UPC Court of Appeal UPC_CoA_201/2025 APL_10785/2025 App_16735/2025

ORDER

of the Court of Appeal of the Unified Patent Court issued on 11 April 2025 Withdrawal pursuant to R. 265.1 RoP and reimbursement of Court fees pursuant to R. 370.9 RoP

APPELLANTS (CLAIMANTS BEFORE THE COURT OF FIRST INSTANCE)

• 1. Ericsson GmbH, Prinzenallee 21, 40549 Düsseldorf, Germany
• 2. Telefonaktiebolaget LM Ericsson, Torshamnsgatan 21, Kista, 164 83 Stockholm, Sweden

(hereinafter jointly referred to as: Ericsson)

represented by: Dr. Christof Augenstein, attorney at law, Kather Augenstein Rechtsanwälte, Düsseldorf, Germany

RESPONDENT (DEFENDANT BEFORE THE COURT OF FIRST INSTANCE)

Motorola Mobility LLC , 222 W. Merchandise Mart Plaza, Suite 1800 Chicago, Illinois 60654 USA

(hereinafter: Motorola)

represented by: Klaus Haft, attorney at law, Hoyng Rokh Monegier, Munich, Germany

PATENT AT ISSUE

EP 3 780 758

LANGUAGE OF THE PROCEEDINGS

English

DECIDING JUDGES

Panel 2:

Rian Kalden, presiding judge and judge-rapporteur Ingeborg Simonsson, legally qualified judge Patricia Rombach, legally qualified judge

IMPUGNED DECISION OF THE COURT OF FIRST INSTANCE

ORD_6149/2025 (App_3212/2025) issued in relation to a preliminary objection in CC_63258/2024 UPC_CFI_740/2024, issued by the Local Division Munich on 5 February 2025.

POINT AT ISSUE

Withdrawal (R. 265 RoP) and reimbursement of Court fees (R. 370.9 RoP)

SUMMARY OF FACTS (INSOFAR AS RELEVANT) AND INDICATION OF THE PARTIES' REQUESTS

• 1. Motorola filed an action against Ericsson before the Local Division Munich for the infringement of the patent at issue. Thereafter, it requested leave to amend this first action. Ericsson filed a counterclaim for revocation of the patent at issue.
• 2. After the rejection of its request for leave to amend the action, Motorola filed a second action against Ericsson for the infringement of the patent at issue. In response, Ericsson filed a second counterclaim for revocation of the patent at issue. Motorola replied to the latter by raising a preliminary objection, arguing that the Local Division Munich lacked jurisdiction, as there was already an ongoing counterclaim involving the same parties and the same patent.
• 3. The Local Division Munich allowed the preliminary objection and rejected as inadmissible the second counterclaim for revocation (CC_63258/2024). Ericsson appealed this decision.
• 4. Ericsson filed an application pursuant to R. 265.1 RoP (App_16735/2025) to withdraw its counterclaim for revocation (CC_63258/2024) together with the appeal against the impugned decision of the Local Division Munich.
• 5. Both parties agree that there is no legitimate interest in the Court deciding on the action irrespective of the withdrawal.
• 6. The parties have agreed that each party shall bear its own costs and that applications for costs are not made. Ericsson requests confirmation of the parties' agreement that each party shall bear its own costs and that there is no reimbursement of costs between the parties
• 7. Ericsson further requests reimbursement of the court fees according to R. 370.9 (b) (i) RoP.
• 8. Motorola declared its consent with Ericsson's requests.

GROUNDS

Conditions for permitting the withdrawals

• 9. The Court of Appeal is competent to decide on the application for withdrawal.
• 10. The application to withdraw the counterclaim for revocation and the appeal is admissible since there is no final decision in the action in view of the pending appeal.
• 11. In view of Motorola's consent, it cannot be considered to have a legitimate interest in the action being decided by the Court, and the application to withdraw the action can thus be permitted.

Costs

• 12. Although R. 265.2 (c) RoP provides that a decision on costs is to be taken in accordance with Part 1, Chapter 5, no decision on costs is required here, since both parties have declared that a cost decision is not requested.

Reimbursement of Court fees

• 13. In the event of the withdrawal of the action (R. 265 RoP), the party obliged to pay the Court fees shall upon request receive a refund of 60 % in accordance with R. 370.9 (b) (i) RoP if the action is withdrawn before the written proceedings have been concluded. This reimbursement is to be ordered in accordance with the application.

ORDER

The Court of Appeal:

• -permits the withdrawal of the counterclaim for revocation (CC_63258/2024) together with the appeal (APL_10785/2025 UPC_CoA_201/2025) and declares the proceedings closed;
• -orders that this decision shall be entered on the Register;
• -declares that there is no need for a cost decision as the parties have agreed that each party shall bear its own costs and that there is no reimbursement of costs between the parties;
• -orders that 60 % of the appeal Court fees be reimbursed to Ericsson.

Issued on 11 April 2025

Rian Kalden, presiding judge and judge-rapporteur

Ingeborg Simonsson, legally qualified judge

Patricia Rombach, legally qualified judge