UPC_CFI_676/2025 – AX Wireless v Xiaomi

Expert Commentary

Old court fees Facts 1. This case concerns an infringement action filed in 2025. 2. The defendant filed its defence and counterclaim for revocation after 1 January 2026 and paid the new higher fees applicable as of 1 January 2026. 3. The defendant argues that as the case started in 2025, it should have paid the old fees and asks for return payment of the difference of € 4.900. The JR 1. The JR agreed with the defendant. 2. The JR referred to the decision of the Court of Appeal that the new fees apply to the return of fees in case of a settlement, even if the case in question was started before 1 January 2026. The JR did not follow that decision arguing that the fee for a counterclaim according to the Table of Fees should be the same as the fee for the infringement claim and, as the infringement claim was filed before 1 January 2026, the fee for the counterclaim should be the “old” fee. Comment 1. In my comments on the decision of the Court of Appeal, I stated that that a "request” for a return of court fees was not what was intended in Article 5 of the Administrative Committee’s decision of 4 November 205 with “actions and applications” filed after 31 December 2025. 2. The JR now decides that “action and applications” refers to actions started after 1 January 2026. The JR argues that the action started before this date and that the request should therefore be granted. The JR “deviates” from the Court of Appeal’s decision, referring to the fact that, according to the Table of Fees, the fee for a counterclaim is the same as the fee for the infringement claim. 3. This may be true, but again I disagree. This time, I believe that this fee should have been based on the new Table of Fees, as filing a counterclaim for revocation is filing a (new) action, distinct from a request to get a return of fees because of a withdrawal (settlement). This new action gets its own UPC number and can get referred to the Central Division, etc. 4. The first decision was, in my opinion, wrong, but satisfactory from a practical point of view because it means income for the UPC. However, this decision, which I also consider to be wrong, means less income. 5. I do not know how this decision can be corrected, but I advise the Registry to appeal against the decision to the Court of Appeal of the UPC, as it has been ordered to return the amount. At least, if the Court of Appeal decides that this is not possible, it can issue an obiter dictum stating that the decision is incorrect.

Full Decision Text

ORDER Of the Court of First Instance of the Unified Patent Court Local Division Munich issued on 8 October 2026 CLAIMANT AX Wireless, LLC 2025 Guadalupe Street, Suite 260 Street #3151, Austin, Texas 78705, USA represented by Hosea Haag (AMPERSAND Partnerschaft von Rechtsanwaelten mbB) Defendants: 1) Xiaomi Inc. No.006, floor 6, Building 6, Yard 33, Middle Xierqi Road, Haidian District, Beijing, Republic of China 2) Xiaomi Corporation, Anningzhuang Road Haidian District Beijing, Republic of China LOCAL DIVISION MUNICH UPC_CFI_676/2025 3) Xiaomi Technology Germany GmbH Niederkasseler Lohweg 175,40547, Düsseldorf Germany 4) Xiaomi Technology Netherlands B.V. Prinses Beatríxlaan 582, The Hague 2595BM, Kingdom of the Netherlands all represented by Henrik Lehment (Hogan Lovells Cadwalader International LLP) PATENT AT ISSUE: EUROPEAN PATENT NO EP3072324 PANEL: Panel 1a of the Local Division Munich DECIDING JUDGE: Rute Lopes as Judge-rapporteur LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS Inadmissibility of new arguments Summary of the proceedings and requests 1 On 12 March 2026, together with the Defence to the Counterclaim, the Claimant filed an Application to Amend the Patent. 2 On 12 May 2026, together with the reply to the Defence to the Counterclaim, the Defendants filed a Defence to the Application to Amend. 3 On 12 June 2026, together with the Rejoinder to the Reply to the Defence to the Counterclaim, the Claimant filed a Reply to the Defence to the Application to Amend the Patent. 4 On 13 July 2026, the Defendants filed a Rejoinder to the Reply to the Defence to the Application to Amend the Patent. 5 On 20 August 2026, the Claimant filed an application under R. 336, requesting that, within the interim procedure, the Court: Declare inadmissible and disregard the following passages of the Defendants’ “Rejoinder to the Reply to the Defence to the Application to Amend the Patent” dated 13 July 2026 and not rely on them at the forthcoming proceedings: Objected Passages: - Section A in its entirety (mn. 1–13: “Claimant’s view on ‘L-LTF perception’ and feature 1.4/10.4”); - Section B. I (mn. 14–17: “Feature 1.4/10.4”); - Section C in its entirety (mn. 29–35: “Insufficiency of disclosure”, sub-sections I. and II.); - Section E, to the extent it addresses features 1.3 and 1.5 of the granted claims (mn. 44–51); As a subsidiary request, leave for a further short submission, in case the Court finds this request inadmissible. 6 The Claimant argued that the Objected Passages do not respond to the issues raised in the Reply to the Defence to Amend the Patent but are, in fact, a further response and allegation to the issues of validity that were dealt with already and respect the revocation track initiated by the Defendants' counterclaim. Those arguments relate to the granted claims, not the auxiliary request, even if the Defendants refer to Auxiliary Request A1 as a closing cross-reference to those arguments. 7 The Claimant further argued that new arguments such as those provided by the Defendants could only be pleaded within the scope of R. 263 RoP if the requirements were met. 8 The Defendants opposed the request. 9 With regard to section A, the Defendants acknowledge that these allegations do not address the arguments of Auxiliary Request A1, but consider that a response was necessary, as this resulted directly from the late-filed submissions of exhibits and complex Fourier transform calculations which the Claimant improperly submitted in its Rejoinder to the Reply to the Defence to the Counterclaim filed on 12 June. The Defendants further pointed out to the Court that, in their Rejoinder of 13 July, they already referred to these out-of-time submissions under R. 9.2 RoP, as well as to the requested leave under R. 36, should the Court find it necessary, to submit additional submissions on that matter. 10 With regard to Section B. I and C of the Rejoinder, the Defendants argue that it addresses the added matter of feature 1.4/10.4 and insufficiency of disclosure issues not resolved by Auxiliary Request A1 alone. 11 With regard to Section E, the Defendants argue that it addresses the lack of patentability of the only Auxiliary Request A1, and an assessment of the whole claimed subject-matter is required. 12 This order will address both the Claimant’s application of 20 August 2026 and the late- filed observations raised by the Defendants, regarding the Claimant’s Rejoinder of 12 June 2026, as they are related to the Objected Passages regarding Section A. GROUNDS FOR THE ORDER 1. Scope of the Rejoinders: i) to the Reply to the Defence to the Counterclaim – R. 29 (e) RoP – and ii) to the Reply to the Defence to the Application to Amend the Patent – R. 32.3 RoP 13 According to R. 29 (e) and 32.3 RoP, the rejoinders both to the reply to the defence to the counterclaim and to the defence to the application to amend the patent shall be limited to the matters raised in the respective reply filed before. 14 It is clear from the wording that the rejoinder does not constitute a new round of independent submissions, but rather a response. It must, consequently, be limited to the matters raised in the previous reply. 15 The CD Paris, 28 February 2025, NJOY v Juul Labs and 20 October 2025 Meril v Edwards Lifesciences established a basis for assessing the scope of the rejoinder pursuant to R. 52 RoP. The reasoning adopted is relevant to the rejoinders in the present case as the legal framework follows the same wording. At the rejoinder, in light of the principle of fairness, it is possible to raise new arguments, facts, and documents, insofar as they are capable of supporting positions already taken and disputed by the opposing party. The admissibility of these late-filed arguments also extends to arguments that, while not directly responding to the other party’s arguments, are closely related to them (mn. 34, Meril v Edwards Lifesciences). 16 In its Decision of 29 December 2025, VMR Products v NJOY, specifically addressing R. 32.3 RoP, the Court of Appeal also established important principles grounded in the front-loaded system. The parties must plead everything that can be pleaded as early as possible in the proceedings. In particular, the Court will not admit new arguments and grounds if the party could and should have raised them earlier. 17 In light of the cited case law, the rejoinder may contain new arguments, facts and even documents insofar as they respond to the matters raised in the reply. The pertinence of the new arguments must be drawn from the matters raised in the reply. The rejoinder may elaborate, supplement, or respond. Still, it may not alter the subject matter of the debate, introduce new independent objections, or raise issues outside the scope of the response. In addition, as emphasised by the Court of Appeal (VMR Products v NJOY), it cannot be used to introduce new grounds on the validity of the granted patent. A party wishing to further exchange pleadings outside the scope of the response to the reply must use the procedural mechanism specifically provided for that purpose under the Rules of Procedure and obtain the necessary leave from the Court. 18 The assessment of whether a submission constitutes a mere response or introduces new matter is not always straightforward. In applying R. 32.3 RoP, the Court must consider procedural fairness and the parties’ right to be heard. In that regard, an argument may still be considered within the scope of R. 32.3 RoP even if it develops an earlier argument, provided it is genuinely linked to the need to respond to the matters raised in the reply and remains within the scope of the existing case. 1.1. In the present case - Rejoinder to the Reply to the Defence to the Application to Amend the Patent 19 With regard to Section A of the Rejoinder of 13 July, the parties agree that these arguments do not constitute a response to the matters raised in the Reply to the Defence to the Application to Amend the Patent. The Defendants argue that they were a necessary response to the Claimant's late-filed arguments and exhibits in the Rejoinder to the Reply to the Defence to the Counterclaim for Revocation. 20 The Court finds that the arguments put forward in the Rejoinder, in mn. 5 to 7 and 9 to 13 of Section A, must be disregarded as they do not address the Claimant’s Reply to the Defence to the Application to Amend the Patent, nor do they develop an earlier argument that is pertinent to elaborate in view of the Reply. As such, they could be admissible only with the Court's leave. As to mn. 1 to 4 and 8 of Section A, they are admissible because they address the objection raised under R. 9.2 RoP and the request under R. 36 RoP (this will be addressed in section 1.2. below). 21 Regarding Sections B.I, C and E, although matters of the granted claim are addressed, no new grounds for invalidity are argued and it is not immediately clear that the arguments presented are absolutely unrelated to the Auxiliary Request. While these sections clearly discuss issues already raised against the granted claims, the only Auxiliary Request A1 leaves feature 1.4 unchanged and, more generally, does not substantially alter the claim structure. The Defendants’ position is essentially that the existing invalidity attacks (added matter, insufficiency and lack of patentability) continue to apply to the amended claim ("This applies to the granted form and Auxiliary Request A1"). In that sense, because these sections do not introduce new arguments but instead explain why the attacks already on file remain relevant for A1, they should be admitted. 1.2. In the present case - Rejoinder to the Reply to the Defence to Counterclaim 22 A relevant validity attack on the Claimant's Patent concerns feature 1.4 of the Patent related to the configuration of the L-LTF field for transmission using only the legacy number of subcarriers. In its Defence to the Counterclaim, the Claimant rebuffed the Defendants’ statement in the Counterclaim that it remained unclear why an increase in subcarriers in L-LTF should cause problems for legacy devices, and cited Ozdemir et al. IEEE Communications Surveys& Tutorials, 2nd Quarter 2007; Nguyen et al. 20th European Signal Processing Conference (EUSIPCO 2012). However, the Claimant did not file this evidence at that time, but only with its Rejoinder of 12 June, as AMPER CC 5 and AMPER CC 6. In the said Rejoinder, the Claimant also further argued on the technical effect of feature 1.4. and submitted Exhibit AMPER CC 7. 23 The Defendants argued that those documents and arguments filed on mn. 8 to 28 of the Claimant’s Rejoinder are late filed and contrary to the front-loaded character of the UPC proceedings and further suggested that the Court should, under R. 9.2, disregard them. 24 The Court agrees with the Defendants that the documents AMPER CC 5 and AMPER CC 6 should have been filed earlier, particularly when they were cited, or, at least, the Claimant should have provided an acceptable explanation for not filing them earlier. Accordingly, they are inadmissible and must, under R. 9.2, be disregarded. 25 With respect to the additional arguments - mn. 8 to 28 of the Claimant’s Rejoinder to the Reply to the defence to the Counterclaim - and Exhibit, that the Defendants also argue are late-filed, the Court finds that they are a further response to the technical discussions between the parties about the technical effect of feature 1.4, central to the validity debate the parties are having from the filing of the Counterclaim. The Court also finds that mn. 8–28 contain submissions which, although introduced together with Exhibits AMPER CC 5 and AMPER 6 are not dependent on those exhibits for their admissibility. The exclusion of Exhibits AMPER CC 5 and AMPER 6 therefore does not prevent the Claimant from advancing the corresponding arguments. In this respect, although the additional arguments do not directly respond to previous ones, they are closely related and do so within the overall debate on that matter. There is no valid reason to disregard them. No need to further hear the parties 26 In light of the reasons for accepting the objected passages/arguments, the Court sees no need for further written response or pleadings from any of the parties. In any case, any of the parties can take a position at the oral hearing. ORDER 1. The Court grants the Claimant’s request of 20 August 2026 concerning the Rejoinder to the Reply to the Defence to the Application to Amend the Patent filed on 13 July 2026 concerning Section A, mn. 5 to 7 and 9 to 13, further declaring that those passages are inadmissible and must be disregarded at any subsequent stage of these proceedings. 2. The Court orders that Exhibits AMPER CC 5 and AMPER CC 6 filed by the Claimant with its Rejoinder to the Reply to the Defence to the Counterclaim of 12 June 2026 are inadmissible and must be disregarded at any subsequent stage of these proceedings. 3. All other requests set out in the Application of 20 August 2026 are dismissed. This order may be reviewed under R. 333 RoP.

Key Holdings

• The fee for a counterclaim for revocation according to the Table of Fees should correspond to the fee applicable to the main infringement claim.
• Where an infringement action was initiated prior to 1 January 2026, the pre-existing ('old') fee scale applies to a counterclaim filed after 1 January 2026.
• A defendant who paid the higher revised fee applicable as of 1 January 2026 for a counterclaim in proceedings commenced before that date is entitled to reimbursement of the overpaid difference.

Tags

• Old court fees
• Counterclaim for revocation
• Table of Fees
• Court fees
• Reimbursement of fees

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• UPC_CFI_676/2025 – AX Wireless v Xiaomi