Avago Technologies International Sales Pte. Limited v Realtek Semiconductor Corporation
ACT_63549/2024, UPC_CFI_755/2024 [1]
Decision of 9 December 2024, Court of First Instance, Munich Local Division
This decision concerned an application for provisional measures, in particular an anti-anti-suit injunction (‘AASI’), by Avago Technologies International Sales Pte. Limited against the defendant Realtek Semiconductor Corporation.
The circumstances which gave rise to this case were as follows.
Avago is the registered proprietor of granted European patent EP1770912B1, which concerns a particular automotive ethernet standard [2], and was in force only in Germany. This is the patent to which this decision relates.
Avago, the applicant, (or more precisely its predecessor in title) and Realtek, the defendant, had previously concluded a licence agreement which granted Realtek a licence to Avago’s patents, including EP’912, the patent in suit. Subsequently, Avago brought infringement proceedings against a third party who use Realtek’s products in their electric vehicles. The name of the third party is redacted in the decision but it is widely understood to be Tesla.
On 31 October 2024, Realtek brought an action against Avago before the Delaware Court of Chancery, in order to try and shield Tesla from the infringement proceedings. The action included three claims – firstly a claim for breach of the licence agreement in place between the two parties (by having brought infringement proceedings in several German courts against the third party), and also claims to prohibit Avago from pursuing infringement actions in Germany against the third party for infringing SEPs by using Realtek’s products, and prohibiting Avago from enforcing any injunction obtained in Germany against the third party. A request was later made on 7 November 2024 to expedite these proceedings.
In response to this, Avago brought proceedings before the UPC requesting an AASI to prevent Realtek from continuing with the second and third claims of their US proceedings, and from applying for other equivalent measures to prevent enforcement of Avago’s European patent EP’912.
One key statement which the Court made in this case was to explain that “an interference with the property right of the patent proprietor by prohibiting the assertion of his patent right” [3] is also to be regarded as an infringement of the right, therefore “a (foreign) prohibition of proceedings and/or enforcement violates the general European right to justice (Art. 47 EU Charter)” [4].
The Court clarified that the jurisdiction of the UPC to adopt provisional measures follows from Article 32(1) UPCA. This jurisdiction is limited to actions falling within the jurisdiction of the UPC (Article 32(1)(a) UPCA), which includes patent infringement and therefore, for the reasons explained above, this jurisdiction includes anti-suit injunctions (ASIs) and anti-enforcement injunctions (AEIs).
This same reasoning was applied in the Huawei v Netgear [5] decision issued only two days later, and Avago v Realtek was also referenced in the later Nokia v Shanghai Sunmi [6] decision also by the Munich Local Division.
The Court weighed a number of factors when balancing the interests of the parties, all of which were broadly in favour of Avago. Based on this reasoning the Court ultimately decided to award the AASI to Avago.
The Court considered it overwhelmingly likely that Avago’s rights would be infringed in light of the US proceedings, particularly the parts of the claim attempting to prohibit Avago from pursuing infringement actions and enforcing injunctions. The matter was also considered to be urgent both in the sense that Avago had acted with urgency and in that the matter needed to be addressed urgently and couldn’t wait to be referred to proceedings on the merits. It was also considered that the potential for damage was considerably higher for Avago than for Realtek.
The need for urgency and the likelihood of a decision issuing quickly in the US case were also considered to justify the order being made ex parte without hearing from Realtek.
Avago requested that no security be ordered since it was not clear what damage Realtek would suffer as a result of the interim measures, and since obtaining security would significantly delay the proceedings, particularly in light of the case being heard close to upcoming public holidays and due to “internal processes of the applicant” [7].
The Court considered that damage to Realtek could not be ruled out and that any delays caused by Avago’s internal processes were under their own control, and that therefore special circumstances that could justify removing the requirement for security were not demonstrated in this case. Avago had not provided any specific information about the amount in dispute, on which the amount for security is generally based [8]. A security amount of 500,000 EUR was ordered, and the AASI would only be enforceable after Avago provided this.
Avago requested to be permitted to make service of the order through alternative service – in particular by informal post to Realtek’s headquarters and by informal electronic transmission to a provided email address – on the basis that a conventional attempt at service to Taiwan would be “virtually hopeless” [9].
The Court indicated [10] that they had no discretion to authorise alternative service as the primary service method since Rule 275.1 sets out a requirement that an unsuccessful attempt at service must have been made first after which the Court has discretion to allow alternative service.
The decision also refers [11] to a request by Avago for the Court to refrain from setting a time limit for bringing a main action. The Court confirmed that it has no discretion in this regard. Therefore, in accordance with Rule 213.1 of the Rules of Procedure, a period of 31 calendar days or 20 working days, whichever is longer, from the date of service on the respective respondent, was set for Avago to begin the main proceedings, after which “the Court may, at the request of the respondent, order that the present order be set aside or otherwise cease to have effect” [12].
[1] https://www.unifiedpatentcourt.org/en/node/13239, in German
[2] The 1000Base-T1 Automotive Ethernet Standard
[3] Munich Local Division, order of 09.12.2024, CFI_755/2024 – Avago/Realtek, Paragraph 30
[4] Munich Local Division, order of 09.12.2024, CFI_755/2024 – Avago/Realtek, Headnotes Paragraph 2 & see also paragraphs 38-40
[5] Munich Local Division, order of 11.12.2024, CFI_791/2024 – Huawei Technologies Co. Ltd v. Netgear Inc., Netgear International Limited, NETGEAR Deutschland GmbH
[6] Munich Local Division, order of 19.12.2025 CFI_112/2025 – Nokia Technologies Oy et al v Shanghai Sunmi Technology Co., Ltd et al
[7] Munich Local Division, order of 09.12.2024, CFI_755/2024 – Avago/Realtek, Paragraph 19
[8] Munich Local Division, order of 09.12.2024, CFI_755/2024 – Avago/Realtek, Paragraphs 66 & 67
[9] Munich Local Division, order of 09.12.2024, CFI_755/2024 – Avago/Realtek, Paragraph 21
[10] Munich Local Division, order of 09.12.2024, CFI_755/2024 – Avago/Realtek, Paragraphs 69-72
[11] Munich Local Division, order of 09.12.2024, CFI_755/2024 – Avago/Realtek, Paragraph 73
[12] Munich Local Division, order of 09.12.2024, CFI_755/2024 – Avago/Realtek, Note to the Applicant (“HINWEIS AN DIE ANTRAGSTELLERIN”)
Article originally published in The Chartered Institute of Patent Attorneys (CIPA) journal September 2025 issue – UPC extra reporting by Dehns – CIPA