UPC – Court of Appeal
UPC_CoA_618/2024
APL_57918/2024

ORDER
of the Court of Appeal of the Unified Patent Court
issued on 21 February 2025
concerning Court fees for appeal
Statement of appeal and the Statement of grounds of appeal
(RoP 221)

APPELLANTS (AND APPLICANTS IN THE PROCEEDINGS FOR COST DECISION BEFORE THE CFI)
1. Hanshow Technology Co, Ltd, Jiaxing City, Xiuzhou District, Zheijiang Province, China
2. Hanshow Germany GmbH, Düsseldorf, Germany
3. Hanshow France SAS, Boulogne-Billancourt, France
4. Hanshow Netherlands B.V., Amsterdam, The Netherlands
(hereinafter referred to as “Hanshow“)
1-3 represented by: Roland Küppers, Attorney-at-law, Taylor Wessing, Düsseldorf, Germany

RESPONDENT (AND DEFENDANT IN THE PROCEEDINGS FOR COST DECISION BEFORE THE CFI)
VusionGroup SA, Nanterre, France
(hereinafter referred to as “VusionGroup“)
represented by: Dr. Anton Horn, Attorney-at-law, Heuking, Düsseldorf, Germany

PATENT AT ISSUE
EP 3 883 277

LANGUAGE OF PROCEEDINGS
German

DECIDING JUDGE
This order has been adopted by Ingeborg Simonsson, Standing judge.

IMPUGNED ORDER OF THE COURT OF FIRST INSTANCE
□ Date: 18 October 2024, Local Division Munich
□ Action number attributed by the Court of First Instance: UPC_CFI_292/2023; ACT_567009/2023, App_44953/2024, ORD_52059/2024

POINTS AT ISSUE IN FACT AND LAW
Court fees for the appeal, request for a decision by default, application for leave to appeal against a cost decision (R. 221 RoP)

SUMMARY OF FACTS
The proceedings for provisional measures
1. On 4 September 2023 VusionGroup lodged an application for provisional measures against the Hanshow companies (ACT_567009/2023). On 20 December 2023, the application was dismissed by the Local Division Munich, which also ordered VusionGroup to pay the legal costs and other expenses of the Hanshow companies, including the costs incurred for filing the protective letter dated 10 August 2023, up to a maximum of € 200,000.00. This order was appealed (APL_8/2024). On 13 May 2024, the CoA rejected the appeal and ordered VusionGoup to bear the costs of the appeal proceedings (UPC_CoA_1/2024).
The application for a cost decision
2. An application for a cost decision relating to the costs in the appeal proceedings was submitted to the Court of Appeal on 18 June 2024 (App_36394/2024). In that application, Hanshow applied and requested an extension of the time period. On 29 July 2024, the judge-rapporteur determined that an application for a cost decision, including in relation to the costs of the appeal proceedings, must be submitted to the Court of First Instance and be decided by the judge-rapporteur of that court. Accordingly, the application was referred to the Court of First Instance, with the instruction that the date of submission of the application to the Court of Appeal, i.e. 18 June 2024, may be deemed to be the date of submission to the Court of First Instance.
3. On 2 August 2024, Hanshow filed a corresponding application with the Local Division Munich (App_44953/2024). The Local Division rejected the application for a retroactive extension of the time period as inadmissible and consequently rejected the application for a cost decision concerning the costs of the appeal proceedings (previously referred to as APL_8/2024) as inadmissible for failure to comply with the one-month time period for filing such application pursuant to R. 151 RoP. The Local Division considered that Hanshow instead should have applied for re-establishment of rights pursuant to R. 320 RoP.
The appeal proceedings
4. Hanshow applied for leave to appeal on 31 October 2024. As there was no R. 221 RoP workflow available in the CMS, the request was filed as a R. 220.2 RoP workflow. On 15 November 2024, the standing judge granted leave to appeal pursuant to R. 221.3 RoP.
5. On 21 November 2024, the standing judge ordered Hanshow to pay an additional court fee of €1,500 no later than 5 December 2024.

Issues raised by VusionGroup pertaining to the Court fee and the Statement of grounds of appeal
6. In its Statement of response, VusionGroup raises several separate issues. The following two are addressed in this order:
- VusionGroup contends that Hanshow has not paid the additional court fee and requests a decision by default.
- According to VusionGroup, Hanshow has not effectively lodged an appeal. There is no Statement of appeal or Statement of grounds of appeal pursuant to R. 224 RoP. VusionGroup requests that the appeal be dismissed (R. 233.3 RoP).

GROUNDS FOR THE ORDER
The fee for the appeal
7. When a party applies for leave to appeal against a cost decision, it is required to pay a Court fee of € 1,500. If leave to appeal is granted, as in this case, the € 1,500 fee which was initially paid no longer applies (see table of Court fees), instead a fee of € 3,000 is payable for an appeal against a cost decision pursuant to R. 221.4 RoP. In accordance therewith, the standing judge ordered Hanshow to pay an additional fee of € 1,500 no later than 5 December 2024. According to information from the Registry, the additional fee was credited on 5 December 2024. VusionGroup’s request for a decision by default must therefore be rejected. There is no need to hear Hanshow on this point, since the outcome is in Hanshow’s favour.
The Statement of appeal and Statement of grounds of appeal have been lodged
8. According to VusionGroup, the Statement of appeal and Statement of grounds of appeal must be filed within 15 days of service of the decision granting leave to appeal (R. 221.3 RoP, R. 224.1(a) and 2(b) RoP), however no such filing has been made. VusionGroup contends that the Application for leave to appeal cannot be considered equivalent to a Statement of appeal or a Statement of grounds of appeal.
9. The standing judge finds these arguments incorrect from a legal point of view. There is no need to hear Hanshow, since the outcome is in its favour.
10. First, an application for a cost decision constitutes summary proceedings. This is evident from the fact that such applications are decided by the judge-rapporteur at first instance (R. 156.2 RoP), and by the standing judge on appeal (R. 221.4 RoP). Furthermore, leave to appeal is always required, unlike in the case of appeals against decisions on the merits, and there is no requirement that the standing judge hears the other party (as per R. 220.4 RoP) before granting leave to appeal.
11. Secondly, R. 221 RoP does not always require a separate Statement of appeal and Statement of grounds of appeal after leave to appeal a cost decision is granted. An application for leave to appeal pursuant to R. 221 RoP must already set out the reasons why the appeal should be heard, and where necessary, the facts, evidence and arguments relied on (R. 221.2 RoP).
12. The Rules treat requests for discretionary review and applications for leave to appeal against costs decisions equally, insofar as both must set out the same matters (R. 220.3 RoP with reference to R. 221.2 RoP) and be decided by the standing judge.

13. R. 220.4 RoP states that after allowing the request for discretionary review, the standing judge shall order what further steps “if any” the parties shall take and within what time limits. It follows that, in the case of discretionary review, only the standing judge assesses whether further submissions are necessary. According to case law pertaining to R. 220.3 RoP, the standing judge when granting a request for discretionary review, or the full panel, once the appeal is assigned to it, may deem it necessary for the parties to lodge further Statements of grounds of appeal and responses, in addition to the arguments already exchanged in the request for discretionary review and the response thereto, although this will not always be necessary (Order 21 March 2024, APL_595643/2023, UPC_CoA_486/2023, paras 16 and 18).
14. In view of the equal treatment referred to above, there are good reasons to apply this approach mutatis mutandis when leave to appeal against a cost decision is granted.
15. The standing judge considered Hanshow’s application of 31 October 2024, which set out Hanshow’s position in relative detail, as constituting both a Statement of appeal and Statement of grounds of appeal. Since VusionGroup was not heard prior to the granting of leave to appeal, the standing judge afforded VusionGroup the opportunity to lodge a Statement of response. This assessment falls within the discretion of the standing judge.

ORDER
1. VusionGroup’s request for a decision by default is rejected.
2. VusionGroup’s request that the appeal be dismissed as inadmissible is rejected.

Issued on 21 February 2025