UPC_CFI_199/2025; UPC_CFI_666/2024 – Adeia v Walt Disney

Court
Local Division The Hague
Date
Outcome
Settled
Sector
Electronics/SEP
Decision Type
SETTLEMENT

Expert Commentary

Settlement / reimbursement of court fees Facts The parties settled and filed R. 265.1 RoP withdrawal requests, asking 40% of the court fees back. The Court 1. The Court grants the R. 265.1 RoP requests and cancels the hearing of January 29, 2026. 2. The Court disagrees with the parties on the return of fees, and rules that the interim procedure was in fact already closed. As there is no formal requirement when it comes to the closure of the interim procedure, the order issued by the JR after the interim conference (R. 105.5 RoP) can and has to be considered as the implicit message to the President that the interim procedure is closed (R. 110 RoP). Accordingly, the parties only get 20% of the court fees back. Comment 1. Very good decision with respect to the return of fees! 2. We also see some magic in the order: cancelling an oral hearing with retroactive effect! 3. It seems clear that the case was settled just before the oral hearing, after the judges had already spent time preparing for it. Under the new reimbursement rules, there would be no return of fees at all at this stage. As I have said before, hopefully a first step towards the abolishment of court fees reimbursement (except in exceptional circumstances). 4. If cases are settled and cost orders not necessary, a letter of both parties to the Registry should be sufficient. The Registrar can decide about the return of court fees. Judges should not spend their time on these unnecessary formalities (nor on cost determination proceedings). I have not yet received any email claiming the champagne!

Full Decision Text

1 Local Divion The Hague UPC CFI 666/2024 UPC CFI 199/2025 Decision of the Court of First Instance of the Unified Patent Court issued on 5 February 2026 concerning: settlement Date of receipt of Statement of claim : 07/11/2024 CLAIMANT/S 1) Adeia Guides Inc. (Claimant) - 3025 Orchard Parkway - CA 95134 - San Jose - US Represented by Prof. Dr. Tilman Müller-Stoy DEFENDANT/S 1) The Walt Disney Company (Benelux) B.V. (Defendant) - Asterweg 15S - 1031 HL - Amsterdam - NL Represented by Dietrich Burkhard Kamlah Taylor Wessing PartGmbB 2) Disney Interactive Studios, Inc. (Defendant) - 500 South Buena Vista St, - 91521 - Burbank, California - US Represented by Dietrich Burkhard Kamlah Taylor Wessing PartGmbB 3) The Walt Disney Company Limited (Defendant) - 3 Queen Caroline Street - W6 9PE - Hammersmith, London - GB Represented by Dietrich Burkhard Kamlah Taylor Wessing PartGmbB PATENT AT ISSUE 2 Patent no. Proprietor/s EP1969839 Adeia Guides Inc. DECIDING PANEL Presiding judge Brinkman Judge-rapporteur Brinkman Legally qualified Judge Bessaud Legally qualified Judge Kokke Technically qualified Judge Fleuchaus LANGUAGE OF PROCEEDINGS: English SUBJECT-MATTER OF THE PROCEEDINGS Infringement claim and counterclaim for revocation GROUNDS FOR THE ORDER In both the infringement claim and the counterclaim, parties request withdrawal of their actions pursuant to R.265.1 RoP because they have reached a settlement. They request the court to declare the proceedings closed and to reimburse them 40% of the fees paid. According to Rule 370.9(b) of the Rules of Procedure (RoP), the percentage of the reimbursement depends on the phase of the proceedings at the time of the 'withdrawal'. The interim phase ends and the oral phase begins in accordance with Rule 110 of the Rules of Procedure (RoP). The JR informs the Presiding Judge and the parties. As there are no formal requirements, implied information by the JR is possible. The Rule 105.5 order can be considered implied information for this purpose in this case. Leave to appeal is not granted as the reimbursement rules have been amended. Any clarification by the Court of Appeal would have solely historical significance. DECISION 1. The withdrawals of the infringement action and the counterclaim for revocation are permitted. 2. The proceedings regarding the infringement action and the counterclaim for revocation are declared to be closed. 3. The oral hearing scheduled for 29 January 2026 is cancelled. 4. Regarding the infringement action it is confirmed that Claimant must pay the court fees and that each party bears its own costs. 5. Regarding the counterclaim for revocation it is confirmed that Defendants must pay the court fees and that each party bears its own costs. 6. 20 % of the Court fees for the infringement action shall be reimbursed to Claimant. 3 7. 20 % of the Court fees for the counterclaim for revocation shall be reimbursed to Defendants. 8. The reimbursement request by Defendants exceeding 20% is dismissed. 9. This decision is to be entered on the register. Brinkman Presiding Judge and Judge-Rapporteur Bessaud Legally Qualified Judge Kokke Legally Qualified Judge Fleuchaus Technically Qualified Judge For the Deputy-Registrar INSTRUCTIONS TO THE SUB-REGISTRY 1. This decision must be entered on the register. 2. Information about the oral hearing scheduled for 15 January 2026 shall be deleted from the webpage. 3. Court fees shall be reimbursed as set out above.

Key Holdings

  • Court fee reimbursement depends on the stage of withdrawal; later withdrawals (e.g., just before oral hearing) result in less or no reimbursement.
  • Judges should ideally not spend time on formalities like cost determination for settled cases, which could be handled by the Registry.
  • The interim procedure is considered implicitly closed after the Judge-Rapporteur's order following the interim conference (R. 105.5 RoP, R. 110 RoP).
  • The trend is towards reduced or abolished court fee reimbursement, except in exceptional circumstances.

Tags

  • Costs
  • Court Fees
  • Procedure
  • Settlement

Related Cases

View original decision