UPC_CFI_460/2024; UPC_CFI_658/2024; UPC_CFI_459/2024; UPC_CFI_657/2024 – Valeo v Magna
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Withdrawn
- Sector
- Mechanics
- Decision Type
- PROCEDURAL
Expert Commentary
Withdrawal Background Valeo filed an infringement action. Magna responded with a defence and counterclaim for invalidity. Present case The parties applied for withdrawal and consented to bear their own costs. Valeo reserved the right to ask for reimbursement of court costs. Decision The withdrawal was allowed and the case closed. Value of the case was determined at € 1.500.000. Comment 1. As parties did not ask for a reimbursement of part of the court costs at the same time, the Court establishes the value of the litigation so that parties know what they can ask for reimbursement. 2. No decision about costs is necessary as parties agreed. R. 265.2(c) RoP does not require a separate cost decision if parties have an agreement to bear their own costs. Indeed. it seems superfluous (as the Local Division in Munich did) to also make a cost decision if parties agree.
Full Decision Text
1 Düsseldorf Local Division UPC_CFI_460/2024 UPC_CFI_658/2024 Decision of the Court of First Instance of the Unified Patent Court issued on 10 January 2025 concerning EP 3 320 604 B1 CLAIMANT: Valeo Electrification, 14 avenue des Béguines, 95800 Cergy, France, represented by the President Thierry Kalanquin, with the same address, Represented by: Attorney-at-law Felix Rödiger, Attorney-at-law Jo- nas Smeets, Attorney-at-law Fabian Saupe, Bird & Bird LLP, Carl-Theodor-Straße 6, 40213 Düsseldorf, Germany, Electronic address for service: felix.roediger@twobirds.com Contributing European patent attorneys: Nicolas Cardon, Amandine Ricard, Pierre Prigent, Valeo Electrification, Cergy DEFENDANTS: 1. Magna PT B.V. & Co. KG, Herrmann-Hagenmeyer-Str. 1, 74199 Untergruppenbach, Ger- many, represented by its general partner, Magna PT Management B.V., with the same ad- dress, which is jointly represented by the managing directors Thomas Klett and Sandro Gildo Morandini, with the same address, 2. Magna PT s.r.o., Perinska cesta 282, Kechnec 044 58, Slovakia, represented by its managing directors Martin Hluchý und Katarína Vaškovičová, with the same address, 3. Magna International France, SARL, 4 route de Gisy Bâtiment 26, Biévres 91570, France, rep- resented by its managing directors Thierry Servouse and Franz Trummer, with the same ad- dress, All Defendants represented by: Attorney-at-law Klaus Haft, Attorney-at-law Sabine Agé, Attorney-at-law Sebastian Kratzer, Hoyng, ROKH, Monegier, Steinstraße 20, 40213 Düsseldorf, Germany, 2 Collaboratoring attorney: Attorney-at-law Dr Wolfgang Kellenter, Hengeler Müller, Benrather Straße 18-20, 40213 Düsseldorf, Germany, Collaboratoring European Patent attorney: European Patent Attorney Jan Ackermann, Euro- pean Patent Attorney Felipe von Heereman, Euro- pean Patent Attorney Dr Margarete Rittstieg, Co- hausz & Florack, Bleichstraße 14, 40211 Düsseldorf, Germany PATENT IN SUIT: EUROPEAN PATENT NO. EP 3 320 604 B1 PANEL/DIVISION: Panel of the Düsseldorf Local Division DECIDING JUDGES: This decision was issued by Presiding Judge Thomas acting as judge-rapporteur, legally qualified judge Dr Thom, legally qualified judge Bessaud and technically qualified judge Sanchini. LANGUAGE OF THE PROCEEDINGS: English SUBJECT: R. 265 RoP – Application for leave to withdraw an action SUMMARY OF THE FACTS: On 2 August 2024, the Claimant filed a patent infringement action against the Defendants. The Defendants' counterclaim for revocation is dated 8 November 2024. Prior to the closure of the written procedure, the Claimant, by brief dated 30 December 2024, withdrew the infringement action (App_68581/2024) and informed the Court that the parties have agreed that neither party shall file an Application for reimbursement of costs. On 2 January 2025, the Defendants consented to the withdrawal and also stated that the parties have agreed that neither party shall file an application for reimbursement of costs versus the other party. By brief submitted at the same day, the Defendants withdrew the counterclaim for revocation (App_68643/2024) and informed the Court that the parties have agreed that neither party shall file an application for reimbursement of costs versus the other party. In addition, Defendants re- served the right to apply for a reimbursement of court fees according to R. 370.9 (b) (i), 370.11 RoP. The following day, the Claimant consented to the withdrawal and confirmed that the parties have agreed that neither party shall file an application for reimbursement of costs versus the other party. 3 On 6 January 2025, Defendants clarified that their statement shall be understood that also De- fendants’ counterclaim for a licence in the Statement of Defence dated 8 November 2024 is with- drawn. By brief of 8 January 2025, the Claimant consented to the withdrawal of the counterclaim for a licence and informed the Court that the parties have agreed that neither party shall file an application for reimbursement of costs versus the other parties. GROUNDS FOR THE DECISION: The decision follows the parties’ jointly expressed will. Insofar as R. 265.2 (c) RoP requires a decision on costs in accordance with Part 1, Chapter 5 RoP, the decision takes into account the agreement reached between the parties. At present, no party has filed an application for a partial reimbursement of court fees (R. 370.11 RoP in conjunction with R. 370.9 (b) (i) RoP), so that no such order could be made. 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 counterclaim for revocation and the counterclaim for a licence are allowed at the application of the Defendants and with the consent of the Claimant. 3. All proceedings referred to in points 1. and 2. are declared closed. 4. This decision shall be entered in the register. 5. The value in dispute for the infringement action and the counterclaim for revocation is set at EUR 1,500,000 each. DETAILS OF THE ORDER: App_68581/2024, App_68643/2024 and App_311/2025 under main file references ACT_44736/2024 and CC_59744/2024 UPC number: UPC_CFI_460/2024 and UPC_CFI_658/2024 Type of procedure: Infringement Action and Counterclaim for Revocation Issued in Düsseldorf on 10 January 2025 NAMES AND SIGNATURES Presiding Judge Thomas 4 Legally Qualified Judge Dr Thom Legally Qualified Judge Bessaud Technically Qualified Judge Sanchini for the Sub-Registrar Boudra-Seddiki
Key Holdings
- The Court allowed the withdrawal of infringement and invalidity claims, closing the case.
- The parties agreed to bear their own costs, and the Court did not issue a separate cost decision, aligning with the view that R. 265.2(c) RoP does not mandate it when parties agree.
- The Court determined the value of the litigation at €1,500,000 to facilitate potential future requests for court cost reimbursement.
- The commentator praises the Düsseldorf Division's approach to costs in withdrawal cases as less superfluous than Munich's.
Tags
- Costs
- Infringement
- Invalidity
- Withdrawal