UPC_CFI_617/2024;UPC_CFI_398/2025;UPC_CFI_1321/2025;UPC_CFI_1340/2026 – ASC v Xiaomi

Expert Commentary

Joining proceedings Facts 1. ASC sued the defendants for patent infringement of EP 3 016 454. 2. ASC argued that the defendants used the 4G standard, which required the use of the patent. 3. The defendants denied infringement and filed a counterclaim for revocation. 4. In response to the defence, ASC argued that defendants were also using the 5G standard and that this likewise resulted in infringement of the patent. 5. The panel considered this to be an amendment of the claim and dismissed it. ASC field thereupon a further infringement action for the use of the 5G standard and the defendants filed another counterclaim for revocation. The Court 1. The Court decides to hear all cases together. 2. The Court states that the longer duration of the first proceedings is outweighed by the need of avoiding conflicting decisions, especially since the claimant does not object and the defendants suffer no disadvantage. Comment 1. Certainly now that the claimant does not object, the Court is absolutely right to hear the cases together. It avoids conflicting decisions and, more importantly, is far more efficient. 2. It was the claimant who unnecessarily caused these complications by failing to state in its Statement of Claim that the defendants also infringed the patent through their use of 5G. One may therefore ask whether the defendants cannot argue that the claimant’s second case is not admissible on the basis that it constitutes duplicative proceedings and could arguably be regarded as a misuse of proceedings. 3. At least, this conduct can (should?) be taken in consideration when costs are awarded.

Full Decision Text

Local Division Munich UPC CFI 617/2024 UPC CFI 398/2025 UPC CFI 1321/2025 UPC CFI 1340/2026 Order of the Court of First Instance of the Unified Patent Court Local Division Munich issued on 19 May 2026 CLAIMANT AND COUNTERDEFENDANT Advanced Standard Communication LLC, 675 Town Square Blvd., Suite 200, Garland, Texas 75040, USA, represented by its Manager, Mr. Jeremy Pitcock, represented by: Dr Michael Schneider, Philipp Neels, Dr Désirée Heintz and Dr Ludger Eckey, Eisenführ Speiser, Gollierstraße 4, 80339 Munich. DEFENDANTS AND COUNTERCLAIMANTS 1. XIAOMI Inc., No. 006, floor 6, Building 6, Yard 33, Middle Xierqi Road, Haidian District, Beijing, China, represented by the managing director Mr. Lei Jun, 2. XIAOMI Communications Co., Ltd, #019, 9th Floor, Building 6, 33 Xi’erqi Middle Road, Haidian District, Bejing China, represented by the legal representative Mr. Qu Heng, 3. XIAOMI Technology Netherlands B.V., Prinses Beatrixlaan 582, WTC The Hague Toren E, 5e etage, 2595BM ’S-Gravenhage, Netherlands, represented by the managing director Xiaojun Mao, 4. XIAOMI Technology Germany GmbH, Niederkasseler Lohweg 175, 40547 Düsseldorf, Germany, represented by the managing directors En Lin and Dong Wang, 2 represented by: Dr Andreas von Falck and Oliver Bäcker, Hogan Lovells International LLP, Dreischeibenhaus 1, 40211 Düsseldorf. PATENT AT ISSUE European Patent n° EP 3 016 464 B1 PANEL/DIVISION Panel 2 of the Local Division Munich DECIDING JUDGE/S This Order has been issued by the Presiding Judge Dr Daniel Voß (Judge-rapporteur), the legally qualified Judge Dr Georg Werner, the legally qualified Judge Rute Lopes and the technically qualified Judge Alessandro Sanchini. LANGUAGE OF THE PROCEEDINGS English SUBJECT-MATTER OF THE PROCEEDINGS Infringement action and Counterclaim for revocation – joint hearing pursuant to Art. 33 (3) (a) UPCA, Rule 37.3 RoP, Rule 302.3 RoP. SUMMARY OF FACTS 1 The Claimant is suing the Defendants for patent infringement of patent EP 3 016 464 (UPC CFI 617/2024). The Claimant’s Statement of claim war based on the argument that the use of the 4G standard required the use of the technical teaching of the patent in suit. In their Statement of Defence, the Defendants disputed this connection and denied any patent infringement. They also brought a Counterclaim for revocation (UPC CFI 398/2025). 2 In its Reply to the Statement of Defence, the Claimant further argued that the Defendants were also using the 5G standard and were therefore infringing the patent in suit. At the Defendants’ request, the panel regarded this new argument as an amendment to the claim which it dismissed by order of 6 October 2025. The Claimant then brought a further infringement action based on the 5G standard (UPC CFI 1321/2025), the Defendants filed another Counterclaim for revocation (UPC CFI 1340/2026). 3 By procedural order of 18 March 2026, the Judge-rapporteur indicated that the Panel intended to hear both infringement proceedings (UPC CFI 617/2024 and UPC CFI 1321/2025) 3 together and, furthermore, to hear the counterclaims for revocation together with the infringement actions in accordance with Article 33 (3) (a) UPCA. 4 The parties have no objection to the joint hearing of each Infringement claim and the respective Counterclaim for a revocation. The Claimant also has no objection to the joint hearing of both infringement proceedings (together with the Counterclaims). The Defendants agree to the joint hearing of both infringement proceedings, provided that their procedural rights are not prejudiced. GROUNDS FOR THE ORDER I. 5 The decision to hear each infringement action together with the respective Counterclaim for revocation is based on Art. 33(3) UPCA and Rule 37.2 RoP. 6 Pursuant to Rule 37.2 RoP, the Panel takes an earlier decision on the question of how to proceed with regard to Art. 33(3) UPCA before the end of the written procedure. 7 In the present case, the Panel exercises its discretion to proceed with both the infringement action and the counterclaim for revocation (Art. 33(3)(a) UPCA). Such a joint hearing of the infringement action and the counterclaim for revocation is appropriate in particular for reasons of efficiency. It is also preferable because it allows both issues – validity and infringement – to be decided on the basis of a uniform interpretation of the patent by the same panel composed of the same judges. II. 8 The decision to hear both infringement actions (and Counterclaims for revocation) together is based on Rule 302.3 RoP. 9 According to the Rules of Procedure, infringement proceedings should be concluded within one year. This timeframe has already been exceeded in case UPC CFI 617/2025, and the case is ready for a decision. 10 However, as can be seen from Rule 340.1 RoP, the Rules of Procedure also place importance on avoiding inconsistent decisions. There is such a risk of contradictory decisions in the present case, as the cases UPC CFI 617/2024 and UPC CFI 1321/2025 are based on the same patent, concern the same parties and products, although one relates to 5G and the other to 4G, and therefore raise similar issues about claim construction, infringement and validity. This outweighs the interest in an expeditious conclusion of the proceedings UPC CFI 617/2024. The longer duration of the proceedings is of secondary importance, as the Claimant himself requested the joint hearing. The Defendants’ Counterclaim, on the other 4 hand, is less significant as it primarily serves to defend against the infringement action and both actions will be heard together. 11 Furthermore, the joinder of the two proceedings does not otherwise prejudice the Defendants’ interests. They had the opportunity to file a Counterclaim for revocation in both proceedings which serve as defence against both infringement claims, without Defendants opportunity to file pleadings being restricted. ORDER After having heard the parties, the Court of First Instance of the Unified Patent Court, Panel 2, of the Munich Local Division orders that the following actions are heard together: - UPC CFI 617/2024 (infringement action – 4G) - UPC CFI 398/2025 (counterclaim for revocation) - UPC CFI 1321/2025 (infringement action – 5G) - UPC CFI 1340/2026 (counterclaim for revocation) It is now the Claimant’s turn to file a Reply to the Statement of Defence and a Defence to the Counterclaim in the proceedings UPC CFI 1321/2025 and UPC CFI 1340/2026, limited to those proceedings whereas the written procedure in UPC CFI 617/2024 and UPC CFI 398/2025 has been concluded. Dr Daniel Voß (Presiding Judge) Dr Georg Werner (Legally Qualified Judge) Rute Lopes (Legally Qualified Judge) Alessandro Sanchini (Technically Qualified Judge)

Key Holdings

• The Court can join proceedings to avoid conflicting decisions and enhance efficiency, particularly when the claimant does not object and defendants suffer no disadvantage.
• A claimant's failure to include all infringement grounds (e.g., 4G and 5G standards) in the initial statement of claim can lead to separate, duplicative proceedings.
• Duplicative proceedings initiated by the claimant might be considered inadmissible or a misuse of process.
• The claimant's conduct in causing unnecessary procedural complications may be taken into account during the award of costs.

Tags

• Joining Proceedings
• Case Management
• Infringement
• Revocation
• Procedural
• Costs

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