ORDER
of the President of the Court of First Instance
in the proceedings before the Local Division MUNICH
pursuant to R. 323 RoP (language of the proceedings)
Issued on 16/01/2025

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 taken into account including the fact that parties are domiciled
in countries where the language of the proceedings chosen by the claimant is an
official language.
- Ensuring a fair access to justice for medium-sized enterprises is an important objective
of the UPCA.

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

APPLICANTS (DEFENDANTS IN THE MAIN PROCEEDINGS):
1- NVIDIA Corporation
2788 San Tomas Expressway - 95051 - Santa Clara - USA
2- NVIDIA GmbH
Adenauer Str. 20/A4 - 52146 - Würselen – Germany
Represented by: Johannes Heselberger – Bardehle Pagenberg
No. APP_64878/2024
UPC_CFI_627/2024

RESPONDENTS (CLAIMANTS IN THE MAIN PROCEEDINGS):
1- BF exaQC AG
Südliche Münchner Straße 56 - 82031 - Grünwald – Germany
2- ParTec AG
Possartstraße 20 - 81679 - Munich – Germany
Represented by: Roman Sedlmaier – IPCGS Gigerich Sedlmaier Patentanwalt Rechtsanwalt
PartG mbB

PATENTS AT ISSUE: EP3743812 and EP2628080
___
SUMMARY OF FACTS
By a statement of claim filed on 29 October 2024, BF exaQC AG and ParTec AG brought an
infringement action against the Applicants (hereinafter collectively referred to as “NVIDIA” or
“the Defendants” in reference to their role in the main proceedings) based on the patents
EP3743812 titled “application runtime determined dynamical allocation of heterogeneous
compute services” and EP2628080 titled “a computer cluster arrangement for processing a
computation task and method for operation thereof”.
By a generic procedural application dated 9 December 2024 (App_64678/2024) Nvidia
Corporation and Nvidia GmbH, referring to R. 323 RoP, requested that the language of
proceedings be changed 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 an order dated 12 December 2024, the Claimant in the main
action (No. ACT_58616/2024 UPC_CFI_627/2024) was subsequently invited, in accordance
with R. 323.2 RoP, to state its position on the admissibility of the Application and on the use
of the language in which the patent was granted, namely English, as language of the
proceedings.
BF exaQC AG and ParTec AG submitted their written comments on 17 December 2024.
The panel of the LD Munich has been consulted in accordance with R. 323.3 RoP.

INDICATION OF THE PARTIES’ REQUESTS:
The Defendants in the main proceedings request that the Application be granted pursuant to
R. 323 RoP in conjunction with Article 49(5) UPCA, and therefore that the language of the
proceedings be changed to English as it is the language of the patents at issue EP 3 743 812
and EP 2 628 080.
BF exaQC AG and ParTec AG request that the Court dismiss the Application.
POINTS AT ISSUE:
The Applicants – referring in particular to UPC_CoA_101/2024 (APL_12116/2024) and
UPC_CoA_207/2024 (APL_24598/2024) – state that the requested change may be granted
taking into account the language most commonly used in the relevant field of technology, the
language in which the evidence including the prior art is provided, the nationality or domicile
of the parties and their respective sizes, and whether such change would affect the course of
the proceedings. They emphasize that the position of the Defendant(s) should prevail if the
interests of both parties are equally balanced.
They contend that in the present case, changing of the language of the proceedings to English
is appropriate and aligns with the general principle of fairness. This change serves the
interests of the Defendants which clearly outweigh those of the Claimants, for the following
reasons:
- the two patents at issue relate to the field of computer technology where English is generally
used, as demonstrated by the fact that 38 of the 49 annexes submitted are in English.
- the claimants themselves requested to be exempted from providing German translations of
these exhibits.
- although domiciled in Germany, BF exaQC and ParTec are capable of communicating fluently
in English.
- as BF exaCQ operates as ParTec’s “exclusive license agent”, the interests regarding the
requested change must be assessed solely with respect to ParTec. Notably, ParTec advertises
its activities predominantly in English, with an international focus.
- the primary attack is directed at NVIDIA Corp., which has its registered office in the United
States. Patent litigation proceedings are centrally managed within the Defendant’s group and
thus coordinated in English.
- regarding the respective sizes of the parties, the Claimants possess sufficient resources to
conduct legal disputes in English, as evidenced by their action against Microsoft before the
US District Court of the Eastern District of Texas, Marshall Division, for alleged infringement
of US patent 10,142,156 which belongs to the same patent family as the patent at issue 1.
- implementing the requested change at this early stage of the proceedings would not cause
any delays, and allowing further submissions in English would minimize translation efforts.
BF exaQC and ParTec oppose the Defendant’s request for the following reasons:
- an additional need for translation alone is not sufficient to restrict the Defendants’ right to
a fair trial.
- the Defendants market, offer and distribute their products in a country where German is the
official language, and in which they can therefore reasonably expect to be sued.
- Art. 49 para. 5 UPCA constitutes an exception that must be interpreted narrowly, and the
concept of “fairness” aims to ensure equal opportunities – including a fair hearing – which
are not prejudiced in the present case.
- the language of the patent and the common language in the field of computer technology
do not, in themselves, support the requested change, in cases where the registered offices of
the parties and their respective sizes are validly considered as relevant circumstances.
- the corporate language of ParTec is German, and as a result, the proceedings are prepared
in this language and a change to English would significantly increase their efforts. In contrast,
one of the Defendants operates an office in Germany and Nvidia Corp. has established
resources and structures within the country. Furthermore, they maintain a German-language
website which demonstrates their targeted approach to this market.
- with regard to the respective sizes of the parties, Nvidia Corp. – the parent company of
Nvidia GmbH – has more than 50 subsidiaries worldwide with over 29,600 employees and
reported revenues of USD 26.97 billion in 2023 and USD 60.92 billion in 2024. In contrast, the
Claimants are considerably smaller in terms of personnel, revenue, market capitalization and
corporate structure.
- the Court of Appeal stated that circumstances not directly related to the specific case, such
as the Claimants' action against Microsoft in the USA cited by the defendants, are less
relevant.
- should the request be granted, a situation would arise where a medium-sized company with
a regional focus, despite facing one of the world's most financially powerful entities, would
be required to bear the additional burden of translating pleadings before a national court.
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, in the present case, the admissibility of the Application is not disputed.
1- Merits 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).
In line with the abovementioned caselaw, this general approach to 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.
The assertion that English is the commonly used language in the relevant field of technology
of the patents concerned is undisputable in this case. This conclusion is supported by the prior
art cited and the language used in nearly all the annexes submitted with the Statement of
Claim.
However, the Application to change the language initially chosen by the Claimants cannot be
granted, taking into account all other relevant circumstances of the present case, in particular
those related to the nationality, domicile and respective sizes of the parties.
As correctly noted by the Respondents, three of the four companies involved in the dispute –
namely both Claimants and one Defendant – are domiciled in Germany while one is
headquartered in the US, Nvidia GmbH itself has four entities based in this country (exhibit
K48 – Respondents). The decision to file the infringement action in German is therefore based
on legitimate grounds. Furthermore, neither the scope of their activity nor the language in
which their products are advertised demonstrates that ParTec and BF exaQC have generally
adopted English for their internal communications.
The fact that the parties are domiciled in countries where the language of the proceedings
chosen by the claimant is an official language was considered by the Court of Appeal to be an
important factor in deciding on an application to use the language of the patent as the
language of the proceedings (UPC_CoA_207/2024 - APL 24598/2024 – Order dated 5
September 2024).
With respect to the size of the parties, Nvidia Corp. – which the Applicant considers to be the
most relevant for the purpose of weighing the respective interests, as it is the primary target
in the dispute – operates globally through 50 subsidiaries. This size and territorial scope are
reflected by the information provided in exhibit K48 and K49, notably regarding its number of
employees (26,196 in 2023 and 29,600 in 2024) and global revenue (26,97 billion US dollars
in 2023 and 60,92 billion US dollars in 2024). By comparison, according to a press information
dated 12 June 2024 (exhibit K50), ParTec AG’s revenue amounted to EUR 95,7 million in 2023.
This context must be considered when weighing the respective interests of the parties, taking
into account the objective of ensuring fair access to justice for medium-size enterprises facing
difficulties in enforcing their patents which is an important goal of the UPCA.
It follows from the above that given its financial resources and logistical support, NVIDIA has
the capacity and means to conduct proceedings in a foreign language – especially since this
applies to only one of the Defendant – without significant inconvenience. In contrast,
adopting English would disadvantage the Claimants, both of which are German companies
based in Germany, and have consequently chosen to file their action in German for valid
reasons. In this respect, allowing NVIDIA to coordinate and manage the dispute in English
would serve as a matter of convenience for the Defendants, who have not demonstrated that
they are significantly impaired in organising their defence due to the language primarily
selected by the Claimants.
The Application must therefore be dismissed.

ON THESE GROUNDS
1- The Application is dismissed.
2- An appeal may be brought against the present order within 15 calendar days of its
notification to the Applicants 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 January 2025