Order
of the Court of First Instance of the Unified Patent Court
Local Division Munich
issued on 19 March 2025
Headnotes:
With regard to a country that fails to fulfil its obligations under the Hague Service
Convention, it has to be assumed that an order for reimbursement of costs by the UPC
may not be enforceable in this country or just in an unduly burdensome way.
Local Division Munich
UPC_CFI_425/2024
ACT_42211/2024
App_54919/2024
APPLICANTS (DEFENDANTS IN THE INFRINGEMENT PROCEEDINGS)
1. Chint New Energy Technology Co., Ltd., NO.1 Jisheng Road, Jianshan New
Zone, 314415 Haining City, Zhejiang Province
2. Astronergy Europe GmbH, Stralauer Platz 33-34, 10243 Berlin
3. Astronergy GmbH, Stralauer Platz 33-34, 10243 Berlin
4. Astronergy Solarmodule GmbH, Stralauer Platz 33-34, 10243 Berlin
5. Astronergy Solar Netherlands B.V., Transformatorweg 38, 1014AK -
Amsterdam
6. Chint Solar Netherlands B.V., Transformatorweg 38, 1014AK - Amsterdam
represented by: Phillip Rektorschek (Taylor Wessing PartGmbB)
RESPONDENT (CLAIMANT IN THE MAIN PROCEEDINGS)
JingAo Solar Co., Ltd., Jinglong Street, Ningjin County - 055550 - Xingtai City, Hebei
Province - CN
represented by: Christopher Maierhöfer (Bird & Bird LLP)
LANGUAGE OF PROCEEDINGS:
English
PATENT AT ISSUE:
EP 2 787 541
PANEL:
Panel 1 of the Local Division Munich
DECIDING JUDGES:
This order has been issued by the legally qualified judge Tobias Pichlmaier (judge-
rapporteur)
POINTS AT ISSUE:
Security for costs pursuant to R.158 RoP
Facts and parties requests
The Applicants request for a security for costs. In support of their application, they
point out that Claimant has its registered office in the People's Republic of China. With
the application for a security for costs it is asserted that it is not sufficiently certain that
a cost decision would be accepted and can be enforced in China.
Applicants therefore request to issue an order as follows:
The Claimant is ordered to provide adequate security within a period to be
determined by the Munich Local Division for the costs of the proceedings and
other costs pursuant to Rule 158.1 RoP by way of deposit on the UPC account
dedicated for security deposits, alternatively by way of bank guarantee provided
by a bank licensed in the EU, whereby the exact amount is subject to the
discretion of the Munich Local Division but should be set by considering the
maximum of reimbursable fees under the Rules of the UPC based on a value
in dispute of 2 million EUR.
Respondent requests,
to dismiss the motions of Defendants.
Respondent argues that Defendants did not provide any substantive arguments for
their speculative allegation that “the enforcement of a cost decision against the
Claimant in China appears to be nearly impossible or at least highly difficult”.
In the opinion of Respondent the mere fact that Claimant has its registered office in a
non-EU/non-EEA country cannot be relevant for the decision on an order for security.
This would be a form of a priori discrimination, based precisely on the nationality of
Claimant’s registered office/domicile, which is not provided for in any source of law.
Grounds for the order
The respondent is right in saying that the mere fact that Claimant has its registered
office in a non-EU/non-EEA country cannot be decisive for the decision on an order
for security. This would be a form of a priori discrimination, based precisely on the
nationality of Claimant’s registered office/domicile, which is not provided for in any
source of law.
According to the jurisdiction of the Court of Appeal it is decisive for an order for security
(Art. 69 (4) UPCA and R.158 RoP), whether the financial position of the claimant gives
rise to a legitimate and real concern that a possible order for costs may not be
recoverable and/or the likelihood that a possible order for costs by the UPC may not,
or in an unduly burdensome way, be enforceable (UPC_CoA_217/2024).
Defendants claim that it is generally assumed that it is not sufficiently certain that
German judgements will be accepted and enforced in China and that there is no
reason why the enforcement of UPC decisions in China should be any easier than the
enforcement of German decisions. In contrast to this, Respondent claims that
judgments of countries like Germany, Singapore, South Korea, USA, Australia, British
Virgin Islands, Canada, Netherlands, New Zealand, and the UK have been recognized
and enforced in China. Respondent refers to Article 267 of the Law of Civil Procedure
of the People’s Republic of China in this respect.
From the perspective of the judge rapporteur, the following must be stated:
Although the People's Republic of China has ratified the Hague Service Convention,
European courts are facing significant difficulties in serving statements of claim and
other documents in China:
It is not only the experience of European national courts (e.g. Higher Regional Court
Munich, GRUR-RR 2020, 511), but also of the Unified Patent Court (e.g. LD
Mannheim, UPC_CFI_332/2024), that requests for service from the Chinese authority
in many cases are either not forwarded at all or objected to and returned. In
UPC_CFI_508/2023 and UPC_CFI_509/2023, service of applications for provisional
measures was unsuccessful, although the application could be served on the
competent Chinese authority and the court registry was in e-mail contact with the
competent Chinese authority on this matter. However, the Chinese authority did not
process the service for more than six months without any apparent reason.
With regard to a country that fails to fulfil its obligations under the Hague Service
Convention, it has to be assumed that an order for reimbursement of costs by the UPC
may not be enforceable in this country or just in an unduly burdensome way.
The amount of the security was to be set at € 200,000 according to the costs
reimbursable in the event of a value in dispute up to 2 million €.
Order
1. It is ordered that Claimant must provide security for costs to Defendants in an
amount of € 200.000,00 by 30 April 2025. The security can be provided either
- by an irrevocable, unconditional, unlimited and absolute guarantee at first
request from a bank established and authorised to operate within the
territory of the EPC Contracting Member States
or
- by depositing the security amount in the Unified Patent Court's account set
up for this purpose (indicated in point 3. on the website www.unified-patent-
court.org/de/court/payments).
2. An appeal may be filed against the order under no. 1 in accordance with Article
73 of the UPCA and Rule 220.2 of the UPCA Rules of Procedure.
3. The Respondent's attention is drawn to the fact that a default judgment may be
entered in accordance with Rule 355 RoP if the security is not provided within
the time limit set in accordance with no. 1 of this order.
Tobias Pichlmaier
Judge-rapporteur
Tobias Günther
Pichlmaier
Digital unterschrieben von
Tobias Günther Pichlmaier
Datum: 2025.03.19 17:54:59
+01'00'