No. APP_30013/2025 UPC_CFI_351/2025

ORDER

of the President of the Court of First Instance in the proceedings before the Local Division Düsseldorf pursuant to R. 323 RoP (language of the proceedings) Issued on 16/07/2025

HEADNOTE:

-When deciding on an application to change the language of the proceedings to the language in which the patent was granted for reasons of fairness, all relevant circumstances must be considered. If the defendant has a prominent position and the logistic means to be sued in the official language spoken in the country from which it operates, this circumstance must be weighted with regard to its working environment and communication channels by which legal and technical departments are expected to provide support in preparing their defence on the alleged infringement.

KEYWORDS:

Change of the language of the proceedings -Art. 49 (5) UPCA and R. 323 RoP

APPLICANT (DEFENDANT IN MAIN PROCEEDINGS):

POSITEC Germany GmbH

Schanzenstraße 22 - 51063 - Köln - DE

Represented by: Conor McLaughlin Mishcon de Reya LLP

RESPONDENT (CLAIMANT IN MAIN PROCEEDINGS):

Husqvarna AB

Srottninggatan 2 - 561 82 - Huskvarna -SE

Represented by : Christian Harmsen Bird & Bird LLP

PATENT AT ISSUE: EP 3978304

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SUMMARY OF FACTS

By statement of claim filed on 16 April 2025, Husqvarna AB brought an infringement action against the Applicant based on EP3978304 (No. ACT_18465/2025 UPC_CFI_351/2025).

By generic procedural application dated 23 June 2025, POSITEC Germany GmbH, referring to R. 323 RoP, requested for a change of the language from German to English (hereinafter 'the Application').

The Application was forwarded to the President of the Court of First Instance of the UPC pursuant to R. 323.1. RoP by email dated 26 June 2025. By an order dated 27 June 2025, the Claimant in the main action (No. ACT_18465/2025 UPC_CFI_351/2025) was subsequently invited, in accordance with R. 323.2 RoP, to indicate within 10 days its position on the admissibility of the request and on the use of the language in which the patent was granted (namely English) as language of the proceedings.

Husqvarna AB submitted their written comments on 7 July 2025.

The panel of the LD Düsseldorf has been consulted in accordance with R. 323.3 RoP.

INDICATION OF THE PARTIES' REQUESTS:

The Applicant requests the Court, pursuant to Art. 49 (5) UPCA and R. 323 RoP, to:

Husqvarna AB requests the Court to dismiss the Application.

POINTS AT ISSUE:

Positec indicates that it aimed to reach an agreement on the requested change, which was refused by the Claimant. It states that the Application is admissible despite being submitted before the Statement of Defence according to UPC_CoA_207/2024 APL_24598/2024, and that the change of the language of the proceedings to the language in which the patent was granted is justified in the present case for the following reasons:

-The language chosen by the plaintiff is significantly detrimental to the Defendant, which is a subsidiary of the Positec Group. Positec is a global manufacturer of robotic lawn mowers, garden and power tools headquartered in Suzhou (China) and focused on innovation and sustainability. Almost all its employees within the legal and technical departments are native Chinese speakers whose second language is English. -All meetings and written submissions are conducted and prepared in this language and even though they are supported by a German legal representative, this circumstance represents a significant disadvantage as it puts time and organisational constraints on the Defendant thus forced to rely on translations. -The requested change also benefits to the Claimant, which is an international company based in Sweden and initiated prior communication with Positec in English. -The UPC Court of Appeal found that the use of the language of the patent as the language of the proceedings cannot normally be considered unfair to the plaintiff. -Changing the language of the proceedings to English will not affect the course of the proceedings or lead to delays. -The proceedings before the EPO relating to the patent in dispute were conducted in English. -Prior art and related evidence are predominantly in English which is the language of the relevant field of technology, as is acknowledged by the Claimant in its initial statement.

Husqvarna AB contends that the Application should be rejected for the following reasons:

-According to Art. 49(5) UPCA, a change of the language of the proceedings can be decided for reasons of fairness and considering all relevant circumstances including the positions of the parties, and particularly the position of the defendant.

-The nationality or place of business of the parties is an important factor according to current case law.

-None of the parties involved in the dispute use English as an official language, while the Defendant -a German company -participates in general business, legal transactions, disputes before national courts and administrative matters in German.

-In view of the prominent status of the defendant in the Positec corporate structure, it can be assumed that its employees have German as their native language or at least understand it.

-The Defendant is not a simple sales company. Rather, it operates the Positec Group's headquarters for the entire EMEA region and manages Positec's business in Europe, the Middle East and Africa from its head office. Therefore, the Defendant has sufficient human and economic resources to handle the case in the official language of its registered office.

-The evidence submitted by the plaintiff is predominantly in German -in particular as regards Annexes B&B 3 to B&B 8 and the evidence on pages 15 to 19 of the statement of claim -which again reflects the Defendant's activities .

-As English is the dominant language in almost all areas of technology, it cannot take precedence over the relevant circumstances in relation to the parties.

-Further circumstances invoked -namely EPO proceedings and prior exchanges -are less relevant.

Further facts and arguments as raised by the parties will be addressed below if relevant for the outcome of this Order.

GROUNDS FOR THE ORDER:

It is first noted that the admissibility of the Application is not disputed in the present case.

1Merits of the Application

According to Art. 49(1) UPCA, the language of the proceedings before a local division must be an official language of its hosting Member State or alternately the other language designated pursuant to Art. 49 (2). It is further provided by R. 323 RoP that ' 1. If a party wishes to use the language in which the patent was granted as language of the proceedings, in accordance with Article 49(5) of the Agreement (…) [t]he President, having consulted [the other parties and] the panel of the division, may order that the language in which the patent was granted shall be the language of the proceedings and may make the order conditional on specific translation or interpretation arrangements'.

Regarding the criteria that may be considered to decide on the Application, Art. 49 (5) UPCA specifies that '(…) the President of the Court of First Instance may, on grounds of fairness and taking into account all relevant circumstances, including the position of parties, in particular the position of the defendant, decide on the use of the language in which the patent was granted as language of proceedings (…)'.

By an order dated 17 April 2024, the UPC Court of Appeal (hereinafter 'CoA') ruled that when deciding on a request to change the language of the proceedings to the language of the patent for reasons of fairness, all relevant circumstances must be taken into account. These circumstances should primarily relate to the specific case, such as the language most commonly used in the relevant technology, and to the position of the parties, including their nationality, domicile, respective size, and how they could be affected by the requested change (UPC_CofA_101/2024, Apl_12116/2024, para. 22-25). It was furthermore stated that the internal working language of the parties, the possibility of internal coordination and of support on technical issues are relevant circumstances, while other proceedings pending before a national court, which do not relate to the dispute, are in themselves of less relevance (UPC_CoA_354/2024, Apl 38948/2024, Order dated 18 September 2024, para. 26-27).

In the event that the result of the balancing of interests is the same in the context of this overall assessment, the CoA found that the emphasis placed 'in particular' on the position of the defendant under Art. 49 (5) UPCA is justified by the flexibility afforded to the claimant which frequently has the choice of where to file its action -since any local or regional division in which an infringement is threatened or taking place is competent -and can generally choose the most convenient timeframe to draft its Statement of Claim, while the defendant is directly bound by strict deadlines. The position of the defendant (s) is consequently the decisive factor if both parties are in a comparable situation.

In the same decision, the CoA also held that 'for a claimant, having had the choice of language of the patent, with the ensuing possibility that the claimant/patentee may have to conduct legal proceedings in that language, as a general rule and absent specific relevant circumstances pointing in another direction, the language of the patent as the language of the proceedings cannot be considered to be unfair in respect of the claimant' (para. 34).

According to the abovementioned caselaw, addressing the issue of fairness involves considering the language of the patent and the language commonly used in the technology in question, alongside all circumstances identified as being relevant in the requested assessment of the respective interests of the parties.

As is highlighted by the Claimant and evidenced by excerpts from their websites, Positec uses German to promote its products and for general business operations. On the other hand, its scope of activities and implementation includes territories where a different working language is obviously required, as illustrated below (screenshots taken on 30 June 2025 from the defendant's website https://positec- europe.com/, statement submitted by the Claimant P.4):

It is true that according to this information, the Positec group's headquarters have a prominent position and thus logistic means to get prepared to be sued in the official language spoken in the country from which they operate. However, this circumstance must be weighed with regard to their internal communication, especially for the purpose of the present action. This factor has been identified as an important one according to the above-mentioned case law (UPC_CoA_354/2024 -APL 38948/2024 -Order dated 8 September 2024). In this respect, it cannot be assumed that a German entity is not disadvantaged using its local language in the context of a trial. Although the main places of business and registered offices are to be considered in the overall assessment, it is even more relevant to take into account the Defendant's working environment and communication channels by which legal and technical departments are expected to provide support in setting their position on the alleged infringement.

In this respect, being sued in German is detrimental for the Defendant in the present situation while continuing the proceedings in English won't be disadvantageous for Husqvarna, which is a Swedish company. This is acknowledged by the Claimant itself, which raises in substance that neither English nor German is an official language in Sweeden, and that the latter is chosen alongside the competent division to hear the case.

This option offered to the Claimant -on a general basis -is balanced by due consideration given to the principle of fairness and the situation of the adverse party facing time constraints in preparing its defense. The general use of English in this context also derives from the fact that prior exchanges in view of the envisaged action were in this language.

The pending opposition proceedings before the EPO, conducted in English but not directly related to the present action, are conversely of less importance in assessing the respective interests of the parties.

As to relevant circumstances relating to the case, it is admitted by the Claimant that English is the common language generally used in the field of technology involved -namely charging connector arrangements for a robotic lawnmower system -as is reflected by the prior art cited by the patent. The number of annexes submitted in German so far doesn't contradict this assessment, which is merely supported by Ex. 8 (screenshot from the Defendant's website). Indeed Ex. 1 is the receipt of court fees, Ex. 10 is mainly illustrations, Ex. 3. is an extract from the EPO register, Ex.4 (detailed features of claim 1) is provided with an English translation, Ex.5 is a general information equally accessible in English, Ex. 6 is a registered form of 2 pages, Ex. 7 is the annual financial statements of the Defendant for 2023, Ex.9 is composed of 2 pictures of the disputed product. This is congruent with Husqvarna's assertion according to which "The entire subject area of robotic lawnmowers mainly comprises Englishlanguage literature and terminology. This is also the basis of the patent in suit" ( 'Der gesamte Themenkomplex zu Roboterrasenmähern umfasst hauptsächlich englischsprachige Literatur und Begrifflichkeiten. Diese legt auch das Klagepatent zugrunde' -Statement of Claim -Para. 92).

It follows from the above that none of the circumstances invoked by Husqvarna are sufficient to deviate from the general principle according to which the position of the defendant shall prevail in the assessment of all interests at stake to balance the advantage primarily enjoyed by the claimant and to consider the predictable legal consequences resulting from its choice to be granted or to acquire a patent in a given language.

It is finally important to note that the requested change will not affect the course of the proceedings nor cause delays, as it can be implemented at an early stage (CoA_101/2024 -APL_12116 -order dated 17 April 2024 -para. 25).

The Application shall consequently be granted.

The present order shall not be conditional on specific translation or interpretation arrangements, which are not requested.

2Costs of the Application

Positec did not provide the Court with reasons to not apply the general principle according to which the costs decision shall be taken at the last stage of the main proceedings.

The request made in this respect must therefore be dismissed.

ON THESE GROUNDS

1The language of the proceedings shall be changed to the language in which the patent was granted, namely English. 2The present order shall not be conditional on specific translation or interpretation arrangements. 3The costs of the Application shall be assessed with the proceedings on the merits. 4An appeal may be brought against the present order within 15 calendar days of its notification pursuant to Art. 73. 2 (a) UPCA and R.220 (c) RoP.

INSTRUCTIONS TO THE PARTIES AND TO THE REGISTRY

The next step requires the Applicants to file the Statement of Defence within the time period prescribed by the Rules of Procedure.

ORDER Issued on 16 July 2025

NAME AND SIGNATURE

Florence Butin President of the UPC Court of First Instance