Daedalus Prime v Xiaomi Communications (CFI, 16 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 16 January 2025, the Hamburg Local Division (presiding judge Sabine Klepsch, judge-rapporteur Stefan Schilling) referred to the Paris Central Division the counterclaim for revocation (UPC_CFI_436/2024) lodged in Daedalus Prime’s infringement action against Xiaomi Communications and four other defendants, including MediaTek (UPC_CFI_169/2024, EP 2 792 100), while proceeding with the infringement action. A stand-alone revocation action is pending before the Central Division (UPC_CFI_288/2024). The order shows how a local division applies the options in Art. 33(3) UPCA when validity is already being litigated in Paris.

Question

Should the counterclaim for revocation be referred to the Central Division and, if so, should the infringement action be stayed or continued?

Decision

The panel exercised its discretion under Art. 33(3) UPCA and Rule 37.1 RoP. The claimant and three defendants favoured referral. The stand-alone action and the counterclaim rely largely on the same prior art and the Central Division’s oral hearing is set for 25 March 2025, so referral avoids inconsistent decisions and duplicated work on validity. The infringement action continues: since the November 2024 order, service on the first and fifth defendants has changed the position, a stay would restart all time limits (Rule 296.3 RoP), and the first defendant’s statement of defence and the fifth defendant’s preliminary objection are still outstanding. The oral hearing will not be scheduled before early summer 2025 and the division reserves the right to reconsider a stay or separation.

Key points for practice

• Where the Central Division is already seised of a revocation action on the same prior art, referral of the counterclaim follows in practice, with a stay of the infringement action kept in reserve.

Provisions applied

Agreement on a Unified Patent Court

Art. 33(3)

Rules of Procedure

Rules 19.1(a), 37.1, 264 and 296.3

Case law cited

Amgen v Sanofi-Aventis Deutschland, Munich Local Division, 2 February 2024

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.