Telefonaktiebolaget LM Ericsson v Motorola Mobility (CFI, 5 February 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 5 February 2025 (UPC_CFI_740/2024, CC_63258/2024, EP 3 780 758), the judge-rapporteur of the Munich Local Division (Judge Pichlmaier) allowed Motorola Mobility’s preliminary objection and rejected as inadmissible the second revocation counterclaim filed by Telefonaktiebolaget LM Ericsson and Ericsson GmbH in Motorola’s second infringement action, since a first counterclaim against the same patent was already pending before the same division. The order settles two useful points: a preliminary objection may be raised against a counterclaim, and the lis pendens rule in Art. 33(2) UPCA applies within a single division.

Question

Can a preliminary objection be raised against a revocation counterclaim, and is a second counterclaim against the same patent between the same parties before the same division admissible?

Decision

The objection was admissible: Rule 19 addresses infringement actions, but the section containing it also covers counterclaims, Rule 48 extends the objection to revocation actions, and equality of arms points the same way (paragraph 1). Art. 33(2) applies a fortiori where the same action is brought twice before the same division, since the Court remains a single court despite its several divisions (Art. 7 UPCA) (paragraph 2). The infringement action continues (paragraph 3) and the costs of the objection are left to the final decision (paragraph 4). An appeal lies under Rule 220.1(a).

Key points for practice

• Practical point: a defendant that has already filed a revocation counterclaim cannot repeat it in a second action before the same division, its arguments belong in the first.

Provisions applied

Agreement on a Unified Patent Court

Art. 7 and Art. 33(2)

Rules of Procedure

Rules 19, 20.1, 25 to 30, 48 and 220.1(a)

Case law cited

CJEU, Case C-199/11

Related decisions

• Motorola Mobility, 8 February 2025, confidentiality order in the second infringement action.

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.