ORD_35905/2024 | EP1793917 | UPC Decision Search

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5 August, 2024	Order	ORD_35905/2024	Düsseldorf (DE) Loca…	EP1793917	R. 158 RoP ...	Please log in to add tags.	Please log in to add notes. Please log in to add tags. Show on UPC ORD_35905/2024 5 August, 2024 Order Summary (AI generated) Parties SodaStream Industries Ltd. v. Aarke AB Registry Information Registry Number: ORD_35905/2024 Court Division: Düsseldorf (DE) Local Division Type of Action: Generic Order Language of Proceedings: EN Patent at issue EP1793917 Sections Headnotes (EN) The mere alleged conduct of failing to comply with a future cost decision does not justify the provision of security for costs. Keywords (EN) R. 158 RoP, security for costs, request dismissed Cited Legal Standards R. 158 RoP R. 333 (1), (2) RoP Documents Download Order (EN) Add a custom note or summary to this decision Styles Text Heading 1 Heading 2 Heading 3 Bold ⌘B Italic ⌘I Strikethrough ⌘+Shift+S Bullet list Ordered list Blockquote ⌘+Shift+B Insert link ⌘K Insert link Unlink Align Left Center Right Düsseldorf Local Division UPC_CFI_373/2023 Order of the Court of First Instance of the Unified Patent Court Local Division in Düsseldorf issued on 5 August 2024 concerning EP 1793917 HEADNOTES: The mere alleged conduct of failing to comply with a future cost decision does not justify the provision of security for costs. CLAIMANT: SodaStream Industries Ltd., 1 Atir Yeda Street, Kfar Saba 4464301, Israel Represented by: Rechtsanwalt Dr. Andreas von Falck, Dr. Alexander Klicznik, Hogan Lovells International LLP, Kennedydamm 24, 40476 Düsseldorf, Germany electronic address for service: alexander.klicznik@hoganlovells.com DEFENDANT: Aarke AB, Östgötagatan - 100, 11664 Stockholm, Sweden Represented by: Advokaterna Jens Olsson, Magnus Dahlman and Emelie Rexelius, Advokatbyrån Gulliksson AB, P O Box 4171, SE-203 13 Malmö, Sweden electronic address for service: jens.olsson@gulliksson.se PATENT AT ISSUE: European patent n° 1793917 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This Order was made by Dr Thom acting as judge-rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: Patent infringement action - R. 158 RoP Security of costs SUBMISSIONS OF THE PARTIES: The defendant seeks an adequate security for the costs of the proceedings and other costs incurred and to be incurred by the Defendant within a time limit to be set by the Local Division Düsseldorf. It suggests an amount of EUR 400,000 orientated at the decision on scale of ceilings for recoverable costs (24/04/2023; D- AC/10/24042023_E). The defendant argues that the claimant is incorporated in Israel. In the absence of international treaties, it sees the risk of an additional procedural burden and uncertainty regarding the enforcement of an UPC decision on costs. Although there is no doubt that the claimant is solvent enough, the defendant doubts its willingness to comply with such a decision. The defendant alleges that the claimant only initiates infringement proceedings in order to cause material harm. Therefore, defendant believes that the claimant is likely to use all measures available in order not to comply with a cost decision in order to pursuit to cause additional cost resources. The claimant asks to reject the defendant´s request. The claimant argues, that the defendant did not present convincing facts and arguments in support of its position in the light of the already existing UPC case law. Exceptional difficulties in the enforcement of judgements in Israel have not been demonstrated. Art. 17 of the Hague Convention on Civil Procedure (concluded 1 March 1954), to which Germany, Sweden and Israel are contracting states, expresses a mutual understanding that court proceedings in the contracting states are efficient. There is neither evidence that the claimant has evaded enforcement of foreign judgements in its own jurisdiction nor that the claimant would not comply with the judgement of the Court and that the decisions and orders will not be enforceable. The legal enforcement of its intellectual property rights does not show abusive behaviour of the claimant. Furthermore, the claimant is not in financial difficulties, but is financially strong. It is part of the PepsiCo group, which has significant assets within the member states of the UPCA. GROUNDS OF THE ORDER: No grounds for the provision of security for legal costs have been brought before the Court. In line with the already developed UPC case law in this regard the Court agrees with the following established criteria to be considered in case of ordering a security for costs of the proceedings (Art. 158 (1) RoP): The Court has the discretion to order a security for legal costs and other expenses. Factors to be considered when ordering a security order include the financial position of the other party that may give rise to a legitimate and real concern that a possible cost order might not be recoverable and/or the likelihood that a possible cost order by the UPC may not, or in an unduly burdensome way, be enforceable. Imposing a security for legal costs serves to protect the position and (potential) rights of the Defendant (see LD Munich, UPC_CFI_15/2023, Order delivered on 29 September 2023; CD Munich, UPC_CFI_252/2023, Order delivered on 30 October 2023; LD Paris, UPC_495/2023, Order delivered on 21 May 2024). Under these principles, neither a financial risk nor a likelihood of unenforceability is presented to the Court. a) It is not disputed by the parties that the claimant, as part of the PepsiCo group, is financially able to comply with a decision on costs. b) Even if the Hague Convention on Civil Procedure, concluded on 1 March 1954, cannot be considered as an international treaty recognising the enforceability of UPC judgements in Israel, no additional procedural burden and uncertainty for the defendant can be seen here. The mere fact that the claimant's registered office is located in Israel does not justify an order for security of costs. The defendant's sole argument that it had doubts as to the claimant's compliance with a decision could not be substantiated by facts. The Court does not understand the allegation that infringement proceedings appear to be a tool for the claimant to cause material harm to the defendant. The legal enforcement of intellectual property rights by the owner is not per se abusive. The defendant does not put forward any other additional facts of abusive behaviour in the context of its request. In particular, it does not present any facts or evidence that the claimant has ever evaded the enforcement of foreign judgements in its own jurisdiction or that it intends to do so in the present case. ORDER: The request for security of costs is dismissed. DETAILS OF THE ORDER: App_35905/2024 related to the main proceedings ACT_580849/2023 UPC-Number: UPC_CFI_373/2023 Subject of the Proceedings: Infringement action INFORMATION ON REVIEW The order is subject to the right of review by the panel on a reasoned application by a party lodged within 15 days of service of the order (R. 333 (1), (2) RoP). Issued in Düsseldorf on 5 August 2024 Names and Signature Dr Thom

ORD_35905/2024

Düsseldorf Local Division UPC_CFI_373/2023

Order

of the Court of First Instance of the Unified Patent Court Local Division in Düsseldorf issued on 5 August 2024 concerning EP 1793917

HEADNOTES:

The mere alleged conduct of failing to comply with a future cost decision does not justify the provision of security for costs.

CLAIMANT:

SodaStream Industries Ltd., 1 Atir Yeda Street, Kfar Saba 4464301, Israel

Represented by:

Rechtsanwalt Dr. Andreas von Falck, Dr. Alexander Klicznik, Hogan Lovells International LLP, Kennedydamm 24, 40476 Düsseldorf, Germany

electronic address for service:

alexander.klicznik@hoganlovells.com

DEFENDANT:

Aarke AB, Östgötagatan - 100, 11664 Stockholm, Sweden

Represented by:

Advokaterna Jens Olsson, Magnus Dahlman and Emelie Rexelius, Advokatbyrån Gulliksson AB, P O Box 4171, SE-203 13 Malmö, Sweden

electronic address for service:

jens.olsson@gulliksson.se

PATENT AT ISSUE:

European patent n° 1793917

PANEL/DIVISION:

Panel of the Local Division in Düsseldorf

DECIDING JUDGES:

This Order was made by Dr Thom acting as judge-rapporteur.

LANGUAGE OF THE PROCEEDINGS: English

SUBJECT OF THE PROCEEDINGS:

Patent infringement action - R. 158 RoP Security of costs

SUBMISSIONS OF THE PARTIES:

The defendant seeks an adequate security for the costs of the proceedings and other costs incurred and to be incurred by the Defendant within a time limit to be set by the Local Division Düsseldorf. It suggests an amount of EUR 400,000 orientated at the decision on scale of ceilings for recoverable costs (24/04/2023; D- AC/10/24042023_E).

The defendant argues that the claimant is incorporated in Israel. In the absence of international treaties, it sees the risk of an additional procedural burden and uncertainty regarding the enforcement of an UPC decision on costs. Although there is no doubt that the claimant is solvent enough, the defendant doubts its willingness to comply with such a decision. The defendant

alleges that the claimant only initiates infringement proceedings in order to cause material harm. Therefore, defendant believes that the claimant is likely to use all measures available in order not to comply with a cost decision in order to pursuit to cause additional cost resources.

The claimant asks to reject the defendant´s request.

The claimant argues, that the defendant did not present convincing facts and arguments in support of its position in the light of the already existing UPC case law. Exceptional difficulties in the enforcement of judgements in Israel have not been demonstrated. Art. 17 of the Hague Convention on Civil Procedure (concluded 1 March 1954), to which Germany, Sweden and Israel are contracting states, expresses a mutual understanding that court proceedings in the contracting states are efficient. There is neither evidence that the claimant has evaded enforcement of foreign judgements in its own jurisdiction nor that the claimant would not comply with the judgement of the Court and that the decisions and orders will not be enforceable. The legal enforcement of its intellectual property rights does not show abusive behaviour of the claimant. Furthermore, the claimant is not in financial difficulties, but is financially strong. It is part of the PepsiCo group, which has significant assets within the member states of the UPCA.

GROUNDS OF THE ORDER:

No grounds for the provision of security for legal costs have been brought before the Court.

In line with the already developed UPC case law in this regard the Court agrees with the following established criteria to be considered in case of ordering a security for costs of the proceedings (Art. 158 (1) RoP):

The Court has the discretion to order a security for legal costs and other expenses. Factors to be considered when ordering a security order include the financial position of the other party that may give rise to a legitimate and real concern that a possible cost order might not be recoverable and/or the likelihood that a possible cost order by the UPC may not, or in an unduly burdensome way, be enforceable. Imposing a security for legal costs serves to protect the position and (potential) rights of the Defendant (see LD Munich, UPC_CFI_15/2023, Order delivered on 29 September 2023; CD Munich, UPC_CFI_252/2023, Order delivered on 30 October 2023; LD Paris, UPC_495/2023, Order delivered on 21 May 2024).

Under these principles, neither a financial risk nor a likelihood of unenforceability is presented to the Court.

a) It is not disputed by the parties that the claimant, as part of the PepsiCo group, is financially able to comply with a decision on costs.
b)

Even if the Hague Convention on Civil Procedure, concluded on 1 March 1954, cannot be considered as an international treaty recognising the enforceability of UPC judgements in Israel, no additional procedural burden and uncertainty for the defendant can be seen here. The mere

fact that the claimant's registered office is located in Israel does not justify an order for security of costs. The defendant's sole argument that it had doubts as to the claimant's compliance with a decision could not be substantiated by facts. The Court does not understand the allegation that infringement proceedings appear to be a tool for the claimant to cause material harm to the defendant. The legal enforcement of intellectual property rights by the owner is not per se abusive. The defendant does not put forward any other additional facts of abusive behaviour in the context of its request. In particular, it does not present any facts or evidence that the claimant has ever evaded the enforcement of foreign judgements in its own jurisdiction or that it intends to do so in the present case.

ORDER:

The request for security of costs is dismissed.

DETAILS OF THE ORDER:

App_35905/2024 related to the main proceedings ACT_580849/2023

UPC-Number:

UPC_CFI_373/2023

Subject of the Proceedings:

Infringement action

INFORMATION ON REVIEW

The order is subject to the right of review by the panel on a reasoned application by a party lodged within 15 days of service of the order (R. 333 (1), (2) RoP).

Issued in Düsseldorf on 5 August 2024

Names and Signature

Dr Thom