UPC_CoA_164/2024 – Microsoft v Suinno

Court
Central Division Paris
Date
Outcome
Denied
Sector
Electronics/SEP
Decision Type
PROCEDURAL

Expert Commentary

Leave for appeal Background 1. On 10 October 2024, Suinno requested a change of claim, reducing the amount of damages requested to 2 million euros and requesting the Court to reconsider the fees already paid. 2. On 26 November 2024, the Court accepts the reduction but rejected the reconsideration of fees already paid. 3. On 6 December 2024, Microsoft asked for leave to appeal the order. Decision 1. Leave for appeal must be seen as an exception to the rule that one can only appeal these orders together with an appeal against the final decision, and only when the party who wants to appeal is also adversely affected by the decision. 2. The purpose of leave for appeal is to have a controversial issue settled by the Court of Appeal. 3. This proposed appeal is not to settle such controversial issue and is not even able to affect the final outcome of the case. 4. The request for leave to appeal is rejected. Comment In my opinion a very sensible decision. The Court of Appeal should only be bothered if there is a controversial issue (e.g. different decisions by Divisions on the same Rule or a Rule which needs interpretation), or if a decision is clearly wrong (in which case also the Court of Appeal can – if refused by the Court of First Instance – grant leave for appeal).

Full Decision Text

Central Division Paris Seat ORDER of the Court of First Instance of the Unified Patent Court Central division (Paris seat) issued on 12 December 2024 concerning the generic procedural application No. App_64780/2024 UPC_CFI_164/2024 HEADNOTE: 1. The Court’s capacity to grant leave to appeal is as an exception to the general principal according to which orders other than those referred to in Articles 49 (5), 59, 60, 61, 62 or 67 ‘UPCA’ and Rule 97 (5) ‘RoP’ may only be reviewed together with the appeal against the final decision. 2. In exercising its discretionary power on the request to grant leave to appeal, the Court must consider whether the order involves legal issues which are the subject of different interpretations by the Unified Patent Court judges and whether an appeal on the order would serve a concrete interest of the parties. KEYWORDS: Leave to appeal APPLICANT: Microsoft Corporation - One Microsoft Way, Redmond Washington 98052-6399, USA represented by Tilman Müller-Stoy, Bardehle Pagenberg RESPONDENT: Suinno Mobile & AI Technologies Licensing Oy represented by - Fabianinkatu 21, 00130 Helsinki, Finland PATENT AT ISSUE: European patent n° EP 2 671 173 PANEL: Panel 2 Paolo Catallozzi Tatyana Zhilova Wiem Samoud DECIDING JUDGE: Presiding judge and judge-rapporteur Legally qualified judge Technically qualified judge This order has been issued by the panel. SUMMARY OF FACTS AND PARTIES’ REQUESTS 1. On 10 October 2024 the respondent, claimant in the infringement action brought against the respondent before this Central Division, filed, pursuant to Rule 263 of the Rules of Procedure (‘RoP’), an application (registered as No. App_55394/2024) for leave “to change claim or to amend case” with regard to the amount of the damages sought which were therein estimated at a reduced sum of 2 mln. euros, requesting also the Court to re-consider fees already paid. 2. By order issued 26 November 2024 (ORD_62739/2024) the panel, having heard the applicant, granted the respondent leave to change the claim reducing the request for damages to € 2 mln. and rejected the request to re-consider the fees already paid. 3. On 6 December 2024 the applicant requested that the panel grants leave to appeal this order, arguing that the leave to appeal would clarify the scope and limits of the Court’s powers in interpreting a party’s request pursuant to Art. 76 (1) of the Unified Patent Court Agreement (‘UPCA’) and, subsequently, the admissible scope of an application pursuant to Rule 263 of the Rules of Procedures (‘RoP’), as a matter of general procedural importance. GROUNDS FOR THE ORDER 4. According to Article 73 (2) (b) ‘UPCA’ and Rule 220 (2) ‘RoP’ orders other than those referred to in Articles 49 (5), 59 to 62 and 67 ‘UPCA’ and Rule 97 (5) ‘RoP’, may be either appealed together with the appeal against the decision or, with the leave of the Court of First Instance, within 15 days of service of the Court’s decision to that effect. 5. The Court’s capacity to grant leave to appeal must be seen as an exception to the general principal according to which orders may only be reviewed together with the appeal against the f inal decision and only under the condition that the party adversely affected by the order is also adversely affected by the final decision. The rationale behind that principle is that such orders have generally a less significant impact on the parties’ interests and that it is yet unclear whether it will ultimately prejudice any party, as their relevance to the final decision remains unclear. 6. Against this background, granting leave to appeal serves the purpose of favouring the harmonization of the interpretation of the relevant statutory provisions within the Unified Patent Court by letting the Court of Appeal address the controversial issue. 7. Therefore, in exercising its discretionary power on the request to grant leave to appeal, the panel must consider whether the order involves legal issues which are the subject of different interpretations by the Divisions of the Unified Patent Court (or among the panels of these Divisions) and, as such, need to be decided by the Court of Appeal. In this regard the panel must be guided by the principles set forth in Preamble of the Rules of Procedures and, in particular, by the principles of proportionality and efficiency of the proceedings, which are contrary to procedural actions that do not serve a concrete interest of the parties. 8. The applicant argues that the panel’s interpretation of the claim filed by the respondent pursuant to Rule 263 ‘RoP’ is not correct, as the respondent’s request in reality is for a reduction of the value of the case. 9. From the aforementioned considerations, the panel notes that the issue raised by the applicant is not the subject of different interpretations by Unified Patent Court judges and, anyway, is not able to affect the final decision on the merits that the Court shall issue. 10. For these reasons the application must be rejected. ORDER The panel, having reviewed the application, rejects Microsoft Corporation’s request to grants leave to appeal the order ORD_62739/2024 issued on 26 November 2024. Issued on 12 December 2024 The Presiding judge and judge-rapporteur Paolo Catallozzi The legally qualified judge Paolo Catallozzi Paolo Catallozzi Firmato digitalmente da Paolo Catallozzi Data: 2024.12.12 18:08:35 +01'00' Firmato digitalmente da Paolo Catallozzi Data: 2024.12.12 18:08:35 +01'00' Tatyana Zhilova Tatyana Zhilova Signature numérique de Tatyana Zhilova Date : 2024.12.12 18:04:00 +01'00' Signature numérique de Tatyana Zhilova Date : 2024.12.12 18:04:00 +01'00' Tatyana Zhilova The technically qualified judge Wiem Samoud ORDER DETAILS Wiem SAMOUD Wiem SAMOUD Signature numérique de Wiem SAMOUD Date : 2024.12.12 17:31:48 +01'00' Signature numérique de Wiem SAMOUD Date : 2024.12.12 17:31:48 +01'00' Order no. ORD_65604/2024 in ACTION NUMBER: ACT_18406/2024 UPC number: UPC_CFI_164/2024 Action type: Infringement Action Related proceeding no. Application No.: 64780/2024 Application Type: Generic procedural Application

Key Holdings

  • The Court of Appeal rejected a request for leave to appeal an order that accepted a reduction in damages but denied reconsideration of already paid fees.
  • Leave for appeal is considered an exception, primarily for settling controversial issues or correcting clearly wrong decisions, and only when the appealing party is adversely affected.
  • The proposed appeal was deemed not to address a controversial issue nor capable of affecting the final outcome of the case.
  • The decision emphasizes the Court of Appeal's role in focusing on significant legal questions rather than interlocutory procedural matters that do not impact the case's merits.

Tags

  • Appeal Proceedings
  • Court Fees
  • Damages
  • Procedural Issues

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