Short Summary
This case concerned a patent infringement action filed by Dolby International AB against several ASUS entities regarding European Patent EP 3 490 258 B1, along with a counterclaim for invalidity filed by certain ASUS defendants. Before the written proceedings were concluded, the parties reached an out-of-court settlement, prompting Dolby to withdraw its main action and the ASUS defendants to withdraw their counterclaim. The Local Chamber Düsseldorf allowed the withdrawals, terminated the proceedings, and ordered each party to bear its own costs, with a 60% partial reimbursement of court fees to both sides.
Detailed Summary
The plaintiff, Dolby International AB (an Irish company), filed a patent infringement action against four ASUS entities (ASUS Computer GmbH, ASUSTek COMPUTER INC., ASUSTek (UK) Limited, and ASUS France) before the Local Chamber Düsseldorf of the Unified Patent Court on November 30, 2023, concerning European Patent EP 3 490 258 B1. In response, defendants 1, 3, and 4 (ASUS Computer GmbH, ASUSTek (UK) Limited, and ASUS France) filed a counterclaim for invalidity on April 23, 2024.
Before the written proceedings were concluded, the parties reached an out-of-court settlement. On December 27, 2024, Dolby withdrew its main action, including a previously filed request to amend the patent in suit. On the same day, defendants 1, 2, and 4 requested permission to withdraw the counterclaim for invalidity. Both parties consented to the withdrawals initiated by the other side and to the respective requests for partial reimbursement of court fees.
The court, applying Rule 265.2(c) of the Rules of Procedure, granted the withdrawals and declared both proceedings terminated. Regarding costs, the court ordered that each party bear its own out-of-court costs with no cost reimbursement between the parties. The court costs for the main action were borne by the plaintiff (Dolby), while the court costs for the counterclaim were borne by defendants 1, 3, and 4 in equal shares of one-third each. Pursuant to Rule 370.11 in conjunction with Rule 370.9(b)(i) of the Rules of Procedure, the court ordered a 60% partial reimbursement of court fees: 22,200 EUR to Dolby for the main action, and a total of 12,000 EUR to defendants 1, 3, and 4 for the counterclaim. The value in dispute was set at 3,500,000 EUR for both the main action and the counterclaim. The decision was rendered on February 10, 2025, by Presiding Judge Thomas, Legally Qualified Judge Dr. Thom (Rapporteur), and Legally Qualified Judge Brinkman.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Düsseldorf (DE) Local Division. Understanding the court's reasoning in Dolby International AB vs ASUS Computer GmbH, ASUSTek COMPUTER INC., ASUSTek (UK) Limited, and ASUS France is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Huawei Technologies Co. Ltd.vsHMD Global Oy
An order issued by the judge-rapporteur of the Mannheim Local Division in an infringement action concerning European patent EP 3 667 981, establishing a general confidentiality regime under Rule 262A RoP for FRAND licence negotiations between the parties. Both parties had coordinated out-of-court and welcomed the proposed approach. The order classifies publicly unknown details of the confidential licence negotiations as confidential, sets out procedures for marking and objecting to confidentiality designations, restricts access to designated persons, and provides for potential periodic penalty payments for culpable breaches.
Panasonic Holdings CorporationvsXiaomi Inc. et al. (UPC_CFI_218/2023)
The Local Chamber Mannheim of the Unified Patent Court ordered the severance of proceedings under Rule 303.2 RoP in a patent infringement action brought by Panasonic Holdings Corporation concerning European Patent EP 3 096 315 against multiple Xiaomi-related defendants. The court separated the proceedings against the four defendants domiciled in China and Hong Kong (Defendants 1, 2, 7, and 8), whose complaints had not yet been served, from the main proceedings against the remaining defendants already represented by counsel, to allow the main case to proceed without delay.
Institute of Professional Representatives before the European Patent OfficevsSuinno Mobile & AI Technologies Licensing Oy & Microsoft Corporation
The Institute of Professional Representatives before the European Patent Office (epi) applied under Rule 262(1)(b) of the Rules of Procedure for access to the written pleadings and evidence in an infringement action between Suinno Mobile & AI Technologies Licensing Oy and Microsoft Corporation concerning European patent EP 2 671 173. The applicant argued a specific interest based on the status and representation rights of in-house European Patent Attorneys before the UPC, an issue addressed in prior orders in the proceedings. The Court of First Instance (Paris seat) dismissed the application, holding that the interest in protecting the integrity of the ongoing proceedings outweighed the applicant's interest in accessing the case file, as the matter was purely legal and of a general nature.
Hewlett-Packard Development Company, L.P.vsLAMA France
This decision concerns cross-appeals filed by Hewlett-Packard Development Company, L.P. (HPDC) and LAMA France before the Court of Appeal of the Unified Patent Court regarding European Patents EP 2 089 230 and EP 1 737 669. After the Paris Local Division had found one patent invalid and the other infringed, both parties reached a settlement and jointly requested withdrawal of all claims. The Court of Appeal granted the mutual withdrawal, declared the proceedings closed, and ordered a 60% reimbursement of procedural costs to each party.
bioMérieux UK Limited and bioMérieux SA et al.vsLabrador Diagnostics LLC
Procedural order issued by the Court of First Instance of the Unified Patent Court (Central Division Milan) in revocation proceedings concerning European Patent EP 3 756 767 B1 owned by Labrador Diagnostics LLC. Following an interim conference, the court directed bioMérieux to narrow down its approximately 50 invalidity attacks and 16 prior art citations to a manageable number, particularly focusing on Auxiliary Requests 1, 2, and 3, and ordered both parties to provide specific submissions and cost estimates by set deadlines.
Dealing with a patent challenge?
Whether it's a Section 3(d) rejection, a post-grant opposition, or a FRAND dispute, Arctic's patent litigation team has handled it. Get a strategy call.
Disclaimer: This page contains an automated summary based on publicly available judicial records. The content is generated for informational purposes only and does not constitute legal advice. Always verify details against the original source judgment before relying on this information for any legal purpose. If you believe any information is inaccurate, please contact us.