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UPC – Apple v. Ona Patents / Language of proceedings

03 Jul 2024

Graham​​​​ Burnett-Hall


Apple Inc, Apple GmbH and others v. Ona Patents, CFI – Local Division (Düsseldorf), 18 June 2024, Reference nos: APL_26610/2024, UPC_CFI_99/2024

Order pursuant to R. 323 RoP (language of the proceedings)

Ona Patents SL had initiated infringement proceedings against Apple on 14 March 2024. The language of the proceedings was German. Apple requested that the language of the proceedings be changed from German to English.

Apple relied on various factors, including that

(i) Art. 49(5) UPCA required the positions of the parties to be taken into account – “in particular, the position of the defendant”,

(ii) according to UPC_CoA_101/2024 order of 17 April 2024 (APP_12116/2024), if the positions of the parties are equivalent then the position of the Defendant is decisive,

(iii) efficiency and fairness favoured English, being the language used in the relevant technology, the prior art documents, the exhibits, and the corporate language of Apple and the working language of Ona Patents, and the domicile of most of the parties,

(iv) if the language remained German Apple would be more inconvenienced given the tight time-limits for the preparation of the defence.

Ona Patents opposed the application. It noted that it was a medium-sized start-up company and that it had made the preparations to conduct the proceedings in German, whereas Apple was the largest listed company in the world, with an IP litigation department sized for conducting patent disputes in German. The Claimant in UPC proceedings was entitled to choose the language in which to file its action and R. 323.1 RoP / Art. 49(5) UPCA was an exception to this. Ona Patent further argued that Apple had not presented circumstances that justified the change and had failed to identify how conducting proceedings in German would violate its right to a fair trial.

The Court held, first, that the application was admissible despite having been brought pursuant to a R. 9 workflow, rather than the specific R. 323 workflow. On the merits, Art. 49(1) UPCA provided that the language of the proceedings before a local division must be an official language of the hosting Member State or, pursuant to Art. 49(2), an official language of the EPO designated by the Member State. Use of the language in which the patent was granted was governed by Art. 49(5). The Court had to take into account all relevant circumstances. The position of the defendant was the decisive factor if both parties were in a comparable situation.

The Court noted that English was the language commonly used in the relevant field of technology, was the corporate language of Apple and a “neutral” working language of Ona Patents. However, Apple had organised itself to handle patent disputes in German, in particular by appointing an in-house German litigator and it had an extensive legal department with the resources to handle proceedings in various languages. Ona Patents had relevant reasons to file its infringement action in German. Changing the language would be a significant drawback for Ona Patents, whilst only being a slight advantage for Apple.

Consequently, on the circumstances of this particular case, the Court determined that Apple’s application should be rejected.

The order can be read here in full.