No. APP_26544/2024
UPC_CFI_100/2024

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 18/06/2024

APPLICANTS (DEFENDANTS IN THE MAIN PROCEEDINGS):
1- Google Ireland Ltd
Gordon House, Barrow Street 4 - D04 V4X7 - Dublin 4
Ireland
2- Google Commerce Ltd
Gordon House, Barrow Street - D04 E5W5 - Dublin 4
Ireland
Represented by: Marcus Grosch (Quinn emanuel)

RESPONDENT (CLAIMANT IN THE MAIN PROCEEDINGS):
Ona Patents SL
Carrer de Calàbria 149 En. 1 - 08015 – Barcelona
Spain
Represented by: Christof Augenstein (Kather Augenstein)

PATENT AT ISSUE:
Patent n° EP 2263098.

SUMMARY OF FACTS - SUBJECT - MATTER OF THE PROCEEDINGS:
By a statement of claim filed on 14 March 2024, Ona Patents SL. brought an infringement
action against Google Ireland Ltd. and Google Commerce Ltd. (hereinafter collectively
referred to as “Google”) based on EP 2263098 entitled “Positioning of mobile objects based
on mutually transmitted signals” before the Local Division Düsseldorf.
By a generic procedural application dated 10 May 2024, the abovementioned defendants,
referring to R. 323 RoP, requested that the language of proceedings be changed from German
to English (hereinafter the “Application”). The Application was forwarded by the Judge-
rapporteur to the President of the Court of First Instance of the UPC pursuant R. 323.1. RoP.
By an order dated 14 May 2024, the Claimant in the main action (No. ACT_11921/2024
UPC_CFI_100/2024) 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.
Ona Patents SL submitted its written comments on the Application on 27 May 2024.
The panel of the LD Düsseldorf has been consulted according to R. 323.3 RoP.

INDICATION OF THE PARTIES’ REQUESTS:
Google requests the Court to order, pursuant to Art. 49 para. 5 UPCA in conjunction with R.
323.1 RoP, that English be used as the language of the proceedings.
Ona Patents SL requests the court to reject the Application to change the language of the
proceedings.

POINTS AT ISSUE:
In support of the request, Google states that the Defendants unsuccessfully worked out of
Court towards a solution according to R. 321.1 RoP and argues that the Application shall be
granted for the following reasons:
- The requirement of fairness and the necessary balancing of interests when
considering all the relevant circumstances of the present case claim in favor of
changing the language of the proceedings to English. As part of the items to be
considered pursuant to Art. 49 (5) UPCA, the positions of the parties must be taken
into account "in particular the position of the defendant" which is decisive when the
outcome of the balancing of interests is the same – which is not the case here;
- All significant circumstances call in favor of using English, namely the location of the
Defendants both based in Ireland, the absence of any disadvantage incurred by Ona
Patents in the event of the requested change, the absence of consequences for the
course of the proceedings and for the Division itself. The language in which the patent
was granted plays an important role for all parties involved, in particular for the legal
assessment and for the interpretation and determination of the scope of the patent
claims. Moreover English is the language most frequently used in the relevant field of
technology;
- Even if Ona Patents did not file the patent in suit, it deliberately decided to acquire
the property rights which are granted in English and therefore could expect that it will
have to conduct proceedings in this language;
- An English version of the application is already available and with regard to the
annexes KAP 05 (classification of features) and KAP 08 (judgement of the Tribunal
judiciaire de Paris), a translation can be dispensed with as requested by the plaintiff.
Should the local division nevertheless deem a translation of these annexes to be
necessary, the corresponding costs would have to be borne by Ona Patents.
Ona Patents SL. states that the Application must be rejected for the following reasons:
- It is primarily inadmissible pursuant to R. 4.1 RoP because it was filed using a R. 9 RoP
“generic procedural application” in the Case Management System (hereinafter “CMS”)
while a dedicated workflow is provided under the designation "Application by a single
party to use the language in which the patent was granted as language of the
proceedings";
- Google fails to substantiate any violation of the requirements of fairness and
expediency due to the language currently used, Ona Patents is a medium-sized start-
up company which got prepared to conduct its proceedings in German;
- The parties are involved in parallel proceedings with a technically comparable patent
infringement at stake before the Regional Court of Munich, in which the same legal
representatives are contributing;
- As regards the size of the parties in relation to each other, the Google group has an
extensive legal department with years of expertise in patent disputes, which has been
structured to conduct proceedings in German in particular before the UPC, and rely
on a German lawyer to handle its defence;
- The Applicants do not deserve more protection solely because of their position in the
proceedings as defendants. Such approach would be contrary to the required case-by-
case assessment and to the aim of the UPCA to protect the interests of small and
medium-sized enterprises in particular;
- The registered office of Google – targeting notably the German market – is not
relevant in the present case;
- As regards the field of technology, all parties are already dealing with documents in
English in the context of parallel proceedings conducted in German;
- The Claimant can choose the language in which he wants to file its action and the
change pursuant to R. 323.1 RoP in conjunction with Art. Art. 49(5) UPCA is a
systematic exception to this general principle for reasons of fairness;
- The choice of the language of the patent can not bind the plaintiff to use this language
in the present infringement action, at the time of the application the language regime
of the UPC was not foreseeable and it was not the choice of the legislator to
standardize the language of the patent as language of the proceedings.
Further facts and arguments as raised by the parties will be addressed below if relevant to
the outcome of this order.

GROUNDS FOR THE ORDER:
1- Admissibility of the Application
Ona Patents first argues that the Application is inadmissible because it was submitted in the
form of a R. 9 RoP “generic procedural application” in the case management system of the
Court which provides a dedicated “R. 323 workflow” to be used for this purpose.
According to R. 4.1 RoP, “written pleadings and other documents shall be signed and lodged
at the Registry or relevant sub-registry in electronic form. Parties shall make use of the official
forms available online. The receipt of documents shall be confirmed by the automatic issue of
an electronic receipt, which shall indicate the date and local time of receipt”.
Pursuant to R. 9 RoP – “Powers of the Court”, “1. The Court may, at any stage of the
proceedings, of its own motion or on a reasoned request by a party, make a procedural order
such as to order a party to take any step, answer any question or provide any clarification or
evidence, within time periods to be specified”.
The R. 9 workflow allows the parties to submit their requests in the course of the proceedings
and the Court to take any decision relating to the management of the case. As does the
“R. 323 RoP” entitled "Application by a single party to use the language in which the patent
was granted as language of the proceedings", it provides the user with an electronic form,
which is an “official” one within the meaning of the abovementioned R. 4.1. RoP.
The Application shall thus be declared admissible.
2- 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 (…) 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 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. In this case the President of the Court of First Instance
shall assess the need for specific translation and interpretation arrangements”.
It has furthermore been stated that Art. 49 (5) UPCA must be interpreted in such a way that
the decision on whether or not to change the language of the proceedings to the language in
which the patent was granted must be determined considering the respective interests at
stake, without requiring it to constitute a disproportionate disadvantage (UPC CFI 225/2023
LD The Hague, order of 18 October 2023, UPC CFI 373/2023 LD Düsseldorf, order of 16 January
2024, UPC CFI 410/2023 LD Mannheim, order of 15 April 2024).
By an order dated 17 April 2024, to which both parties refer, the UPC Court of Appeal
(hereinafter “CofA”) 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, respectively (UPC_CofA_101/2024, Apl_12116/2024, para.
22-25).
In the event that the result of the balancing of interests is the same in the context of this
overall assessment, the CofA found that the emphasis given “in particular” to 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 actually 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.
Based on the above, it follows that the position of the defendant (s) is the decisive factor if
both parties are in a comparable situation.
In the same decision, the CofA 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 the present case, it is not disputed that English is the language commonly used in the
relevant field of technology in question, which is reflected by the prior art cited. Against this
background, the Claimant has submitted several annexes along with its statement in the main
proceedings, without providing the respective translation pursuant to R. 13.1 (q) RoP.
As the Claimant has its registered offices in Spain and English is obviously the corporate
language of the Defendants operating worldwide and both located in Ireland, it can be
inferred that English is a convenient language for Google and a “neutral” working language
for Ona Patents whose website is only available in English, as rightly highlighted by the
Application.
As regards the situation of the Defendants, Google is indisputably equipped to handle and
coordinate international patents disputes that are assigned to an experienced legal
department and in particular to a German patent attorney. Without disregarding the
abovementioned statement following which the language skills of the representatives cannot
compensate the situation of the parties themselves in this respect, the existence of
considerable means remains a relevant factor to be taken into account in the balancing of
interests.
Considering Ona Patents – claiming to be a medium-size company founded in 2023 – the
choice to file its action in German is made in the context of parallel disputes between the
same parties before the Regional Court of Munich involving technically comparable issues.
Ona Patents also raises that its main contact person is able to discuss and approve its
representative written submissions in German, being indeed fluent in this language.
It appears from these circumstances that Ona Patents had relevant reasons to file its
infringement action in German although the language of the patent and relating technology
is English, namely the language skills of the contact person likely to follow-up the proceedings
on its behalf and the existence of parallel proceedings handled in German with limited
internal resources compared to those that can be mobilized by Google.
It results in substance from the above that the requested change would represent a significant
inconvenience for Ona Patents, while being in contrast a slight advantage in favor of the
Defendants.
These specific relevant circumstances allow to deviate from the general rule defined by the
CofA in the abovementioned decision, according to which the language of the patent as the
language of the proceedings, cannot be considered to be unfair in respect of the claimant.
Consequently, the outcome of balancing of the respective interests with regard to all relevant
aspects of the case, leads the Court to reject the Application to change the language of the
proceedings to the language in which the patent was granted.

FOR THESE GROUNDS
1- The Application to change the language of the proceedings to the language in which
the patent at issue has been granted, is dismissed.
2- The present order shall not be conditional on specific translation or interpretation
arrangements.
3- An appeal may be brought against the present order within 15 calendar days of its
notification to the Applicants pursuant Art. 73. 2 (a) UPCA and R.220 (c) RoP.

INSTRUCTIONS TO THE PARTIES AND TO THE REGISTRY:
The next step is for the Applicant to file the Statement of defence within the time period as
set by the Judge-rapporteur.

ORDER
Issued on 18 June 2024