UPC_CFI_1795/2026; UPC_CFI_1796/2026; UPC_CFI_661/2026 – Ericsson v Verifone

Expert Commentary

Settlement Facts 1. This matter relates to three standard-essential patents (SEP): EP 3 397 009, EP 2 506 479, EP 4 277 422. 2. In these three cases, the parties reached a settlement. The JR 1. The JR increases the value of the litigation in view of a FRAND specific claim; 2. The JR gives an elaborate explanation why he only awards a 40% (instead of 50%) return of court fees. Comment The above-mentioned three cases are all decided and reported on 14 September 2026. There are (at least) three interesting aspects. 1. The Court had separated early on the (SEP) case started on the basis of three patents into three different cases. 2. The Statement of Claim contained so-called “FRAND” specific claims (for Fair, Reasonable and Non-Discriminatory license terms), asking the Court to determine a FRAND rate if the Court were to find the offer of the claimant not to be FRAND-compliant. The claimant argued that this did not increase the value of the litigation. The JR disagreed. He did not decide whether the UPC can set a FRAND rate or not. I do think that a Court can do so if such request is properly formulated so that it can be seen as a license defence or as a declaration that such defence does not exist (see Art. 32.1(a) UPCA). The JR speculates that a Court may decide such rate setting (maybe better: a FRAND-compliance claim) in separate proceedings. That seems indeed more efficient because it may avoid having to deal with infringement and validity of three or even 5 patents (as two other patents were litigated in The Hague). The JR is in my opinion right that FRAND specific claims increase the economic value of the proceedings because they de facto relate to the value of the use of a certain standard (worldwide). 3. The JR, after having increased the value of the litigation and ordering an extra payment of fees, only awarded a 40% return of court fees instead of 50%, pointing to the work which the Court had to do prior to the settlement. This seems to me fully justified.

Full Decision Text

Mannheim Local Division UPC CFI 1795/2026 Decision of the Court of First Instance of the Unified Patent Court delivered on 14 September 2026 concerning EP 3 397 009 (R. 265 RoP, R. 370.9 RoP) **CLAIMANT/APPLICANT** Telefonaktiebolaget LM Ericsson (publ), Torshamnsgatan 21, Kista, 164 83 Stockholm, Sweden Represented by Sören DAHM **DEFENDANTS** 1) Verifone GmbH, Seilerweg 2f, 36251 Bad Hersfeld, Germany Represented by Klaus HAFT 2) EC Cash Direkt GmbH, Karl-Hammerschmidt-Straße 1, 85609 Aschheim, Germany Represented by Klaus HAFT 3) Verifone Payments GmbH, Karl-Hammerschmidt-Straße 1, 85609 Aschheim, Germany Represented by Klaus HAFT 4) Adyen N.V., Simon Carmiggeltstraat 6, 1011 DJ, Amsterdam, Netherlands Represented by David POR 5) Verifone Payments B.V., Singel 250, 1016 AB Amsterdam, Netherlands Represented by Klaus HAFT 6) Verifone Sp. Zoo, ul. Wołoska 9a 02-583 Warszawa, Poland Represented by Klaus HAFT 7) Verifone Italy S.R.L., Via Nervesa 21, 20139 Milano, Italy Represented by Klaus HAFT 8) Verifone Portugal, Rua Dr. Fernando da Fonseca, Edificio Vicondede Alvalede, 7° Andar (LDA Office 7), 1600-616, Lisboa, Portugal Represented by Klaus HAFT 9) Verifone Systems France S.A.S. 32 Avenue Pierre Grenier, 92100 Boulogne-Billancourt, France Represented by Klaus HAFT 10) Verifone Denmark A/S, Knapholm 7, 2730 Herlev, Denmark Represented by Klaus HAFT 11) Verifone Sweden AB, Box 92031, 120 06 Stockholm, Sweden Represented by Klaus HAFT 12) Verifone, Inc., 11700 Great Oaks Way Suites 150, 200 & 210, Alpharetta, GA 30022, US Represented by Klaus HAFT 13) Verifone Systems, Inc., 817 Broadway, Suite 1100 New York, NY 10003, US Represented by Klaus HAFT **PATENT AT ISSUE** European patent EP 3 397 009 (UPC CFI 1795/2026) **PANEL/DIVISION** Panel of the Local Division in Mannheim **DECIDING JUDGES** This decision was delivered by the legally qualified judge Böttcher acting as judge-rapporteur. **LANGUAGE OF THE PROCEEDINGS:** English **SUBJECT OF THE PROCEEDINGS:** Patent infringement action – withdrawal (R. 265 RoP), reimbursement of court fees (R. 370.9 RoP) **SUMMARY OF THE FACTS:** Prior to the closure of the written procedure, Claimant, having reached an out-of-court settlement with Defendants 1 to 3 and 5 to 13 (“Verifone Defendants”) that also covers the claims against Defendant 4 based on the Infringing Products, applies to withdraw its infringement action, with consent of Defendants. Claimant and Verifone Defendants declare that they will not make any requests for costs in proceedings pursuant to R. 150 RoP. With regard to Defendant 4, Claimant requests that the Court does not issue a cost order. Defendant 4 consents to this request. Together with its applications for withdrawal, Claimant has filed an application pursuant to R. 370.9 (b) RoP. Claimant requests: I. to withdraw the action against the Verifone Defendants and Defendant 4 in accordance with R. 265.1 RoP. II. with regard to the cost decision pursuant to R. 265.2 lit. c) RoP to order that the Claimant and the Verifone Defendants shall bear their own costs and declare that there is no reimbursement of costs between these parties and that the Court issues no cost order in relation to Defendant 4. III. that the Claimant be reimbursed for the court costs incurred in connection with the action pursuant to R. 370.9 lit. b) (i) RoP. **REASONS FOR THE DECISION:** 1. The withdrawal is allowed on the instant facts with the consent of the Defendants. The judge-rapporteur sees no reasons not to do so. No decision on costs is necessary because the parties have unanimously declared that there is no need for such a decision (cf. Court of Appeal, decision of 28 May 2025, UPC CoA 808/2024); Claimant and Verifone Defendants did so by declaring that they will not make any requests for costs in proceedings pursuant to R. 150 RoP. As far as Claimant formally requests a cost decision in relation to Verifone Defendants as cited above, no such cost decision is needed because a cost decision as requested would simply reflect that there will be no reimbursement of costs. In consequence, there is no need for a cost decision. 2. The reimbursement of court fees is based on R. 370.9 (b) (e), 370.11 RoP. The regular rate of reimbursement is 50 % if the infringement action is withdrawn before the closure of the written procedure (R. 370.9 (b) RoP). However, taking all circumstances of the individual case into account and weighing the interests involved, the judge-rapporteur exercises its discretion not to grant the regular reimbursement rate but to reduce the reimbursement rate to 40 % based on the exceptional circumstances of the case in accordance with R. 370.9 (e) RoP. The infringement action was withdrawn at an early stage, within the extended time period for the Statement of Defence. However, the intertwined structure of the requests in the infringement action required a deeper analysis than usual at this early stage and a coordination between different divisions (The Hague and Mannheim). The confidentiality regime requested was above-average complex (and even provoked a request for file inspection by a third party concerned). However, the court had not to rule on the confidentiality regime (and the request for file inspection) as a matter of dispute because the parties managed to reach an agreement on confidentiality after a CMH in the parallel proceedings in The Hague. There was a preliminary objection that, however, was decided only in part and, in all other respects, postponed to the main proceedings. The Statement of claim from the original proceedings from which the present proceedings were separated concerned three patents the subject-matter of which did not appear to be sufficiently closely related to hear the respective infringement cases in joint proceedings (cf. separation order of 8 May 2026) so that the proceedings had to be separated. Against this backdrop, taking all circumstances into account, a moderate reduction of the reimbursement rate to 40 % seems appropriate and sufficient in the individual case at hand. 3. In the absence of better information, the amount in dispute is set to the undisputed amount stated in the statement of claim as value in dispute per patent. The value of the so-called FRAND Specific Claims is exclusively accounted for in the original proceedings UPC CFI 661/2026 from which the present proceedings were separated und to which the FRAND Specific Claims were allocated (cf. separation order of 8 May 2026). In particular, the discussions about an additional value of such FRAND Specific Claims are reflected in Claimant’s briefs of 24 July 2026 and 19 August 2026 in those original proceedings. For further details, reference is made to the decision on the withdrawal in those original proceedings. 4. Based on the aforementioned rate of reimbursement and the aforementioned value in dispute, the court fees to be reimbursed amount to 16.440 EUR ([fixed court fee of 14.600 EUR + additional value-based court fee of 26.500 EUR] x 0,4). **DECISION:** 1. The withdrawal of the infringement action is allowed at the application of the Claimant and with the consent of the Defendants. 2. The proceedings are declared closed. 3. This decision shall be entered in the register. 4. A cost decision is not required. 5. The value in dispute for the infringement action is set at EUR 3.000.000,00. 6. The rate of reimbursement pursuant to R. 370.9 RoP is set to 40 %. 7. The Registrar is directed to reimburse the Claimant as soon as possible 40 % of the Court fees paid by it in relation to the infringement action, namely EUR 16.440,00 (bank account indicated in Claimant’s briefs of 7 July 2026, para. 3). Delivered in Mannheim on 14 September 2026 **NAME AND SIGNATURE** Böttcher Judge-rapporteur

Key Holdings

• FRAND-specific claims requesting the determination of a FRAND rate increase the value of the litigation because they relate to the economic value of using a standard.
• The Judge-Rapporteur may reduce the reimbursement of court fees upon settlement (e.g., awarding a 40% instead of a 50% refund) based on the volume of work undertaken by the Court prior to the settlement.
• A request for FRAND rate determination or FRAND-compliance may properly be handled in separate proceedings to avoid unnecessary litigation of patent infringement and validity across multiple patents.

Tags

• Settlement
• FRAND
• Value of the litigation
• Court fees
• Standard Essential Patents