1. Key takeaways
Recoverable costs must be reasonable and proportionate
"Reasonable" essentially means necessary. Based on the ex-ante standpoint of a reasonable and economically sound party, the decisive factor is whether the cost-incurring measure appeared objectively necessary and suitable to achieve the legitimate procedural objective. The measure must therefore have appeared appropriate for the prosecution or defense of the case.
"Proportionate" essentially focuses on the amount of the costs. The costs actually incurred by the necessary measures must not be disproportionate in their actual amount. In particular, they must not be disproportionate to the value in dispute, the importance of the case, the degree of difficulty and complexity of the legal and factual issues relevant to the decision, or the prospects of success of the measures giving rise to the costs.
Costs for several attorneys can be recoverable
The involvement of multiple attorneys can be justified by complexity and time constraints.
The Claimant submitted detailed statements in addition to its written submissions, which show how many hours the individual attorneys-at-law and patent attorney handling the case were occupied with certain tasks and at what hourly rate. The submitted overviews enable both the Court and the Defendants to understand the corresponding activities to the necessary extent and to assess the necessity and reasonableness of the representation costs. There was therefore no reason for the order for production requested in the alternative by the Defendant.
Several lawyers from the same law firm can be part of reasonable and appropriate costs incurred. The involvment of additional lawyers was reasonable due to the scope and complexity of the proceedings and the time pressure prevailing in summary proceedings and served to save costs. Such a division of tasks among several lawyers and patent attorneys is harmless as long as no additional costs are generated.
Costs of prior analysis can be recoverable
An infringement analysis carried out in the run-up to proceedings for provisional measures can be recoverable. In the case at hand, the corresponding analysis served to prepare the main proceedings, which were to be expected in any case against the background of parallel Swiss nullity proceedings and the procedural rules of the UPC. On this basis, it is justified to allocate the costs incurred there to the main proceedings.
Costs of summary proceedings are separately recoverable
In the event that the Applicant does not initiate proceedings on the merits, the costs of the summary proceedings must be separately recoverable. If the summary proceedings are followed by proceedings on the merits, the costs of the summary proceedings must be claimed as part of the cost determination proceedings there.
Since these costs are separately recoverable, this also requires the determination of a corresponding reimbursement ceiling for the summary proceedings.
2. Division
LD Duesseldorf
3. UPC number
UPC_CFI_16/2024, UPC_CFI_121/2025, UPC_CFI_124/2025, UPC_CFI_626/2024
4. Type of proceedings
Cost determination proceedings
5. Parties
Claimant: Ortovox Sportartikel GmbH
Defendant: Mammut Sports Group AG, Mammut Sports Group GmbH
6. Patent(s)
EP 3 466 498 B1
7. Body of legislation / Rules
R. 150 RoP, R. 151 RoP, R. 152 RoP, Art. 69 UPCA
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
