NEC Corporation v. TCL Deutschland GmbH & Co. KG et al.

By statement of claim dated 22 December 2023, NEC Corporation (Claimant) filed a patent infringement action against multiple TCL entities (Defendants) before the Local Division Munich concerning European patent EP 2 645 714. On 8 July 2024, Defendants 1 (TCL Deutschland GmbH & Co. KG), 3 (TCT Mobile Germany GmbH), 4 (TCT Mobile Europe SAS), and 6 (TCL Operations Polska Sp. z.o.o) lodged a counterclaim for revocation. Defendant 1 additionally filed a counterclaim for a FRAND-license offer on the same day. Access Advance LLC intervened in the proceedings.

Following a settlement and the conclusion of a patent licence agreement covering inter alia the patent-in-suit, Defendants 1, 3, 4 and 6 declared the withdrawal of the counterclaim for revocation in a submission dated 14 January 2025. Defendant 1 also withdrew the counterclaim for a FRAND-license offer. The defendants stated they would bear their own costs and did not request cost compensation. Pursuant to Rule 370.9(b)(i) and 370.11 RoP, Defendants 1, 3, 4 and 6 requested partial reimbursement (60%) of the court fees paid for the counterclaim for revocation (totalling €20,000, i.e. €12,000). Defendant 1 requested 100% reimbursement of the court fees paid for the counterclaim for a FRAND-license offer (totalling €15,000), arguing that under Art. 32(1)(a) UPCA, which identifies counterclaims concerning licences as part of the infringement action, no court fees should be required, making the payment voluntary and provisional. In the alternative, Defendant 1 sought 60% reimbursement (€9,000). The Claimant did not submit any comments.

The court permitted both withdrawals under Rule 265.1 RoP, finding that no final decision had been issued and that the Claimant had not asserted any legitimate interests. Under Rule 265.2(c) RoP, the court issued a decision on costs. Applying Rule 370.9(b)(i) in conjunction with Rule 370.11 RoP, the court ordered 60% reimbursement of court fees for both counterclaims since the actions were withdrawn before closure of the written procedure.

On the central legal question of whether the counterclaim for a FRAND-license offer is subject to court fees, the court rejected Defendant 1's argument for full reimbursement. The court reasoned that under Art. 70(1) and 70(2) UPCA, parties must pay court fees generally in advance, and the UPC is not based on the principle of free proceedings. Rule 370.2-5 RoP does not explicitly mention a counterclaim for a FRAND-license offer, and such a counterclaim cannot be subsumed under an infringement action (Rule 370.2(a) with Rule 15 RoP) or a counterclaim for infringement (Rule 370.2(b) with Rule 53 RoP), as its subject matter is the offer of a specific licence with a specific royalty, not unlawful use of a patent. The court further held that Art. 32(1)(a) UPCA concerns only the competence of the UPC and does not equate counterclaims concerning licences with infringement actions; the explicit mention of such counterclaims in Art. 32(1)(a) UPCA actually indicates they are different types of actions. The court identified an unplanned gap in the Rules of Procedure and applied Rule 370 RoP by analogy, reasoning that counterclaims are independent actions that go beyond simple defence and justify demanding court fees.

The final order permitted both withdrawals, declared the proceedings closed, ordered the parties to bear their own extrajudicial costs with no reimbursement between parties, ordered reimbursement of €12,000 (60%) to Defendants 1, 3, 4 and 6 for the counterclaim for revocation, and ordered reimbursement of €9,000 (60%) to Defendant 1 for the counterclaim for a FRAND-license offer.