UPC_CFI_361/2023 – Toyota v Neo Wireless

Court
Central Division Paris
Date
Outcome
Granted
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Settlement Facts After the interim conference, parties asked the Court to stay the proceedings. The Court allowed the stay on 10 October 2024. On 25 June 2025, claimant filed an application of withdrawal with a request for a return of fees of 40% and indicated that it did not need a cost decision. The defendant agreed on 9 July 2025. The Court 1. Reiterates the interim procedure is closed when the final dates have been set according to R. 103, 104 RoP (R. 110 RoP). This was 16 September 2024. 2. Grants the closure request. 3. States (see 1) that as the case was withdrawn after the interim procedure and before the oral hearing, claimant is only entitled to a 20% reimbursement. Comment 1. The Rule about the (automatic) closure of the interim procedure is, as becomes clear from the mistake claimant made, not very well known. 2. Apparently, the interim conference (during which also the Technical Judge was present) was successful in the sense that it resulted in a settlement, which is one of the stated purposes of the interim conference.

Full Decision Text

Central Division Paris Seat Decision of the Court of First Instance of the Unified Patent Court Central Division (Paris Seat) delivered on 31. July 2025 ACT 579176/2023 UPC_CFI-361/2023 PARTIES: Claimant: Toyota Motor Europe NV/SA, Avenue du Bourget 60, 1140 Evere, Belgium, represented by its CEO Yoshihiro Nakatal Representative: Dr. Constanze Krenz, David Kless, DLA Piper UK LLP, Maximilianstr. 2, 80539 Munich, German Defendant: Neo Wireless GmbH & Co. KG, Formerstr. 47, 40878 Ratingen, Germany, represented by its managing director Björn Rappen, Representative: Dr. Christoph Walke, Matthias Waters, Dr. Martin Rütten, Cohausz&Florack, Bleichstraße 14, Düsseldorf, Germany PATENT AT ISSUE: EP 3 876 490 PANEL: Panel 1 of the Central Division - Paris Seat DECIDING JUDGE: This decision has been issued by the Judge-rapporteur Maximilian Haedicke, the legally qualified judge Tatyana Zhilova representing the presiding judge Marjolein Visser and the technically qualified judge Udo Matter. LANGUAGE OF PROCEEDINGS: Englishlodged in the revocation action SUMMARY OF FACTS With date of 20 October 2023, Claimant filed a revocation action before the seat of the Central Division of the Unified Patent Court. On 19 July 2024 the judge-rapporteur and the technically qualified judge held the interim conference. The order after the interim conference was issued on 23 July 2024 (ORD_598396/2023: ACT_579176/2023). The parties were requested to submit a summary of their arguments until 16 September 2024. The date for the oral hearing has been confirmed for 25 September 2024. With order ORD_46629/2024, ACT_579176/2023 of 21 August 2024 the oral hearing was suspended. The Court stayed the proceeding with order ORD_46629/2024 ACT_579176/2023 of 10 October 2024 No. App_45991/2024 upon request of the parties. On 25 June 2025, the Claimant’s representative filed an application for withdrawal of proceedings under Rule 265 of the Rules of Procedure of the Unified Patent Court (No. App_30331/2025 UPC_CFI_361/2023). Claimant requests: I. The court allows the withdrawal of the revocation action (UPC_CFI_361/2023, ACT_579176/2023) and orders the proceedings closed. II. The court orders the reimbursement of 40% of the Court fees, i.e. EUR 8.000, to Toyota Motor Europe in accordance with R. 370.9 (b) (ii) RoP. Claimant further stated that a decision on the recoverable costs is not needed by the parties. According to Rule 265 Defendant was invited to comment. With submission of 9 July 2025 Defendant confirmed the withdrawal as requested by Claimant according to the application for withdrawal filed on 25 June 2025. Defendant does also not request a cost decision. GROUNDS FOR THE DECISION 1. According to Rule 265 of the Rules of Procedure (RoP), a Claimant may apply to withdraw its action as long as there is no final decision. If withdrawal is permitted, the Court shall: a) give a decision declaring the proceedings closed; b) order the decision to be entered on the register; and c) issue a cost decision in accordance with Part 1, Chapter 5 RoP. The Court will refrain from issuing a decision on costs as this is not requested. Claimant’s request for reimbursement is partially well-founded. The request for reimbursement is not justified on the basis of R. 370.9 (b) (ii) RoP, but on the basis of R. 370.9 (b) (iii). 2. A request for reimbursement on the basis of R. 370.9 (b) (ii) RoP is justified if the action is withdrawn before the closure of the interim procedure. The conditions under which the interim procedure is considered to be closed are stipulated in R.110 RoP. According to R.110 (2) RoP the interim procedure shall be deemed closed where final dates have been set pursuant to 103 and 104 on the last date set. Rules 103 RoP and 104 RoP refer to orders issued in the interim conference. On 19 July 2024 the judge-rapporteur and the technically qualified judge held the interim conference. The order after the interim conference was issued on 23 July 2024 (ORD_598396/2023, ACT_579176/2023). The last date set in the order following the interim conference was 16 September 2024. Therefore, the interim procedure was closed on 16 September 2024. 3. A request for reimbursement on the basis of R. 370.9 (b) (iii) RoP is justified if the action is withdrawn before the closure of the oral procedure. The oral procedure was cancelled so that the withdrawal was submittted before the closure of the oral procedure. 4. Accordingly, the party liable for the court fees (Claimant) will be reimbursed by 20% because the action was withdrawn before the closure of the oral procedure. 20% of the court fee of EUR 20,000 is EUR €4,000. DECISION The Court I. declares that the request for withdrawal is granted; II. declares case UPC_CFI_361/2023, ACT_579176/2023, terminated pursuant to rule 265.2(a) RoP; III. orders that this decision be entered in the UPC register in accordance with rule 265.2(b) RoP; IV. orders the reimbursement of 20% of the Court fees, i.e. EUR 4.000, to plaintiff in accordance with R. 370.9 (b) (ii) RoP. V. rejects all further requests. Names and Signatures Judges Marjolein Visser, Presiding judge: (on leave and replaced by Legally qualified judge Tatyana Zhilova) Maximilian Haedicke, Legally qualified judge and judge-rapporteur: Udo Matter, Technically qualified judge: For the Deputy-Registrar Order details Order no. ORD_34062/2025 in ACTION NUMBER: ACT_579176/2023 UPC number: UPC_CFI_361/2023 Action type: Revocation Action Related proceeding no. Application No.: 30331/2025 Application Type: Application for leave to withdraw an action (RoP265)

Key Holdings

  • Case closed upon withdrawal.
  • Court fee reimbursement limited to 20% because interim procedure was closed.
  • Interim procedure deemed closed when final dates set (R. 110 RoP).

Tags

  • Costs
  • Court Fees
  • Interim Measures
  • Settlement
  • Withdrawal

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