UPC CoA 629/2024, APL 58696/2024, UPC CoA 631/2024, APL 58707/2024, UPC CoA 632/2024, APL 58726/2024 – Avago Technologies International Sales Pte. Limited v Tesla Germany GmbH and Tesla Manufacturing Brandenburg SE

Expert Commentary

Full Decision Text

1 DECISION of the Court of Appeal of the Unified Patent Court issued on 15 January 2025 authorising withdrawal of the action pursuant to Rule 265 of the RoP and reimbursement of court fees GUIDING PRINCIPLE: • An application to withdraw the action in accordance with R.265 RoP can also be made during the appeal proceedings. An application for withdrawal is only inadmissible after the final decision has become final. • The withdrawal of the revocation counterclaim has the effect that the applications for amendment of the patent become irrelevant. APPELLANT (AND PLAINTIFF IN THE MAIN PROCEEDINGS BEFORE THE CFI): Avago Technologies International Sales Pte. Limited, Singapore (Singapore) (hereinafter: "Avago") represented by attorney Florian Schmidt-Bogatzky, EIP Europe LLP APPELLANT (AND DEFENDANT IN THE MAIN PROCEEDINGS BEFORE THE CFI): 1. Tesla Germany GmbH, Berlin (Germany) 2. Tesla Manufacturing Brandenburg SE, Grünheide (Mark, Germany) (hereinafter jointly referred to as "Tesla") represented by lawyer Dr Marcus Grosch, Quinn Emanuel Urquhart & Sullivan, LLP UPC - Court of Appeal UPC CoA 629/2024 APL 58696/2024 App 66724/2024 App 68614/2024 UPC CoA 631/2024 APL 58707/2024 App 68613/2024 App 66709/2024 (GEI) UPC CoA 632/2024 APL 58726/2024 App 68611/2024 App 66710/2024 (GEI)2025-01-15 CoA Luxembourg UPC CoA 629-2024 UPC CoA 631-2024 UPC CoA 632-2024 App 66724-2024 ORD 67032-2024 en-GBDeepL machine translation provided by www.veron.com 2 PATENT IN SUIT EP 1 612 910 LANGUAGE OF THE PROCEEDINGS German PANELS AND DECIDING JUDGES This decision was issued by PANEL 1 with the participation of Klaus Grabinski, President of the Court of Appeal, Peter Blok, legally qualified judge, Emmanuel Gougé, judge-rapporteur and legally qualified judge. CONTESTED DECISION OF THE COURT OF FIRST INSTANCE □ Date: 26 August 2024, Hamburg local division □ Action number of the Court of First Instance: ACT 463258/2023 UPC CFI 54/2023, CC 577767/2023 and CC 577764/2023, ORD 598391/2023, ORD 598392/2023, ORD 598393/2023 BRIEF PRESENTATION OF THE FACTS 1. Avago has brought a claim against the two Tesla companies before the Hamburg local division for alleged infringement of the patent in suit (ACT 463258/2023 UPC CFI 54/2023). Each of the two Tesla companies has filed a counterclaim for a declaration of invalidity of the patent in suit (CC 577764/2023 and CC 577767/2023). By the contested decision, the Hamburg local division dismissed the infringement action (1.), declared the patent in suit invalid insofar as its subject matter extends beyond claim 1 in the version of auxiliary claim 1, deleting claim 3, and otherwise dismissed the counterclaim (2.), and ordered the plaintiff to bear 85% of the costs of the legal dispute and the defendants to bear 15% (3.). 2. Avago has appealed against the contested decision and has used three different workflows in the CMS: - of the appeal against the dismissal of the infringement action was Proceeding number APL 58696/2024, UPC CoA 629/2024, - the appeal against the decision relating to the action for annulment CC 577767/2023 was assigned case number APL 58726/2024, UPC CoA 632/2024, and - The appeal against the decision on the cancellation counterclaim CC 577764/2023 was allocated case number APL 58707/2024, UPC CoA 631/2024. 3. In addition, Avago has applied for reimbursement of the appellant's court fees.2025-01-15 CoA Luxembourg UPC CoA 629-2024 UPC CoA 631-2024 UPC CoA 632-2024 App 66724-2024 ORD 67032-2024 en-GBDeepL machine translation provided by www.veron.com 3 APPLICATIONS BY THE PARTIES With regard to the infringement action 4. Avago requests that the withdrawal of the infringement action be allowed, that the proceedings be declared terminated pursuant to R.265.1, 2 RoP (1.) and, to the extent necessary pursuant to R. 265.2 (c) RoP, that the parties each be ordered to bear their own costs (2.). 5. Tesla agrees to the withdrawal of the infringement action. Tesla does not request a decision on the costs of the parties. With regard to the actions for annulment 6. Tesla requests that the withdrawal of the action for annulment be allowed and that the proceedings be declared terminated. A decision on the costs of the parties is not requested. The applications were initially only filed before the Hamburg local division (App 66709/2024 and App 66710/2024), but were later also filed in the appeal proceedings in a document dated 20 December 2024. 7. Avago agrees to the withdrawal of the actions for annulment. With regard to applications to amend the patent 8. Under case numbers App 66778/2024 and App 66780/2024, filed with the Hamburg local division, Avago requests that the withdrawal of applications to amend the patent be allowed and that the proceedings be declared terminated pursuant to R.265.1 RoP and declares that there is no need for a decision on costs in the present case. However, should this be necessary in view of R.265.2 (c) RoP, it is requested that the parties be ordered to bear their own costs. 9. Under case number App 66711/2024, filed with the Hamburg local division, Tesla has declared its consent to the withdrawal and stated that a decision on the parties' costs will not be requested. With regard to court fees 10. By document dated 30 December 2024, Avago requests that, pursuant to R.370.9 (b) (i) and 370.11 RoP, Avago be ordered to reimburse 60% of Avago's court fees in the appeal instance with regard to the withdrawal of the infringement action (App 68614/2024) and the nullity counterclaims (App 68611/2024 and App 68613/2024). REASON 11. As long as no final decision has been made on an action, the plaintiff may request the withdrawal of his action in accordance with R.265.1 RoP. The application for withdrawal is not permitted if the other party has a legitimate interest in the court deciding on the action. Jurisdiction of the court of appeal to decide on the withdrawal 12. The court of appeal is responsible for deciding on the admission of applications for withdrawal. The withdrawal of the action terminates the appeal proceedings in the case in which an appeal has been lodged, as is the case here. Therefore, the Court of Appeal is authorised to declare the proceedings terminated in accordance with R. 265.2 (a) RoP if the withdrawal is admitted and to make a decision on costs.2025-01-15 CoA Luxembourg UPC CoA 629-2024 UPC CoA 631-2024 UPC CoA 632-2024 App 66724-2024 ORD 67032-2024 en-GBDeepL machine translation provided by www.veron.com 4 Admissibility of the withdrawal 13. The decision of the Court of First Instance does not preclude the admissibility of the withdrawal because it has not become final and therefore cannot be regarded as a final decision within the meaning of R.265.1 RoP. Withdrawal of the action is only inadmissible after the final decision has become final. Whether a withdrawal after a final decision of the Court of First Instance that has not become final always requires the consent of the opposing party does not need to be decided here. This is because the relevant consents have been obtained. The withdrawals are therefore admissible. 14. It is true that R.265.2 (2) RoP provides that a decision on costs is to be made in accordance with Part 1 Chapter 5. As both parties have waived a decision on costs and the application for the determination of costs before the Hamburg local division has been withdrawn, no decision on costs is required here. Applications to amend the patent 15. The withdrawal of the revocation counterclaim has the effect that the applications for amendment of the patent become irrelevant. Against this background, there was no need for a separate authorisation to withdraw the applications to amend the patent. Reimbursement of court fees 16. If the action is withdrawn (R.265 RoP), the party obliged to pay the court fees will receive a refund of 60 % in accordance with R.370.9 (b) (i) RoP if the proceedings are withdrawn before the conclusion of the written procedure. This reimbursement is to be ordered in accordance with the application.2025-01-15 CoA Luxembourg UPC CoA 629-2024 UPC CoA 631-2024 UPC CoA 632-2024 App 66724-2024 ORD 67032-2024 en-GBDeepL machine translation provided by www.veron.com 5 DECISION The Court of Appeal 1. allows the withdrawal of the action and counterclaims for annulment, 2. declares the proceedings APL 58696/2024 UPC CoA 629/2024, APL 58707/2024 UPC CoA 631/2024 and APL 58726/2024 UPC CoA 632/2024 terminated, 3. Orders that the decision be entered in the register, 4. Orders that 60 % of the court fees for the appeals be refunded to Avago. Issued on 15 January 2025 Digitally signed by KLAUS STEFAN MARTIN Grabinski MARTIN Grabinski Date: 2025.01.15 17:19:43 +01'00' Klaus Grabinski, President of the Court of Appeal, Peter Hendrik Blok Digitally signed by Peter Hendrik Blok Date: 2025.01.15 17:28:41 +01'00' Peter Blok, legally qualified judge, EMMANUEL, LUCIEN, RENÉ GOUGÉ Digitally signed by EMMANUEL, LUCIEN, RENÉ GOUGÉ Date: 2025.01.15 17:58:13 +01'00' Emmanuel Gougé, judge-rapporteur and legally qualified judge KLAUS STEFAN2025-01-15 CoA Luxembourg UPC CoA 629-2024 UPC CoA 631-2024 UPC CoA 632-2024 App 66724-2024 ORD 67032-2024 en-GBDeepL machine translation provided by www.veron.com

Key Holdings

• An application to withdraw an action under R.265 RoP is permissible during appeal proceedings and is only inadmissible after the final decision has become final.
• The withdrawal of a revocation counterclaim renders applications for patent amendment irrelevant.
• The Court of Appeal has jurisdiction to decide on the admission of applications for withdrawal of actions.
• A party withdrawing an action before the conclusion of the written procedure is entitled to a 60% refund of court fees under R.370.9(b)(i) RoP.
• A Court of First Instance decision that has not become final does not preclude the admissibility of an action's withdrawal.

Tags

• Appeal Proceedings
• Counterclaim
• Court Fees
• Infringement
• Invalidity
• Rules of Procedure
• Withdrawal

Related Rules

• Rule 2 – Supplementary protection certificate
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry

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