No referral to CJEU in cost dispute between Expert klein and Seoul Viosys

Expert klein has failed in its appeal to the UPC Court of Appeal to overturn a court costs decision from the first instance. The Court of Appeal also rejected a referral to the CJEU. The plaintiff and defendant now await two appeal decisions in the infringement dispute.

Seoul Viosys’ battle against expert klein and expert e-Commerce has been ongoing at the UPC since October 2023. The Seoul Semiconductors subsidiary claims its two patents on LEDs EP 3 223 320 and EP 3 926 698 are infringed by the resale of Emporia smartphones with Android operating systems.

Expert e-Commerce is an online retail platform. Expert klein operates 29 consumer electronics stores in Germany.

In October 2024, the Düsseldorf local division ruled on both claims with mixed results for Seoul Viosys. It granted an injunction based on infringement of EP 698, preventing expert klein and expert e-Commerce from reselling certain Emporia smartphones in Austria, Belgium, France, Germany, Luxembourg, the Netherlands, and Sweden (case ID: UPC_CFI_363/2023).

However, regarding EP 320, the Düsseldorf panel under presiding judge Ronny Thomas invalidated the patent and dismissed the infringement claim (case ID: UPC_CFI_483/2023). Both parties appealed the decisions that were unfavourable for them.

Dispute over legal costs

Then, on 24 December 2024, both expert companies filed an application for costs in the dispute over infringement of EP 320. They requested Seoul Viosys pay them €111,000.

The Düsseldorf judges ruled this was too late. Expert should have submitted the application no later than one month after the main judgment in October.

The two expert companies then turned to the Court of Appeal and applied for leave to appeal. Court of Appeal judge Ingeborg Simonsson dismissed the appeal (case ID: UPC_CoA_380/2025).

No referral to the CJEU

In their reasoning, the expert companies argued that the relevant provisions on costs in the UPC Agreement and UPC Rules of Procedure contradict each other. Rule 151 stipulates a one-month deadline for cost applications. The expert companies put forth that the UPC Agreement takes precedence and does not specify a precise deadline, meaning they should have had until 12 December 2024 to submit their application.

However, the Court of Appeal did not address this apparent contradiction in its detailed judgment. Instead, judge Simonsson focused on explaining why she rejected expert’s request to submit several questions to the CJEU.

This is not the first time parties have made such requests in UPC proceedings, but judges have always rejected them. Patent experts have consistently viewed CJEU involvement in patent proceedings with scepticism due to the CJEU judges’ limited experience in patent law.

The Court of Appeal used the judgment to clarify the legal framework for UPC referrals to the CJEU. In the headnotes the court stated: “By contrast, the UPC cannot ask the CJEU to interpret the UPCA. As is clear from a reading of the case-law of the CJEU, the UPCA is an international agreement. It forms part of international law. It also results from EU law that the UPC cannot ask the CJEU to interpret the RoP.”

Narrow framework for CJEU submissions

The Swedish judge sees limited scope for CJEU referrals: “A need for interpretation of EU law in the context of application of the UPCA and/or the RoP can arise when, for instance, a provision of the UPCA or the RoP implements or relates to a directive, a regulation, or to an international agreement such as the Lugano Convention where the EU is a contracting party, whether the UPCA and/or the RoP make specific reference thereto or not. The EU legislation referred to in the UPCA and the RoP is by no means exhaustive.”

Furthermore, she states that “similarly, if the UPC applies EU law, questions of interpretation of EU law can come into play” and “the UPC must interpret its own substantive and procedural law in a manner that is consistent with EU law, and in the rare cases when such interpretation is impossible, ultimately disapply, of its own motion, any rule or practice, which is contrary to a provision of EU law with direct effect. This obligation can open up questions on interpretation of EU law”.