In a recent decision issued on February 5, 2025, in UPC_CFI_740/2024, the Unified Patent Court's (UPC) Local Division in Munich clarified critical procedural and jurisdictional issues regarding counterclaims for revocation, or precisely: regarding a second counterclaim for revocation lodged by the same party before the same Division of the UPC. The case involved Telefonaktienbolaget LM Ericsson and Motorola Mobility LLC, with the dispute centered on the European Patent EP 3 780 758.
The court addressed whether Rule 19 of the Rules of Procedure (RoP), which allows for preliminary objections to jurisdiction/competence and the language of the statement of claim, extends to counterclaims for revocation. The defendants argued that the court had no jurisdiction over a second counterclaim concerning the validity of the same patent and lodged by the same claimant, citing ongoing proceedings under a prior case between the same parties in the same division.
The judge-rapporteur, Tobias Pichlmaier, ruled that Rule 19 RoP applies equally to counterclaims for revocation. Although this rule primarily refers to objections in infringement cases, the court reasoned that procedural equality requires parties defending against a counterclaim to have the same right to challenge jurisdiction. This interpretation aligns with the principle of equality of arms.
The court further examined whether the principle of lis pendens, also applies when two counterclaims concerning the same patent are filed in the same division. The court concluded that Article 33(2) UPCA should be interpreted to prevent parallel claims on the same subject, even within the same division. Therefore, the second counterclaim for revocation was deemed inadmissible.
