Local division Munich
UPC CFI 2/2023
UPC CFI 298/2023

Order
of the Court of First Instance of the Unified Patent Court
issued on 16 July 2025

Headnote:
For an application for compensation (Rule 213.2 of the Rules of Procedure, RoP) court
fees must be paid. This is evident from Rules 125, 126 and 132 RoP.

CLAIMANTS
1. 10x Genomics, Inc., 6230 Stoneridge Mall Road, 94588-3260 Pleasanton - USA
2. President and Fellows of Harvard College, Richard A. and Susan F. Smith
Campus Center, Suite 727E, 1350 Massachusetts Avenue, Cambridge, Massa-
chusetts 02138 - USA
represented by: Tilman Muller-Stay

DEFENDANTS
1. Bruker Spatial Biology, Inc., 530 Fairview Ave N, Seattle, WA 98109, USA
2. Luxendo GmbH, Im Breitspiel 2-4, 69126 Heidelberg, Deutschland
3. Bruker Nederland B.V., Elisabethhof 15, 2353 EW Leiderdorp, Niederlande
represented by: Oliver Jan Jungst

PATENT AT ISSUE
European patent no° EP 4 108 782

PANEL/DIVISION
Panel 1 of the Local Division Munich

DECIDING JUDGES
This decision has been issued by Presiding Judge Dr. Matthias Zigann, the Legally
Qualified Judge Tobias Pichlmaier (Judge-Rapporteur), the Legally Qualified Judge
Andras Kupecz and the Technically Qualified Judge Eric Enderlin.

LANGUAGE OF THE PROCEEDINGS
English

SUBJECT MATTER OF THE PROCEEDINGS
Withdrawal (Rule 265 RoP) / Reimbursement of court fees (Rule 370 RoP)

SUMMARY OF THE FACTS
On 1 June 2023, Claimants applied for preliminary measures due to patent infringe-
ment (UPC CFI 2/2023).
The main action was filed on 31 August 2023 (UPC_CFI_298/2023). The amount in
dispute was stated as 10 million €. An advance payment of 76,000 € was paid towards
court fees. Defendants filed a counterclaim for revocation on 11 December 2023
(CC 592964/2023, CC_593060/2023, CC_593069/2023). The amount in dispute was
stated as 10 million €. An advance payment of 20,000 € was paid towards court fees.
The written procedures have not yet been formally closed. A date for the oral hearing
has already been set. The parties have filed more than 30 different applications (in-
cluding Rule 333 RoP and appeal) within the infringement and counterclaim proceed-
ings, which had to be processed by the Court. In this regard, reference is made to the
content of the CMS. The Court had to render numerous orders and decisions in this
regard, some of which required lengthy explanations.
On 26 February 2024, the CoA revoked the order for preliminary measures rendered
by the Local Division Munich on 19 September 2023. The CoA had doubts regarding
the validity of the patent at issue.
On 25 February 2025, Defendants filed an application for compensation according to
Art. 60 (9), 62 (5) UPCA, Rule 213.2, Rule 354.2 RoP (App 9111/2025). The amount
in dispute on the part of Defendants was stated as 40.000.000,00 €. An advance pay-
ment of 253,000 € was made towards court fees.
In the proceedings concerning the validity of the patent at issue before the European
Patent Office, the opposition division upheld the patent at issue with decision of 20
March 2025 in a limited version (auxiliary request 2).
In its request of 14 May 2025 (App_ 22732/2025) Defendant's representative informed
the Court that the parties have reached a settlement. Subsequently, the infringement
action, the counterclaim for revocation and the application for compensation were with-
drawn.

REQUESTS OF THE PARTIES
Claimants request
1. to allow the withdrawal of the infringement action filed on August 31, 2023
(UPC_CFI 298/2023) as well as of the Applications to amend the patent of Au-
gust 19, 2024 (CC_593060/2023, CC_593069/2023, CC_592964/2023, filed
with the reply brief, and revised on April 9, 2025) and to declare the proceedings
closed, according to R. 265.1, 2 RoP.
2. to refrain from a cost decision.
3. to order the reimbursement of 60 % of the court fees paid by the Claimants
according to R. 370.11 RoP and R. 370.9 (b) (i) RoP.
Defendants request
- to allow the withdrawal of the application for compensation and declare the
proceedings closed (R. 265.2),
refrain from a cost decision
- reimburse all court fees to the signatory's law firm bank account below:
Bird & Bird LLP
Deutsche Bank AG
IBAN: DE71 3007 0024 0106 6398 00
BIC: DEUTDEDBDUE
Reference: PI damages EP782
Defendants further request
- to allow the withdrawal of the counterclaim for revocation and declare the
proceedings closed (R. 265.2)
- refrain from a cost decision
- reimburse any court fees in line with R. 370.9c to the signatory's law firm
bank account below:
Bird & Bird LLP
Deutsche Bank AG
IBAN: DE71 3007 0024 0106 6398 00
BIC: DEUTDEDBDUE

Reference: Refund EP782-Counterclaim
Both parties asked the Court to refrain from a cost decision with regard to the proceed-
ings concerned.
Claimants further request
to rectify the order dated 24 February 2025 (App_15954/2024) in so far as Re-
spondent 2 in this order is designated as "NanoString Technologies".

REASONS FOR THE ORDER
I. Withdrawal
1. As long as there is no final decision in an action, a claimant may apply to withdraw
his action (Rule 265 RoP). The application for withdrawal is not allowed, if the
other party has a legitimate interest in the action being decided by the Court.
The parties have settled. Therefore, there is no legitimate interest in the actions
(infringement action and counterclaim for revocation) being decided by the Court.
Consequently, the withdrawals are permitted.
2. An application for compensation according to RoP Rule 213.2 is also to be treated
as an action within the meaning of Rule 265.1 RoP. There is no apparent reason
why the withdrawal of an application under Rule 213 RoP should not be possible.
The withdrawal of the application for compensation was declared before a final
decision by the Court was issued. Since the parties have settled, Respondents
have no legitimate interest pursuant to Rule 265.1 RoP.
3. The consequence of permitting a withdrawal is, according to Rule 265.2(a) and
(b) RoP, to give a decision declaring the proceedings closed and to order the
decision to be entered on the register.
II. Reimbursement of court fees for the infringement action and the counter-claim
for revocation
With regard to the infringement action and the counterclaim for revocation, only
40% of the court fees paid can be reimbursed.
The following reasons are decisive for this:
The purpose of the graduated scale for the reimbursement of fees in the event of
the withdrawal of an action (Rule 370.9 RoP) is to ensure that the efforts already
incurred by the Court are adequately remunerated. That means: The later an
action is withdrawn, the higher the estimated efforts incurred by the Court are
and, as a result, the lower the refund will be.
This purpose is also subject of Rule 370.9(e) RoP. According to this rule, the
court in exceptional cases may deny or decrease the reimbursement payable un-der
Rule 370.9(b) and (c), taking into account in particular the stage of the pro-ceedings.
In the case at hand the parties have conducted the proceedings outstanding in-tensively.
Therefore, until the withdrawal exceptionally high efforts of the Court
were caused, far above the average amount of work to be expected at this stage
of the proceedings. This easily can be shown by the number of applications filed.
Therefore, the requested reimbursement of 60% had to be rejected pursuant to
Rule 370.9 (e) RoP. This rule would not apply if the present case were not cov-ered
by it. In view of this, the panel considers it justified to limit the proportional
reimbursement of court fees for the infringement action and the counterclaim for
revocation to 40 % in each case.
III. Reimbursement of court fees for the application for compensation
With regard to the application for compensation (App_9111/2025), 60% of the
court fees paid will be reimbursed.
1. Pursuant to Rule 370.9(b)(i) RoP in conjunction with Rule 370.11 RoP, 60 % of
the court fees paid are to be reimbursed if the action — as in this case — is with-drawn
before the closure of the written procedure.
2. Consequently, the court fees paid by Defendants regarding the application for
compensation according to RoP Rule 213.2 are subject to a reimbursement ac-cording
to Rule 370 RoP.
3. Contrary to defendant's view, there is no entitlement to a full refund of the court
fee paid by Defendants for the application for compensation (Rule 213.2 RoP).
Defendants justified their request for full reimbursement on the grounds that there
is no legal basis for charging a fee in this case. This view is not to be followed.
The payment of these court fees has not been made voluntary or without legal
basis. The filing of the application for compensation according to RoP Rule 213.2
is subject to court fees. This fees have been correctly calculated by Defendants
in accordance with the value in dispute stated. This fees are not covered by the
fees paid by Claimant for the application for preliminary measures.
The legal basis for this fees are Rules 370.2(e), 132 ("Fee for the Application for
the determination of damages") RoP. The expression "damages" used in Rule
132 RoP (Chapter 4: Procedure for the determination of damages and compen-
sation) shall be deemed to include compensation according to Rule 213.2 RoP.
This is explicitly stated in Rule 125 RoP (sentences 2 and 3).
Defendants are reminded that the UPC is not based on the principle of free pro-
ceedings, but on the idea that the party who initiates proceedings and thus an
activity of the Court by filing a statement of claim or an application must pay fees.
Article 70 UPCA generally provides that the parties to the proceedings shall pay
court fees for legal proceedings. The determination of compensation according
to Rule 213.2 RoP may be the subject of separate proceedings (Rule 125 RoP).
Article 36(3) UPCA ensures that the parties have to contribute for the costs in-
curred by the Court (LD Munich, UPC_CFl_487/2023, ACT_ 595922/2023,
ORD 23222/2025). It cannot be inferred from Article 36(2) or (3) UPCA that cer-
tain types of actions or applications are to be exempted from the general obliga-
tion to pay fees.

ORDER
1. The withdrawal of
- the infringement action filed on 31 August 2023 (UPC_CFl_298/2023),
- the counterclaim for revocation filed on 11 December 2023,
- the application to amend the patent filed on 19 August
(CC_593060/2023, CC_593069/2023, CC_592964/2023) and
the application for compensation (App_9111/2025)
is permitted.
2024
2. The proceedings mentioned in No. 1. and their respective workflows still open are
declared closed. Any remaining deadlines and dates in the above mentioned pro-
ceedings are cancelled.
3. This decision is to be entered on the register.
4. It is declared that there is no need for a cost decision.
5. The amount in dispute for the infringement action and the counterclaim for revo-cation
is set at a total of 20.000.000,00 €. The amount in dispute for the applica-tion
for compensation was stated as 40.000.000,00 €.
6. Claimants are to be reimbursed 40 % of the court fees of the infringement action
(UPC_CFI_298/2023) paid by them, and thus an amount of € 30.400,00. The
further application is rejected.
7. Defendants are to be reimbursed 40 % of the court fees of the counterclaim for
revocation paid by them, and thus an amount of € 8.000,00 to the signatory's law
firm bank account below:
Bird & Bird LLP
Deutsche Bank AG
IBAN: DE71 3007 0024 0106 6398 00
BIC: DEUTDEDBDUE
Reference: Refund EP782-Counterclaim

8. Defendants are to be reimbursed 60 % of the court fees of the application for
compensation (App_9111/2025) paid by them, and thus an amount of €
151.800,00 to the signatory's law firm bank account below:
Bird & Bird LLP
Deutsche Bank AG
IBAN: DE71 3007 0024 0106 6398 00
BIC: DEUTDEDBDUE
Reference: PI damages EP782
The further application is rejected.
9. The order dated 24 February 2025 (App_15954/2024) is rectified in so far as Re-
spondent 2 (President and Fellows of Harvard College, Suite 727E, 1350 Mas-
sachusetts Avenue, Massachusetts 02138, USA) in this order by clerical mistake
is designated as "NanoString Technologies Inc., 530 Fairview Ave N — 98109 -
Seattle (WA) — USA".

INSTRUCTION FOR THE REGISTRY
The Registrar is instructed to make payments according to this order to Defendants
and Claimants.