Avago International Sales v Realtek Semiconductor (CFI, 9 December 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an ex parte order of 9 December 2024 (UPC_CFI_755/2024, ACT_63549/2024), panel 2 of the Munich Local Division prohibited Realtek Semiconductor Corporation from pursuing, before the Delaware courts, its anti-suit and anti-enforcement injunction requests against Avago Technologies International Sales Pte. Limited, proprietor of EP 1 770 912, declared essential to an automotive Ethernet standard, and ordered their withdrawal, subject to penalty payments. The order bases the UPC’s jurisdiction for an anti-anti-suit injunction on Art. 32(1)(a) and (c) UPCA, enforcement is conditional on security of EUR 500,000. An order of 20 December 2024 (Rule 353) corrected three passages concerning the licence agreement.

Facts and procedure

On 1 May 2024 Avago sued companies of a car manufacturer group, whose name is redacted, before the same panel for infringement of EP 1 770 912, which is in force only in Germany (UPC_CFI_208/2024). On 31 October 2024 Realtek sued Avago in Delaware for alleged breach of a licence agreement. Its claims B and C seek to bar Avago from pursuing actions in Germany and enforcing injunctions there (paragraphs 5 to 7). On 22 November 2024 the Munich I Regional Court issued an ex parte injunction against Realtek (paragraph 9). Avago applied to the UPC on 29 November 2024 (paragraphs 23 and 24).

The applicable law

International jurisdiction follows from Art. 31 UPCA and Art. 71b(2) of the Brussels I recast Regulation. Subject-matter jurisdiction from Art. 32(1)(a) and (c), and the local division’s competence from Art. 33(1)(a) (paragraphs 27 to 34). Provisional measures fall under Art. 62, and ex parte procedure under Rules 206.3, 209.2 and 212.1. The panel relied on the right of access to a court (Art. 47 of the Charter), the protection of intellectual property (Art. 17(2)), Art. 2(1) and 19(4) of the Basic Law and Sections 823(1) and 1004 of the German Civil Code (paragraphs 38 to 40). Rule 211.5 requires security where a measure is ordered ex parte.

Question

May the UPC, by an ex parte provisional measure, prohibit a party from pursuing abroad requests intended to prevent the patentee from suing or enforcing decisions in Germany, including before the UPC?

Decision

The US injunction sought would interfere with the property-like right the proprietor derives from the patent, which grounds the UPC’s jurisdiction (paragraphs 29 to 31). Claims B and C, though ambiguous, objectively extend to the UPC proceedings, since the local divisions in Germany are not part of the German judiciary (paragraphs 41 and 42). The measure is limited to the enforcement of rights in Germany, as no risk was shown for other states (paragraph 44). Urgency was established: Avago acted within weeks, the Regional Court’s injunction did not remove its interest, and a US decision could come before 20 February 2025 (paragraphs 46 to 53). The balance of interests favoured Avago, as the rest of the US action could continue (paragraphs 57 to 59), and the risk of the measure being frustrated justified proceeding ex parte (paragraphs 60 to 63).

The order prohibits pursuit of the requests, in particular claims B and C, requires their immediate withdrawal after service and prohibits enforcement of the injunctions concerned against Avago, subject to a penalty of up to EUR 100,000 per day. It is enforceable only once security of EUR 500,000, set by reference to the value in dispute, is provided: the time allegedly needed to obtain security is not a special circumstance under Rule 211.5 (paragraphs 64 to 67). Alternative service was refused, since no prior attempt under Rule 274 had been made (paragraphs 69 to 72), and the Rule 213.1 time limit for the main action leaves no discretion (paragraph 73).

Key points for practice

• The UPC accepts jurisdiction for an anti-anti-suit injunction under Art. 32(1)(a) and (c) UPCA.
• The measure is confined to the territory for which a threat is shown, here Germany, the only state where the patent is in force.
• Alternative service remains subsidiary, even in urgent cases: an attempt under Rule 274 must come first.
• Practical point: the applicant must be able to provide security quickly, as the time needed to obtain it does not justify an exemption.

Provisions applied

Agreement on a Unified Patent Court

Art. 24(1)(e), Art. 31, Art. 32(1)(a) and (c), Art. 33(1)(a), Art. 60(6) and (8), Art. 62 and Art. 82(4)

Rules of Procedure

Rules 206.3, 209.2, 211.5, 212.1, 212.3, 213.1, 274, 275.1, 276.1, 316, 352 and 353

Regulation (EU) No 1215/2012

Art. 71b(2)

Case law cited

Düsseldorf Local Division, 31 October 2024, Valeo Electrification v Magna PT (UPC_CFI_347/2024), Häfele v Kunststoff Nehl, Munich Local Division, 25 November 2024 (UPC_CFI_443/2024), NEC v TCL Industrial, Court of Appeal, 29 July 2024 (UPC_CoA_69/2024), Daedalus Prime v Xiaomi, Hamburg Local Division, 18 April 2024 (UPC_CFI_169/2024), Panasonic v Xiaomi, Mannheim Local Division, 8 December 2023 (UPC_CFI_219/2023), Court of Appeal, 25 September 2024, Ortovox v Mammut

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.