Ortovox Sportartikel GmbH v. Mammut Sports Group, UPC Local Chamber Düsseldorf, 22 April 2025, Case Nos. 16/2024, 121/2025 and 124/2025
In two judgments on April 22, 2025, Presiding Judge Ronny Thomas of the Düsseldorf Local Division (LD) of the Unified Patent Court (UPC) clarified key issues regarding the separation of cost awards, the recoverability of costs incurred from the involvement of multiple attorneys, and the protection of confidential cost records.
Ortovox accused Mammut of infringing European patent EP3466498 for an avalanche search device, while Mammut counterclaimed for revocation. On 14 January 2025, the Düsseldorf LD upheld Ortovox’s infringement claim and dismissed Mammut’s counterclaim. Prior to the main proceedings, the court issued interim measures on 11 December 2023, including an injunction against Mammut. These decisions focused on cost assessments and the confidentiality of related documentation.
Cost Award Separate from Final Costs
The Düsseldorf LD clarified that costs incurred in summary proceedings are separately recoverable from those in the main proceedings, even within a uniform cost assessment procedure. This distinction allows for precise cost allocation, ensuring parties are not unfairly burdened by interim measures. Consequently, the upper limits for recoverable costs in interim and main proceedings must be determined independently.
Mammut’s view that the costs of interim measures should be included in the main proceedings’ upper limit was rejected, as this would lead to the upper limit being reached in the summary proceedings, making subsequent costs unrecoverable. This contradicts the principle that reasonable costs should be borne by the unsuccessful party, as stated in Article 69(1) of the UPC Agreement (UPCA). The upper limit is intended to prevent excessive reimbursement but not hinder the enforcement of patent rights. The cap applies at every instance of judicial proceedings, ensuring separate upper limits for first instance and appeal proceedings.
Involvement of Multiple Attorneys
The decision also addressed the involvement of multiple attorneys in patent litigation. The court clarified that dividing tasks among several attorneys-at-law and patent attorneys does not impact the reimbursability of costs, provided it does not generate additional expenses but merely distributes the labour and costs among them. This acknowledges the complexity of patent cases and the necessity for specialised expertise, supporting the efficient handling of tasks by different attorneys, provided the costs incurred are justified and proportionate.
Protecting Confidential Information in Cost Assessment
In a separate decision, Judge Thomas ruled on the protection of trade secrets and confidential information in cost assessments. The court found Ortovox’s application for confidentiality regarding legal representation costs admissible and justified, emphasising that under Article 58 UPCA and Rule 262A RoP, access to documents containing trade secrets and confidential information can be restricted to safeguard such information.
The court balanced Ortovox’s interest in confidentiality against Mammut’s right to be heard and to a fair trial. It concluded that since Ortovox only sought to prevent the disclosure of confidential information to third parties, and Mammut did not show a legitimate need to share this information, Ortovox’s interest in protecting its legal costs and remuneration agreements outweighed Mammut’s need for full access.
