Google Ireland Ltd and Google Commerce Ltd v. Ona Patents Sl, CFI – Local Division (Düsseldorf), 18 June 2024, Reference nos: APP_26544/2024, UPC_CFI_100/2024
Order pursuant to R. 323 RoP (language of the proceedings)
Ona Patents SL had initiated infringement proceedings against Google on 14 March 2024. The language of the proceedings was German. Google requested that the language of the proceedings be changed from German to English.
Google relied on various arguments, 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) both defendants were located in Ireland;
(iii) there was no disadvantage to Ona Patents in changing the language;
(iv) the language of the granted patent in suit was English and Ona Patents should expect to have to conduct proceedings in that language;
(v) English was the commonly used language in the relevant field of technology.
Ona Patents opposed the application. It argued inter alia that
(i) it was a medium-sized start-up company and that it had made the preparations to conduct the proceedings in German;
(ii) the parties were involved in parallel proceedings before the Regional Court of Munich;
(iii) Google’s litigation department was structured for the conduct of patent disputes in German;
(iv) the Claimant in UPC proceedings was entitled by R. 323.1 RoP to choose the language in which to file its action and R. 323.1 RoP / Art. 49(5) UPCA was an exception to this – the legislator of the UPC had not chosen a regime whereby the language of the patent was the language of proceedings.
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, the UPC CoA had ruled that all relevant circumstances must be taken into account, including the language most commonly used in the relevant technology, the position of the parties, their nationality, domicile, respective size, and how they could be affected by the requested change (UPC CoA 1001/2024, APP 12116/2024, para 22-25). If the result of balancing the interests is the same (on each side) then the CoA had determined that Art. 49(5) UPCA required emphasis to be given to the position of the defendant “in particular”. The was justified by the flexibility afforded to the claimant, who frequently could choose where to file the action and the timeframe for doing so, whereas the defendant was bound by strict deadlines.
The Court noted that English was the language commonly used in the relevant field of technology and was the language of the cited prior art, and was a “neutral” working language of Ona Patents. However, Google was indisputably equipped to handle and coordinate international patent disputes. Ona Patents had relevant reasons to file its infringement action in German. Changing the language would be a significant inconvenience for Ona Patents, whilst only being a slight advantage for Google.
Consequently, on the circumstances of this particular case, the Court determined that Google’s application should be rejected.
The order can be read here.
