insofar as they do not relate to the costs of representation (cf. item I. of the application) in respect of which the proceedings are to be continued; II. the proceedings concerning Claimant's application for the protection of allegedly confidential information, filed on 16 December 2024 in workflow App_66581/2024 (UPC_CFI_815/2024), be stayed pending a decision of the Court of Appeal in case APL_1926/2025 (UPC_CoA_21/2025). Meril argues: The proceedings concerning Claimant's application for a cost decision, filed on 16 December 2024 in workflow App_66577/2024 (UPC_CFI_815/2024), and the proceedings concerning Claimant's application for the protection of allegedly confidential information, filed on 16 December 2024 in workflow App_66581/2024 (UPC_CFI_815/2024), are to be \\1089700 4150-2189-6279 Hogan Lovells stayed pending a decision of the Court of Appeal in case APL_1926/2025 (UPC_CoA_21/2025) in accordance with Defendants' requests under items no. I and II. on the basis of Rule 295 lit. d) RoP. The proceedings are to be stayed to the extent requested at the joint request of the parties. The parties agreed that the proceedings for a cost decision shall be continued with regard to the costs of representation, the proceedings for a cost decision shall be stayed with regard to the other cost items, the proceedings concerning Claimant's application for the protection of allegedly confidential information shall be stayed until the Court of Appeal has decided on Defendants' appeal which was filed on 15 January 2025 (see App_1926/2025, UPC_CoA_21/2025). UPC_CFI_815/2024 3 Finally, we inform the judge-rapporteur that Claimant confirmed that Defendants' representatives can discuss the amount claimed as costs of representation (which Claimant marked as confidential) with their clients. Given the approaching deadline for Defendants to comment on Claimant's application for a cost decision (which is 20 January 2025, cf. the order of 30 December 2024 and R. 301.1 RoP), they kindly ask the judge-rapporteur to proceed with their request as a matter of priority. The Judge-Rapporteur replied to the accompanying emails that he did not see the benefit of a partial stay as it would in fact create more problems and that he would be prepared to order a full stay if both parties agreed. Neither party requested a full stay in the ensuing email correspondence. However, Meril informed the Court by email that if a full or partial stay of the costs proceedings was not granted, the application for a stay of the proceedings in respect of the confidential information application would not be maintained. In App_2875/2025 the Court dismissed Meril`s application for a partial stay of the cost proceedings today. GROUNDS As Meril informed the court that if a full or partial stay of the costs proceedings was not granted, the application for a stay of the proceedings in respect of the confidential information application would not be maintained, a decision on the application is no longer needed. ORDER The workflow is closed. DETAILS OF THE ORDER Order no. ORD_3764/2025 in ACTION NUMBER: ACT_459987/2023 UPC number: UPC_CFI_815/2024 Action type: Infringement Action Related proceeding no. Application No.: 2876/2025 Application Type: Generic procedural Application Dr. Zigann Presiding Judge
Key Holdings
- R. 295(c) RoP allows for staying proceedings but does not explicitly provide for a partial stay, and the JR found no advantage in ordering one.
- Meril's application for a partial stay was dismissed.
- Cost proceedings can become protracted and costly, even after a merits decision, if parties cannot agree on costs.
- More efficient ways to handle costs include proactive agreement between representatives, suspending cost proceedings during appeal with security, or the Court awarding costs directly in the merits decision.
Tags
- Case Management
- Costs
- Rules of Procedure
- Stay of Proceedings