Mannheim Local Division UPC_CFI_850/2024

Order

of the Court of First Instance of the Unified Patent Court issued on 20 June 2025 concerning EP 3 905 730 value in dispute in the case of a FRAND counterclaim

CLAIMANT:

ZTE Corporation

ZTE Plaza, Keji Road South, Hi-Tech Industrial Park, Nanshan District - 518057 - Shenzhen, Guangdong - CN

Represented by Dr Thomas Lynker

DEFENDANTS

1) Samsung Electronics Co., Ltd.

(FRAND Counter-Claimant) 129 Samsung-Ro, Yeongtong-Gu, - 16677 - Suwon City, GyeonggiDo - KR

2) Samsung Electronics GmbH

Frankfurter Straße 2 - 65760 - Eschborn - DE

3) Samsung Electronics France

6 Rue Fructidor, CS 2003 - 93484 - Saint-Ouen Cedex - FR

Representend by Dr Jan Ebersohl

Represented by Dr Jan

Ebersohl

Represented by Dr Jan Ebersohl

4) Samsung Electronics Italia S.p.A

Via Mike Bongiorno 9 - 20124 - Milano - IT

Represented by Dr Jan Ebersohl

5) Samsung Electronics Benelux B.V.

Evert Van De Beekstraat 310 - 1118 CX - Schiphol - NL

Represented by Dr Jan Ebersohl

6) Samsung Electronics Romania S.R.L.

Platinum Business and Convention Center, sos. București-Ploiești, nr. 172-176, Clădirea A, etaj 5, sector 1 - 013686 - Bucharest - RO

Represented by Dr Jan Ebersohl

PATENT AT ISSUE:

European patent EP 3 905 730

PANEL/DIVISION:

Panel of the Local Division in Mannheim

DECIDING JUDGES:

This order was issued by the legally qualified judge Böttcher acting as judge-rapporteur.

LANGUAGE OF THE PROCEEDINGS: English

SUBJECT OF THE PROCEEDINGS: Patent infringement action with FRAND counterclaim - value in dispute

REASONS FOR THE ORDER:

The Defendant 1 and FRAND Counter-Claimant stated the value in dispute of its FRAND counterclaim as 4 Mio €, basing this on the corresponding value in dispute of the infringement action as stated by the Claimant in its statement of claim concerning one patent only. This value in dispute of the FRAND counterclaim is largely underestimated because a FRAND license does not relate solely to the patent-in-suit. In another case including a FRAND counterclaim, the Local Division Mannheim has set the value in dispute to more than 50 Mio € (cf. decision of 22 November 2024, UPC_CFI_210/2023, para. 252, finally redacted version published on 6 February 2025).

Taking into consideration the commercial background of the FRAND counterclaim and the general FRAND rate discussion between the parties, the value of the overall proceedings including the infringement action, the counterclaim for revocation and the FRAND counterclaim is set to […] on

a preliminary basis. Thus, the Defendant 1 and Counterclaimant has to pay an additional advance on fees in the amount of […] (regular value-based fee of […] plus fixed fee of 11.000 €; to be subtracted: total fee for the infringement action in the amount of 37.000 € based on a value in dispute of 4.000.000 €, fixed fee for the counterclaim for revocation in the amount of 20.000 € and total fee already paid for the FRAND counterclaim in the amount of 37.000 € based on a value in dispute of 4.000.000 €).

As always, the value in dispute will be reviewed again in the interim procedure.

The parties are free to comment on the value in dispute in the workflow at hand within the time period set below and/or in their upcoming regular written submissions in the ordinary course of the written procedure of the FRAND counterclaim proceedings if they wish. If they comment in their regular submissions, they are kindly asked to submit their comments on the value in dispute in a separate section of the respective written submission.

ORDER:

The value in dispute of the overall proceedings (including the infringement action, the counterclaim for revocation and the FRAND counterclaim) is set to […] on a preliminary basis. The Defendant 1 and Counterclaimant is ordered to pay an additional advance on fees in the amount of […] . The parties may comment on the value in dispute until 21 July 2025 using the workflow at hand and/or in their upcoming regular written submissions in the ordinary course of the written procedure of the FRAND counterclaim proceedings (then using a separate section in these submissions).

On Defendants' side, only Defendant 1 is technically selected for the comments in the workflow at hand in the CMS in order to avoid multiple uploads of a possibly unified statement by Defendants. Should a Defendant wish to submit a separate statement in the workflow at hand, such Defendant is free to do so by uploading its separate statement alongside the statement of Defendant 1 in the workflow at hand.

If a side decides not to comment in the workflow at hand, it is requested to click the respective button in the CMS. Otherwise, the workflow will not return to the court.

ORDER DETAILS

Order no. ORD_29513/2025 in ACTION NUMBER: ACT_68656/2024

UPC number: UPC_CFI_850/2024

Action type:

Infringement Action

Issued in Mannheim on 20 June 2025

NAME AND SIGNATURE

Böttcher Judge-rapporteur