HLK’s client, Establishment Labs S.A., wins substantial costs award at the UPC

We were very pleased to represent our client Establishment Labs S.A., a world leader in breast health*, in a recent UPC Infringement Action. Establishment Labs were sued for patent infringement over a surgical device for breast implantation by the company, CooperSurgical, Inc.  After the patent was revoked in EPO opposition proceedings, CooperSurgical requested to withdraw the UPC Action and they argued that all parties should pay their own costs in the circumstances. The UPC judges rejected this argument and Establishment Labs have been awarded substantial costs for the work involved in preparing their defence and counterclaim for revocation (even though neither were actually filed, due to the request for withdrawal being made before the relevant deadline).

This case is an interesting illustration of the interplay between EPO opposition proceedings and parallel UPC proceedings, and who is liable for costs if a claimant withdraws a UPC Action at a relatively early stage. In this case, opposition proceedings had been initiated at the EPO by a company, PulseLavage AB against CooperSurgical’s EP Patent, EP 3 302 292, in May 2024**. CooperSurgical launched a UPC Action in May 2025 under this patent, naming PulseLavage and Establishment Labs as defendants. Before the UPC Action had been launched, the EPO had issued a summons to oral proceedings, and included a preliminary opinion indicating the patent was invalid. The EPO hearing was held on 30 September, and the EPO revoked the patent, confirming their earlier opinion. Two weeks later, on 15 October, CooperSurgical requested to withdraw the UPC Action, arguing that all parties should pay their own costs. Their reasoning was that there were “exceptional circumstances” present that would justify (under R 152.2 UPC) parties paying their own costs – for example, it being reasonable, in their view, that the defendants should have waited until after the EPO hearing before starting any substantial work on their defence or counterclaim to revocation.

The UPC judges rejected CooperSurgical’s reasoning, and clarified that it is a general principle that, if a claimant withdraws an action, particularly when their patent has been revoked in EPO opposition proceedings, it should be considered an ‘unsuccessful party’ and therefore have to pay costs to the other parties. The principle of a claimant withdrawing a case and having to pay costs had previously been established for Appeal cases at the UPC (e.g. in UPC_CoA_232/2025), but, to our knowledge, not to first instance proceedings in the initial stages. We argued that the principle applied at the Court of Appeal should apply at first instance, regardless of when the case was withdrawn. Additionally, we argued that, given the point at which the case with withdrawn, it was reasonable that the defendants would have already have made substantial efforts to prepare their defence and counterclaim for revocation. We also argued that the costs ceiling for a simple Infringement case would be artificially low and the ceiling should be taken to be that of the infringement and the counterclaim for revocation, given that the latter is an expected and normal part of the defence, and the withdrawal was only two weeks before the deadline – this has the effect of doubling the value of the Action and hence the recoverable costs. The judges accepted these arguments. The judges also commented that waiting two weeks from the EPO hearing until withdrawal was an “undue delay” on the part of the claimant. The judges then proceeded to assess what they considered would be a “reasonable and appropriate” total award of costs at the point that the claimant requested withdrawal and awarded Establishment Labs costs on this basis.

As a comment, the UPC is still in the development phase when it comes to assessing costs and it is interesting to note that, while this case illustrates a “top down” approach to costs, other cases have shown a “bottom-up” assessment, looking at each separate cost item (sometimes down to individual time entries on invoices) and whether each is justified or “necessary”. Neither the UPC rules nor the supplementary guidance on costs sets out in detail how the judges should assess whether costs are “reasonable and appropriate”. We hope that, in time, the UPC will harmonise its approach across its divisions to avoid inconsistencies developing. In our view, the “top down” approach is both efficient and fair, and saves parties even further expense of a lengthy and involved costs procedure (it being a general principle that costs from a cost procedure are not recoverable).

“We so appreciated HLK’s guidance on this UPC action. It was our first one, and they made us feel comfortable about the process and law. In the end, it worked out beautifully. The claimant withdrew their infringement claim, and the only remaining issue was how much they were going to reimburse us for our expenses. HLK made new law on that issue, maximizing our recovery even in a case where we were the defendant. We chose HLK because of their previous success in representing us on EP oppositions, and their strong combination of lawyers with international patent litigation experience and European patent attorneys.” — Establishment Labs S.A.

The core HLK team on this case was Alex Rogers, Jamie Rowlands, Greg Ward and Harriet Crawford. Our full UPC team can be found here.

*Establishment Labs’ Femtech solutions are approved for sale in 85 countries. The company trades on the NASDAQ stock exchange under the ticker symbol ESTA and has a market cap of around $1.8 billion.

**For clarity, we wish to make clear that HLK did not represent PulseLavage in EPO opposition proceedings, only in Establishment Labs in the UPC Action.

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This is for general information only and does not constitute legal advice. Should you require advice on this, or any other Unified Patent Court related topic, then please contact upc@hlk-ip.com or your usual HLK advisor.