Alexion v Samsung Bioepis (UPC_CFI_40/2025)
Decision date:
01 August 2025
Osborne Clarke summary
- This decision involved an application for costs. The Hamburg LD had previously dismissed Alexion's application for provisional measures, and the appeal was dismissed.
- Samsung Bioepis (SB) made an application for the costs of two UPC representatives, four patent attorneys and two English solicitors. SB justified the inclusion of the two English solicitors as they were co-ordinating the proceedings across Europe and parallel nullity proceedings were pending in England. SB further explained that the expert had been identified by the English solicitors and their involvement "led to costs savings for the UPC representatives in relation to the identification of prior art, development of technical arguments, expert searches, expert interviews, the preparation of expert opinions, and the preparation of the commercial witness declarations."
- The court explained that Article 69(1) UPCA sets out that "reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity requires otherwise, up to a ceiling in accordance with the Rules of Procedure." The court held that, in this context, "'reasonable' essentially means 'necessary'". The decisive factor is whether the measure that incurred the costs was "objectively necessary and appropriate for achieving the legitimate object of the proceedings".
- The Hamburg LD decided that the litigation fees for the two UPC representatives and patent attorneys were justified. There was no duplication caused by SB changing patent attorneys during the proceedings.
- Regarding the English solicitors, the court explained that SB had failed to provide a proper explanation as to why it was appropriate and necessary for them to be involved in the proceedings. Therefore, the costs claimed were not recoverable. The court stated that:
- no specific details were provided explaining how their involvement led to efficiency gains;
- the general statements that the English solicitors were co-ordinating the proceedings in relation to the patent across Europe and parallel English proceedings gave no concrete indication that the activity was of value to the UPC proceedings; and
- the court also saw no concrete indication of value by explaining that the English solicitors had been involved in the EPO proceedings.
- The court stated that: i) no specific details were provided explaining how their involvement led to efficiency gains; ii) the general statements that the English solicitors were co-ordinating the proceedings in relation to the patent across Europe and parallel English proceedings gave no concrete indication that the activity was of value to the UPC proceedings; and iii) the court also saw no concrete indication of value by explaining that the English solicitors had been involved in the EPO proceedings.
- The Hamburg LD did acknowledge that it "might be possible that the involvement of the English solicitors led to cost savings for the UPC representatives in relation to the identification of prior art, development of technical arguments, expert searches, expert interviews, the preparation of expert opinions, and the preparation of the commercial witness declarations." However, SB did not give any detailed information on these points.
- Additionally, the costs attributed to the English solicitors were higher than those incurred by the five legal representatives and patent attorneys, which contradicts the principle of efficiency.
- The court also did not grant costs for the travel expenses of the patent attorneys arriving two days before the oral hearing as there was no indication that the early arrival was for preparatory meetings before the hearing, because both only arrived on the evening before the hearing.
Issue
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