UPC_CFI_1536/2025; UPC_CFI_982/2026; UPC_CFI_1168/2026 – Dolby v CPYou / Acer

Court
Local Division The Hague
Date
Outcome
Denied
Sector
Electronics/SEP
Decision Type
PROCEDURAL

Expert Commentary

Cross complaint against intervener Facts 1. Vectis asked for a panel review of the 1/4 May order that a counterclaim for rate-setting against the intervener is possible. 2. Alternatively, Vectis wanted an independent deadline regime for the counterclaim for rate-setting, starting from the date it was officially served. The Court (full panel) 1. The Court agrees with the Judge-Rapporteur (“JR”) that Vectis has become a party to the proceedings (R. 315 RoP), meaning that a counterclaim can be directed against intervener Vectis, particularly since Vectis intervened on the side of the claimant against whom the same counterclaim has been raised. 2. The argument that Vectis applied in support of Dolby is unconvincing, as the counterclaim for a license essentiality constitutes a defence against Dolby’s claim and the claim supported by Vectis. 3. It would be both strange and also contrary to R. 316.3 RoP if, in order to defend itself against Vectis, Acer would have to file rate setting proceedings in a different forum. 4. The fact that Vectis may not bring proceedings does not mean that one cannot file a counterclaim for rate setting. Comment 1. Vectis wanted to intervene. It is not clear to me why it wanted to intervene. I cannot see what Vectis and or Dolby gain from this. 2. All parties agreed to have Vectis as an intervener, although it does not seem to have any rights under the patent other than being the administrator of a patent pool. Therefore, it can apparently represent the patentee, but this is a contractual relation that in my opinion does not affect Acer’s position in any way. Acer is confronted with a claim from Dolby. Assuming that Dolby has a dominant position and that the patent is a SEP (which seems the case), Dolby must make a FRAND offer to Acer. Whether or not this is done by Vectis as its representative is in my opinion irrelevant. 3. I cannot see the relevance of Vectis as an intervener. If it were the case that Vectis has negotiated with Acer on behalf of Dolby and Acer would allegedly not be willing to make a FRAND counteroffer, Vectis can be called as a witness. I do not see any necessity for support of Dolby as an intervener. However, for Acer, Vectis is of interest as Vectis is the pool administrator and can grant licenses for the pool. If indeed Acer is using the Opus standard, it of course prefers a license under all pool patents and not a license only under the Dolby patents. 4. So the fact that Vectis became a party enabled Acer to initiate a rate-setting counterclaim against Vectis, according to the Court. Even if Vectis would not have intervened, Acer could have asked to add Vectis as a party (based on R. 305.1(a)). 5. In my opinion, a Court that is requested based on R. 190 RoP to order the disclosure of all the license agreements should not do so as long as it is clear from the implementer’s behavior that they are not a willing licensee. I assume that in the case at hand, there has been a counteroffer and security is provided. In such a situation the production of license agreements (under a confidentiality regime) makes sense. If the Court has first to decide whether or not the implementer is infringing the invoked patent(s) and if it has been willing, then the proceedings would become unnecessary long.

Full Decision Text

Local Division The Hague UPC-CFI-0001536/2025 UPC-CFI-0000982/2026 UPC-CFI-0001168/2026 Procedural Order of the Court of First Instance of the Unified Patent Court delivered on 8 July 2026 regarding: panel review of order of 1 May 2026 (R. 333) **HEADNOTES:** 1. Review of an order to accept a counterclaim for rate-setting against an intervener (Pool administrator) denied. 2. R. 315.4 RoP entails that an intervener is to be treated as a party, unless otherwise ordered by the Court. This means as a principle that a counterclaim (for rate-setting) may be directed to such intervening party. The more so since Vectis intervened on the side of claimant, Dolby. According to the principle of “equal treatment” (CoA 27 November 2025, UPC_CoA_70/2025 (Strabag), m.n. 16), a counterclaim directed at the party the intervener supports may also be directed at the intervener. 3. The Court may also rely on R. 305 RoP. It makes further sense to include Vectis as a proper party (on the side of Dolby), since it already intervened voluntarily and unopposed and at an early stage of the proceedings, rendering it possible to file a (counter)claim against it. **KEYWORDS:** panel review; intervention; counterclaim against intervener; addition of a party **CLAIMANT** 1) Dolby International AB Represented by Tilman MÜLLER 77 Sir John Rogerson's Quay Block C Grand Canal Docklands, Dublin, D02 VK60, Ireland (herinafter also „Dolby“) **DEFENDANTS** 1) CPYou B.V. Represented by Hsueh-Yen LIN Europalaan 89, 5232 BC 's-Hertogenbosch, The Netherlands 2) Acer Italy s.r.l. Represented by Hsueh-Yen LIN Italy 3) Acer Computer GmbH Represented by Hsueh-Yen LIN Kornkamp 4, 22926 Ahrensburg, Germany 4) Acer Computer B.V (Benelux) Represented by Hsueh-Yen LIN Europalaan 89, 5232 BC ‘s-Hertogenbosch, The Netherlands 5) Acer Denmark A/S Represented by Hsueh-Yen LIN Strandvejen 70, 3 tv, 2100 Hellerup, Denmark 6) Acer Finland Oy Represented by Hsueh-Yen LIN Teknobulevardi 7, 01530 Vantaa, Finland 7) Acer Computer France Represented by Hsueh-Yen LIN Immeuble Seine 2 – 8 rue Sarah Bernhardt, CS 90045, 92601 Asnières-sur-Seine Cedex, France 8) Acer Sweden AB Represented by Hsueh-Yen LIN Helio, c/o Acer Sweden AB, Frösundaviks Allé 1, 169 70 Solna, Sweden (herinafter also „Acer“ (singular)) **INTERVENER** 1) Vectis IP Ltd., Represented by Tilman MÜLLER 1 Lyric Square, London W6 0NB, United Kingdom, (herinafter also „Vectis“) **PATENT AT ISSUE** Patent no. EP3079153 Proprietor/s Dolby International AB **DECIDING JUDGE – FULL PANEL** Edger Brinkman - presiding judge / judge rapporteur Margot Kokke - legally qualified judge Anna-Lena Klein - legally qualified judge **LANGUAGE OF PROCEEDINGS:** English **SUBJECT-MATTER OF THE PROCEEDINGS** Infringement action, counterclaim for revocation and “counterclaim for rate-setting” **PROCEDURE** 1. The following documents are in the case file: - Order by the JR of 1 May 2026, and the party submissions used therefor, - Rectification order of 4 May 2026, - Application for Panel Review of the Judge-Rapporteur's order dated 1 May 2026 pursuant to Rule 333 RoP, filed 18 May 2026, - Follow-up on Request for Panel Review, filed 22 June 2026, - Reply to the application for panel review of the judge-rapporteur's order dated 1 May 2026, filed 25 June 2026. **SUMMARY OF FACTS:** 2. The application is based on the following facts: 2.1. 2.2. 2.3. **STATEMENT OF FORMS OF ORDER SOUGHT BY THE APPLICANT** 3. Claimant and Intervener request that: the Panel review the order made by the Judge-Rapporteur and make the following revised order that 1. The Court declare the counterclaim against Vectis to be inadmissible. In the alternative: 2. The Court determine an independent deadline regime for the counterclaim for rate-setting against Vectis granting a deadline of at least three months to respond to the counterclaim as of the date of the official service of the counterclaim. **GROUNDS FOR THE ORDER:** 4. The panel reasons as follows: 4.1. The panel concurs with the JR that R. 315.4 RoP entails that an intervener is to be treated as a party, unless otherwise ordered by the Court. This means as a principle that a counterclaim (for rate-setting) may be directed to such intervening party. The more so since Vectis intervened on the side of claimant, Dolby. According to the principle of “equal treatment”1, a counterclaim directed at the party the intervener supports may also be directed at the intervener. 4.2. The purpose of the counterclaim is furthermore to obtain a license to inter alia the patent at stake, which license may be granted not only by Dolby but also by Vectis who is specifically authorized by Dolby to do so. Furthermore, Acer takes the position that the FRAND commitments bestowed on Dolby are equally bestowed on Vectis. Whether this is indeed the case, would require an assessment of the substance of the counterclaim, which goes beyond the assessment of admissibility currently at stake. 4.3. In as far as Dolby and Vectis referred to R. 313 RoP, this is unconvincing and rather suggests the opposite. They assert that “Vectis applied to intervene in support of Dolby — that is, in support of the infringement claims brought by the Claimant”. However, Art. 32 (1) (a) UPCA already makes plain that “counterclaims concerning licences” are to be treated as a related defence against an infringement action. Clearly, Vectis would therefore be able to co-defend Dolby against the counterclaim directed at Dolby. It becomes rather incomprehensible and – in the words of Dolby and Vectis: – anomalous if Vectis may defend Dolby, whereas Acer would be required to initiate new proceedings to obtain an order for rate-setting against Vectis itself for partly the same patents. 4.4. This would furthermore go against the principle laid down in R. 316.3 RoP that the intervener is bound by the decision. It logically follows that equally the other parties are bound by the decision vis-à-vis the intervener, which then may mean that in fact Acer would be (wholly or partly) precluded to start or argue such a claim for a license against Vectis, in case it be denied against Dolby, or at least in as far as the arguments overlap. This also undercuts the point Dolby and Vectis make that “it would produce a deeply anomalous result if a third party that voluntarily and narrowly joins proceedings in a supportive capacity thereby becomes exposed to independent substantive claims that could not be brought against it in any other forum”. In that regard, the Court cannot follow that there would not be a forum that would adjudicate a license claim against Vectis, for instance the court of its domicile. Of course, whether such claim would ultimately be successful is another matter, not to be assessed in these admissibility proceedings. 4.5. Like the JR assessed, Vectis alone may not have standing to initiate proceedings before this Court as it is neither patentee, exclusive nor non-exclusive licensee (Art. 47 UPCA). The JR rightly further held, however, that this article only limits the persons who may bring an action, not who may join (as an intervener, for which Vectis specifically applied and to which Dolby did not object). The point raised that Vectis does not own patents and therefore cannot have any dominant market position, is – as the JR rightly held – a question of substance not of admissibility and is therefore to be decided later by the panel after the oral hearing. 4.6. It is also more efficient. As asserted by Acer, (and as may be deduced from the statement of reply meanwhile filed on June 2026) largely similar issues would apply for both Dolby and Vectis. The Court sees no reason therefore to deviate from the main rule of R. 315.4 RoP and use its discretion to order differently. 4.7. Acer further correctly notes that the Court may rely on R. 305 RoP. It makes further sense to include Vectis as a proper party (on the side of Dolby), since it already intervened voluntarily and unopposed and at an early stage of the proceedings, rendering it possible to file a (counter)claim against it. For all the reasons set out above, this is efficient and appropriate. In case the Court of Appeal would not follow this Court to declare the counterclaim admissible against Vectis as an intervener, the Court will order it be added as a party. The objections Dolby and Vectis earlier stated against this (that Vectis has no standing (Art. 47 (1) UPCA), that there is no competence (Art. 32 (1) (a) UPCA) and that Vectis does not have a dominant position nor issued a FRAND declaration) have already been addressed above. 4.8. In as far as Dolby and Vectis oppose the international jurisdiction of the UPC over Vectis, Acer is right to point out that Vectis nor Dolby filed a preliminary objection within one month (R. 19 RoP). 4.9. (Dolby and) Vectis alternatively applied for an extension of their deadline which the JR denied. Since they already complied with the deadline on June 2026, the Court currently fails to see a legitimate interest. Dolby and Vectis requested leave to appeal. Since this review concerns an issue as yet undecided by the Court of Appeal, and has an impact going beyond the proceedings at hand, the Court will grant such leave, also bearing in mind that any delay resulting from the appeal is to the detriment of the party seeking an injunction and associated orders. **ORDER** The Court: - Denies the review; - In as far as necessary, adds Vectis as a party on the side of Dolby; - Grants leave to appeal (R. 220.2 RoP). **INFORMATION ABOUT APPEAL** An appeal may be lodged in accordance with Article 73 of the Agreement and Rule 220.2 RoP. On behalf of the registry Edger BRINKMAN Digitally signed by Edger BRINKMAN Date: 13:33:48 +02'00' Margot Kokke Digitally signed by Margot Kokke Date: 15:51:36 +02'00' Anna-Lena Klein Firmato digitalmente da KLEIN Date: 14:36:54 +02'00' Hageman Digitally signed by Date: 14:59:47 +02'00'

Key Holdings

  • An intervener becomes a party to the proceedings (R. 315 RoP), allowing counterclaims to be directed against them, especially if they intervene on the side of the claimant against whom the counterclaim is raised.
  • A counterclaim for license essentiality/rate-setting against an intervener is permissible as a defense, even if the intervener itself cannot bring proceedings.
  • It would be contrary to R. 316.3 RoP to force a defendant to file separate rate-setting proceedings against an intervener in a different forum.
  • The Court's decision implies that an intervener's role as a patent pool administrator makes them a suitable target for rate-setting counterclaims.
  • The author questions the necessity of intervention by a patent pool administrator if their role is primarily contractual or administrative.

Tags

  • Intervention
  • Counterclaim
  • Rate-setting
  • Standard Essential Patents
  • FRAND
  • Parties
  • Procedural

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