Brussels - Local Division
ORD_8991/2025
ACT_7974/2025
UPC_CFI_131/2025
UPC_CFI_131/2025

Provisional Procedural Order (Order) IV Pursuant to R.156 RoP
issued by the Court of First Instance of the Unified Patent Court (UPC) Local
Division Brussels
on 2 May 2025

CLAIMANTS:
(1) OrthoApnea S.L., a company incorporated under Spanish law, with its registered office at Flauta
Mágica 22, 29006 Malaga, Spain,
(2) VIVISOL B BV, a company incorporated under Belgian law, with its registered office at Zoning
Ouest 14, 7860 Lessines, Belgium, and registered with the Crossroads Bank for Enterprises under
enterprise number 0454.915.053;
Represented by: Mter. van den Horst and Mter. Niemeijer, attorneys-at-law at
Prinses
Beatrixlaan 582, 2595 BM The Hague (The Netherlands)
Hereinafter referred to as the "Claimants"

DEFENDANT:
Mr residing in
Represented by: Mter. C. Ronse and Mter. K. Claeyé, attorneys-at-law at Havenlaan
86C,
B414, 1000 Brussels (Belgium), and Mter. M.W. Rijsdijk and Mter
D.E. Colenbrander, attorneys-at-law at Amstelplein 1 (Rembrandt
Tower, 28th floor), 1096 HA Amsterdam (The Netherlands);
Hereinafter referred to as the "Respondent"

PATENT AT ISSUE
Patent no. Patent holder(s)
EP 2 331 036

DECIDING JUDGE/PANEL/DIVISION:
The present Section (Brussels) has been issued by Samuel GRANATA in his capacity as Judge-
Rapporteur.

I. PROCEDURAL BACKGROUND
1. On 17 February 2025, the Claimants submitted an application for the payment of costs (R. 151 RoP) via the CMS (ACT_7974/2025). This application seeks an order requiring the Respondent to pay the costs of the proceedings, estimated at €92,814.62, together with statutory commercial interest from 7 days after service of the decision.
2. By (preliminary) procedural orders dated 25 February 2025 (I) and 13 March 2025 (II), the Judge-Rapporteur directed the parties to make further submissions. The parties made submissions in accordance with these (preliminary) procedural orders.
3. Before proceeding to adjudication, the Judge-Rapporteur, by (preliminary) procedural order dated 4 April 2025 (III), requested the parties to communicate their views on the effect of the appeal lodged in the meantime (on 17 March 2025) by the Respondent (against the decision of the LD Brussels UPC of 17 January 2024 in ACT_581538/2023 UPC_CFI_376/2023) on the present costs proceedings (ACT_7974/2025) and, specifically, whether or not it should be stayed.
4. In essence, the parties presented the following arguments regarding whether the costs proceedings should be stayed pending appeal:
By ORTHOAPNIA/VIVISOL:
• Section 74 (1) UPCA provides that appeal does not have suspensive effect. Nor can it be inferred from Article 74 (3) UPCA that as a result of the appeal, no ruling should be made to CTIF-CFI on the award of costs.
• Accordingly, there is no basis to conclude that in these proceedings, the main appeal must first be awaited before a decision be made on the costs of proceedings.
• (ORTHOAPNEA), as the "successful party", is entitled to reimbursement of the legal costs it has incurred, and has a clear interest in doing so. There is no legal or factual justification for (further) delaying the payment of such reimbursement.
• In that regard, it should be borne in mind that (ORTHOAPNEA) did not become involved in these proceedings of its own volition. It would therefore be unreasonable for it to have to wait for an extended period in order to be reimbursed a substantial amount which, moreover, covers only a small part of the total costs of the proceedings. For an SME like (ORTHOAPNEA), such a delay is very onerous. Moreover, a delay in payment unnecessarily increases the collection risk, especially since (Defendant) itself states that it runs a micro enterprise.
By Respondent:
• (Respondent) filed an appeal on 17 March 2025 against the final decision of 17 January 2025. In that light, it is not possible at this time to determine who is the "successful party" as contemplated by Section 69(1) UPCA.
• The Central Division emphasised on 15 February 2025 (UPC_CFI_380/2024) that cost compensation cannot be piecemeal according to the outcome of different stages of litigation, but must relate to the
final decision on the case as a whole (...) In line with this case-law and with the principle of legal certainty, the General Court should reserve its assessment of the costs of proceedings until the Court of Appeal has given a final ruling on the merits of the case.
• R.242(1) RoP also expressly confirms that the decision on costs relating to the proceedings at first instance should be made at the time of the appeal decision.
• The decision of the Düsseldorf Local Division of UPC_CFI_373/2023 to which (Claimants) refer (and as also cited in Order III), concerns a substantially different context. That case merely held that a pending appeal against a decision on the rejection of a request for security ("security") under Article 69(4) UPCA does not preclude a judgment on the merits at first instance. (Respondent) would note in this regard that (Claimants) did not make, let alone substantiate, any such application for security, thus preventing the Judge-Rapporteur from imposing it ex officio (Section 69(4) UPCA).

II. REVIEW

II.A. RELEVANT LEGAL PROVISIONS
5. Article 69 UPCA states regarding the costs of the proceedings and the costs procedure as follows:
1. Reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity requires otherwise, up to a ceiling set in accordance with the Rules of Procedure
2. Where a party succeeds only in part or in exceptional circumstances, the Court may order that costs be apportioned equitably or that the parties bear their own costs.
3. A party should bear any unnecessary costs it has caused the Court or another party
4. At the request of the defendant, the Court may order the applicant to provide adequate security for the legal costs and other expenses incurred by the defendant which the applicant may be liable to bear, in particular in the cases referred to in Articles 59 to 62
6. Article 69 UPCA reiterates Article 14 (relating to costs with proceedings) of Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights (hereinafter referred to as the "Enforcement Directive"):
Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this"
7. The preamble of the RoP (under recital 7) states as follows:
“In accordance with these principles, proceedings shall be conducted in a way which will normally allow the final oral hearing on the issues of infringement and validity at first instance to take place within one year whilst recognising that complex actions may require more time and procedural steps and simple actions less time and fewer procedural steps. Decisions on costs and/or damages may take place at the same time or as soon as practicable thereafter. Case management shall be organised in accordance with these objectives.
8. In the RoP, the cost procedure is shaped by the following rules (relevant to the present assessment):
Rule 150 - Separate proceedings for cost decision
1. A cost decision may be the subject of separate proceedings following a decision on the merits and, if applicable, a decision for the determination of damages. The cost decision shall cover costs incurred in the proceedings by the Court such as costs for simultaneous interpretation and costs incurred pursuant to Rules 173, 180.1, 185.7, 188 and 201 and, subject to the Rules 152 to 156, the costs of the successful party including Court fees paid by that party [Rule 151(d)]. Costs for interpretation and translation which is necessary for the judges of the Court in order to conduct the case in the language of proceedings are borne solely by the Court.
2. The Court may order an interim award of costs to the successful party in the decision on the merits [Rule 119] or in a decision for the determination of damages, subject to any conditions that the Court may decide.
Rule 151 - Start of proceedings for cost decision
Where the successful party (hereinafter "the applicant") wishes to seek a cost decision, it shall within one month of service of the decision lodge an Application for a cost decision which shall contain:
(a) particulars in accordance with Rule 13.1(a) to (d);
(b) the date of the decision and the action number of the file;
(c) a statement as to whether the decision on the merits is the subject of an appeal, if known at the date of the Application;
(d) an indication of the costs for which compensation is requested, which may include recovery of court fees and costs of representation, of witnesses, of experts, and other expenses; and
(e) the preliminary estimate of the legal costs that the party submitted pursuant to Rule 118.5.
(...)
Rule 156 - Further procedure
1. The judge-rapporteur may request the applicant to provide written evidence of all costs requested in Rule 151(d). The judge-rapporteur shall allow the unsuccessful party an opportunity to comment in writing on the costs requested including any item of costs that should be apportioned or borne by each party in accordance with Article 69(1) to (3) of the Agreement.
2. The judge-rapporteur shall decide in writing on the costs to be awarded or apportioned in accordance with Article 69(1) to (3) of the Agreement.
3. The costs shall be paid within the period ordered by the judge-rapporteur.
Rule 157 - Appeal against the cost decision
The decision of the judge-rapporteur as to costs only may be appealed to the Court of Appeal in accordance with Rule 221.
9. With regard to decisions of the Court of Appeal of the UPC, specifically referring to orders for costs (hereinafter "orders for costs"), the RoP states as follows:
Rule 221- Application for leave to appeal against cost decisions
1. A party adversely affected by a decision referred to in Rule 157 may lodge an Application for leave to appeal to the Court of Appeal within 15 days of service of the decision of the Court.
2. The Application for leave to appeal shall set out:
(a) the reasons why the appeal should be heard;
(b) where necessary, the facts, evidence and arguments relied on.
3. The Application for leave to appeal shall be assigned to the standing judge (Rule 345.5 and .8) who shall decide on granting leave to appeal.
4. If leave to appeal a cost decision is granted the standing judge shall decide the appeal.
Rule 242 - Decision of the Court of Appeal
1. The Court of Appeal shall either reject the appeal or set the decision or order aside totally or in part substituting its own decision or order, including an order for costs both in respect of the proceedings at first instance and on appeal.
II.B. RELEVANT CASE LAW
10. The following relevant decisions have been issued to date by the UPC regarding the costs procedure:
• CoA UPC 29 July 2024 (UPC_CoA_1/2024), which states (in the language of the proceedings) under recitals 9 and 10 as follows:
9. Die Kostenfestsetzung ist Gegenstand eines besonderen und gesonderten Verfahrens (R. 150 ff. VerfO), zu dem auch ein besonderes Berufungsverfahren gehört (R. 157 und 221 VerfO). Wie die meisten anderen Verfahren vor dem Einheitlichen Patentgericht beginnt also auch das Verfahren zur Kostenfestsetzung beim Gericht erster Instanz. Der Antrag auf Kostenfestsetzung ist daher beim Gericht erster Instanz einzureichen und wird vom Berichterstatter dieser Instanz entschieden.
10. Dies gilt auch, wenn der Antrag nach einer Anordnung oder einer Entscheidung des Berufungsgerichts gestellt wird und sich somit ausschließlich oder teilweise auf die Kosten des Berufungsverfahrens bezieht. Die Verfahrensordnung sieht kein besonderes Verfahren für die Kostenfestsetzung im Anschluss an einer Anordnung oder eine Entscheidung des Berufungsgerichts vor. Daher ist das allgemeine Verfahren der R. 150
ff. VerfO auch in diesem Fall anwendbar. Würde das Verfahren stattdessen vor dem Berufungsgericht beginnen, wäre gegen die Kostenentscheidung keine Berufung möglich, wie in R. 157 und 221 VerfO vorgesehen."
• CoA UPC 18 January 2024 (UPC_CoA_4/2024), which states (in the language of the proceedings) as follows:
"Die Berufungsklägerinnen machen geltend, dass ein Kostenfestsetzungsverfahren weitere Kosten für sie verursachen würde. Ein solches Interesse überwiegt jedoch in der Regel nicht das Interesse der obsiegenden Partei im Sinne von Regel 151 VerfO (im vorliegenden Fall der Berufungsbeklagten) an einer schnellen Entscheidung über die Kosten des Verfahrens. Das kommt in Nr. 7 der Präambel VerfO zum Ausdruck, der zufolge die Fallbearbeitung so zu organisieren ist, dass Kostenentscheidungen gleichzeitig mit oder so bald wie möglich nach der Hauptsache ergehen, und wird in Regel 151 VerfO bestätigt, wonach die obsiegende Partei nur innerhalb einer Frist von einem Monat nach der Entscheidung die Möglichkeit hat, einen Antrag auf Kostenfestsetzung zu stellen. Die Verfahrensordnung nimmt mit diesen Regelungen grundsätzlich zugunsten einer schnellen Entscheidung über die Kosten des Verfahrens in Kauf, dass durch das Kostenfestsetzungsverfahren weitere Kosten entstehen können, die sich bei einem Erfolg des Berufungsverfahrens als unnötig herausstellen können. Außerdem hat das Gericht erster Instanz die Möglichkeit, durch Aussetzung des Kostenfestsetzungsverfahrens bis zum Abschluss des Berufungsverfahrens, das Entstehen unnötiger Kosten zu vermeiden."
• CD Milan UPC, 25 February 2025, ORD_65815/2024 -UPC_CFI_380/2024, stating as follows (in the language the proceedings) in relation to costs in proceedings that concerned interim measures: "(...) cost compensation cannot be parcelled out according to the outcome of the various stages of the case but must relate to the final decision on the as a whole".
• CD Paris, 15 February 2025 (UPC_CFI_380/2024), stated as follows in relation to costs in proceedings involving interim measures: "cost compensation cannot be parcelled out according to the outcome of the various stages of the case but must relate to the final decision on the case as a whole".
II.C. SUSPENSION OF COSTS PROCEDURE
11. Neither the UPCA nor the RoP (nor the Enforcement Directive) provide that costs proceedings should be suspended as a general rule pending an appeal on the merits. Rather, the general rule (interpreted as the "starting position" or, in standard English, the "default position") is that a costs decision should be issued after the decision on the merits (in other words, without stating that the decision on the merits should be final). This default position can be inferred from the following statutory provisions and UPC decisions:
(i) Article 74(1) UPCA provides that an appeal does not have suspensive effect unless the Court of Appeal (UPC) decides otherwise following a reasoned application by a party. Under Rule 354.1 RoP, decisions and orders of the UPC are "directly enforceable from the date of service" in the Member States concerned. In other words, in the context of a costs proceeding, the first court should proceed with a costs order even if the "unsuccessful party" subsequently becomes the "successful party" on appeal. That party does have the possibility to apply for a suspensive effect on the enforceability of the costs decision before the UPC Court of Appeal (R. 223 RoP). Recent case law of the UPC Court of Appeal shows that such requests are accepted only exceptionally (see CoA 18 April 2025 UPC_CoA_166/2025 and specifically paragraph 13). It can generally be assumed that the mere fact of an appeal on the merits does not, in itself, justify the suspension of a costs order.
(ii) R. 242 (1) RoP indicates that the Court of Appeal may substitute its own decision for the cost decision previously made by the first court.
(iii) The preamble to the RoP (7) indicates that cost decisions can be made "together" with the decision on the merits or "as soon as practicable thereafter".
(iv) The above provisions are further confirmed by the UPC Court of Appeal in its decision UPC_CoA_4/2024 (see citation reproduced in margin number 10).
12. However, the actual "successful party" will be the party that prevails in a decision that is no longer subject to appeal, (specifically, a final decision by the UPC Court of Appeal). There is no "successful party" per instance; rather the "successful party" is the party that is successful at the final instance. In other words, if an appeal has been filed against the decision on the merits, it is the decision of the UPC Court of Appeal that ultimately determines who the “successful party” is. This may result in the "successful party" (following a costs decision) at first instance becoming the “unsuccessful party” if the Court of Appeal overturns the first court’s decision.
13. Despite the starting position outlined above, however, it is important to note the explicit possibility of suspending proceedings, in this case costs proceedings, even ex officio, as reflected in Rule 295(c) RoP " where an appeal is brought before the Court of Appeal against a decision or order of the Court of First Instance" and in Rule 295(m) RoP if necessary for the "administration of justice". The concept of (proper) administration of justice in the context of the UPC ("(proper) administration of justice") is to be interpreted in light of the legal system envisaged by the Member States of the UPC to ensure justice for all parties involved in legal proceedings before the UPC, taking into account the (limited) remedies available to the UPC.
14. That the fact that an appeal has been lodged can be taken into account is explicitly reflected in R.151(c) RoP (introductory provisions), which specifies the elements to be included in the application for a cost decision ("Application for a cost decision"):
(c) a statement as to whether the decision on the merits is the subject of an appeal, if known at the date of the Application.
15. In addition to the above options for suspending the costs proceedings (see margin numbers 13 and (indirectly) 14), it is important to note the principle of "equity" (commonly interpreted as “justice” or “fairness”) in the UPCA or the RoP. “Equity” functions as a guiding principle, either through the application of the abovementioned Rules or as an independent basis to inform the discretion of the UPC court. The Preamble of the UPCA articulates this as follows:
2. The Rules shall be applied and interpreted in accordance with Articles 41(3), 42 and 52(1) of the Agreement on the basis of the principles of proportionality, flexibility, fairness and equity.
5. Fairness and equity shall be ensured by having regard to the legitimate interests of all parties.
16. The principle of "equity" is explicitly reiterated with regard to cost decisions in Article 69(1) UPCA, where it is stated that as a general rule, costs are to be borne by the "unsuccessful party". However, this general rule may be deviated from if "equity requires otherwise". The nature of this deviation is not explicitly defined and is left to the broad discretion of the judge-rapporteur, and may pertain to, among other things, the amount of the costs, the nature of the costs, but also to the timing of the decision.
17. From the above provisions, the Judge-Rapporteur infers that, as an exception to the general rule (starting position), the stay of cost proceedings is possible in the following cases (whether individually or cumulatively):
• If an appeal has been lodged against the decision on the merits by the first judge (R.295(c) RoP), the Judge-Rapporteur may suspend the proceedings ex officio, referring additionally to R.151(c) RoP. In applying R.295(c) RoP, the Judge is obliged to apply the general principle of equity in this assessment (see recital 15).
• If in the light of the "proper administration of justice", it is appropriate for the judge-rapporteur to stay the costs proceedings (in application of R. 295(m) RoP) (cf. Decision of the UPC Court of Appeal (UPC 18 January 2024 (UPC_CoA_4/2024)), the judge-rapporteur may do so ex officio. While the judge-rapporteur should also apply the general principle of equity (see recital 15), the interpretation of the concept of proper administration of justice inherently implies the application of equity.
• If the specific circumstances of the case indicate that the application of Section 69(1) would lead to "unfair" consequences for the "unsuccessful party" (in this case, the Respondent) , it is the Respondent’s responsibility to convince the Judge-Rapporteur of these “unfair” consequences arising from an enforceable costs decision. Given that this represents a departure from the starting position, the mere possibility that the Respondent may ultimately become the "successful party" on appeal (and that failure to stay proceedings will result in an unacceptable increase in procedural costs) is obviously insufficient in itself to convince the Judge-Rapporteur.
18. Taking into account the circumstances of the case, the Presiding Judge finds that the order on costs in the present proceedings should be stayed until the Court of Appeal has made a decision on the merits of the case (and the decision is as such no longer subject to appeal) or until the dispute is resolved by any other means. The Judge-Rapporteur reasons as follows:
• An appeal was lodged by the Respondent against the decision on the merits rendered by the first judge (Rule 295(c) RoP).
• The proceedings on the merits are of such limited scope and technicality that a ruling by the UPC Court of Appeal is likely to be rendered within 12 months from the filing of the appeal. In any event, the Judge-Rapporteur has no evidence to suggest otherwise.
• The recovered costs (even assuming the (disputed) amount as claimed by Claimants) are of such a magnitude that they do not demonstrably affect their potential recoverability, nor is any risk in this regard sufficiently proven. While the Claimants argue that the Defendant’s status as a "micro enterprise" would unnecessarily increase the "collection risk" on their behalf, this is not adequately substantiated. The Claimants have previously referred to the Respondent's financial strength in the proceedings on the merits (before the first court), specifically citing the following (p. 11 Statement of Defence with reference to the Respondent's financial statements):
"(Defendant) has run a successful orthodontics practice for many years with a substantial profit of EUR 265,995 in 2022 (...) with equity of EUR 612,912."
• The procedure for assessing costs related to the appeal (after assessment on the merits by the Court of Appeal) requires that the costs be assessed by the first judge (specifically the Judge-Rapporteur) (cf. CoA UPC 29 July 2024 (UPC_CoA_1/2024) at para 10).
• A fairness assessment also justifies a stay of proceedings, given the risks to the respective parties if the UPC Court of Appeal were to overturn or affirm the initial decision on the merits:
o If the Defendant becomes the successful party, this will most likely give rise to cost proceedings initiated by the Defendant. In such a case, the Defendant would not only be able to claim the costs of the appeal but may justifiably seek to recover its costs from the first instance (given that the time limit for separate cost proceedings in this regard has expired). This approach would be reasonable, despite the fact that an enforceable cost decision has already been made to the Defendant’s detriment, provided these proceedings were not suspended. Furthermore, it seems reasonable to assume that, given that the appeal lodged regarding the cost proceedings in this regard has expired, and considering that an enforceable order for costs has already been made against him if these proceedings are not suspended, it would be appropriate to expect that, in light of the appeal lodged on the merits of the case, an appeal would also be lodged against the order for costs to R. 221 RoP.
o If the Defendant remains the "unsuccessful party" following a decision by the UPC Court of Appeal on the merits of the case, it has not been sufficiently demonstrated that the Claimants would suffer any adverse consequences in light of the duration of the expected suspension and the amount of the claim.
o Therefore, on equitable grounds, it can be concluded that the adverse impact on the Respondent would be greater if the proceedings were not stayed and the first decision on the merits was overturned on appeal, compared to the adverse impact on the Claimants if the proceedings were not stayed and the UPC Court of Appeal upheld the first decision.
• In conclusion, it is held that, in light of the costs procedure as outlined by the RoP, the following factors justify suspending the costs procedure (pending the decision on the substance of the case): (i) the likely limited duration within which the appeal on the merits of the case will be assessed, (ii) the lack of evidence of a negative impact on a possible recoverability in case of suspension of the present costs proceedings. This suspension is warranted not only for reasons of equity but also in the interests of the proper administration of justice, whereby the Judge-Rapporteur takes into account the costs for the parties associated with not suspending the decision on costs and the potential for unnecessary decisions before the successful party is determined by the appeal on the merits of the case.
19. Given the suspension of cost proceedings (and aside from the anticipated transition from the "old" CMS to the "new" CMS), it is appropriate to inform the parties about the implications for the workflow in the CMS (ACT_7974/2025).
The present (procedural) order IV) is issued as an interim procedure order requesting the "successful party", after the decision on appeal regarding the merits of the case has been issued, to inform the Judge-Rapporteur of this decision in which the following scenarios may arise:
• If the Claimants remain the "successful party", a final order may be issued, potentially after the joinder of a pending appeal application for costs.
• Alternatively, if the Defendant becomes the "successful party", a final decision in these proceedings may also be reached, potentially closing these proceedings for lack of objections. This may be followed by a separate costs procedure initiated by the Defendant regarding the costs on appeal. In such a case, the costs could be assessed before the first court, as by that point the Defendant would no longer be able to initiate timely costs proceedings regarding the first decision in application of R. 151 RoP.
For this reason, the workflow in the CMS (ACT_7974/2025) provides the opportunity for both parties to respond after the issuance of this interim procedural order.
It further goes without saying that if the proceedings on the merits are terminated in a manner other than a decision by the UPC Court of Appeal, the Judge-Rapporteur should be equally informed of this so that a final decision can be rendered in ACT_7974/2025 and the workflow closed.
20. Finally, the Judge-Rapporteur points out that he should not issue an admission of appeal regarding this interim procedural order (IV); rather, this request should be addressed to the Court of Appeal (UPC) in accordance with R. 221 RoP.

III. DECISION
Preliminary Procedural Order (Order) IV made on 2 May 2025. The Judge-Rapporteur, Samuel GRANATA,
1. Suspends these costs proceedings (ORD_8991/2025) until the UPC Court of Appeal has issued a judgment on the merits or the dispute is otherwise terminated, and specifically until the Judge-Rapporteur is notified accordingly, in application of decisions 2 or 3 of this procedural order.
2. Orders the "successful party" to inform the Judge-Rapporteur of the decision on the merits by the UPC Court of Appeal.
3. Recommends that the parties, or at least one of them, notify the Judge-Rapporteur of any termination of the dispute by any means other than a decision on the merits issued by the UPC Court of Appeal.

Details of the decision
Decision number ORD_8991/2024
Case number ACT_7974/2025
UPC Number UPC_CFI_131/2025
Type-Action Application for payment of costs (R.150 RoP)
Main business (UPC Number) UPC_CFI_/2023
Main case (case number) ACT_581538/2023
Main Case (Type of Action) Infringement claim