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

IPPT20240705, UPC CoA, 10x v Curio
Withdrawal of appeal from provisional measure with consent (Rule 265 RoP, Rule 151(d) RoP). 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

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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