BF exaQC v Google (CFI, 19 October 2026)

Dhenne Avocats · 23 October 2026

Our analysis

Summary

By an order of 19 October 2026 (UPC_CFI_2082/2026, counterclaim for revocation UPC_CFI_3644/2026), Tobias Sender, judge-rapporteur of the Mannheim Local Division, ordered under Rule 302.1 RoP the separation of the infringement action brought by BF exaQC AG and ParTec AG against Google LLC and Google Germany GmbH on EP 3 743 812 and EP 3 614 263, together with the related counterclaims for revocation, into two distinct proceedings, provisionally set the value of each of the four proceedings at EUR 750,000 and ordered each side to pay additional court fees of EUR 21,200.

Question

May the Court, under Rule 302.1 RoP, split an infringement action based on two patents asserted against the same products, and with what consequences for the value in dispute, court fees and the date of lodging?

Decision

The action, filed on 11 June 2026 but signed on 24 June 2026, relies on two patents. By an order of 29 September 2026, the judge-rapporteur had given his preliminary opinion that the patents and the related factual submissions were not sufficiently comparable to justify joint proceedings. The defendants requested separation and a value of at least EUR 1,500,000 per action, while the claimants objected that separation would double the costs and that the total value should not exceed EUR 1,500,000. The judge-rapporteur recalls the Court’s discretion to order separate proceedings for patents originally joined in a single action. The two patents feature different claim structures, different priority dates and distinct inventions, so that infringement and the prior art call for separate technical analyses. The fact that both patents are asserted against the same attacked embodiments therefore loses its significance, and the same applies to the counterclaims for revocation filed in the meantime. The Düsseldorf Local Division had ruled in the same way on 8 September 2026 concerning the same patents (UPC_CFI_1815/2026). Separation is ordered for reasons of procedural efficiency and clarity. The value in dispute is provisionally set at EUR 750,000 for each of the two infringement actions and each of the two counterclaims, in line with the Düsseldorf proceedings, subject to later adjustment, in particular when deciding on the defendants’ request for security for costs. The claimants must pay additional fees of EUR 3,300 in the original proceedings and EUR 17,900 in the new proceedings, EUR 21,200 in total, and the defendants the same amounts for the counterclaims. As the Case Management System does not yet allow a case to be split, the claimants must lodge a « new » action limited to EP 3 614 263 and upload the documents already filed, the defendants doing the same for the counterclaim and the statement of defence. The new proceedings are deemed pending from the receipt of the original statement of claim and counterclaim, and the statement of claim is deemed served on the dates of the original service (order, points 6 and 7).

Key points for practice

• Two patents with different claim structures, priority dates and inventions justify separation under Rule 302.1 RoP even where they are asserted against the same products, the identity of the attacked embodiments not being decisive.
• Separation entails a value in dispute and court fees specific to each proceeding, here EUR 750,000 per action and per counterclaim and EUR 21,200 in additional fees for each side, the value remaining open to adjustment.
• The split affects neither the date of lodging nor the date of service, which remain those of the original proceedings, but requires the parties to re-upload in the Case Management System the documents relating to the detached patent.

Provisions applied

Rules of Procedure

Rule 302.1 RoP

Case law cited

Düsseldorf Local Division, 8 September 2026, UPC_CFI_1815/2026

Related decisions

• BF exaQC v Google, 11 August 2026, order of the President of the Court of First Instance changing the language of the same action from German to English.

Prepared by Dhenne Avocats from the official decision, consulted on 23 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.