UPC_CFI_99/2024_Sept11_Fees – Ona v Apple
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Reimbursement of court fees Facts On 1 September 2025, Ona withdrew its claim, to which Apple agreed. The Court 1. Ordered a refund of 40% having regard to the amount of work done by the JR. 2. Ordered the security to be released. Comment A perfectly reasonable decision in view of all the work the JR had done. I have already advocated to abolish the reimbursement of court fees.
Full Decision Text
1 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 11 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 2 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 RoP – Reimbursement of Court fees R. 352.2 RoP – Release of security for costs of a party 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). By order of 27 December 2024, the Court ordered the Claimant to provide security for legal costs and other expenses to the Defendants in the amount of € 500,000, either by way of deposit on the UPC account dedicated for security deposits, alternatively by way of bank guarantee issued by a bank licenced in the European Union to be chosen by the Claimant within six weeks from the date of service of this order (App_41576/2024). Prior to the closure of the written procedure, the Claimant withdrew its infringement action by brief dated 1 September 2025. On 3 September 2025, the Defendants agreed to the withdrawal of the infringement action. 3 By decision of 5 September 2025, the Court allowed this withdrawal. 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. Both parties confirmed that they had agreed to cover their own costs. The Defendants also agreed to the release of the security. On this basis, the security provided by the Claimant is to be released, as it is now without purpose (R. 352.2 RoP). ORDER: 1. The Registrar is directed to reimburse the Claimant 40 % of the court fees paid in rela- tion to the infringement action as soon as possible, which amounts to € 20,000. 2. The security provided by the Claimant is released by this order. DETAILS OF THE ORDER: App_35855/2025 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 4 Issued in Düsseldorf on 11 September 2025 Names and Signatures Presiding Judge Thomas Legally Qualified Judge Dr Thom Legally Qualified Judge Kokke Technically Qualified Judge Myon Ronny Thomas Digital unterschrieben von Ronny Thomas Datum: 2025.09.10 16:43:51 +02'00' Anna Bérénice Dr. THOM Digital unterschrieben von Anna Bérénice Dr. THOM Datum: 2025.09.10 17:09:34 +02'00' Margot Elsa KOKKE Digitally signed by Margot Elsa KOKKE Date: 2025.09.10 17:32:14 +02'00' Signé numériquement par Gérard MYON DN : cn=Gérard MYON, c=FR, o=UPC, email=gerard.myon@unifiedpatentcourt .org Raison : J'approuve ce document Date : 2025.09.11 07:21:49 +09'00' Gérard MYON
Key Holdings
- 40% fee reimbursement granted (withdrawal).
- Security released.
Tags
- Costs
- Court Fees
- Security for Costs
- Withdrawal