Short Summary
This case before the Düsseldorf Local Division concerned European Patent EP 3 320 604 B1. The Claimant, Valeo Electrification, filed a patent infringement action on 2 August 2024, and the Defendants filed a counterclaim for revocation on 8 November 2024. Prior to closure of the written procedure, both parties mutually withdrew their respective claims and counterclaims, and agreed that neither party would seek reimbursement of costs.
Detailed Summary
This matter was heard by the Düsseldorf Local Division of the Unified Patent Court under case numbers UPC_CFI_460/2024 and UPC_CFI_658/2024, concerning European Patent No. EP 3 320 604 B1. The Claimant, Valeo Electrification (a French company based in Cergy, France), filed a patent infringement action against the Defendants — Magna PT B.V. & Co. KG (Germany), Magna PT s.r.o. (Slovakia), and Magna International France, SARL (France) — on 2 August 2024. The Defendants responded with a counterclaim for revocation dated 8 November 2024, which also included a counterclaim for a licence in their Statement of Defence.
Prior to the closure of the written procedure, the Claimant, by brief dated 30 December 2024, withdrew the infringement action and informed the Court that the parties had agreed that neither party would file an application for reimbursement of costs. On 2 January 2025, the Defendants consented to the withdrawal and, by a separate brief submitted the same day, withdrew their counterclaim for revocation. The Defendants also reserved the right to apply for reimbursement of court fees under R. 370.9(b)(i) and R. 370.11 RoP. The Claimant consented to this withdrawal the following day. On 6 January 2025, the Defendants clarified that their counterclaim for a licence was also withdrawn, and on 8 January 2025, the Claimant consented to this withdrawal as well.
The Court, presided over by Presiding Judge Thomas (acting as judge-rapporteur), legally qualified judges Dr Thom and Bessaud, and technically qualified judge Sanchini, granted the withdrawals in accordance with the parties' jointly expressed will. The Court noted that, insofar as R. 265.2(c) RoP requires a decision on costs in accordance with Part 1, Chapter 5 RoP, the agreement reached between the parties was taken into account. Since no party had filed an application for partial reimbursement of court fees, no such order could be made.
The final order allowed the withdrawal of the infringement action at the Claimant's application with the Defendants' consent, allowed the withdrawal of the counterclaim for revocation and the counterclaim for a licence at the Defendants' application with the Claimant's consent, declared all proceedings closed, ordered the decision to be entered in the register, and set the value in dispute for both the infringement action and the counterclaim for revocation at EUR 1,500,000 each.
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 Valeo Electrification vs Magna PT B.V. & Co. KG, Magna PT s.r.o., and Magna International France, SARL is valuable context for structuring arguments or assessing risk in similar proceedings.
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