Rule 265 – Withdrawal

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1. As long as there is no final decision in an action, a claimant may apply to withdraw his action. The Court shall decide the application after hearing the other party. The application to withdraw shall not be permitted if the other party has a legitimate interest in the action being decided by the Court.

2. If withdrawal is permitted, the Court shall:

(a) give a decision declaring the proceedings closed;

(b) order the decision to be entered on the register; and

The withdrawal of an action by the claimant shall have no effect on any counterclaim in the action. The Court may however refer any counterclaim for revocation to the Central Division.

Case law

Court of Appeal

IPPT20250411, UPC CoA, Ericsson v Motorola
Withdrawal of action by party consent (R. 265 RoP)

IPPT20250303, UPC CoA, Curio Bioscience v 10x Genomics
Withdrawal of appeal without objection (R. 265 RoP). R. 265.1 RoP also applies mutatis mutandis to the withdrawal of an appeal.

IPPT20250219, UPC CoA, Aarke v Sodastream
Withdrawal of appeal without objection – no cost decision requested – reimbursement of costs. R. 265.1 RoP also applies mutatis mutandis to the withdrawal of an appeal.

IPPT20250227, UPC CFI, CD Milan, SharkNinja v Dyson
Withdrawal of revocation action by party consent (R. 265 RoP).

IPPT20250124, UPC CoA, DexCom v Abbott - II
Withdrawal of action by party consent (R. 265 RoP). With the closure of the proceedings, the impugned decision will become ineffective.

IPPT20250124, UPC CoA, DexCom v Abbott - I
IPPT20250124, UPC CoA, DexCom v Abbott - III
Withdrawal of action by party consent (R. 265 RoP). The applications to withdraw the infringement action and the counterclaims for revocation are admissible since there is no final decision in the actions in view of the pending appeal, and the Court of Appeal is responsible for deciding on the permissibility of the applications for withdrawal. With the closure of the proceedings, the impugned decision will become ineffective. The conditional application to amend the patent is ancillary to the appeal, and withdrawal of the counterclaim for revocation has the effect of rendering requests for amendment of the patent ineffective.

IPPT20250115, UPC CoA, Avago v Tesla
Withdrawal of appeal by party agreement (R. 265 RoP). The court of appeal has jurisdiction to decide on the admission of the applications to withdraw. Court of appeal has the authority, in the event of the admission of the withdrawal, to declare the proceedings terminated in accordance with R. 265.2(a) RoP and to make a decision on costs. No need for cost decision as both parties waive a decision on costs and the application for a cost decision before the Hamburg Local Division has been withdrawn. The withdrawal of the revocation counterclaim has the effect that the requests for amendment of the patent become irrelevant. Against this background, there was no need for a separate authorisation of the withdrawal of the requests for amendment of the patent.

IPPT20250113, UPC CoA, Magna v Valeo
Withdrawal of action upon application by Valeo (holder of preliminary injunction) with the consent of the appellant (Magna) (R. 265 RoP). In view of Magna’s consent, Magna cannot be considered to have a legitimate interest in the action being decided by the Court. No need for a decision on costs: parties have agreed that neither party shall file an application for reimbursement of costs versus the other party.

IPPT20240705, UPC CoA, 10x v Curio
Withdrawal of appeal from provisional measure with consent (Rule 265 RoP, Rule 151(d) RoP).The Court of Appeal is of the opinion that in case of a withdrawal of an appeal, the appellant shall be considered to be the unsuccessful party who shall bear the costs (as referred to in R.151(d) RoP) incurred in relation to the appeal proceedings. The cost of the appeal incurred by Curio shall be borne by 10x , in an amount to be determined by the Court of First Instance (as requested by both parties)

IPPT20240604, UPC CoA, Daedalus v Xiaomi
Application to withdraw appeal in relation to two (Xiaomi DE and Xiaomi NL) of several defendants rejected (Rule 265 RoP). The Court of Appeal will consider whether those respondents have already been served the Statement of grounds of appeal, whether they want the appeal to be adjudicated in relation to themselves as respondents and whether they have a legitimate interest in adjudication. Main consideration for legitimate interests is the content of the order under appeal and how a withdrawal affects the respondent. Part of the appeal is that Daedalus is requesting that service on Xiaomi Communications Co. Ltd. and Xiaomi Inc is made via Xiaomi DE. Xiaomi DE is a defendant before the Court of First Instance, has responded to the appeal, and will be affected by a reversal of the order of the Court of First Instance since, in that situation, it will be burdened by service on behalf of affiliate companies, which would result in internal responsibilities / liabilities, as it is supposed to inform the other companies of service having been made. Xiaomi NL, who owns all shares in Xiaomi DE, is a defendant before the Court of First Instance, has responded to the appeal, and will indirectly be affected by the outcome of the appeal since it will influence the course and length of proceedings before the Court. The latter aspect applies also in relation to Xiaomi DE.

Court of First Instance

IPPT20250227, UPC CFI, RD Nordic-Baltic, Fapa Vital v Valentis Baltic
Withdrawal of application for provisional measures by party consent (R. 265 RoP) and reimbursement of Court fees (R. 370.9 RoP by analogy)

IPPT20250219, UPC CFI, LD Munich, Dyson v SharkNinja
Withdrawal of proceedings by party consent (R. 265 RoP)

IPPT20250217, UPC CFI, LD Düsseldorf, Per Aarsleff v IMS Robotics
Withdrawal of action by party consent (R. 265 RoP).

IPPT20250204, UPC LD Mannheim, Panasonic v Xiaomi
Withdrawal of action by party consent (R. 265 RoP). Reimbursement of 40% (instead of 60%) of court fees after closure of the written procedure (R. 370.9(b) RoP) The fact that the written procedure was not formally completed by clicking the button provided on the CMS workflow does not change this as the procedure was announced to have been completed months earlier.

IPPT20250203, UPC LD Mannheim, Panasonic v Xiaomi
Withdrawal of action by party consent (R. 265 RoP). Reimbursement of 20% of court fees (R. 370.9(b) RoP)

IPPT20250203, UPC LD Mannheim, Panasonic v Oppo
Withdrawal of action by party consent (R. 265 RoP). No reimbursement of court costs as the application was made after the final decision closing the oral proceedings (R. 370.9(b) RoP)

IPPT20250120, UPC CFI, RD Nordic-Baltic, Abbott v Dexcom
Withdrawal of action by party consent (R. 265 RoP)

IPPT20250129, UPC CFI, LD The Hague, Abbott v Dexcom
Withdrawal of the action by agreement; no need for a cost decision, 20% of court fees reimbursed (R. 265 RoP, R. 370 RoP)

IPPT20250128, UPC CFI, LD Munich, Qualcomm v Shenzen
Withdrawal of the action by agreement; parties bearing their own costs, 60% of court fees reimbursed (R. 265 RoP, R. 370 RoP)

IPPT20250127, UPC CFI, LD Munich, Avago v Realtek
Withdrawal of request for provisional measures (R. 205 RoP, R. 265 RoP). By analogy reimbursement of 20% of court fees (R. 370.9 RoP)

IPPT20250121, UPC CFI, RD Nordic-Baltic, Edwards v Meril
Withdrawal of application for access to pleadings and evidence. No reimbursement of legal costs (R. 265 RoP). There is no legal basis for ordering a member of the public, who has made a request for access to written pleadings and evidence, to reimburse legal costs incurred by the parties to the relevant proceedings when they are consulted by the judge-rapporteur in accordance with Rule 262.1(b) RoP.

IPPT20250114, UPC CFI, CD Paris, Bentley v Network Systems
Withdrawal of an action (Rule 265 (1) RoP) does not require the express consent of the opposing party. It is sufficient that the party was given an opportunity to comment on the withdrawal and did not object within the time limit set by the Court. In the absence of an application for costs, the Court should not rule on costs and therefore no decision under Rule 265(2)(c) RoP has to be issued.

IPPT20250124, UPC CFI, LD Munich, NEC V TCL
Withdrawal of counterclaim for revocation and counterclaim for a FRAND-license offer; parties bearing their own costs, 60% of court fees reimbursed (R. 265 RoP, R. 370 RoP). Analogous application of Rule 370 RoP to e counterclaim for a FRAND-license offer

IPPT20250115, UPC CFI, LD Munich, NEC V TCL
Withdrawal of the action by agreement; parties bearing their own costs, 60% of court fees reimbursed (R. 265 RoP, R. 370 RoP)

IPPT20250116, UPC CFI, LD Hamburg, Avago v Tesla
Withdrawal of action, pending appeal (R. 265 RoP). If a case is pending before the court of appeal, the court of appeal has jurisdiction to decide on the admissibility of the applications for withdrawal. However, the situation is different for the request for the determination of the costs to be refunded under Rules 150 RoP. This is currently still pending at first instance, with the result that the court of first instance still has jurisdiction to allow its withdrawal, in accordance with the rules on the procedure for the determination of costs before the Judge-Rapporteur. In any case, Rule 265 RoP applies mutatis mutandis to the proceedings for the determination of costs, even if there is no explicit reference to that rule. Since this is not a measure of the direction of proceedings under Rules 331 et seq. RoP, but a substantive decision within the original jurisdiction of the Judge-Rapporteur under Rule 156.2 RoP, the Judge-Rapporteur also has original and sole jurisdiction to allow the withdrawal.

IPPT20250116, UPC CFI, LD Hamburg, Avago v Tesla
Withdrawal of action, pending appeal (R. 265 RoP). If a case is pending before the court of appeal, the court of appeal has jurisdiction to decide on the admissibility of the applications for withdrawal. However, the situation is different for the request for the determination of the costs to be refunded under Rules 150 RoP. This is currently still pending at first instance, with the result that the court of first instance still has jurisdiction to allow its withdrawal, in accordance with the rules on the procedure for the determination of costs before the Judge-Rapporteur. In any case, Rule 265 RoP applies mutatis mutandis to the proceedings for the determination of costs, even if there is no explicit reference to that rule. Since this is not a measure of the direction of proceedings under Rules 331 et seq. RoP, but a substantive decision within the original jurisdiction of the Judge-Rapporteur under Rule 156.2 RoP, the Judge-Rapporteur also has original and sole jurisdiction to allow the withdrawal.

IPPT20250113, UPC CFI, LD Munich, Avago v Realtek
The withdrawal of the application for interim measures possible (R. 265 RoP, R. 212 RoP), since unserved ex parte order of 9 December 2024 prior to final decision upon review of granted ex parte order of 9 December 2024 is not a decision terminating the proceedings as the time limit for review has not yet begun to run. Applicant is to bear the costs of the proceedings for the grant of interim measures as a result of the withdrawal.

IPPT20250113, UPC CFI, LD Munich, Huawei v Netgear
Withdrawal of the provisional measures; each party shall bear its own costs, Security released (R. 265 RoP, R 158 RoP)

IPPT20250110, UPC CFI, LD Munich, Huawei v Netgear II
IPPT20250110, UPC CFI, LD Munich, Netgear v Huawei
IPPT20250110, UPC CFI, LD Munich, Huawei v Netgear
Withdrawal of the infringement action and counterclaim for revocation; each party shall bear its own costs, 40% of court fees reimbursed (R. 265 RoP, R. 370 RoP)

IPPT20250110, UPC CFI, LD Munich, Abbott v Dexcom
IPPT20250110, UPC CFI, LD Munich, DexCom v Abbott
Withdrawal and cost decision (R. 265.2(c) RoP). When admitting the withdrawal, the Court issues a decision on costs in accordance with Part 1, Chapter 5. A request by a party is not required in this respect. The parties' mutual consent may be taken into account in the cost decision.

IPPT20250110, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Withdrawal parties bearing own costs (R. 265 RoP). No partial reimbursement of court fees applied for (R. 370.RoP). The decision follows the parties’ jointly expressed will. Insofar as R. 265.2 (c) RoP requires a decision on costs in accordance with Part 1, Chapter 5 RoP, the decision takes into account the agreement reached between the parties. At present, no party has filed an application for a partial reimbursement of court fees (R. 370.11 RoP in conjunction with R. 370.9 (b) (i) RoP), so that no such order could be made.

IPPT20250107, UPC CFI, LD Munich, Avago v Tesla
Withdrawal of proceedings prior to final decision, each party bearing its own costs (R. 265 RoP). According to Rule 265.2 (c) RP, the Court shall also make a decision as to costs in accordance with Part 1 Chapter 5 when admitting the discontinuance of proceedings. No application by the parties is required for this decision; it is to be issued even without one. However, if the parties state that they do not request a decision on the parties' costs, this can be taken into account in the cost decision to be made. This statement is regularly understood to mean that no reimbursement of costs should take place between the parties and that each party should bear their own costs.

IPPT20250107, UPC CFI, LD Düsseldorf, DexCom v Abbott
Withdrawal of infringement and revocation actions, no cost decision, 60% reimbursement of court fees (R. 265 RoP, R. 370 RoP). The decision takes into account the agreement reached between the parties.

IPPT20241224, UPC CFI, LD Munich, Panasonic v Xiaomi
Withdrawal pursuant to settlement after written proceedings: agreed that each party bears its own costs, 40% refund of court fees (R. 265 RoP, R. 370.9(b)(ii) RoP)

IPPT20241223, UPC CFI, LD Munich, Panasonic v Guangdong OPPO
Withdrawal after settlement of infringement claim and counterclaim for revocation (R. 265 RoP). Each party bearing its own costs. Each party gets a fee refund of 40 per cent in accordance with R. 370.9(b)(ii) RoP.

IPPT20241223, UPC CFI, LD München, Avago v Tesla
Withdrawal of the case after decision of 30 August 2024 in which patent was declared invalid (R. 265.1(c) RoP) with each party bearing its own cost

IPPT20241213, UPC CFI, LD Paris, ICPillar v ARM
Withdrawal of infringement claim and counterclaim for revocation permitted (R. 265 RoP).The Court fees shall be reimbursed by the Court to the parties by 40% pursuant to R. 370.9 (b) and (e) RoP, i.e. the amount of 44,400 euros to ICPillar and the amount of 8,000 euros to ARM.

IPPT20241211, UPC CFI, LD Düsseldorf, Dolby v HP
Withdrawal of the actions in accordance with unanimous wishes of the parties (R. 265 RoP). Decision on pro-rata reimbursement of court costs (R. 370.11 RoP)

IPPT20241024, UPC CFI, LD Munich, Tiroler Rohre v SSAB
Application for interim measures withdrawn after oral hearing (Article 69 UPCA, R. 265 RoP). No legitimate interest in a ruling on the interim measures. Applicant to bear the legal costs of the defendant.

IPPT20241011, UPC CFI, LD Munich, MSG v EJP
Infringement action and revocation counterclaim after revocation of the patent by Technical Board of Appeal. Withdrawal of infringement action requires a decision on the allocation of legal costs and other expenses Article 69 UPCA, R. 150 RoP, R. 265.2(c) RoP). Unnecessary legal costs and other expenses within the meaning of Art. 69(3) UPCA are those that are caused by a measure that was not necessary and/or unsuitable for enforcing or defending a right and that can be separated as such. However, it does not include costs that are (ultimately) unnecessarily incurred due to unsuccessful enforcement or defence as a whole. These are already covered by the basic rule of Art. 69(1) UPCA […]. Whether a severable measure was unnecessary is to be assessed from the ex ante perspective of a reasonable and economically rational party. An objective standard is to be applied. Reimbursement of 60% of the Court fees for the infringement action (R. 370.9 (b) (i) RoP). No need to adjudicate revocation action (R. 360 RoP). Devoid of purpose because of the revocation of the patent in suit by the Technical Board of Appeal of the EPO of 4 July 2024. The costs of the revocation proceedings shall be borne by the plaintiff. The defendant is to be reimbursed 60% of the court fees paid for the counterclaim in analogous application of R. 370.9(b)(i) RoP.

IPPT20240926, UPC CFI, LD Düsseldorf, Dolby v HP
Withdrawal of action pursuant to party agreement with pro rata reimbursement of court fees (R. 265 RoP, R. 370 RoP).

IPPT20240813, UPC CFI, LD Munich, NST v Texas Instruments
Withdrawal only regarding some defendants possible (Rule 265 RoP). The withdrawal of the action is permitted because the Defendants 1) and 2) have declared their consent. There are no other reasons to continue the proceedings with regard to Defendant 1) and 2). The decision about costs follows the agreement of the Parties involved: Attorney’s fees, costs of court and expenses are borne by the party incurring the same.

IPPT20240809, UPC CFI, CD Paris, Aiko Energy v Maxeon Solar
Withdrawal of Statement for Revocation before being served has the same legal effect as if it had not been lodged at all. No legitimate interest for the Defendant to participate (Rule 265 RoP). Reimbursement of 60% of Court fees (Rule 370(9) RoP).

IPPT20240806, UPC CFI, LD Düsseldorf, Seoul Semiconductor v Amazon II

IPPT20240806, UPC CFI, LD Düsseldorf, Seoul Semiconductor v Amazon
Withdrawal because of out-of-court settlement (Rule 265 RoP). Reimbursement of 60% of Court fees (Rule 370 RoP)

IPPT20240723, UPC CFI, CD Munich, Astellas v Healios
Three ways to terminate proceedings. Parties may at any time conclude their action by way of settlement, which may be confirmed by the Court (Rule 11 RoP, Rule 365 RoP), by way of agreement to withdraw the action (Rule 265 RoP) or by application to dispose of the action for having become devoid of purpose (Rule 360 RoP).

IPPT20240501, UPC CFI, LD The Hague, Keestrack v Geha Laverman
Withdrawal of proceedings pursuant to a settlement (Rule 265 RoP, Rule 11 RoP). Restitution of part of the court fee appropriate. With the case being terminated at an early stage, i.e. after the issuance of the summons and before the filing of a reply by the respondent, and therefore before the 'written proceedings' are concluded, 60% of the court fees paid will be refunded (Rule 370.9(b) RoP).

IPPT20231026, UPC CFI, LD München, 10x Genomics v Nanostring
Withdrawal of application for interim measures allowed (Rule 265 RoP)

IPPT20230908, UPC CFI, RD Nordic-Baltic, Ocado v Autostore

Withdrawal of action prior to final decision because of settlement (Rule 265 RoP). Since the action has been withdrawn even before all defendants formally have been served the statement of claim, the Claimant shall be reimbursed court fees by 60 % of EUR 31.000, which is EUR 18.600. (Rule 370(9) RoP).

IPPT20230626, UPC CFI, LD Milan, Ocado v Autostore

Withdrawal of action prior to final decision because of settlement (Rule 265 RoP). Ocado reimbursed the amount of EUR 37,800, equal to 60% of the Court fees paid by it in these proceedings (Rule 370(9) RoP).

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Rule 265 – Withdrawal

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