Insulet v Menarini Diagnostics (UPC_CFI_380/2024)
Decision date:
23 December 2024
Osborne Clarke summary
- Insulet previously filed an application for provisional measures for patent infringement against EOFlow in the Milan CD. It also launched a parallel application for provisional measures against Menarini, EOFlow' s exclusive distributor for the attacked embodiment. Following the rejection of the request to join the proceedings, Menarini sought to intervene in the proceedings against EOFLow, which the Milan CD rejected.
- Insulet filed the application considered in this decision seeking legal cost compensation against Menarini in relation to its defence of the intervention request. Menarini lodged objections and argued that, whilst the claim for payment of legal costs (under Rule 151 RoP) was reserved to parties of the proceedings, the intervener would only be considered a party under Rule 315.4 RoP if intervention was granted. It also said that costs only followed a decision on the merits and that the written submissions made by Insulet were voluntary and therefore not eligible for reimbursement.
- The Milan CD found that Insulet's application was well founded and ordered Menarini to pay Insulet's costs. The Milan CD noted that the application for costs was made by Insulet, which was a party to the proceedings, and that Rule 151 RoP refers generally to the "successful party" without excluding an application for costs to be made against a party that is not yet a party to the proceedings.
- Furthermore, Article 69 UPCA sets out the general rule that the successful party's costs are borne by the unsuccessful party. This applied to any litigation, including one concerning intervention. The Milan CD held that on a fair reading of Article 69 UPCA, the general principles of law and the principle of equity mean that the loser must bear the cost of proceedings in the "sub-proceedings" concerning intervention.
- The Milan CD also disagreed that costs are limited to following decisions on the merits, noting that Article 69 UPCA does not make this distinction and such a distinction would go against principles of proportionality and fairness. Article 69 also does not make a distinction between a "necessary" or a "voluntary" defence and, in any event, under Rule 314 RoP the judge-rapporteur decided on the admissibility of an invention application, which makes the intervention procedure judicial in nature and therefore subject to the adversarial right of defence.
Issue
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