Dolby International v HP Deutschland (CFI, 14 May 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By procedural order of 14 May 2024 (UPC_CFI_457/2023, ACT_590145/2023, App_23193/2024), the Düsseldorf Local Division allowed Dolby International to limit the claim in its infringement action on EP 3 490 258 against fifteen HP group companies, concerning computers able to decode the HEVC format: the injunction sought no longer covers cases where any of the claimed means is implemented by a graphics card distributed by NVIDIA Corporation or its affiliates. The Division took the view that the defendants’ application to invite NVIDIA to intervene (App_19914/2024) has thereby become moot.

Question

Is the claimant’s statement that it does not target implementations of the patent by NVIDIA graphics cards a mere clarification or an unconditional limitation of the claim within the meaning of Rule 263.3 RoP, and does it amount to a partial withdrawal with costs consequences?

Decision

Rather than a mere clarification, the statement is a subsequent, unconditional limitation of the claim, which must always be allowed (Rule 263.3 RoP). The original claim covered all HP computers able to decode HEVC files, including those in which only the graphics card enables decoding. The claimant’s tests, carried out with the graphics card disabled, concerned decoding by the processor alone. Whether the limitation is a partial withdrawal with costs consequences under Rule 265 RoP need not be decided at this stage, as the defendants have not shown a legitimate interest within the meaning of the second sentence of that rule. Costs will be dealt with in the decision on the merits (Rule 118.5 RoP).

Key points for practice

• Practical point: a patentee can defuse an application to bring in a third-party supplier by carving that supplier’s products out of its claim, an unconditional limitation is allowed as of right, with costs left to the merits.

Provisions applied

Rules of Procedure

Rules 118.5, 263.1, 263.3 and 265

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.