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UPC – Google v. Ona & Apple v. Ona – UPC Court of Appeal finds fairness dictates change of language to English

03 Oct 2024

Sarah Power

Pinsent Masons

Hannah McLoughlin

Pinsent Masons

Michael Mullan

Pinsent Masons

Google Commerce Ltd & Google Ireland Ltd v Ona Patents SL, UPC Court of Appeal, 18 September 2024, Case no. UPC_CoA_349/2024

Apple Retail Germany B.V. & Co. KG & Others v Ona Patents SL, UPC Court of Appeal, 18 September 2024, Case no. UPC_CoA_354/2024

The Court of Appeal held that Google & Apple’s requests to change the language of the proceedings into the language of the patent (English) should have been allowed by the Düsseldorf Local Division, further refining the court’s approach to such applications.

Background

Ona Patents SL (“Ona”) issued patent infringement proceedings before the UPC against two Google entities (collectively “Google”), and a number of Apple entities (collectively “Apple”) on the basis of European patent EP 2 263 098 which involves the “positioning of mobile objects based on mutually transmitted signals” (the “Patent”).

The UPC proceedings were issued by Ona before the Düsseldorf Local Division and Ona chose German as the language of the proceedings. Google and Apple made applications to the President of Court of First Instance to change the language of the proceedings from German to English. Both applications were refused by the President. Google and Apple appealed this refusal to the Court of Appeal.

The Court of Appeal overturned the decision of the President of the Court of First Instance holding that fairness dictated that the proceedings should be conducted in English.

Application

Google and Apple’s applications were made pursuant to Article 49(5) UPCA which provides:

At the request of one of the parties and after having heard the other parties and the competent panel, the President of the Court of First Instance may, on grounds of fairness and taking into account all relevant circumstances, including the position of parties, in particular the position of the defendant, decide on the use of the language in which the patent was granted as language of proceedings. In this case the President of the Court of First Instance shall assess the need for specific translation and interpretation arrangement

As the Court of Appeal noted, Article 49(5) omits the reference to the word “convenience” which is included as a ground for deciding on the language of the patent as the language of the proceedings where there is agreement of the parties.

Applicable Law

The Court of Appeal held that the President of the Court of First Instance has a wide margin of discretion in refusing to accommodate applications to change the language of proceedings and as such the Court of Appeal’s scope of review is limited.

The Court of Appeal considered the earlier Court of Appeal decision in Curio Biosciences v. 10x Genomics (“Curio”) of 17 April 2024 which set out the law in relation to applications to change the language of UPC proceedings.

The factors to be considered as set out in Curio include:

1. Language of Evidence: the language in which evidence (including prior art) is presented.

2. Field of Technology: the language most commonly used in the relevant technology field.

3. Party Circumstances: considerations related to parties, including nationality and domicile. Emphasis was placed on the fact that a party must be able to fully understand submissions, and any lack of proficiency in the language of proceedings would not be compensated by the fact that its representative is proficient in the language of the proceedings.

4. Party Size: the size of the parties relative to each other. A multinational company with a substantial legal department has more resources to deal with and coordinate international disputes in different languages than a small company with limited resources.

5. Impact on Proceedings: how the change in language affects proceedings, especially in terms of any potential delay.

6. Representative: whether a representative has particular language skills is, in general, of no significance because they typically work in a team in a multi-disciplinary and multi-lingual environment.

7. Patent Language: by choosing the language of the patent, the applicant should anticipate that it may have to conduct proceedings in that language.

8. Judges: the nationality of the judges hearing a case is not usually relevant.

9. Defendant’s Position: the position of the defendant is a decisive if the balance of interests is equal.

The Court of Appeal also referred to a recent decision where it held that other proceedings pending between the parties do not relate to the specific case and thus are less relevant.

Ruling

Having considered Curio principles and applying them to Apple and Google’s appeals, the Court of Appeal held that the request to change the language of the proceedings into the language of the patent should have been allowed.

The Court of Appeal noted that the language of the Patent and the language underlying the technology is English. Further, it noted that as Ona’s registered office is in Spain its nationality or domicile does not inherently favour either German or English as the language of the proceedings. The Court of Appeal considered the location of both Google and most of Apple’s companies being outside of Germany and their internal corporate language being English. While both Google and Apple had German speaking appointed counsel or inhouse counsel, their technical experts were in the USA and were English speaking.

After discussing the submissions made at first instance by both parties in relation to each organisation’s language capacity, the Court of Appeal concluded that “The President CFI failed to take these circumstances into account”. The Court of Appeal held that there was “a clear disadvantage for Google [/Apple] if the language of the proceedings is different from its company language”.

In this regard a distinction was drawn between Ona’s position where the only employee stated to be involved in the litigation, its managing director Mr Moralez, was equally proficient in both German and English. Conversely, while Google/Apple possessed an inhouse legal team with fluent German capabilities, their technical teams required English translations and pleadings would need to be translated. The Court of Appeal held that any argument on behalf of Ona against using English was limited to one of “convenience” rather than “fairness” with the former only being relevant to Art. 49(4) and not Art. 49(5).

In relation to the resources of the respective companies, the Court of Appeal noted that not only would the need for translations be a financial burden it would also put Google and Apple at a disadvantage in view of the strict time limits that must be met in the proceedings.

Interestingly, the Court of Appeal had consulted with the Local Division and it had indicated that change of language would not cause undue delays at this stage of the proceedings. The language skills of the judges of the Local Division, was not relevant.

Taking the above into account, the Court of Appeal held that fairness requires that English should be used as the language of the proceedings.

Commentary

Observers will welcome this decision as being friendly towards international businesses which operate across many jurisdictions. Rather than obliging Apple/Google to use their resources to meet the requests of the smaller company, the Court of Appeal held that it was fairer to look at the language abilities of those actually involved in the litigation. This is distinct from the language skills of the representatives.

The Court observed that it was difficult for Ona to establish a lack of “fairness” associated with litigating in English, having acquired an English language patent with the express intent to use it for the purposes of litigation. Further, while the claimant did retain a right to choose the language of proceedings, this “right should be exercised in such a way that it is not unfair for the defendant”.

The claimant in these proceedings might be understood as particularly unique, given its special-purpose nature as a litigator of patents. Ona is a company based in Barcelona which describes itself as having “vast experience in patent monetization”, a point which was not overlooked by the Court of Appeal. It noted that using the language of the patent in proceedings cannot be considered to be unfair to a claimant, including “in situations where the patent was acquired after grant, in particular in cases where a special purpose company set up by external funders acquired the patent specifically with a view to engaging in global patent enforcement”.

The orders can be read here and here.