Sun Patent Trust v Roku (CFI, 19 May 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 19 May 2025 (UPC_CFI_59/2025, ORD_16028/2025), panel 2 of the Munich Local Division closed the provisional measures proceedings brought by Sun Patent Trust against Roku, Inc., following the anti-anti-suit and anti-anti-enforcement injunction it had granted ex parte on 28 January 2025 to protect its infringement actions based on two patents essential to the HEVC standard (EP 2 903 267 and EP 3 200 463). As the application had become moot, the Division dismissed it, declared the original order ineffective and ordered Roku to bear the costs. Two points emerge: a party that gives a cease-and-desist undertaking after proceedings have begun is in principle the unsuccessful party, and no prior warning is needed where the defendant has itself started proceedings seeking an anti-suit injunction.

Facts and procedure

Sun Patent Trust sued Roku for infringement before the Munich Local Division (UPC_CFI_254/2024 and UPC_CFI_339/2024), and Roku counterclaimed for revocation. On 31 December 2024 Roku brought an action before the US District Court for the District of Massachusetts including requests for anti-suit and anti-enforcement injunctions (paragraph 3). On 23 January 2025 Sun Patent Trust applied ex parte for provisional measures, largely granted on 28 January 2025 (ORD_4524/2025) and served in the United States on 4 March 2025 (paragraphs 5, 6 and 8). On 5 March 2025 Roku amended its US complaint, deleting prayer (f) (paragraph 9), and at the end of March and on 2 April 2025 gave cease-and-desist declarations backed by penalties, which Sun Patent Trust accepted (paragraph 11). Each party asked for costs against the other (paragraph 12). Parts of the public version are redacted.

The applicable law

The Division applied Rule 360 RoP by analogy to provisional measures applications that have become moot. The finding that the dispute has ended is declaratory (paragraphs 27 to 33). Costs follow Art. 69 UPCA, the unsuccessful party bearing them (paragraph 36), Rule 363 RoP governs the decision ending the proceedings.

Question

Where provisional measures granted ex parte become moot following amendment of the foreign proceedings and a cease-and-desist undertaking, who bears the costs, and does the absence of a prior warning prevent them from being charged to the defendant?

Decision

The dispute ended with the amendment of the US complaint on 5 March 2025, not with the declaration of 2 April. A joint declaration that the matter is closed is not required (paragraphs 32, 54 and 55). The US prayers for relief created a risk of first infringement warranting an injunction. The email of 27 January 2025, being neither clear nor unambiguous, had not removed it, as the US proceedings remained pending (paragraphs 49 to 52). A party giving a cease-and-desist undertaking after proceedings have begun is generally treated as unsuccessful (paragraph 39), Roku’s undertakings matched the order of 28 January, so Roku was the unsuccessful party (paragraph 44). The application was not manifestly unfounded when the dispute ended (paragraph 48), and urgency, which was not contested, was unaffected by the absence of a warning or hearing (paragraphs 56 to 60). A warning was pointless, since the defendant had already asked a court for an anti-suit injunction, and inadvisable given the risk of being pre-empted by a US order (paragraphs 66 to 76). The Division recorded that the matter had ended, dismissed the application, declared the order of 28 January 2025 ineffective, ordered Roku to pay the costs and set the value of the dispute at EUR 1,000,000.

Key points for practice

• A provisional measures application that has become moot is dismissed, with a declaratory finding that the dispute has ended, applying Rule 360 RoP by analogy.
• A defendant that undertakes to cease after proceedings have begun will in principle bear the costs.
• Where foreign anti-suit proceedings are already pending, the patentee may act without a prior warning and without a costs risk on that account.
• Practical point: to avoid costs, the defendant must remove the risk of infringement by a clear and unambiguous waiver in the foreign proceedings, an email is not enough.

Provisions applied

Agreement on a Unified Patent Court

Art. 69(1) to (3)

Rules of Procedure

Rules 118.5, 206, 209.1, 209.2(c), 212.3, 360, 363.1 and 363.2

Case law cited

Meril v Edwards Lifesciences, Court of Appeal, 18 January 2024, Meril v Edwards Lifesciences, Court of Appeal, 4 October 2024, Meril v Edwards Lifesciences, Munich Local Division, 19 December 2023, Stäubli Tec-Systems, Paris Central Division, 16 May 2024, MSG Maschinenbau v EJP Maschinen, Munich Local Division, 11 October 2024, Häfele v Kunststoff Nehl, Munich Local Division, 25 November 2024, Valeo Electrification v Magna PT, Düsseldorf Local Division, UPC_CFI_347/2024, Nokia v Shanghai Sunmi, Munich Local Division, 19 February 2025

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.