PHOENIX CONTACT GmbH & Co. KG v. Industria Lombarda Materiale Elettrico I.L.M.E. S.p.A. and ILME GmbH Elektrotechnische Handelsgesellschaft

UPC-000637

This case concerned an infringement action regarding European Patent EP 3 602 692, accompanied by a revocation counterclaim. Following an out-of-court settlement, the plaintiff withdrew the infringement claim and the defendants withdrew the revocation counterclaim. The court allowed both withdrawals, terminated the proceedings, and addressed the refund of court fees, setting the value of the infringement claim at €750,000 and the revocation counterclaim at €1,125,000.

Jurisdiction
European UPC
Court
Munich (DE) Local Division
Case Number
UPC-000637
Judge(s)
Diese Entscheidung wurde durch die Vorsitzende Richterin Ulrike Vo; in Mojca Mlakar und den technisch qualifizierten Richter Hergen Kapels erlassen; statterin zur Vorbereitung der auf den

Detailed Summary

PHOENIX CONTACT GmbH & Co. KG (plaintiff) filed an infringement action on 24.06.2024 against Industria Lombarda Materiale Elettrico I.L.M.E. S.p.A. and ILME GmbH Elektrotechnische Handelsgesellschaft (defendants) regarding European Patent EP 3 602 692. The defendants denied infringement and filed a counterclaim for revocation of the patent. The plaintiff opposed the revocation counterclaim and filed auxiliary requests for amendment of the patent.

On 06.05.2025, the reporting judge issued an interim order in preparation for the oral hearing scheduled for 17.06.2025, indicating an intention to set the value of the revocation counterclaim at €1,500,000 and ordering the interim proceedings to be concluded by 23.05.2025 (later extended to 02.06.2025).

On 30.05.2025, the plaintiff applied to withdraw the infringement claim, citing an out-of-court settlement, and agreed to the withdrawal of the counterclaim. The plaintiff requested a 40% refund of court fees paid for the main claim. On 02.06.2025, the defendants withdrew the revocation counterclaim and also requested a refund of excess court fees.

The defendants argued that the value of the revocation counterclaim should be €750,000 (equal to the infringement claim value), contending that the counterclaim value should reflect the individual interest of the revocation claimant rather than the general value of the patent, and that no other infringement proceedings were pending.

The court allowed both withdrawals under Rule 265.1 RoP, finding no legitimate interest of either party in a court decision. The proceedings were terminated and the oral hearing was cancelled. Each party was ordered to bear its own costs.

Regarding court fees, the court set the value of the infringement claim at €750,000 (based on the plaintiff's uncontested submission), entitling the plaintiff to a 40% refund of €13,500 in court fees, amounting to €5,400.

For the revocation counterclaim, the court rejected the defendants' proposed value of €750,000 and instead set it at €1,125,000, applying the Administrative Committee's guideline that the value of a revocation counterclaim equals the value of the infringement claim plus a 50% surcharge. The court reasoned that the value of a revocation action extends beyond the individual interest of the revocation claimant because successful revocation invalidates the patent against everyone, and the general value of the patent (including the patent proprietor's own use) must be considered over the remaining patent term. The court also rejected the defendants' argument that the value should not be doubled because both defendants had filed the counterclaim, noting that no such doubling had been applied.

Based on the €1,125,000 value, the court fees for the counterclaim should have been €19,000 (€11,000 fixed fee plus €8,000 value-dependent fee). Since the defendants had only paid €13,500, there was a shortfall of €5,500. The 40% refund of €19,000 (€7,600) was therefore reduced by the shortfall, resulting in a net refund of €2,100 to the defendants.

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 PHOENIX CONTACT GmbH & Co. KG vs Industria Lombarda Materiale Elettrico I.L.M.E. S.p.A. and ILME GmbH Elektrotechnische Handelsgesellschaft is valuable context for structuring arguments or assessing risk in similar proceedings.

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