Dolby International v Roku (CFI, 19 May 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 19 May 2025 (UPC_CFI_58/2025), the Munich Local Division closed the provisional measures proceedings brought by Dolby International against Roku under EP 3 490 258 B1, after Roku had dropped its request for an anti-suit injunction before a US court. The matter having become moot, the ex parte order of 28 January 2025 ceased to have effect, but Roku was ordered to bear the costs and the value in dispute was set at EUR 1,000,000.

The decision is useful on two counts: it confirms that Rule 360 applies to provisional measures, and it holds that no prior warning letter is needed to avoid costs where the opponent has already asked a foreign court for an anti-suit or anti-enforcement injunction.

Facts and procedure

Dolby sued Roku for infringement before the Munich Division (UPC_CFI_235/2024), and Roku counterclaimed for revocation. On 31 December 2024, Roku filed an action before the US District Court for the District of Massachusetts including prayers for relief aimed at preventing Dolby from pursuing or enforcing the UPC proceedings. Seised on 23 January 2025 without Roku being heard, the Division largely granted the application for anti-anti-suit measures on 28 January 2025. After service of the order in the United States on 4 March 2025, Roku amended its US complaint on 5 March, deleting one of the prayers at issue and altering the other, and then gave a cease-and-desist undertaking accepted by Dolby. Dolby declared the matter settled. Roku argued that it had become moot earlier.

The applicable law

The Division applied Rule 360 (closure of an action that has become devoid of purpose) and, as to costs, Art. 69 UPCA, under which the unsuccessful party bears the costs unless equity requires otherwise. It noted that proceeding ex parte is a matter of discretion (Rules 209.1 and 209.2(c)) and that review follows Rule 212.3.

Question

Where provisional measures become moot because of the defendant’s conduct, who bears the costs, and must the applicant have sent a prior warning letter?

Decision

Rule 360 applies to provisional measures (paragraphs 29 to 31), closure does not in itself make the applicant the unsuccessful party, the German wording being read in light of the English and French versions (paragraphs 33, 37 and 55). On costs, the Division assessed summarily, as at the date of the event that made the matter moot, the admissibility and merits of the application (paragraphs 47 and 48). The US prayers created a first-time risk of infringement, which Roku’s email of 27 January 2025, lacking any clear and binding abandonment, had not removed (paragraphs 49 to 52). The decisive event was the amendment of the US complaint on 5 March 2025 (paragraphs 53 to 55).

Urgency was established, and the absence of a hearing or prior warning did not affect it (paragraphs 56 to 62). A warning letter was unnecessary: a party that has already sought an anti-suit injunction would be unlikely to drop it on receipt of a letter, and the risk of such a measure being obtained first made a warning inadvisable (paragraphs 64 to 76). Roku therefore bore the costs.

Key points for practice

• Rule 360 allows provisional measures proceedings that have become moot to be closed, the earlier order then ceasing to have effect.
• A cease-and-desist undertaking given after the application is filed will ordinarily make the applicant the successful party for costs purposes (paragraphs 35 to 40).
• Faced with an anti-suit injunction request already pending abroad, the patentee may act without a prior warning letter without being exposed to costs.
• Practical point: to avoid costs, the defendant must abandon the foreign measure clearly and bindingly, a position merely stated in an email is not enough.

Provisions applied

Agreement on a Unified Patent Court

Art. 69

Rules of Procedure

Rules 118.5, 206, 209, 212.3, 360 and 363

Case law cited

Edwards v Meril, Court of Appeal, UPC_CoA_2/2024, Meril v Edwards Lifesciences, 19 December 2023, Stäubli, Paris Central Division, 16 May 2024, UPC_CFI_372/2023, MSG Maschinenbau v EJP Maschinen, 11 October 2024, Häfele v Kunststoff Nehl, 25 November 2024, Valeo Electrification v Magna PT, Düsseldorf Local Division, UPC_CFI_347/2024, Nokia v Shanghai Sunmi, 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.