Central Division
Paris Seat
ORDER
of the Court of First Instance of the Unified Patent Court
Central division (Paris seat)
issued on 2 April 2025
concerning the generic procedural applications Nos. App_61657/2024,
61782/2024 and 61784/2024
UPC_CFI_164/2024
HEADNOTES: 1. In a situation in which a party fails to take a procedural step in the stated timeline
and the Rules of Procedure provide that a decision by default may be given the Court is not obligated
to issue such a decision but retains discretionary power even where the default is evident and there
are no justifying elements.
2. In addressing an application for a decision by default, the Court may consider relevant that the
evidentiary findings acquired in the proceedings at the time of the default does not allow for a
sufficiently confident assessment of the merits of the claims put forward by the non-defaulting party.
KEYWORDS: decision by default.
APPLICANT:
Microsoft Corporation - One Microsoft Way - 98052-6399 - Redmond - US
represented by Tilman Müller-Stoy and Nadine Westermeyer, Bardehle Pagenberg
RESPONDENT:
Suinno Mobile & AI Technologies Licensing Oy - Fabianinkatu 21 - 00130 - Helsinki - FI
represented by Petri Eskola, Backström & Co
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 is issued by the panel
SUMMARY OF FACTS AND PARTIES’ REQUESTS:
1. On 19 November 2024 the applicant, defendant in the infringement action lodged by the respondent
and counterclaimant for revocation, requested the Court to issue a decision by default against the
claimant, dismissing the infringement action and the application to amend the patent and revoking
the patent at issue in its entirety with effect for all Contracting States of the Unified Patent Court
Agreement in which it is or has been validated. The applicant argues that the claimant failed to
provide the security for costs within the time limit specified by the Court and that, regarding the
counterclaim for revocation, the facts put forward justify the remedy sought.
2. On 20 January 2025 the respondent submitted its comments and did not oppose taking a decision
by default to the extent that it is against the applicant, confirming validity of the patent and declaring
the alleged infringement, as well as ordering the payment of “invoice 1331” for the amount of euro
2,000,000.00.
GROUNDS FOR THE DECISION
3. Pursuant to Rule 355 (1) of the Rules of Procedure (‘RoP’) a decision by default against a party
may be given where the said Rules so provide if a party fails to take a step within the time limit
foreseen in these Rules or set by the Court; or, without prejudice to Rules 116 and 117, where
the party which was duly summoned fails to appear at an oral hearing.
4. With particular regard to the position of the defendant in respect of a claim or a counterclaim,
Rule 355 (2) and (3) ‘RoP’ state that a decision by default may be given only where the facts put
forward by the claimant justify the remedy sought and the procedural conduct of the defendant
does not preclude the Court from giving such a decision, and where the time limits for the
defence to the claim or counterclaim have expired, thus establishing that the service of the claim
or counterclaim was effected in sufficient time to enable the defendant to enter a defence.
5. In the case at hand, the respondent did not comply with the order issued by this panel to provide
security for costs within the stated time limit and, according to Rule 158 (5) ‘RoP’, this permits
the Court to issue a decision by default.
6. Given these circumstances, the Court is not obligated to issue a decision by default: a textual
examination of the relevant provisions clearly demonstrates that the Court has the discretion,
and it is not obliged, to issue such a decision (see CD Paris, decision issued on 16 September
2024, UPC_CFI_412/2023; LD Munich, decision issued on 11 October 2024, UPC_CFI_193/2024).
This implies that the Court retains discretionary power to issue a decision by default even in
cases where the default is evident and there are no justifying elements, such as a defect in
notification or the existence of a cause extraneous to the defaulting party that prevented them
from undertaking the missing procedural action.
7. In particular, the Court considers that in exercising this discretionary power, the circumstance
that the evidentiary findings acquired in the proceedings at the time of the default allow for a
sufficiently confident assessment of the merits of the claims put forward by the non-defaulting
party is relevant. In this regard, the requirement provided for in Rule 355 (2) ‘RoP’, according to
which the facts put forward by the applicant must justify the remedy sought, should be
understood to mean that this requirement is also relevant where the decision by default is
sought against the applicant, and not solely against the defendant.
8. The fact that this requirement is expressly provided with reference to a request for a decision by
default by the claimant, and not explicitly for a request against the claimant, does not exclude
the possibility that the circumstance expressed in that requirement may guide the exercise of
the Court's discretionary powers. This is explained by the fact that the claimant’s default may
easily lead to the dismissal of the claim where the default occurs at an initial stage of the
proceedings and the claimant has not fully illustrated and proven its claim. In such a case, not
issuing a decision by default could lead to an unacceptable consequence – contrary to the
principle of the fair conduct of proceedings and the efficiency thereof – by effectively reinstating
the claimant’s time limits or otherwise remedying the effects of the default.
9. Against this background, the Court is of the opinion that issuing the decision by default requested
by the applicant is not appropriate because the written pleadings submitted at the time of the
default do not permit a sufficiently confident assessment regarding the contested validity of the
patent and the absence of its infringement. Rather, it appears useful, also to achieve the
objectives expressed in the Unified Patent Court Agreement to strengthen legal certainty and
strike a fair balance between the interests of right holders and other parties by proceeding with
a more in-depth examination of the claims at the oral hearing.
ORDER
The panel,
rejects the application filed by Microsoft Corporation for a decision by default.
Issued on 2 April 2025.
The Presiding judge and judge-rapporteur
Paolo Catallozzi
The legally qualified judge
Tatyana Zhilova
The technically qualified judge
Wiem Samoud
ORDER DETAILS
Order no. ORD_68708/2024 in ACTION NUMBER: ACT_18406/2024
UPC number: UPC_CFI_164/2024
Action type: Infringement Action
Related proceeding no. Application No.: 61657/2024
Application Type: Generic procedural Application
Tatyana
Zhilova
Signature
numérique de
Tatyana Zhilova
Date : 2025.04.02
13:50:23 +02'00'
Wiem
SAMOUD
Signature
numérique de
Wiem SAMOUD
Date : 2025.04.05
15:16:12 +02'00'
Paolo
Catallozzi
Firmato digitalmente
da Paolo Catallozzi
Data: 2025.04.05
16:55:09 +02'00'