UPC_CFI_629/2025; UPC_CFI_1292/2025 – Avago v Renault
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Withdrawn
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Settlement Facts 1. Patent infringement action (EP 3 651 429) and counterclaim for revocation. 2. Both parties withdrew their claims before closure of the written proceedings. 3. Both parties asked a return of 60% of the court fees and agreed to pay their own costs. The Court 1. Permits the withdrawal. 2. No need for a cost decision. 3. Return of 50% (and not 60%) of the court costs because withdrawal was requested after 1 January 2026 and the new rules apply. Comment The Court decides that only 50% of the court costs is returned in accordance with the decision of the Court of Appeal of 26 May 2026 (UPC_CoA_916/2025), because the Court of Appeal considers that the new rules apply to applications to withdraw filed after 31 December 2025. I think that the specific provision on page 4 of the decision of the Administrative Committee of 4 November 2025 had a different intention, being applicability of these rules on cases filed after 31 December 2025. However, the interpretation of the Court of Appeal can be defended because the withdrawal is based on an application, and is anyway better for the financing of the Court.
Full Decision Text
1 Düsseldorf Local Division UPC CFI 629/2025 UPC CFI 1292/2025 Decision of the Court of First Instance of the Unified Patent Court issued on 28 May 2026 concerning EP 3 651 429 CLAIMANT: Avago Technologies International Sales Pte. Limited, 1 Yishun Avenue 7, Singapore 768923, Sin- gapore represented by: Dr. Bernd Allekotte, Grünecker PartG mbB, Leopoldstraße 4, 80802 Munich electronic address for service: KU39752@grunecker.de DEFENDANTS: 1) Renault Deutschland AG, Peter-Huppertz-Straße 5, 51063 Cologne, Germany -Defendant 1- 2) Renault Retail Group Deutschland GmbH, Peter-Huppertz-Straße 5, 51063 Cologne, Ger- many -Defendant 2- 3) Renault Nederland N.V., Boing Avenue 275, 1119 PD Schiphol-Rijk, The Netherlands -Defendant 3- 4) Renault S.A.S., 122-122 bis Avenue du General Leclerc, Boulogne-Billancourt, 92100, France -Defendant 4- 5) Renault Retail Group S.A., 1er-2e Etage, 2 Avenue Denis Papin, 92140 Clamart, France -Defendant 5- represented by: Attorneys-at-law Felix Rödiger, Jonas Smeets and Fabian Saupe, Bird & Bird LLP, Carl-Theodor-Strasse 6, 40213 Duesseldorf, Ger- many 2 electronic address for service: felix.roediger@twobirds.com contributed by: Tim Hülsheger and Dr. Thomas Eelbo, Prinz & Partner mbB, Rundfunkplatz 2, 80335 München, Germany PATENT AT ISSUE: European patent no. EP 3 651 429 PANEL/DIVISION: Panel 2 of the Local Division Düsseldorf DECIDING JUDGES: This decision is delivered by Presiding Judge Dr Thom, the legally qualified Judge Dr Rinken acting as judge-rapporteur and the legally qualified Judge Dr Zhilova. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: Subject: R. 265.1 RoP – Application for leave to withdraw the action R. 370.9 RoP – Application for a partial reimbursement for court fees SUMMARY OF THE FACTS: 1. The Claimant filed a patent infringement action against the Defendants on 8 July 2025. 2. The Defendants filed a counterclaim for revocation against the Claimant on 24 October 2025. 3. Even prior to the closure of the written proceedings, the Claimant, by a written submission dated 12 May 2026, withdrew the infringement action, and the Defendants, by a written submission dated 12 May 2026, withdrew the counterclaim for revocation. 4. The Defendants agreed to the withdrawal of the infringement action, and the Claimant agreed to the withdrawal of the counterclaim for revocation. 5. The Claimant requests, that the Court 1. permits the withdrawal of the action and declares the proceedings closed; 2. orders the reimbursement of 60% of the Court fees of the infringement action to the Claimant. 3 6. The Defendants request, that the Court 1. permits the withdrawal of the counterclaim for revocation and declares the proceed- ings closed; 2. orders the reimbursement of 60 % of the Court fees of the counterclaim for revocation to the Defendants. 7. The parties have reached an out-of-court settlement. The settlement provides that each party shall bear its own costs and that there shall be no reimbursement of costs between the parties. According to the parties a decision on costs is therefore not required. Both parties also stated that no applications for costs will be made. GROUNDS FOR THE ORDER: Withdrawal 8. The R. 265 RoP decision on withdrawal reflects the joint will of the parties involved. 9. 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 un- necessary (cf. UPC CoA 569/2024, Order of 24 January 2025 – DexCom v. Abbott). Reimbursement of Court fees 10. According to R. 370.9(b)(i) RoP as it reads until 31 December 2025, in case of the withdrawal of an action (R. 265 RoP), the party liable for the Court fees will be reimbursed by 60 % if the action is withdrawn before the closure of the written procedure. 11. This provision has been modified following the amendments to R. 370.9 RoP, which entered into force on 1 January 2026. The amendments apply to actions and applications filed after 31 December 2025 (see page 4 of the Decision of the Administrative Committee of 4 Novem- ber 2025 on the Amendment of the table of court fees and other related changes to the Rules of Procedure and Guidelines). 12. In case the application for withdrawal and reimbursement is filed after 1 January 2026, re- imbursement shall therefore be ordered in accordance with the new provision (see CoA, De- cision of 9 January 2026, CoA 257/2025, VMR Products LLC v. NJOY Netherlands BV; UPC- CoA 916/2025, Decision of 26 May 2026, Hurom v. NUC Electronics). 13. Following the amendments to R. 370.9(b) RoP, in case of the withdrawal of an action (R. 265 RoP), the party liable for the Court fees will be reimbursed by 50 % if the action is withdrawn before the closure of the written procedure. 4 14. In the present case, both the applications to withdraw the infringement action and the coun- terclaim for revocation were filed before the closure of the written procedure, however, af- ter 1 January 2026. Thus, reimbursement by 50 % (and not 60 %) is to be ordered in accord- ance with the provision of R. 370.9 RoP, as applicable from 1 January 2026. ORDER: The Court I. permits the withdrawal of the infringement action and the withdrawal of the counterclaim and declares both proceedings closed; II. orders that this decision be entered in the register; III. declares that there is no need for a cost decision; IV. orders the Registrar to reimburse the Claimant, as soon as possible, 50 % of the court fees it has paid in these proceedings, amounting to € 7,500 (= 50 % of € 15,000); V. orders the Registrar to reimburse the Defendants, as soon as possible, 50% of the court fees they have paid in these proceedings, amounting to € 9,5000 (50 % of € 19,000); VI. sets the value in dispute for the infringement action at € 1,000,000 and the value in dispute for the counterclaim for revocation at € 1,500,000. 5 Issued in Düsseldorf on 28 May 2026 Presiding Judge Dr Thom Legally qualified Judge Dr Rinken Legally qualified Judge Dr Zhilova For the sub-registrar
Key Holdings
- Parties withdrew both patent infringement claims and revocation counterclaims.
- The Court permitted the withdrawal of claims by both parties.
- A 50% return of court fees was granted, not 60% as requested, due to new rules applicable to withdrawals filed after 31 December 2025.
- The Court followed the Court of Appeal's interpretation regarding the applicability of new procedural rules for withdrawals.
Tags
- Settlement
- Withdrawal
- Court Fees
- Procedural Law