Central Division
Paris Seat

ORDER
of the Court of First Instance of the Unified Patent Court
Central division (Paris seat)
issued on 26 November 2024
concerning the Application RoP263 No. App_55394/2024
UPC_CFI_164/2024

HEADNOTES:
1. The reduction of the damages sought in an infringement action should be considered as a change
of the claim, more precisely as a limitation of the claim, and if it is filed with due explanation and
unconditionally must be granted by the Court, pursuant to Rule 263 (3) ‘RoP’.

APPLICANT:
Suinno Mobile & AI Technologies Licensing Oy - Fabianinkatu 21, 00130 Helsinki, Finland
represented by

RESPONDENT:
Microsoft Corporation - One Microsoft Way, Redmond Washington 98052-6399, USA
represented by Tilman Müller-Stoy, Bardehle Pagenberg

PATENT AT ISSUE:
European patent n° EP 2 671 173

PANEL:
Panel 2
Paolo Catallozzi Presiding judge and judge-rapporteur
Tatyana Zhilova Legally qualified judge
Wiem Samoud Technically qualified judge

DECIDING JUDGE:
This order has been issued by the panel.

SUMMARY OF FACTS AND PARTIES’ REQUESTS:
1. On 10 October 2024 the applicant, claimant in the infringement action brought against the
respondent before this Central Division, filed, pursuant to Rule 263 of the Rules of Procedure
(‘RoP’), an application (registered as No. App_55394/2024) for leave “to change claim or to
amend case” with regard to the amount of the damages sought which are now estimated at a
reduced sum of 2 mln. euros. The claimant argues that this estimation is more accurate that the
one on which the request in the statement of claim was based.
2. On 19 November 2024 the respondent filed an application (registered as No. App_61770/2024)
requesting that the application for leave to amend the case is rejected. The respondent noted
that: the application to amend the value in litigation does not fall within the scope of Rule 263
‘RoP’; the application was inadmissible, as it constitutes of a purely litigation driven tactic aiming
to reduce the amount of the security for the costs which the applicant was ordered to provide
that was based on the value of the case declared by the claimant; the requirements indicated in
Rule 263 ‘RoP’ are not met as the applicant does not provide any valid explanation why the
desired reduction of the value in litigation was not included in the original pleading.
GROUNDS FOR THE ORDER
3. Rule 263 (1) ‘RoP’ allows the parties to change its claim or to amend the case at any stage of the
proceedings with the leave of the Court. Rule 263 (2) and (3) ‘RoP’ specify that leave shall not be
granted if, all circumstances considered, the party seeking the amendment cannot persuade the
Court that the amendment could not have been made with reasonable diligence at an earlier
stage and will not unreasonably hinder the other party in the conduct of its action and that leave
to limit a claim in an action unconditionally shall always be granted.
4. These provisions serve the purpose of satisfying the need to safeguard the principle of efficiency
in the proceedings without, however, compromising the right of defence of the opposing party.
5. A change of the claim may consist in a different claim than the one already proposed, as well as
in the extension or reduction of the same claim in qualitative or quantitative terms. In this regard,
the reduction of the damages sought in an infringement action, as requested by the applicant,
should be considered as a change of the claim, more precisely in a limitation of the claim, and
must be granted by the Court, pursuant to Rule 263 (3), as it is filed with due explanation and
unconditionally.
6. The respondent argues that the applicant filed an application to amend the value in litigation
which does not fall within the scope of Rule 263 ‘RoP’. The Court disagrees with the respondent,
considering that even if the wording used by the applicant is not always clear and unambiguous
from the comprehensive examination of the application it can be concluded that its subject-
matter is the grant of the leave for a change of the claim and not for the amendment of the value
of the proceedings, which will be determined by the judge-rapporteur during the interim
procedure pursuant to Rules 22, 104 and 370 (6) ‘RoP’.
7. The Court further notes that the subjective intention underlying the application does not play a
role in the assessment of whether to grant the leave or not and that the applicant has justified
the desired reduction of the damages sought with more accurate evidence on the consequences
of the alleged infringement.
8. In addition, the applicant requests the Court to reconsider the fees already paid, pursuant to
Rule 263 (4) ‘RoP’. However, the request lacks any substantive argumentation beyond a mere
citation of the relevant provision, failing to provide the Court with any basis upon which to
exercise its discretion to re-consider the amount of the fees. Therefore, this latter request cannot
be granted.

ORDER
The Court,
having reviewed the application and heard the respondent’s comments,
- grants Suinno Mobile & AI Technologies Licensing Oy leave to change the claim reducing the
request for damages to € 2 mln.;
- rejects Suinno Mobile & AI Technologies Licensing Oy’s request to re-consider the fees already
paid.

Issued on 26 November 2024

ORDER DETAILS
Order no. ORD_62739/2024 in ACTION NUMBER: ACT_18406/2024
UPC number: UPC_CFI_164/2024
Action type: Infringement Action
Related proceeding no. Application No.: 55394/2024
Application Type: Application for leave to change claim or amend case/pleading (RoP263)