UPC_CFI_99/2024_Sep17_Fees – Ona v Apple
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Reimbursement of court fees Facts The parties settled and the Court had already ordered a 40% reimbursement of the court fees (instead of 60% because of all the work the Court had already done) to the claimants. Now also defendant Apple asks and obtained a 40% reimbursement (€ 8,000) of the court fees paid for the Counterclaim for Revocation. Comment 1. A simple settlement requires three R. 265 RoP orders and two orders for reimbursement of fees with a decision motivating why 40% instead of 60% is reasonable! Do we really think that the return of € 8,000 to Apple makes a difference for Apple? A simple letter of the parties to the JR or Registry stating that the case is settled and no return of fees. The latter should be the result of a review of the Rules. 2. Let us not use the judges for mundane tasks and having said that: let them all recruit a (brilliant student as) law clerk as US judges do. All (IP) law students in the UPC countries would love to have such experience for a year and it would make far more efficient use of the judges.
Full Decision Text
Düsseldorf Local Division UPC_CFI_99/2024 UPC_CFI_392/2024 Order of the Court of First Instance of the Unified Patent Court issued on 17 September 2025 concerning EP 2 263 098 B1 CLAIMANT: Ona Patents SL, represented by its CEO Raúl Diaz Morales, Carrer de Calàbria 149 En. 1, 08015 Barcelona, Spain Represented by: Attorney-at-law Dr Christof Augenstein, Attorney-at-law Dr Bene- dikt Walesch, Attorney-at-law Dr Melissa Lutz, Kather Augenstein Rechtsanwälte PartGmbB, Bahnstraße 16, 40212 Düsseldorf, Ger- many Electronic address for service: augenstein@katheraugenstein.com COUNTER-DEFENDANT 2: Ekahau Oy, represented by the Board of Directors Jeremy Rossen, Brian Conrad Stewart und Ari Olavi Tourunen, Jaakonkatu 5, 00100, Helsinki, Finland Represented by: Attorney-at-law Dr Christof Augenstein, Attorney-at-law Dr Ben- edikt Walesch, Attorney-at-law Dr Melissa Lutz, Kather Augen- stein Rechtsanwälte PartGmbB, Bahnstraße 16, 40212 Düsseldorf, Germany Patent Attorney Dipl.-Ing. Benjamin Bubendorfer, Patent Attorney M. Sc. Andreas Rauscher, WBH Wachenhausen Patentanwälte PartGmbB, Müllerstraße 40, 80469 Munich, Germany Electronic address for service: augenstein@katheraugenstein.com DEFENDANTS: 1. Apple Inc., represented by its CEO Tim Cook, One Apple Park Way, Cupertino, CA 95014, USA 2. Apple Distribution International Ltd., represented by its Directors Cathy Kearny, Michael O’Sullivan and Peter Denwood, Hollyhill Industrial Estate, Hollyhill, Cork, T23 YK84, Republic of Irland 1 3. Apple Retail Germany B.V. & Co. KG, represented by its personally liable partner Apple Hold- ing B.V., represented by its CEO Alexander Niemczyk, Michael Joseph Boyd und Peter Ronald Denwood, Maximilianstraße 54, 80538 Munich, Germany 4. Apple GmbH, represented by its CEOs Michael Joseph Boyd und Peter Ronald Denwood, Katharina-von-Bora-Str. 3, 80333 Munich, Germany 5. Apple Retail France EURL, represented by its CEOs Peter Ronald Denwood und Éamonn Clancy, 3-5 rue Saint Georges, 75009 Paris, France All Defendants represented by: Attorney-at-law Prof Dr Tilman Müller-Stoy, Attor- ney-at-law Dr Tobias Wuttke, Bardehle Pagenberg Partnerschaft mbB, Prinzregentenplatz 7, 81675 München, Germany Electronic address for service: mueller-stoy@bardehle.com PATENT IN SUIT: European Patent No. EP 2 263 098 B1 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This order was issued by Presiding Judge Thomas acting as judge-rapporteur, legally qualified judge Dr Thom, legally qualified judge Kokke and technically qualified judge Myon. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: R. 370.9 and .11 RoP – Reimbursement of court fees SUMMARY OF THE FACTS: On 14 March 2024, the Claimant filed a patent infringement action against the Defendants. All Defendants filed a counterclaim for revocation on 5 August 2025. Defendants of the counter- claim for revocation are the Claimant and the Counter-Defendant 2). Prior to the closure of the written procedure, the Claimant withdrew its infringement action by brief dated 1 September 2025. In the same submission, the Claimant and the Counter-Defendant 2) agreed to the withdrawal of the counterclaim for revocation to be declared by the Defendants. On 3 September 2025, the Defendants agreed to the withdrawal of the infringement action and withdrew Defendant’s 1) - 5) counterclaim for revocation. By decision of 5 September 2025, the Court allowed these withdrawals (App_35850/2025 and App_36054/2025). On 8 September 2025, Defendants requested a partial reimbursement of the court fees paid with 2 regard to the counterclaim for revocation. Following a request filed by the Claimant, on 11 September 2025 the Court ordered that the Regis- trar is directed to reimburse the Claimant 40 % of the court fees paid in relation to the infringement action as soon as possible, which amounts to € 20,000 (App_35855/2025). GROUNDS FOR THE ORDER: According to R. 370.9(b)(i) RoP, fixed and value-based fees may be reimbursed by 60 % if an action is withdrawn before the closure of the written procedure. R. 370.11 RoP states that the Court shall deal with applications for a reimbursement of Court fees without delay, provided it is satisfied that the reimbursement is appropriate. Based on these principles, a reimbursement of 40 % is appropriate in the present case. Although the written proceedings had not yet been formally closed, all regular pleadings foreseen in the Rules of Procedure had already been exchanged between the parties. Based on this, the judge- rapporteur raised a lot of questions and requested further documentation on 1 August 2025. This order required an in-depth examination of the matter and is comparable to an R. 103 RoP order. In light of this, it is reasonable to reimburse only 40 % of the court fees, as set out in R. 370.9(b)(ii) RoP for withdrawal in the interim procedure. ORDER: The Registrar is directed to reimburse the Defendants 40 % of the court fees paid in relation to the counterclaim for revocation as soon as possible, which amounts to € 8,000. DETAILS OF THE ORDER: App_36172/2025 under main file references ACT_11910/2024 and CC_40010/2024 UPC-Number: UPC_CFI_99/2024 and UPC_CFI_392/2024 Subject of the Proceedings: Infringement action and counterclaim for revocation 3 Issued in Düsseldorf on 17 September 2025 Names and Signatures Ronny Digital unterschrieben Presiding Judge Thomas von Ronny Thomas Thomas Datum: 2025.09.16 10:09:31 +02'00' Anna Digital unterschrieben von Anna Bérénice Dr. Legally Qualified Judge Dr Thom Bérénice Dr. THOM Datum: 2025.09.17 THOM 21:42:57 +02'00' Digitally signed by Margot Margot Elsa KOKKE Legally Qualified Judge Kokke Elsa KOKKE Date: 2025.09.16 10:45:11 +02'00' Signé numériquement par Gérard, Gérard, Jean Jean-Pierre Myon DN : cn=Gérard, Jean-Pierre Myon , c=FR -Pierre Myon Date : 2025.09.17 17:17:47 +09'00 Technically Qualified Judge Myon ' 4
Key Holdings
- 40% reimbursement of counterclaim fees granted.
Tags
- Costs
- Court Fees
- Settlement