Short Summary
This case concerned a counterclaim for revocation of European Patent EP 1 770 912 B1 filed by Tesla against Avago Technologies' infringement action. Tesla withdrew its counterclaim for revocation, and Avago consented to the withdrawal without requesting a cost decision. The Local Chamber Munich allowed the withdrawal, declared the proceedings terminated, and ordered each party to bear their own costs.
Detailed Summary
Avago Technologies International Sales Pte. Limited (Singapore) filed an infringement action on May 3, 2024 against Tesla Germany GmbH and Tesla Manufacturing Brandenburg SE concerning European Patent EP 1 770 912 B1. In response, the Tesla entities filed a counterclaim for revocation (Nichtigkeitswiderklage) on September 2, 2024.
On December 17, 2024, the defendants (Tesla entities) withdrew their counterclaim for revocation and stated that no decision on costs was being requested. The plaintiff (Avago) consented to the withdrawal on December 19, 2024, and likewise indicated that no cost decision was being sought.
The court applied Rule 265.1 of the Rules of Procedure, which permits a plaintiff to request withdrawal of their action as long as no decision has yet been rendered, unless the other party has a legitimate interest in a court decision. The court held that a counterclaim for revocation qualifies as a 'claim' (Klage) within the meaning of Rule 265.1, and that the withdrawal request was made before any final decision. Since Avago did not assert any legitimate interest in a court decision, and none was otherwise apparent, the court allowed the withdrawal.
Under Rule 265.2(a) and (b), the court declared the proceedings terminated and ordered the decision to be entered in the register. Regarding costs under Rule 265.2(c), the court noted that a cost decision must be made even without a party request. However, since both parties indicated they did not seek a cost decision, the court interpreted this as an agreement that each party would bear their own costs with no cost reimbursement between them.
The final order: (1) the withdrawal of the counterclaim for revocation was allowed; (2) the proceedings were declared terminated; (3) the decision was to be entered in the register; and (4) each party bears their own costs with no reimbursement between the parties.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Munich (DE) Local Division. Understanding the court's reasoning in Avago Technologies International Sales Pte. Limited vs Tesla Germany GmbH and Tesla Manufacturing Brandenburg SE is valuable context for structuring arguments or assessing risk in similar proceedings.
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