Executive Summary
This UPC decision addressed the procedural consequences of withdrawing counterclaims for both patent revocation and a FRAND license offer. The Court permitted the withdrawals, declaring the proceedings closed. Crucially, the ruling clarified that even though a FRAND license offer counterclaim is related to the main infringement action, it constitutes an independent proceeding requiring court fees, thereby preventing a full refund upon withdrawal.
What the Court Held — Ratio Decidendi
The Court confirmed that while a counterclaim for a FRAND-license offer is an independent proceeding going beyond simple defense, it still requires court fees. The reimbursement of these fees upon withdrawal is governed by specific Rules of Procedure (Rule 370 RoP), not merely the fact that the counterclaims are related to the main infringement action.
Practitioner Note
This decision granted relief to the petitioner. If you are facing a similar patent dispute before Munich (DE) Local Division, this precedent supports interim or final relief where the facts are comparable. The ratio regarding the applied tests is particularly relevant for strategy.
Related Cases
Nokia Technology GmbHvsMala Technologies Ltd.
This UPC Court of Appeal decision addressed a complex jurisdictional and procedural issue concerning the interplay between national revocation proceedings (in Germany) and an action before the Unified Patent Court. The court confirmed that while the parties in the German and UPC actions were distinct, necessitating the rejection of Mala's primary request to decline jurisdiction, it ultimately granted the crucial auxiliary request for a stay. This ruling provides significant guidance on when procedural fairness requires the UPC to pause proceedings pending outcomes in parallel national litigation.
Sanofi SA as successor of Sanofi Mature IPvsZentiva France
In a significant pharmaceutical case, the UPC Local Division Munich revoked European Patent 2 493 466 concerning the anti-tumoral use of cabazitaxel. The revocation was based on prior invalidation proceedings in France, which demonstrated how national court decisions can directly impact patent validity within the unified system. Consequently, all associated infringement actions brought by Sanofi against generic manufacturers like Zentiva were dismissed.
Telefonaktiebolaget LM EricssonvsAsustek Computer Inc.
This Milan Local Division case involved a complex situation where an infringement action and associated revocation counterclaims were partially withdrawn due to one defendant's insolvency. The Court allowed the withdrawal against the insolvent party (Digital River) but maintained the proceedings against the remaining defendants (Asustek and Arvato). Crucially, the court applied principles of fairness and equity, ruling that both Ericsson and Digital River should bear their own costs related to these withdrawals, despite conflicting claims.
KEEEX SASvsADOBE INC.
This UPC Court of Appeal decision addresses complex jurisdictional challenges raised by multiple respondents against a patent infringement suit. The court ruled that the UPC is incompetent to adjudicate claims concerning alleged infringements occurring outside the EU, specifically naming Switzerland, Spain, the UK, Ireland, Norway, and Poland. Crucially, the claimant failed to meet evidentiary requirements regarding assets within the jurisdiction necessary for certain jurisdictional arguments under Regulation 1215/2012. This case reinforces strict limits on the UPC's international reach.
La Siddhi Consultancy Ltd.vsAthena Pharmaceutiques SAS; Substipharm
In this UPC CFI decision concerning a revocation action, the court addressed the defendants' request for security for costs against the claimant. Despite the claimant asserting SME status and arguing that such an order would restrict access to justice, the Court found the defendant's arguments regarding the claimant's financial vulnerability credible. Consequently, the court ordered the claimant to provide €75,000 in security within six weeks, setting a specific amount while rejecting the defendants' demands for higher sums or faster deadlines.
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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.