In this decision, the Düsseldorf Local Division addressed an issue of practical importance for UPC cost proceedings: what happens where a first-instance cost decision has already been issued and partially enforced, but the underlying costs order is later reversed on appeal.
The Court held that, in such a situation, the earlier cost decision loses its foundation. Any amounts already reimbursed on the basis of that earlier decision may then be recovered in the later cost proceedings following the appeal. The decision therefore confirms that such repayments form part of the recoverable procedural costs.
The claimant had originally succeeded in the infringement proceedings, while the counterclaim for revocation had been dismissed. Based on that outcome, the Local Division had made a first costs order and, on that basis, later fixed specific amounts payable by the defendants.
The case then changed fundamentally on appeal. On 2 October 2025, the Court of Appeal overturned the first-instance decision in full, revoked the relevant patent claims and ordered the claimant to bear the costs of both first and second instance.
The defendants subsequently applied for cost fixing, seeking not only reimbursement of their own recoverable costs for first instance and appeal, but also repayment of the amounts they had already paid under the earlier cost-fixing decision.
The Court accepted that request.
It started from Rule 151 RoP, under which a cost application must be filed within one month of the decision in the main proceedings. The Court then addressed the special situation where a first cost-fixing decision is issued before the appeal proceedings are completed and the underlying costs order is later changed on appeal.
According to the Court, once the Court of Appeal amends the original costs decision, the earlier cost-fixing decision loses its legal basis. If amounts have already been reimbursed under that earlier decision, those sums may be claimed back in the subsequent cost proceedings as part of the costs of the proceedings.
This is the central practical point of the decision. It confirms that a party is not left to pursue repayment outside the UPC costs framework merely because the original cost-fixing decision had already been implemented.
The Court also addressed whether a costs agreement reached in first instance extended to the appeal.
The parties had agreed in first instance that EUR 100,000 in representative costs would be recoverable. The defendants argued that this understanding should also apply to the appeal proceedings. The Court disagreed. It held that the agreement clearly related only to first-instance costs. It had been reached on the basis of the parties’ estimates for that stage of the case, and at the time neither the existence nor the likely cost of an appeal could be known.
The recoverable appeal costs therefore had to be assessed on the basis of the costs actually incurred. As those claimed costs were unchallenged and remained below the applicable ceiling, the Court allowed them, together with reduced travel and accommodation costs reflecting that the appeal hearing had been combined with a parallel case.
