Short Summary
This case concerned an infringement action filed by Huawei Technologies Co. Ltd against three Netgear entities regarding European Patent No. 3 678 321, accompanied by a counterclaim for revocation. Both parties reached a settlement and jointly applied for leave to withdraw their respective claims. The court granted the withdrawal, terminated the proceedings, and ordered a 40% refund of the court fees paid by each party, with each side bearing its own costs.
Detailed Summary
Huawei Technologies Co. Ltd (represented by Dr. Tobias J. Hessel of Clifford Chance) filed an infringement action against Netgear Deutschland GmbH, Netgear Inc., and Netgear International Limited (represented by Dr. Stephan Dorn of Freshfields) concerning European Patent No. 3 678 321. The defendants filed a counterclaim for revocation of the patent, along with related applications to amend the patent. The proceedings were assigned to Panel 1 of the Local Division Munich, presided over by Judge Dr. Matthias Zigann as the reporting judge. The language of proceedings was German.
The matter was an infringement action combined with a counterclaim for revocation. Rather than proceeding to a substantive hearing, both parties reached a settlement. The plaintiff applied for leave to withdraw its infringement action and consented to the withdrawal of the counterclaim for revocation. Conversely, the defendants applied for leave to withdraw their counterclaim and consented to the withdrawal of the plaintiff's main action. Both parties jointly requested a refund of 40% of the court fees each had paid.
& Analysis: The court reasoned that, given the parties' agreement, the withdrawal of both the infringement action and the counterclaim for revocation (including the related patent amendment applications) should be permitted. Under Rule 265.2(c) of the Rules of Procedure, upon granting leave to withdraw, the court must issue a cost decision in accordance with Part 1, Chapter 5, without requiring a specific application from either party. The court noted that the mutual agreement of the parties could be taken into account in the cost decision.
Final Order & Ruling: The court granted the applications for leave to withdraw the infringement action (ACT_18917/2024) and the counterclaim for revocation (CC_20512/2024), including the related patent amendment applications (App_38854/2024 and App_38684/2024). The proceedings were declared terminated, and the decision was ordered to be entered in the register. Each party was ordered to bear its own costs, with no cost reimbursement between the parties. The dispute value was set at EUR 1 million for both the main action and the counterclaim. Both parties were granted a 40% refund of the court fees paid for the action and counterclaim respectively, with the refund to be processed through the attorneys' office accounts. The scheduled interim hearing on January 16, 2025, and the oral hearing on March 25, 2025, were cancelled.
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 Huawei Technologies Co. Ltd vs Respondent is valuable context for structuring arguments or assessing risk in similar proceedings.
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