UPC_CoA_542/2025_July01_Stay – Easee v Visibly

Court
Court of Appeal
Date
Outcome
Granted
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Background Visibly filed an infringement action. Easee filed a counterclaim for revocation. Visibly requested security for costs. The Local Division (LD) Hamburg ordered Easee to provide security for €75,000, but only for the revocation action. Both parties appealed. The LD Hamburg stayed the proceedings due to Easee's bankruptcy. The Court of Appeal 1. The Court referred to the possibility of a stay when the proper administration of justice so requires (R. 295 (m) RoP). 2. When proceedings are stayed, the "clock" for procedural deadlines stops running. 3. There is therefore no obligation to provide security, and the appeal is thus moot. 4. This justifies stay of the appeal proceedings. Comment 1. A lesson for all representatives: a stay stops the clock for all periods and all obligations in that particular case. 2. It is not entirely clear to me whether Easee had already provided the security. I assume not, because otherwise, I do not understand the Court of Appeal's decision that no security has to be given. This is because if the clock stops after security is provided, the security remains in place. 3. The LD Hamburg ordered Easee to provide security for the counterclaim, as it is the claimant in the counterclaim. Security can only be requested from the claimant. However, the Court of Appeal has ruled that a defendant who raises a counterclaim for revocation should be considered a defendant, so the order seems to be incorrect.

Full Decision Text

1 ORDER of the Court of Appeal of the Unified Patent Court issued on 1 July 2025 concerning an application for suspensive effect (R. 223 RoP) APPELLANTS AND RESPONDENTS (AND DEFENDANTS BEFORE THE COURT OF FIRST INSTANCE) 1. Easee B.V., Amsterdam, The Netherlands 2. Amsterdam, The Netherlands 3. Easee Holding B.V., Amsterdam, The Netherlands (hereinafter for all: “Easee”, for Appellant 1 and 3: “Easee companies”; for Appellant 2: “managing director”) represented by Dr. Wim Maas, attorney-at-law, Taylor Wessing N.V., Eindhoven, The Netherlands RESPONDENT AND APPELLANT (AND CLAIMANT BEFORE THE COURT OF FIRST INSTANCE) Visibly Inc., Chicago, Unites States of America (hereinafter: “Visibly”) represented by Dr. Marc Grunwald and other attorneys-at-law of the law firm Peterreins Schley, Munich, Germany; Dr. Malte Frese, Patent Attorney, and other patent attorneys of the law firm Hemmer Lindfeld Frese, Lübeck, Germany PATENT AT ISSUE EP 3 918 974 LANGUAGE OF THE PROCEEDINGS English UPC Court of Appeal UPC_CoA_542/2025 App_28639/2025 (Appeal Easee) UPC_CoA_526/2025 APL_28246/2025 App_28261/2025 App_28260/2025 (Appeal Visibly) 2 PANEL AND DECIDING JUDGES Rian Kalden, presiding judge and legally qualified judge Patricia Rombach, legally qualified judge and judge-rapporteur Ingeborg Simonsson, legally qualified judge IMPUGNED ORDER OF THE COURT OF FIRST INSTANCE Date: 30 May 2025, Hamburg Local Division, Reference numbers attributed by the Court of First Instance: ORD_58129/2024, App_57843/2024 in relation to the main proceedings concerning infringement action ACT_51510/2024 UPC_CFI_525/2024 SUMMARY OF FACTS 1. Visibly filed an action against the two Easee companies and their managing director for infringement of its patent EP 3 918 974 (patent at issue). Easee filed a counterclaim for revocation. 2. Visibly requested that Easee be ordered to provide Visibly with appropriate security for costs of the legal dispute in the amount of EUR 112,000. Easee requested that the court dismiss the application, alternatively that the security is to be set at EUR 10,000. 3. In the impugned order, the Hamburg Local Division ordered Easee to provide security for legal costs in the amount of EUR 75,000 for the revocation action within four weeks of receiving the order. The Local Division denied the request for security for costs for the infringement proceedings. 4. Easee and Visibly appealed this order insofar as it is to their disadvantage. 5. With order of 26 June 2025 (ORD_26598/2025) the Hamburg Local Division ordered that the proceedings are stayed in their entirety (meaning also regarding the managing director) due to the insolvency proceedings regarding the Easee companies. GROUNDS FOR THE ORDER 6. According to R. 295m RoP the Court may stay proceedings in any case where the proper administration of justice so requires. This requirement is met in view of the stay of the proceedings ordered by the Hamburg Local Division. While proceedings are stayed, time shall cease to run for the purpose of procedural periods (R. 296.3 RoP). This means that during the stay of the proceedings Easee is not obliged to provide the ordered security and that during the stay of the proceedings both appeals are devoid of purpose. This justifies the stay of the appeal proceedings. 3 ORDER The proceedings are stayed in their entirety for the time that the CFI proceedings are stayed. INFORMATION TO THE PARTIES During a stay of the proceedings all time limits are automatically suspended and shall begin to run afresh from the date on which the stay comes to an end, R. 296.3 RoP. Issued on 1 July 2025 Rian Kalden, presiding judge and legally qualified judge Patricia Rombach, legally qualified judge and judge-rapporteur Ingeborg Simonsson, legally qualified judge Patricia Ursula Rombach Digitally signed by Patricia Ursula Rombach Date: 2025.07.01 17:22:50 +02'00' Digitally signed by Åsa Ingeborg Simonsson Date: 2025.07.01 17:26:03 +02'00' Rian Kalden Date: 2025.07.01 17:30:46 +02'00'

Key Holdings

  • Appeal stayed due to bankruptcy.
  • Procedural deadlines suspended during stay.
  • Security obligation suspended.

Tags

  • Bankruptcy
  • Security for Costs
  • Stay of Proceedings
  • Time Limits

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