1 Key takeaways
Even if the Defendant of an infringement action is, formally, at the same time the Claimant of a counterclaim for revocation, they are entitled to a security also for procedural costs caused by filing the counterclaim for revocation pursuant to Art. 69(4) UPCA and Rule 158.1 RoP.
According to the Court of Appeal's decision in Emboline/AorticLab (UPC_CoA_383/2025, APL_20694/2025), a Claimant is, in principle, not entitled to a procedural security pursuant to Rule 158 RoP. However, this cannot apply in case of a counterclaim for revocation. Otherwise, the Defendant of an infringement action could be limited inappropriately in their defense, because they were forced to file a counterclaim for revocation to object to the validity of the patent-in-suit without the prospect of reimbursement of the costs caused by raising this defense.
2 Division
Local Division Munich
3 UPC number
UPC_CFI_127/2024 and UPC_CFI_149/2024
ORD_47961/2024, ORD_18005/2025, ORD_49715/2024, and ORD_18004/2025
4 Type of proceedings
Requests for procedural security with regard to counterclaims for revocation
5 Parties
CLAIMANT:
Headwater Research LLC (Tyler, United States)
DEFENDANTS:
- Motorola Mobility LLC (Chicago, United States)
- Motorola International Sales LLC (Chicago, United States)
- Motorola Mobility Germany GmbH (Oberursel, Germany)
- Flextronics International Europe B.V. (Oostrum, Netherlands)
6 Patent(s)
EP 3 110 072
7 Body of legislation / Rules
Rule 158 RoP, Art. 69(4) UPCA
2025-7-3 UPC_CFI_127_2024 ORD_18005_2025_de
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.
