UPC_CFI_59/2025

IMAGE ENCODING METHOD, IMAGE DECODING METHOD, IMAGE ENCODING DEVICE, IMAGE DECODING DEVICE, AND IMAGE ENCODING/DECODING DEVICE

Provisional measuresProvisional MeasuresMunich LDProvisional measuresCase Closed

Overview Decisions Reasoning Citations Documents Timeline

Plain-English summary

Sun Patent Trust (applicant for AASI/AAEI) obtained a costs order against Roku Inc. before the Munich Local Division, even though the substantive anti-anti-suit/anti-anti-enforcement injunction application had become moot after Roku issued a cease-and-desist undertaking following the prior interim order of January 2025. The Court held that a prior warning was unnecessary and impracticable before filing an AASI/AAEI where the defendant had already initiated US court proceedings seeking to restrain UPC enforcement, and that costs are assessed from the objective viewpoint of the applicant at the time of filing.

Accepted arguments

What the court agreed with — by party.

Prior warning (Abmahnung) is not a prerequisite for an anti-anti-suit/anti-anti-enforcement injunction application where the defendant had already initiated foreign anti-suit/anti-enforcement proceedings
ClaimantLegal basis: CoA order of 24 October 2024 (CoA_2-2024, Edwards/Meril); R. 206 RoP
Note: Court held that where defendant has already commenced anti-suit/AEI proceedings before a foreign court, a prior warning is unnecessary because the defendant's conduct makes clear it would not comply voluntarily.
Defendant bears costs despite mootness where defendant gave cause for proceedings by initiating anti-suit action before US courts
ClaimantLegal basis: R. 360 RoP
Note: Court assessed costs from objective viewpoint of applicant at time of filing: applicant was entitled to conclude it could not obtain its rights without judicial assistance, given defendant's US court filings seeking an ASI/AEI.

Rejected arguments

What the court did not agree with — and why.

Applicant should bear its own costs because it failed to issue a prior warning before filing the anti-anti-suit/anti-anti-enforcement injunction
RespondentLegal basis: CoA order of 24 October 2024 (CoA_2-2024, Edwards/Meril)
Reason: Prior warning was not required or practicable: (1) defendant had already begun implementing its intent to obtain an ASI/AEI in the US; (2) issuing a warning risked defendant accelerating the US proceedings or obtaining an emergency injunction before the UPC could act, potentially destroying applicant's rights; (3) on this basis, prior warning was deemed untunlich (impracticable/inadvisable).

Key legal principles

Doctrines and rules cited in the reasoning.

anti-anti-suit injunction (AASI) and anti-anti-enforcement injunction (AAEI) in UPC proceedings prior warning not required before AASI/AAEI where defendant has commenced foreign anti-suit proceedings mootness of application after defendant issues cease-and-desist undertaking costs in moot proceedings: defendant bears costs if it gave cause for litigation objective assessment of necessity for proceedings from applicant's perspective at time of filing

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