UPC_CFI_336/2024; UPC_CFI_605/2024; UPC_CFI_607/2024 – Maxeon v Aiko

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

Expert Commentary

Settlement / return of court fees Facts 1. Case started in June 2024. Oral argument on 17 December 2025. 2. Two days before the Court would render its decision, parties asked for a postponement with a week. 3. Parties settled. 4. Claimant asked for a return of 60% of the court fees. 5. Defendants 3 and 5 to 8 requested a refund of court fees of € 15,000, paid for their revocation claim (brought by separate representatives), arguing – already in their counterclaim for revocation – that that claim was identical to the claim of the other defendants and that therefore no separate court fees should have to be paid. The Court 1. Accepted the R. 265 RoP withdrawal requests. 2. No necessity for a cost decision. 3. No return of court fees as the Court had not saved any time. 4. No return of the € 15,000 as defendants 3 and 5 to 8 filed their own motions and reasoning. Comment 1. Oral argument did not take place within a year (which it should have in the UPC), but took 18 months. This is not the fault of the Local Division Düsseldorf but due to the fact that the claimant chose, without any necessity, the very busy Düsseldorf Division while it could have filed in less busy Divisions. 2. The Court which had done all the work (including the drafting of the decision) was absolutely right not to return any fees. If parties cannot agree on being represented by the same counsel or different counsels cannot agree on filing the same briefs, then it is logical that they each have to pay the fees for a revocation action.

Full Decision Text

1 Düsseldorf Local Division UPC CFI 336/2024 UPC CFI 605/2024 UPC CFI 607/2024 Decision of the Court of First Instance of the Unified Patent Court issued on 11 February 2026 concerning EP 3 065 184 B1 Claimant: Maxeon Solar Pte. Ltd., represented by its CEO, 8 Marina Boulevard #05-02, Marina Bay Financial Centre, 018981 Singapore Represented by: Attorney-at-law Christian Harmsen, Attorney-at-law Dr Bastian Selck, Bird & Bird LLP, Carl-Theodor-Straße 6, 40213 Düsseldorf, Germany Electronic address for service: christian.harmsen@twobirds.com Contributing: Patent Attorney Dr Felix Harbsmeier, Patent Attorney Cameron Walker, Bird & Bird LLP, Am Sandtorkai 50, 20457 Hamburg, Ger- many Tjibbe Douma und Carlos van Staveren, Bird & Bird (Netherlands) LLP, Gustav Mahlerlaan 42, 1082 MC Amsterdam, The Nether- lands Defendants: 1. Aiko Energy Germany GmbH, represented by ist CEOs Dr Christian Frank Peter und Haojie Lu, Niederkasseler Lohweg 18, 40547 Düsseldorf, Germany 2. Solarlab Aiko Europe GmbH, Dr Christian Frank Peter, Berliner Allee 29, 79110 Freiburg im Breisgau, Germany 3. Memodo GmbH, represented by its CEOs Enrico Brandmeier, Daniel Schmitt und Tobias Wenleder, Eichenstraße 11 a-d, 85445 Oberding, Germany 4. Aiko Energy Netherlands B.V., represented by its CEO, Schiphol Boulevard 201 – 1118 BG - Schipol, The Netherlands 5. Libra Energy B.V., represented by ist CEO Bram van Duijn, Eendrachtsstraat 199, 1951 AX Velsen-Noord, The Netherlands 2 6. VDH Solar Groothandel B.V., represented by its CEO, Finlandlaan 1, 2391 PV, Hazerswoud- edorp, The Netherlands 7. PowerDeal SRL, represented by its CEO, Rue du Fond des Fourches 41, 4041 Herstal, Belgium 8. Coenergia Srl a Socio Unico, represented by its CEO, Foro Buonaparte 55, 20121 Milan, Italy Defendants 1., 2. and 4. represented by: Attorney-at-law Gertjan Kuipers, Attorney- at-law Hendrik Jan Ridderinkhof and other Representatives before the UPC of Hogan Lovells International LLP, Strawinskylaan 4129, 1077 ZX Amsterdam, The Netherlands Electronic address for service: upc-hub@hoganlovells.com Contributing: Attorney-at-law Dr Henrik Lehment, Attor- ney-at-law Vanessa Zipperich and other Rep- resentatives before the UPC of Hogan Lovells LLP, Dreischeibenhaus 1, 40211 Düsseldorf, Germany Patent Attorney Dr Andreas Schmid, Patent Attorney Cedrik Rohr and other Representa- tives before the UPC of Hogan Lovells Inter- national LLP, Karl-Scharnagl-Ring 5, 80539 Munich, Germany Defendants 3. and 5. to 8. Represented by: Attorney-at-law Dr Constantin Kurtz and other Representatives before the UPC of CMS Hasche Sigle Partnerschaft von Rechtsanwäl- ten und Steuerberatern mbB, Nymphen- burger Straße 12, 80335 Munich, Germany Electronic address for service: constantin.kurtz@cms-hs.com Contributing: Patent Attorney Dr Markus Herzog, Patent Attorney Manuel Millahn, Weickmann & Weickmann Patent- und Rechtsanwälte Part- mbB, Richard-Strauss-Straße 80, 81679 Mu- nich, Germany PATENT IN SUIT: EUROPEAN PATENT NO. 3 065 184 B1 PANEL/DIVISION: Panel of the Düsseldorf Local Division 3 DECIDING JUDGES: This decision is delivered by Presiding Judge Thomas acting as judge-rapporteur, the legally quali- fied judge Dr Thom, the legally qualified judge Dr Zhilova and the technically qualified judge Dr Schmidt. LANGUAGE OF THE PROCEEDINGS: English SUBJECT: R. 265.1 RoP – Application for leave to withdraw the action R. 370.11 RoP – Application for a partial reimbursement for court fees R. 352.2 RoP – Release of security SUMMARY OF THE FACTS: The Claimant filed a patent infringement action against the Defendants on 19 June 2024. On 21 October 2024, Defendants 1., 2. and 4 filed a counterclaim for revocation. Page 6 of this brief reads as follows (excerpt): The same day, Defendants 3. and 5. to 8 filed a pleading entitled “Statement of Defence of De- fendants 3. and 5. to 8 and Counterclaim for Revocation”. The following statements can be found on page 10 of this brief (excerpt): Regarding the reimbursement of court fees claimed in Section XI of their motions, Defendants 3. and 5. to 8. explained that all Defendants intended to file a joint counterclaim for revocation. As the (old) CMS, according to Defendants 3. and 5. to 8., required that each group of Defendants to 4 be represented by a specific UPC representative, Defendants 3. and 5. to 8. filed a counterclaim for revocation in their own workflow. However, as the counterclaim for revocation is based on the same arguments and prior art, Defendants 3. and 5. to 8. considered it to be the same counterclaim for revocation. The oral hearing took place on 17 December 2025. During the oral hearing, the Court informed the parties that a decision will be read in open court on 28 January 2026. However, by procedural order of 23 January 2026, the Presiding Judge postponed the delivery of the decision to 4 February 2026. On 2 February 2026, with the consent of the Defendants, the Claimant requested that the delivery of the written decision and the Court’s endeavour to read the decision in open court be postponed by one week, to 11 February 2026, due to pending settlement negotiations between the parties. The Court granted this request. By brief dated 9 February 2026, the Claimant withdrew its infringement action and informed the Court that none of the parties would submit cost claims. Accordingly, the Claimant requested to refrain from issuing a cost decision according to R. 265.2 (c) RoP. Furthermore, the Claimant agreed to the withdrawal of Defendants’ counterclaims for revocation and requested that 60 % of the court fees paid be refunded. Additionally, the Claimant requested the repayment of the security deposits paid by the Claimant in the amount of 2x € 100.000. By brief of 10 February 2026, the Defendants informed the Court that they do not object to Claimant’s application for repayment of the security deposits paid by the Claimant. On 9 February 2026, Defendants 1., 2. and 4. withdrew the counterclaim for revocation and de- clared that no applications for costs will be submitted. Additionally, Defendants 1., 2. and 4. agreed to the withdrawal of Claimant’s infringement action. The same day, Defendants 3. and 5. to 8. also withdrew the counterclaim for revocation and con- firmed that no further applications for costs would be submitted. Furthermore, Defendants 3. and 5. to 8. agreed to the withdrawal of the Claimant’s infringement action. Finally, Defendants 3. and 5. to 8. requested that the Court’s cashier be ordered to refund court fees to them in the amount of € 15,000, referring to their argument in the statement of defence that all Defendants intended to file a joint counterclaim for revocation. GROUNDS FOR THE ORDER: The R. 265 RoP decision on withdrawal reflects the joint will of the parties involved. Although R. 265.2(c) RoP states that decisions on costs shall be taken in accordance with Part 1, Chapter 5, this is not necessary here, as both parties have confirmed that they agree to bear their own costs and that separate proceedings for a cost decision are unnecessary (cf. UPC CoA 569/2024, Order of 24 January 2025 – DexCom v. Abbott). Insofar as the Claimant applies for a reimbursement of court fees, the conditions for such reim- bursement are not met. Firstly, at the time the Court was informed of the settlement, the oral proceedings had already been completed, meaning that even the conditions for a 20 % refund under R. 370.9(c) RoP were not met. Even if a different view were taken, reimbursement would still have to be refused under Rule 370.9 RoP, since the termination of the proceedings did not result in significant time savings for the Court, given the timing of the notification (UPC CFI 504/2023 (LK Düsseldorf), Order of 30 June 2025 – F. Hoffmann La Roche v Tandem Diabetics; UPC CFI 410/2023 (LD Mannheim), Order of 28 May 2025 – MED-EL v Advanced Bion- ics). 5 Defendants’ 3. and 5. to 8. request for reimbursement of court fees paid for the counterclaim for revocation (UPC CFI 607/2025) is unfounded. Even if the Defendants intended to file a joint coun- terclaim for revocation, their actions are inconsistent with this intention. Instead, Defendants 1., 2. and 4., as well as Defendants 3. and 5. to 8., submitted their own motions and reasoning regard- ing the counterclaim(s) for revocation, both in writing and during the oral hearing. The fact that both counterclaims for revocation were based on the same attacks does not contradict this. De- fendants 3. and 5. to 8. had the option of joining the counterclaim for revocation brought by De- fendants 1., 2. and 4. The old CMS also did not prevent the Defendants from submitting identical pleadings and motions under separate workflows. However, they did not use this option. Instead, the Defendants opted for a solution whereby Defendants 3. and 5. to 8. could present their own arguments and withdraw their counterclaim for revocation at any time. This makes clear that the counterclaims for revocation filed by Defendants 1., 2. and 4. and Defendants 3. and 5. to 8. are independent actions for which a separate court fee is payable. Therefore, there is no reason for a refund. The decision regarding the repayment of the security for costs is based on R. 352.2 RoP by analogy. Defendants did not object to the repayment requested by the Claimant. Therefore, the Defendants have no continuing interest in retaining the security. ORDER: 1. The withdrawal of the infringement action is allowed at the application of the Claimant and with the consent of the Defendants. 2. The withdrawal of the counterclaims for revocation is allowed at the application of the Defendants and with the consent of the Claimant. 3. The proceedings referred to in points 1. and 2. are declared closed. 3. This decision shall be entered in the register. 4. A cost decision is not required. 5. The security for costs provided by the Claimant will be released. 6. Claimants and Defendants’ 3. and 5. to 8. applications for a refund of court fees are dismissed. 7. The value in dispute for the infringement action and the counterclaims for revocation is set at € 5.000.000 each. 6 Issued in Düsseldorf on 11 February 2026 NAME UND SIGNATURE Presiding Judge Thomas Legally qualified Judge Dr Thom Legally qualified Judge Dr Zhilova Technically qualified Judge Dr Schmidt For the sub-registrar Ronny Thomas Digital unterschrieben von Ronny Thomas Datum: 2026.02.11 11:40:02 +01'00' Anna Bérénice Dr. THOM Digital unterschrieben von Anna Bérénice Dr. THOM Datum: 2026.02.11 11:47:38 +01'00' Tatyana Borisova Zhilova Signature numérique de Tatyana Borisova Zhilova Date : 2026.02.11 11:50:53 +01'00' Martin SCHMIDT Signature numérique de Martin SCHMIDT Date : 2026.02.11 14:50:33 +01'00'

Key Holdings

  • Withdrawal requests under R. 265 RoP are accepted upon settlement.
  • No return of court fees is granted if the court has already performed substantial work (e.g., drafting a decision) and thus not saved time.
  • Separate court fees for revocation claims by different defendants are not refunded if they filed their own motions and reasoning, even if the claims are argued to be identical.

Tags

  • Settlement
  • Court Fees
  • Withdrawal
  • Costs
  • Procedure

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