1. Key takeaways
A Preliminary objection can also be raised with regard to a counterclaim for revocation.
Although R. 19 RoP addresses infringement actions, the principle of equality of arms requires that the defendant of a counterclaim for revocation must be able to assert a lack of competence procedurally in the same way as the defendant of an infringement action. This is also supported by the fact that the section concerning infringement actions also contains the provisions for a counterclaim for revocation and R. 48 RoP refers to R. 19 RoP for revocation actions.
Art. 33 (2) UPCA (lis pendens) is applicaple if an action between the same parties on the same patent is brought twice before the same division (argumentum a fortiori).
In the case at hand, the claimant of the infringement action had first filed an infringement action limited to the claims of accounting, information and damages. Its attempt to extend this infringement action by adding a claim for injunction was rejected such that the claimant of the infringement action was forced to bring a second infringement action, limited to the claim for an injunction. The defendants of the infringement action filed a counterclaim for revocation both in the first and in the second infringement proceedings. The court found that it had no competence to decide on the second counterclaim for revocation based on opposing lis pendens, Art. 33 (2) UPCA (regardless the arguments made in the counterclaim for revocation).
No separate cost decision for a decision allowing the Preliminary objection concerning the counterclaim.
The court held that there was no legal basis for a separate cost decision. The costs incurred in connection with the Preliminary objection are subject of a final decision on the costs of the proceedings.
2. Division
Local Division Munich
3. UPC number
UPC_CFI_740/2024; ACT_63258/2024
4. Type of proceedings
Infringement Action
5. Parties
Claimants: Telefonaktienbolaget LM Ericsson; Ericsson GmbH
Defendant: Motorola Mobility LLC
6. Patent(s)
EP 3780758
7. Body of legislation / Rules
Art. 33 (2) UPCA, R. 19 RoP, R. 48 RoP
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
