Dolby International AB and Vectis IP Ltd v CPYou B.V., Acer Italy s.r.l. and others, UPC Court of Appeal, UPC-CoA-118/2026, UPC-CoA-119/2026, UPC-CoA-120/2026, 5 August 2026
This is an interesting decision, as it concerns the issue of whether a patent pool administrator (Vectis), admitted into proceedings as an intervener, can then be subject to a FRAND counterclaim by a defendant (Acer) accused of infringement by the patentee (Dolby).
Dolby filed an infringement action against Acer in respect of EP 3 079 153, a patent that was part of the Vectis Opus Patent Pool administered by Vectis. Vectis applied to intervene and Acer requested that Vectis be added as a party pursuant to R. 305.1 RoP. Acer subsequently filed a counterclaim for a FRAND rate determination against both Dolby and Vectis, as well as a revocation counterclaim against Dolby.
The Hague Local Division admitted, by a decision of the JR, Vectis’s intervention and declared that the counterclaim against Vectis was admissible. Dolby and Vectis filed for a panel review of the JR’s order pursuant to R. 333 RoP. The Local Division denied the review, added Vectis “in so far as necessary” as a party on the side of Dolby and granted leave to appeal. Dolby and Vectis then appealed the Local Division’s order.
In this application, Dolby and Vectis requested the CoA to declare that their appeal would have suspensive effect or a stay on the infringement proceedings, the counterclaim for revocation and the counterclaim for FRAND rate-setting, alternatively that only the FRAND rate-setting counterclaim be stayed, further alternatively that only the FRAND rate-setting counterclaim against Vectis be stayed.
They argued, inter alia, that the counterclaim against Vectis did not fall within the scope of Art. 32(1)(a) UPCA and that the Court therefore did not have jurisdiction to hear the counterclaim against Vectis, regardless of what R. 315.4 RoP purported to provide (i.e. that Vectis should be party to the proceedings). Another argument was that proceedings should be stayed pursuant to R. 21.2 RoP, which gives the JR or Court of Appeal discretion to stay first instance proceedings pending an appeal. Acer contended that this was irrelevant to the issue that the Court had to decide, namely whether Vectis as an intervener could be a defendant to a counterclaim, either pursuant to R. 315.4 (re intervention) or 305 RoP (addition of parties). Acer also contended that R. 21.2 RoP did not apply, as there were no exceptional circumstances warranting a stay.
The Court of Appeal held that Dolby’s requests to stay the CFI proceedings were admissible but unfounded. Regarding first the application of R. 21.2 RoP, the general rule was that the main proceedings are not stayed pending the decision of the CoA on an order rejection a preliminary objection. A stay may be granted under exceptional circumstances but there was none in this case. Regardless of the outcome of the appeal to the LD’s order, the CFI would have to deal with Acer’s FRAND defence.
In so far as Dolby and Vectis opposed the international jurisdiction of the UPC over Vectis, neither Dolby nor Vectis has filed a preliminary objection to the relevant order within the one month deadline. It followed from this that the LD The Hague had not ruled on international jurisdiction but only sought to determine whether the counterclaim against Vectis was admissible. That was not manifestly wrong. Consequently, the decision on international jurisdiction could be part of the final decision (in due course) but could not be decided in accordance with R. 20 RoP (decision or order on a preliminary objection).
Dolby and Acer further argued, unsuccessfully, that Acer’s application to add Vectis as a party pursuant to R. 305 RoP had effectively been dismissed by the JR, as the decision had been made on allowing Vectis to intervene pursuant to R. 315. The CoA decided that the LD’s order did not contradict itself: the order was clear that if it was established that admission of Vectis as an intervener was not sufficient to enable a counterclaim to be brought against Vectis then the LD would add Vectis as a party on the side of Dolby pursuant to R. 305 RoP.
In conclusion, the CoA held that there were no exceptional circumstances that would justify an order granting suspensive effect to the appeal.
Regarding the appeal by Dolby for the counterclaim against it to be stayed pending appeal of the LD order, the order under appeal only declared the counterclaim against Vectis to be admissible; it did not contain any ruling on the counterclaim against Dolby. The order therefore did not adversely affect Dolby and Dolby’s appeal was inadmissible. There was no reason to stay the proceedings between Acer and Dolby before LD The Hague.
A copy of the decision can be found here.
