No. ACT_12139/2024
UPC_CFI_410/2023

ORDER
of the President of the Court of First Instance
in the proceedings before the Local Division MANNHEIM
pursuant to R. 323 RoP (language of the proceedings)
issued on 15/04/2024

APPLICANTS (DEFENDANTS IN MAIN PROCEEDINGS):
1. Advanced Bionics AG
Laubisrütistrasse 28 8712 Stäfa Switzerland
2. Advanced Bionics GmbH
Max-Eyth Strasse 20 70736 Fellbach-Oeffingen Germany
3. Advanced Bionics Sarl
9 rue Maryse Bastié, CS 90606 69675 Bron Cedex France
Represented by: Miriam Kiefer (Kather Augenstein)

RESPONDENT (CLAIMANT IN MAIN PROCEEDINGS):
MED-EL Elektromedizinische Geräte Gesellschaft m.b.H.
Fürstenweg 77a 6020 Innsbruck Austria
Represented by: Michael Rüberg (Boehmert&Boehmert)

PATENT AT ISSUE:
Patent n° EP4074373

SUMMARY OF FACTS - SUBJECT - MATTER OF THE PROCEEDINGS:
By Statement of Claim filed on 2 November 2023, MED-EL Elektromedizinische Geräte
Gesellschaft m.b.H. has brought an infringement action against Advanced Bionics AG,
Advanced Bionics GmbH and Advanced Bionics Sarl – here the Applicants – based on
EP4074373 entitled “MRI-safe disk magnet for implants”.
By application dated 5 March 2024, the defendants in the main proceedings – referring to R.
323 RoP (Rules of Procedure of the Unified Patent Court) – requested for a change of the
language from German into English.
The request has been forwarded by the Judge-rapporteur to the President of the Court of
First Instance of the UPC pursuant to R. 323.1. RoP.
By order dated 12 March 2024, the Claimant in the main action (585052/2023 –
CFI_410/2023) was therefore invited in accordance with R. 323.2 RoP to state within 10 days
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.
The Respondents submitted written comments on the Application on 21 March 2024.
The panel of the LD Mannheim has been consulted in compliance with R. 323.3 RoP.

INDICATION OF THE PARTIES’ REQUESTS:
Advanced Bionics AG, Advanced Bionics GmbH and Advanced Bionics Sarl (hereinafter
collectively referred to as “Advanced Bionics”) request the court to designate English as the
language of the proceedings pursuant to Art. 49(5) UPCA.
MED-EL Elektromedizinische Geräte Gesellschaft m.b.H. (hereinafter “MED-EL”) requests the
Court:
I. To state that he defendant's application to designate English as the language of the
proceedings pursuant to Article 49(5) UPCA is rejected as inadmissible or, in the alternative,
dismissed as unfounded.
II. In the alternative to I., to state that the appeal is allowed.
III. To order the defendants to pay the costs associated with their application.

POINTS AT ISSUE:
In support of the Application, Advanced Bionics argues that the use of English as language of
the proceedings is justified pursuant to art. 49(5) UPCA for the following reasons:
- The Applicants had previously filed a revocation action against MED-EL before the
Central Division Paris section, which is conducted in English as being the language of
the patent;
- Advanced Bionics AG, Advanced Bionics GmbH and Advanced Bionics Sarl belong to
the Sonova Group which operates worldwide and uses English in conducting their
business internally and with external partners, the patent attorney involved on their
side is English and has been working on the patent family in proceedings before the
EPO, in addition with playing an important role in the revocation action;
- Other legal disputes are or have been pending between the parties worldwide,
relating to several titles of the same patent family, these proceedings are coordinated
centrally within the defendant's group where all of the most important written
submissions and court decisions are translated into English, the respective law firms
involved provide support and advice in the UPC proceedings;
- Adopting English would not be disadvantageous for MED-EL, also operating
internationally and conducting related proceedings before the EPO and other courts;
- As the Local Division refused to combine infringement and nullity proceedings in its
order dated 22 February 2024, the requested change would avoid contradictions in
the understanding of individual terms and of the patent in suit.
MED-EL first states that the Application is inadmissible as:
- The way this provision is formulated means that a request pursuant to R. 323.1 RoP
shall be filed together with the Statement of Defence and if individual decisions don’t
consider this mandatory character with regard to Art. 49 (5) UPCA, these orders have
not yet been confirmed by the Court of Appeal;
- The Rules of Procedure regulates additional details and thus can set requirements that
are not contained in the UPCA according to Art. 41.1 thereof;
- It is actually foreseen by the whole set of rules 321 to 323 RoP that the Defendant
shall first seek an amicable solution, before the decision to be made by the President
of the CFI upon application lodged together with the Statement of Defence.
MED-EL further contends that irrespective of its premature filing, the Application is
unfounded for the following reasons:
- The decision to change the language of the proceedings is not at the discretion of the
Court but subject to factual requirements, among which “reasons of fairness” that are
not substantiated in the present case by the Applicants;
- The defendants’ position shall not be given more weight in principle, as such approach
would be counter to the Preamble of the RoP (point 5), moreover the list of “relevant
circumstances” is not exhaustive;
- The alleged circumstances shall be significant from an objective perspective, it is
instead not clear in the present case that the context described would make the
defence more difficult to handle in German language, and it remains the responsibility
of each party to meet the time limits regardless the language skills and roles of the
attorneys involved;
- The situation and interest of the Court itself cannot constitute a significant
circumstance as foreseen by the UPCA;
- The course of parallel national proceedings mentioned and relating coordination –
should it be needed – are obviously not affected by the translation requirements;
- R. 271.7 RoP and Art. 12 of Regulation (EU) 2020/1784 indicate under which
conditions a service of documents can be refused, that shall be considered in the
assessment of the circumstances allowing the requested change;
- The English version of the claims and the English description of the patent will remain
decisive in any event for the understanding of the patent;
- The interest of the Claimant shall also be taken into account.
Further facts and arguments as raised by the parties will be addressed below if relevant for
the outcome of this decision.

GROUNDS FOR THE DECISION:
1- Admissibility of the Application:
According to MED-EL, the Application to use the language in which the patent was granted
shall be filed together with the Statement of Defence as foreseen by R. 323 RoP pursuant to
which “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, the party shall include
such Application in the Statement of Claim, in the case of a claimant, or in the Statement of
Defence, in the case of a defendant (…)”.
This provision refers to Art. 49 (5) UPCA which – as if the initiative is coming from either
parties or the competent panel, according to Art. 49 (3) and (4) UPCA respectively – does not
specify any timeframe for such request possibly made “at any time during the written
procedure” pursuant to R. 321.1 RoP, and also during the interim procedure according to R.
322 RoP.
R. 323 RoP instead, provides that an application lodged by the Defendant(s) to use of the
language in which the patent was granted shall only be included in the Statement of defence.
This requirement has so far not been interpreted by this Court as precluding that an
application pursuant to the above-mentioned provision is filed before the Statement of
Defense is lodged but rather, considered as a time-limit for the Applicant subsequently being
requested to ask for such change of the language of the proceedings at the latest, when
lodging the Statement of Defense in accordance with R. 23 RoP (UPC_CFI_225/2023 LD The
Hague, order dated 18 October 2023, UPC_CFI_373/2023 LD Düsseldorf, order dated 16
January 2024).
MED-EL is of the opinion that the three abovementioned options are offered by the RoP with
the aim to reach an agreement on the language to be used before forwarding the request to
the President of the CFI which however, is not in contradiction with the disputed
interpretation. Within the time-limit laid down in the RoP to lodge the Statement of Defence,
it is indeed possible to file a procedural application pursuant R. 321 or 322 RoP and at a later
stage, finally refer to R. 323.
Furthermore, the interpretation suggested by MED-EL would be counter to the general aims
as mentioned in the Preamble of the RoP, which provides in particular (Point 4) that
“Flexibility shall be ensured by applying all procedural rules in a flexible and balanced manner
with the required level of discretion for the judges to organise the proceedings”. The obligation
for the defendant to apply for a language change at the occasion of the Statement of Defence
would indeed be unnecessarily restrictive and likely to slow down the course of the
proceedings. This aim of efficiency is moreover, also highlighted in the commentary
mentioned by the Respondent itself, which reads as follows “the purpose of this provision is,
in the case of a unilateral application to change the language of the proceedings, to bring
about a decision at the earliest possible stage of the proceedings with a view in particular of
sparing the other parties the additional costs associated with a later change, ie for
translations” (Plassman- Tilmann “A Commentary” - p. 2327 A. Para 1 II “Timing of
application”).
The Application shall consequently be declared admissible.
2- Merits of the Application:
According to Art. 49 (1) UPCA, the language of the proceedings before a local division shall 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 “ 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 (…) The 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 can 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”.
The Rules of procedure of the UPC are accordingly governed by the principles of
“proportionality, flexibility, fairness and equity”, the latter being ensured by “having regard
to the legitimate interests of all parties” (Preamble of the RoP – points 2 and 5).
It follows from these general principles and from art. 49 (5) abovementioned that the decision
whether or not to change the language of the proceedings into the language in which the
patent was granted shall be determined with regard to the respective interests at stake that
has to be weighted, without it being necessary to constitute a disproportionate disadvantage.
As a result, it may be sufficient that – amongst all relevant circumstances also to be
considered – the language initially chosen is significantly detrimental to the Applicant (UPC
CFI 225/2023 LD The Hague, order of 18 October 2023, UPC CFI 373/2023 LD Düsseldorf, order
of 16 January 2024).
A fairness issue can occur if one party compared to the other(s), is remarkably disadvantaged
by the conditions in which it has to organize its defence due to the language of the
proceedings.
In support of the Application, Advanced Bionics AG puts forward two main sets of arguments
first relating to several parallel proceedings in course – including the revocation action
conducted in English, with the need to get a common understanding of the patent in suit –
that shall all be followed and coordinated centrally, and next, regarding the involvement of
an English patent attorney as member of their team.
These factors however, result from strategical choices made by the Applicants and the
existence of multiple related proceedings pending before national courts, although
influencing the general management of these cases and the internal framework on the legal
issues, is not obviously affecting the conditions under which the defence is exercised in the
present action.
It is furthermore to be noted that two of the defendants have their seat located in Germany
and Switzerland respectively, where German is an official language, while the third one is an
affiliated entity so that the access to the content of the file and subsequent exchanges are
eased.
Lastly none of the Applicants has invoked an imbalance of financial resources or any particular
circumstance of the case likely to create a significant disadvantage to their detriment. They
instead substantiate the inconvenience and costs incurred in the event of parallel related
proceedings in different languages, which is not sufficient to allow the requested change
pursuant to R. 323 RoP.
It follows from the above that the Application shall be rejected and that the present order
shall not at this stage be conditional on specific translation or interpretation arrangements
which are not required.
3- Costs:
MED-EL doesn’t provide the Court with particular reasons to deviate from the general
principle according to which the costs decision relating to the present Application shall be
taken at the last stage of the main proceedings.

FOR THESE GROUNDS
1- The Application shall not be granted.
2- The present order shall not be conditional on specific translation or interpretation
arrangements.
3- The costs incurred by MED-EL Elektromedizinische Geräte Gesellschaft m.b.H. shall be
dealt with in the main proceedings.
4- An appeal may be brought against the present order within 15 calendar days of its
notification to the applicant pursuant Art. 73. 2 (a) UPCA and R.220 (c) RoP.

INSTRUCTIONS TO THE PARTIES AND TO THE REGISTRY:
The next step shall be the lodging of a Reply to the Statement of Defense by the Claimants in
the main Proceedings within the time period as defined by the Judge-rapporteur.

ORDER
Issued on 15 April 2024