Motorola Mobility v Telefonaktiebolaget LM Ericsson (CFI, ORD_27411/2024, 6 August 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 6 August 2024 (ORD_27411/2024, UPC_CFI_42/2024, ACT_5326/2024), the Munich Local Division refused Motorola Mobility leave to change its claims, in its action for infringement of EP 3 342 086 against Telefonaktiebolaget LM Ericsson and Ericsson GmbH, so as to add an injunction (Art. 63 UPCA) and corrective measures of recall, definitive removal from the channels of commerce and destruction (Art. 64 UPCA). In the Division’s view, those claims could and should have been made by mid-February 2024 at the latest, leave to appeal was refused.

Question

Can a proprietor asserting a patent in a FRAND context add, while the action is pending, a claim for an injunction and corrective measures that it left out of its statement of claim because it did not want to alert the defendants prematurely?

Decision

No. Rule 263.2 RoP requires the claimant to show both that the amendment could not have been made earlier with reasonable diligence and that it will not unreasonably hinder the other party, the burden lying on the claimant (1). Motorola did not dispute the defendants’ submissions, in particular the injunction it had sought in the United Kingdom on 15 December 2023, so the relevant circumstances were known before the action was brought and nothing new had occurred since (2). The first condition was not met, which sufficed to reject the application. As the case was clear-cut, leave to appeal was not granted.

Key points for practice

• Practical point: in standard essential patent litigation, a proprietor contemplating an injunction should claim it in the statement of claim, a staggered approach to relief runs into Rule 263.2 RoP.

Provisions applied

Agreement on a Unified Patent Court

Arts. 63, 64(1) and (2)(b), (d) and (e) and 73(2)(b)

Rules of Procedure

Rules 220.2, 224.1(b) and 263

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.