Unified Patent Court (UPC) case tracker
UPC case tracker
We have developed a tool to provide an overview of the most noteworthy decisions issued by the Unified Patent Court (UPC) since its inception. This tool serves as a central resource for patent owners, in-house counsel, and practitioners who want to follow how the UPC’s decisions are shaping patent litigation across Europe.
The tracker, which can be filtered by division, (legally qualified) judge, type of proceeding and issue, provides users with an accessible view of how important procedural and substantive issues are being handled across the Court. It includes the decisions that we think offer useful guidance and meaningful discussion on important points of law. Inevitably, the list of decisions will not be complete and the summary will omit certain important details. However, for each case you can download the full judgment to read it in detail.
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Infoblox v Nixu FL IP Protection [UPC_CFI_360/2026]
June 2026Parties
Case and decision number
UPC_CFI_360/2026
Judges
Stefan Schilling
On 8 June 2026, the Hamburg Local Division partially granted the Defendants’ preliminary objection under r.19.1(a) RoP concerning the UPC’s international jurisdiction over a US-based defendant in respect of infringement in a non-UPC member state, in this case, the UK.
The Claimant alleged infringement of the same European patent in Germany, France, Finland and the UK by three defendants, a US parent company and two German entities. Although the Defendants did not dispute jurisdiction against the German entities, it argued that for the US defendant, the Claimant failed to plead sufficient facts to establish jurisdiction. The Court accepted that it had jurisdiction over all three Defendants by virtue of both Art. 7(2) BR and Art. 8(1) BR with respect to the German, French and Finnish designations. However, the Claimant failed to plead sufficient facts with respect to the US defendant regarding the UK national designation, that could only be obtained under Art. 8(1) BR, i.e. via an anchor defendant. The Court firstly acknowledged that it did in principle have jurisdiction that could cover acts in non-UPC and non-EU territories (Kodak v Fujifilm). However, under Art. 8 BR, the place and effect of the infringing acts of the anchor defendants, in this case the German entities, are relevant. The Claimant must plead a close connection based on joint or coordinated infringement of the same national part of the patent in that specific country. In this case, the Claimant failed to allege any facts showing the US entity and the anchor defendants jointly infringed the UK designation of the patent. The Court therefore dismissed the action against the US defendant insofar as it concerned the UK national part of the patent, while maintaining jurisdiction for Germany, France and Finland.
Fujifilm v Kodak [UPC_CoA_312/2025, UPC_CoA_333/2025, UPC_CoA_880/2025, UPC_CoA_882/2025]
June 2026Parties
Case and decision number
UPC_CoA_312/2025, UPC_CoA_333/2025, UPC_CoA_880/2025, UPC_CoA_882/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
The UPC Court of Appeal’s 2 June 2026 decision in Fujifilm v Kodak provides extensive clarifications as to how the UPC will approach long arm claims based on national designations of European patents in non-UPC territories. The decision sets out a structured framework for handling invalidity objections and comity where infringement claims are brought based on extra territorial EP designations. Our rapid reaction article summarises the framework in more detail. The court also confirmed that Art. 34 UPCA does not confine the UPC’s competence to its own territory but drew an important distinction between accepting jurisdiction and exercising it.
This distinction lies at the heart of the judgment. The court made clear that, where jurisdiction is established under Art. 4 Brussels I bis (BR) because the defendant is domiciled in a contracting member state, that jurisdiction cannot be declined on forum conveniens type grounds, even where the dispute concerns the acts of that defendant in a non-member state. At the same time, the court emphasised that exercising that jurisdiction over non UPC designations requires the application not only of the relevant national patent law, but also principles of international law including comity. This enables the UPC to maintain a broad jurisdictional reach while tempering its practical exercise through procedural mechanisms.
The Court developed a structured framework for how such cases should be managed, distinguishing between different scenarios depending on the status of the patent in the UPC territory, focussing its guidance on issues of validity. Where a revocation claim arises in respect of non UPC designations, the UPC must decline jurisdiction over validity. Where, however, an infringement action is pursued and the patent in the UPC territory is considered invalid, the court should generally invite the patentee to withdraw extra territorial claims and, depending on the designation, may stay proceedings or dismiss them. Of particular practical importance is the situation where the patent is considered valid and infringed in the UPC territory. In that case, the court may grant relief in respect of non UPC designations on a conditional basis, subject to a subsequent finding of validity by the competent national court.
This “conditional relief” mechanism reflects an attempt to reconcile the UPC’s broad jurisdiction with the constraints of art. 24(4) BR and analogous provisions, as well as broader comity concerns. It allows the UPC to avoid undue delay in granting relief, while ensuring that its orders fall away if the competent national court subsequently finds the patent invalid.
The decision also provides helpful clarification on a number of procedural and substantive issues which are likely to be of wider application. First, the court confirmed that the UPC’s extra-territorial jurisdiction extends to allegations of joint tortfeasorship, consistent with its earlier case law, although liability must still be established under the applicable national law for the relevant acts. Secondly, the court addressed private prior use, confirming that such rights under Art. 28 UPCA are governed by national law, here German law for the German designation. Thirdly, the court gave guidance on the UPC’s front loaded procedure, holding that parties may submit additional evidence in support of an already pleaded case where earlier evidence has been challenged, without offending the procedural rules.
On the facts, the court ultimately overturned the injunction awarded at first instance in relation to the UK designation not for lack of jurisdiction, but because the infringement case failed under its view of the applicable national law on joint tortfeasance and the pleaded factual basis. outcome underlines an important practical point. Establishing UPC jurisdiction over extra territorial designations is only the first step. A patentee must still prove infringement under the relevant national law and against the correct entity, and must do so within the framework of the UPC’s case management approach to validity challenges and comity.
Finally, the decision also contains important reminders on claim construction. The court rejected the existence of any general rule that numerical ranges in claims should automatically be interpreted as including manufacturing or measurement tolerances. Whether such tolerances are incorporated remains a matter of interpretation in the specific context of the patent. This reinforces the court’s broader emphasis on a careful, context driven approach to claim interpretation, grounded in the skilled person’s understanding and the patent as a whole.
Taken together, the judgment represents a significant step in the development of UPC jurisprudence on long-arm jurisdiction. It confirms that the UPC will take a permissive approach to accepting jurisdiction over long arm claims, anchored in the BR, while developing a pragmatic and structured approach to exercising that jurisdiction.
Tiru v Valinea & Maguin [UPC_CFI_130/2025]
May 2026Parties
Case and decision number
UPC_CFI_130/2025
Judges
Camille Lignieres
Carine Gillet
Rute Lopes
On 29 May 2026, the Paris Local Division (LD) handed down its decision in Tiru v Valinea Energie (UPC_CFI_130/2025). The decision concerned Tiru’s patent EP 3 178 578 (EP 578), which relates to technology implemented in a waste incineration furnace. Valinea Energie (Valinea), a company within the Veolia group, operates the accused waste treatment facility in Montbéliard, France. The second defendant, Maguin, manufactures the combustion chamber of the furnace alleged to infringe the patent.
Prior to commencing infringement proceedings, Tiru applied in December 2024 for evidence preservation measures and on-site inspections against both Valinea and Maguin. On 23 December 2024, the LD granted the applications ex parte and authorised the requested measures. In February 2025, Tiru filed infringement actions against Valinea and Maguin. Veolia, Valinea’s parent, filed a revocation action before the Paris Central Division (CD) in May 2025, and in June 2025, both defendants to the infringement action filed counterclaims for revocation of EP 578. Earlier, in May 2025, V. The LD subsequently bifurcated the revocation counterclaims, however, to the CD. In March 2026, the Paris Central Division upheld EP 578 in amended form.
Before the LD, Tiru asserted that the defendant’s waste incineration furnace infringed EP 578 either literally or by equivalents.
A significant aspect of the decision concerned the court's approach to the assessment of infringement following the CD’s validity decision. The LD emphasised that a consistent approach should be adopted between validity and infringement. Where a patentee argues during validity proceedings that a claimed feature cannot be assumed to be present in the prior art absent a clear and unambiguous disclosure, the same patentee bears the burden in infringement proceedings of proving that the feature is present in the accused product in a clear and unambiguous manner.
The Court's analysis focused in particular on the EP 578's requirement for "cooling air". EP 578 requires the presence and circulation of cooling air whose function is to cool combustion products by direct contact within the combustion chamber. Tiru argued that the accused furnace's "secondary air" system constituted the claimed cooling air. The defendants contended that the secondary air was instead used to treat carbon monoxide and did not perform the patented cooling function. The Court adopted the CD's interpretation of "cooling air" and referred to the reasoning of both the CD and earlier Board of Appeal decision. In particular, the Court noted that in these proceedings three prior-art documents had not been found to disclose the claimed cooling-air feature because such a function was not clearly and unambiguously disclosed. Applying the same logic in the infringement context, the Court held that the mere presence of secondary air in the downstream portion of the furnace did not establish that it performed the claimed cooling function. As Tiru had failed to prove that the secondary air cooled combustion products within the meaning of the patent, the Court concluded that the cooling-air features of the asserted claims were not literally reproduced.
Tiru also alleged infringement by equivalents. In assessing that argument, the court applied the four-step test previously adopted by The Hague Local Division in Plant-e v Arkyne, namely: (i) technical equivalence; (ii) fair protection for the patentee; (iii) reasonable legal certainty for third parties; and (iv) novelty and inventive step of the accused variant over the prior art. The court held that Tiru failed at the first stage. Because TIRU had not established that the accused furnace employed cooling air as required by the patent, it could not show that the accused variant performed substantially the same function or solved substantially the same technical problem as EP 578. Consequently, infringement by equivalents was not established.
As a result, the Court concluded that the claims of EP 578 were not infringed by the defendants’ product.
The decision also addresses an evidentiary challenge brought by Valinea. Valinea sought to exclude the report prepared by the independent expert who supervised the evidence preservation measures and on-site inspection. It argued that the expert's impartiality was compromised because he held a preparatory meeting with Tiru's representatives before the inspection, despite the seizure order did not expressly provide for such a meeting. Tiru argued that the challenge was inadmissible because it should have been raised before the Judge responsible for authorising the evidence preservation measures. The LD rejected that procedural objection and held that challenges concerning the execution of seizure measures and the probative value of the expert's report fall to be determined by the panel hearing the merits, rather than by the Judge who authorised the measures. On the merits, however, the court rejected Valinea's challenge. It held that preparatory discussions with the applicant were necessary to organise the practical implementation of an ex parte inspection and did not call the expert's impartiality into question.
Ericsson v Transsion [UPC_CFI_1570/2025]
May 2026Parties
Case and decision number
UPC_CFI_1570/2025
Judges
Dirk Böttcher
On 26 May 2026, the Judge-Rapporteur of the Mannheim Local Division (LD) issued an order on a precautionary preliminary objection raised by the Transsion defendants concerning the scope of Ericsson's FRAND-related claims.
The case forms part of broader multi-divisional SEP enforcement by Ericsson against the Transsion group, with parallel infringement actions pending before The Hague LD and the Paris Central Division. Ericsson's statement of claim before the Mannheim LD contained a FRAND Specific Condition that injunctive relief and related remedies were sought only on the condition that Transsion did not, within two weeks of a finding of infringement, commit to entering into a cross-licence on terms either matching Ericsson's July 2025 offer or on terms determined by the UPC to be FRAND-compliant. The FRAND Specific Claims seeking a declaration that Ericsson's July 2025 offer was FRAND, or alternatively a court-determined FRAND rate, were filed exclusively before The Hague LD, with Ericsson expressly reserving the right to bring them before the Mannheim LD only if The Hague did not adjudicate on them.
The Transsion defendants raised a precautionary preliminary objection, arguing that if the FRAND Specific Claims or the FRAND Injunction were considered to be pending before Mannheim, the UPC lacked jurisdiction to determine them. They also requested the Court to confirm that no preliminary objection deadline had been triggered in the Mannheim proceedings by Ericsson's reservation.
The Judge-Rapporteur confirmed that no ruling on the merits of the objection was required, since the precautionary scenarios on which it was based had not materialised. The FRAND Specific Claims were not pending before the Mannheim LD, and the FRAND Specific Condition did not constitute a request for a FRAND determination by that division as it was a condition attached to the injunction, not a freestanding claim for declaratory relief. The question of whether such a conditional injunction was procedurally permissible was expressly left open for the merits panel. The precautionary objection was nonetheless noted on the record should the merits panel take a different view and costs were reserved to the main proceedings.
Microsoft v Suinno [UPC_CoA_21/2026]
May 2026Parties
Case and decision number
UPC_CoA_21/2026
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 22 May 2026, the Court of Appeal issued a decision by default against Suinno Mobile & AI Technologies Licensing Oy, dismissing its appeal against the Paris Central Division's revocation of EP 2 671 173 in its entirety. The decision serves as a reminder of the consequences of non-compliance with security for costs orders.
By way of background, Suinno had brought an infringement action against Microsoft before the Paris Central Division (CD). Microsoft counterclaimed for revocation. The infringement action was dismissed by default in July 2025 after Suinno failed to provide court-ordered security for costs. The CD subsequently revoked the patent in full and ordered Suinno to bear Microsoft's costs of the counterclaim proceedings. Suinno appealed that revocation decision.
On 7 April 2026, the Court of Appeal ordered Suinno to provide security for Microsoft's costs of the appeal in the amount of €600,000 within three weeks and expressly notified Suinno that a decision in default could be given if security was not provided within the set time period. Suinno applied to have that order set aside, but the application was rejected on 28 April 2026. Suinno then failed to provide any security within the required period, prompting Microsoft to apply for a decision by default.
The Court of Appeal granted the application and clarified the procedural framework in doing so. A decision in default can be given pursuant to r. 355.1 RoP if a party fails to take a step with the applicable time limit and, subject to an assessment of the balance of interests, the Court can exercise its discretion to give a decision in default without examining the merits of the action. However, under r. 355.2 RoP, a decision by default against a defendant requires the claimant to establish that the facts justify the remedy sought. The rules apply equally to appeal proceedings and the Court confirmed that, for the purposes of r. 355.2, the appellant is treated as the claimant in appeal proceedings as it is the appellant who seeks the remedy of setting aside the decision below. It follows that where an appellant defaults, r. 355.2 RoP does not apply and the respondent is not required to file a statement of response or present facts in support of the first instance decision. To require otherwise would defeat the purpose of security for costs as the respondent would incur further expense whilst facing exactly the risk of non-recovery the security order was designed to prevent. The Court stated that “It is only under exceptional circumstances that the Court may derogate from this general rule.", and Suinno advanced no reasons to justify such an exception.
Suinno remains liable for Microsoft's costs of the appeal proceedings, in addition to the €350,000 costs order arising from the infringement proceedings.
Occlutech v Lepu Medical [UPC_CFI_553/2025]
May 2026Parties
Case and decision number
UPC_CFI_553/2025
Judges
Sabine Klepsch
Stefan Schilling
Samuel Granata
On 20 May 2026, the Hamburg Local Division (LD) ordered penalty payments of EUR 58,800 against two defendants for non‑compliance with a final order. The order for payment follows a preliminary injunction granted in October 2025 in favour of Occlutech GmbH, in which the defendants, Lepu Medical, were prohibited from offering, placing on the market or using (or importing or storing for those purposes) certain braided occlusion devices in a number of countries (Germany, France, Italy, The Netherlands and Ireland). The injunction was reinforced by a penalty of up to €250,000 per individual case of non‑compliance pursuant to r. 354.3 RoP. The applicant subsequently requested the ordering of penalty payments, alleging that the defendants continued to offer the occlusion devices via the defendants’ own website, a third‑party B2B marketplace and via direct communications.
The LD held that the defendants had failed to demonstrate full and permanent compliance with the injunction. It reiterated that the burden of proof lies on the defendant to show that a penalty-reinforced order has been complied with in full, and that an obligation to refrain from an act includes taking all reasonable and feasible measures necessary to eliminate any continuing disturbance created by the (alleged) act of infringement.
In relation to the defendants’ own website, the Court found that the offer of the infringing product on the website, which was accessible in Germany, constituted an “offering” within the meaning of Art. 25 UPCA. The presentation of the product under its commercial name, the description of technical features and medical indications, and the presence of an “Enquire now” function were sufficient, even in the absence of pricing information. The defendants explained that a disclaimer had been added to their website but had later been removed by a third party responsible for updating their website. The Court rejected this defence, holding that the defendants had acted negligently and remained responsible at all times for the content of their website.
The Court took a similar approach to the use of the third‑party B2B marketplace, which was a platform designed for medical manufacturers and distributors to showcase their expertise in the industry. It was undisputed that the defendants had created and supplied the content for the listing, and the Court held that geo‑blocking of purchase options alone was insufficient where the injunction separately prohibited offering and placing on the market. Further, despite a disclaimer that the device was not available in certain countries being present on the product page, the Court held that it was not sufficient as it was contradicted by other elements of the website including the fact that the product page was automatically translated into German and the Applicant’s counsel were able to send a request via the online form available on the page. This led to correspondence between the Applicant’s counsel and the second defendant’s key account manager which further gave the impression that the products were sold in Europe without restriction.
In setting the amount of the penalty, the Court took into account the nature, scope and duration of the non‑compliance and the absence of proven sales in the relevant territories. The main act of non-compliance, namely the disclaimer‑free presence of the product on the defendants’ website for 91 days, justified a daily penalty of €500. A lower daily penalty of €100 per day was applied to the B2B marketplace listing, reflecting the presence of a disclaimer. The Court also imposed a recurring daily penalty for any future non‑compliance and ordered the defendants to bear the costs of the enforcement proceedings, with the value of the enforcement proceedings set at 10% of the value of the proceedings for provisional measures.
Samsung v ZTE [UPC_CFI_189/2025]
May 2026Parties
Case and decision number
UPC_CFI_189/2025
Judges
Peter Tochtermann
Dirk Böttcher
Carine Gillet
In an unprecedented move, the Judges in the Mannheim Local Division (LD) of the UPC have issued an order in Samsung v ZTE, which sets out two alternative settlement proposals ($640 million for a licence terminating on 31 December 2028 OR $730 million for a licence terminating on 31 December 2029) and a third option of mediation before the new Patent Mediation and Arbitration Centre (PMAC) of the UPC. The parties are ordered to provide comments on the settlement and PMAC proposals by 31 May 2026.
This extraordinary order follows three nearly simultaneous decisions of Courts in the UK, Germany and China relating to the dispute between Samsung and ZTE as to the terms of global FRAND cross-licence. As previously report here on 5 May, the High Court of England and Wales set a lump sum of $392 million in its judgment of 1 May 2026. A judgment of the Chongqing Court, also dated 1 May 2026 and made publicly available shortly afterwards, found $731 million for a six year term was FRAND. Finally, a judgment of the Munich Regional Court (MC) (dated 30 April but not made publicly available until 6 May 2026) suggests that $640 million for a five year term would be FRAND. All sums are balancing payments to be made in favour of ZTE.
The final numbers starkly illustrate the different approaches of the Courts to rate setting. Significantly, the ZTE-Apple (2020) licence which played a key role in the UK judgment, was not considered by Munich or Chongqing to be relevant. Whilst the UK judgment recognised (and made adjustments for) non-FRAND factors in this licence, the Chongqing Court dismissed it as a comparable on the basis of “serious financial difficulties” faced by ZTE in the years leading up to the licence; including negative cash-flow in 2018 and 2019. MC noted that it was a contract “concluded under special circumstances”.
All of the decisions are notable and represent developments within their respective jurisdictions. In particular, the MC goes far beyond the traditional approach of German Courts when assessing a FRAND defence to an injunction. In previous decisions, the German Courts have emphasised that it is not the place of the Court to set FRAND terms as this is a matter for the parties. However, in order to assess whether an implementer benefits from a FRAND defence the Court has considered whether the patentee's licensing offer falls within a FRAND "corridor". In ZTE v Samsung the Court found that ZTE's offer was within the FRAND corridor and as such Samsung's defence to an injunction failed. Unexpectedly, the MC then (having noted the dangers in doing so) made its own assessment of a sum at which the parties should settle (namely $640 million).
Further analysis of these lengthy judgments will follow; however, it now appears that the Courts of both Munich and the UPC have joined China and the UK in being prepared to set, or at least suggest, FRAND terms in SEP disputes.
Yangtze v Micron [UPC_CFI_1034/2025, UPC_CFI_931/2026]
May 2026Parties
Case and decision number
UPC_CFI_1034/2025, UPC_CFI_931/2026
Judges
Ronny Thomas
On 11 May 2026, the Düsseldorf LD issued an order in the ongoing proceedings between Yangtze Memory Technologies (Yangtze) and Micron Technology (Micron). Yangtze is suing Micron for infringement of EP 3 909 047, which relates to advanced semiconductor memory technology.
Yangtze sought to introduce a report by the independent source TechInsights on the operation of the challenged embodiment (the Report) to support its case on infringement. In parallel US proceedings between the same parties, Yangtze’s US counsel had entered into an agreement with TechInsights to allow US counsel to use the Report for the purpose of substantiating infringement of the US equivalent of EP 047. However, the agreement prohibited Yangtze’s US counsel from disclosing the content of the Report to Yangtze itself, in order to comply with US expert restrictions.
Yangtze therefore sought a confidentiality order preventing it from gaining access to the contents of the Report, therefore ensuring that its counsel would comply with the provisions of the agreement with TechInsights.
The LD found that in line with previous UPC case law, a party can be granted a confidentiality order “against itself” provided there is a legitimate interest in such an order. In this case, Yangtze had a legitimate interest in being able to introduce the Report into proceedings without risk under US export control restrictions. Yangtze had also not sought to limit the number of natural persons from Micron’s side who could have access to the document, such that the order was limited to the minimum extent necessary. It was also permissible for Yangtze to exclude all natural persons on its own side from the confidentiality club, r. 262A.6 RoP is not a mandatory provision.
The LD therefore granted the requested confidentiality order.
Avient v Xingi [UPC_CFI_ 478/2025, UPC_CFI_ 585/2026]
May 2026Parties
Case and decision number
UPC_CFI_ 478/2025, UPC_CFI_ 585/2026
Judges
Margot Kokke
On 11 May 2026, The Hague Local Division (LD) issued its decision on an application for an order to produce documents under r.190 RoP brought by Avient Protective Materials (Avient) in its ongoing proceedings against the Xingi Group (Xingi). The proceedings relate to EP 2 791 402, which protects certain forms of polyethylene yarn and products comprising it, such as bulletproof panels, helmets and vests.
Avient requested samples of six different types of fabrics made from Xingi’s allegedly infringing yarn to test whether they fell within the claims of the asserted patent, as well as Xingi’s internal testing results on the same. Avient also requested production of a video clip which it alleged was directed to European buyers as purported evidence of infringing acts, but which had been removed from Xingi’s website.
Noting that considerable quantities of material (30 kg per sample) would be needed for testing, and that only one positive result would be needed to justify the measures requested in the infringement action, the LD partially granted the application, ordering Xingi to produce just two of the fabric types requested. However, the LD refused to order Xingi to produce the internal testing results on the grounds that Xingi had submitted that the internal testing was not carried out under the conditions specified in the patent.
Yealink v Barco [UPC_CFI_2265/2025]
May 2026Parties
Case and decision number
UPC_CFI_2265/2025
Judges
Samuel Granata
Petri Rinkinen
Mélanie Bessaud
On 7 May 2026, the Brussels LD issued a cost decision under r. 150 RoP arising from Preliminary Injunction (PI) proceedings (UPC_CFI_582/2024) and related appeal proceedings (UPC_CoA_317/2025 and UPC_CoA_376/2025) concerning EP 3 732 827. Barco’s PI requests had been dismissed at both instances for lack of urgency. However, Barco had been successful in challenging the competence issues advanced by Yealink as a preliminary objection at first instance and as a cross-appeal. Yealink sought a total of €237,257.84 in costs; Barco argued the net amount payable should be €72,000.
The Court confirmed Yealink as the successful party overall, while accepting that Barco was entitled to raise its own costs for successfully defending the competence challenges as a defence in the cost proceedings — without needing to file a separate application — on grounds of procedural efficiency and consistency with Art. 41(3) UPCA. The Court held that Barco's earlier concession that Yealink was the "successful party" at first instance did not amount to a waiver of its right to seek compensation for those costs: waiver requires an explicit statement from the rights-holder.
On the costs ceiling, the Court accepted the undisputed first instance ceiling of €112,000 but reduced the appeal ceiling by 50% to €66,000, drawing on Guideline 5(b) of the Administrative Committee's Guidelines on recoverable costs, which provides that PI proceedings should be valued at 66% of the merits value, and balancing that against Barco's prior acceptance of the full ceiling at first instance. The Court rejected Barco's argument that a single ceiling of €112,000 should apply across both instances, finding that approach would effectively award nothing for the appeal. However, the LD allowed a further set-off against the total ceiling of €178,000 for some of Barco’s legal representation costs and other hearing costs, based on Barco’s partial success challenging the competence arguments.
The LD dismissed Yealink's claim for simultaneous interpretation costs. The LD held that engaging an interpreter through the court mechanism under r. 109.2 RoP preserves recoverability; instructing one independently does not. Travel and hotel costs were allowed in full.
Ottobock v MedEnvoy [UPC_CFI_1928/2025]
May 2026Parties
Case and decision number
UPC_CFI_1928/2025
Judges
Bérénice Thom
Ingo Rinken
Peter Agergaard
On 7 May 2026, the Düsseldorf LD refused Ottobock’s application for provisional measures concerning EP 3 001 984, finding that neither urgency nor infringement was established with the requisite degree of certainty. The application, filed in December 2025, was dismissed in its entirety, with costs awarded against the applicant.
On infringement, the Court was not persuaded that the respondents’ microprocessor controlled prosthetic knee implemented the claimed method. In particular, it was not satisfied that the accused system met the requirement to compare detected parameters of the appliance with criteria stored in a computer unit reflecting a natural movement pattern of climbing stairs. The Court therefore concluded that it “could not establish whether claim element 1.2(b) had been met”, which was sufficient to defeat the application for provisional measures.
The Court also found that urgency was not demonstrated. It reiterated that “the applicant bears, in principle, the burden of proof regarding the acquisition of knowledge of the existence of the contested embodiment, the potential infringement and its prompt clarification”, and that the relevant period extends from the time at which the applicant becomes aware of the potentially infringing product until all facts and evidence necessary to substantiate the infringement are obtained.
The Court emphasised that urgency may be undermined not only by actual knowledge but also by constructive knowledge. In particular, awareness by the applicant of the potentially infringing product must be assumed if, “according to conventional understanding and the ordinary course of events, the applicant should have been aware of the potentially infringing characteristics”. Once aware of the product, the applicant is under a duty to pursue technical clarification expeditiously.
On the facts, the applicants had been aware of public product launches, trade fair presentations and marketing activities since the first half of 2025. The Court considered that Ottobock had not convincingly explained why procurement and technical investigation were not initiated sooner, particularly given the availability of information and trained specialists within its own supply network. In those circumstances, the Court could not exclude that the claimant waited too long to file the application, with the result that urgency was not established. Provisional measures were therefore refused on this basis also.
Ericsson v AsusTek [UPC_CFI_757/2024, UPC_CFI_439/2025]
May 2026Parties
Case and decision number
UPC_CFI_757/2024, UPC_CFI_439/2025
Judges
Rute Lopes
Samuel Granata
Petri Rinkinen
On 6 May 2026, the Lisbon LD found that Ericsson had successfully established infringement of its Wi-Fi related patent EP 2 819 131 against AsusTek.
The case concerned laptops and notebooks incorporating Intel Wi‑Fi 6 and Wi‑Fi 6E modules. Ericsson alleged that AsusTek infringed through its various European‑facing websites. AsusTek counterclaimed for revocation and denied infringement, arguing both that the patent was invalid and that it was not responsible for the relevant acts relied upon by Ericsson.
A procedural point addressed at the outset was whether AsusTek had a legal interest in pursuing a counterclaim for revocation given that the patent had expired before the counterclaim was made. Ericsson argued that the counterclaim should be dismissed on that basis. The Court rejected this argument, holding that where an infringement action concerns acts occurring prior to expiry and the possibility of retroactive damages arises, a defendant retains a legitimate legal interest in seeking revocation.
On the merits, AsusTek’s extensive validity attacks failed. Although the patent as granted was found to contain added matter, that deficiency was overcome by Ericsson’s first auxiliary request. The Court rejected all novelty and inventive step objections based on the cited prior art, and therefore dismissed the counterclaim for revocation in its entirety. AsusTek’s technical non‑infringement arguments were also unsuccessful.
The Court then considered acts of infringement via websites and sub‑domains. AsusTek, which is the parent company of the ASUS group, argued that it could not be liable for offering or placing infringing products on the market for two reasons. First, the global website (www.asus.com) was not located in the UPC territory and did not include pricing or offer products for sale. Second, although AsusTek owned the local sub-domains for each country, it did not exercise operational control over the content of those local sites; the content of those pages was the responsibility of a local affiliate instead.
The Court rejected both arguments. In Belkin v Philips, the CoA decided that an offer is to be understood in an economic sense and not purely as a legally binding contractual offer. The presentation of products on www.asus.com in a manner that allows customers to inform themselves and proceed to acquisition was sufficient to constitute an offer, even if no price is shown and no direct purchase mechanism is provided.
The Court also found that the owner of a sub‑domain is responsible for the content of that sub‑domain, as “enterprises are liable for the acts of their representatives”. Therefore, AsusTek could not disclaim responsibility for infringing offers made through websites it owned, even if day‑to‑day management was delegated to affiliates.
The Court held that AsusTek was liable to Ericsson for damages, with the quantum to be determined in separate proceedings. Despite that bifurcation, the Court ordered AsusTek to provide detailed information on the quantities of infringing products sold and the prices obtained. Rejecting AsusTek’s argument that such disclosure should await the damages phase, the Court held that Art. 67 UPCA expressly permits an information order even where damages are to be assessed separately, since such information is necessary to enable proper calculation of damages. AsusTek was ordered to provide the information within ten weeks, backed by a coercive penalty for non-compliance.
Topsoe v SYPOX [UPC_CFI_1696/2025]
May 2026Parties
Case and decision number
UPC_CFI_1696/2025
Judges
Ronny Thomas
Jule Schumacher
Peter Agergaard
In an Order dated 4 May 2026, the Düsseldorf Local Division (LD) dismissed challenges to both the impartiality of the Court appointed experts and to the underlying ex parte inspection and evidence preservation order concerning Topsoe A/S’s patent EP 3 802 413 relating to a plant for producing hydrogen.
The Court held that neither the alleged overreach during the inspections nor the scope and depth of the experts’ technical analysis gave rise to a justified concern of bias when assessed from the perspective of a knowledgeable and reasonable observer. Doubts as to impartiality or independence are justified if a knowledgeable and reasonable observer concludes that there is a likelihood that the expert’s decision will be influenced by factors other than their duties to the Court.
The content of the experts' opinion as such is not sufficient to raise doubts as to the expert’s impartiality. Even a flawed report or a lack of expertise does not make the expert's appear biased. Rather, there must be additional circumstances that suggest an unobjective attitude.
The respondents (SYPOX GmbH and Josef Kerner Energiewirtschafts-GmbH) were highly critical of the experts’ approach, including arguing that the experts had demonstrated an impermissible tendency to incriminate and an arbitrary approach to inspection, in particular by inspecting installations said to fall outside the wording of the operative part of the order and by securing large volumes of data disproportionately. The respondents also relied on the fact the experts attempted access to the private smartphone of the managing director of the first respondent notwithstanding the fact the director did not have a company phone.
The Court rejected those arguments, noting that experts enforcing inspection measures must often take real time decisions and that disagreements as to the correct interpretation or application of an order, even if they later prove to involve errors of judgement, are not sufficient without more to undermine neutrality or independence. The Court rejected the argument of an unjustified data harvest, acknowledging the experts’ point that an individual examination of all files on site had been practically impossible. Since the classification of files often depends not only on the file name but also on the storage location within the folder structure, a backup preserving the structure was carried out, with the evaluation of its contents taking place at a later stage.
On the parallel review application under r. 197.3 RoP, the Court confirmed that the lawfulness of an ex parte inspection and preservation of evidence order must be assessed as at the date it was made. Against that background, it held that the asserted dual use capability of the inspected installations and the subsequent filing of a nullity action did not undermine the original order.
While the Court maintained a previously imposed requirement for security in the amount of EUR 500,000 in relation to any future opening of the reactor, on the basis that such an intervention carried a risk of irreversible damage, it rejected broader requests for additional security (of 2,000,000) or the appointment of a technical judge.
It also confirmed that the costs incurred by the experts in responding to the bias challenge form part of the inspection costs payable by the applicant. The order underscores the high threshold for successfully challenging experts' impartiality before the UPC and the Court’s reluctance to interfere with ex parte inspection measures on review absent clear and objective indications of error or partiality.
AIM v TGI [UPC_CFI_214/2023]
April 2026Parties
Case and decision number
UPC_CFI_214/2023
Judges
Petri Rinkinen
Samuel Granata
Mélanie Bessaud
On 29 April 2026, the Helsinki LD dismissed AIM Sport Development AG’s infringement action and TGI’s counterclaim for revocation in proceedings concerning EP 3 295 663, which protects a method for digitally overlaying one image onto another. The LD held that the patent was valid but not infringed by TGI’s digital overlay system (SVB), whether literally or by equivalence, and accordingly rejected all relief sought by each party.
On validity, the LD upheld the patent against attacks based on added matter, novelty and inventive step. It emphasised that the claimed invention lay in detecting occluding objects based on an intrinsic image property of those objects (e.g. pixel brightness) rather than in identifying the billboard itself by reference to a light or signal signature. On that basis, the LD concluded that the subject matter neither extended beyond the application as filed nor was disclosed or rendered obvious by the prior art, which instead focused on identifying the billboard rather than the occlusion.
On infringement, the LD found that TGI’s SVB system detects the billboard using infrared signatures and threshold values that are characteristics of the billboard itself, rather than image properties of occluding objects within the meaning of method claim 12. That feature was central to the claimed invention, and its absence meant that the SVB System did not infringe on a literal construction.
The LD also rejected infringement by equivalence. Applying the criteria set out by The Hague LD in UPC_CFI_239/2023, it held there was no technical equivalence between the claimed solution and the SVB system. The SVB system detects billboard pixels using infrared signatures not an intrinsic image property of an occluding object, and therefore it operates in a different technical context from the patent. To extend the protection of the patent by equivalence in this way would go beyond the limits of the claims as drafted. Since the equivalence criteria are cumulative, the LD did not consider the remainder.
Given the finding of non-infringement by the SVB system, all requests relating to TGI’s new AI-based technology AIR System, which was trained on the use of the SVB system, were also rejected.
Stratasys v BambuLab [UPC_CFI_305/2026]
April 2026Parties
Case and decision number
UPC_CFI_305/2026
Judges
Margot Kokke
Mojca Mlakar
Robert van Peursem
On 24 April 2026, The Hague LD handed down an order in respect of an application for provisional measures by Stratasys against BambuLab. The dispute concerned BambuLab’s 3D printer (referred to as H2C), which was launched at a trade fair in Frankfurt in November 2025. Announcements about H2C had been made in other territories, e.g. the US, in August 2025. Following these announcements, Stratasys conducted a test purchase of the H2C printer, which was received in December 2025. Testing was undertaken by Stratasys and completed by late January 2026. The application for provisional measures was filed seven days later, alleging indirect infringement of EP 2 964 450 (the Patent).
In December 2025 (i.e. prior to the filing of the application for provisional measures), BambuLab started revocation proceedings against the Patent in the Paris Central Division.
The Patent relates to a method for extrusion-based additive printing of 3D parts using multiple print heads, focusing on how purge operations are handled during such printing. Claim 1 was construed such that a purge tower (i.e. a ‘tower’ of material built up of successive layers of purged material) was deemed to completely replace the conventional purge station, allowing for fully automated printing. In support of this construction the LD cited the patentee’s submissions during prosecution of the Patent. In particular, Stratasys had added the phrase “in a layer by layer manner” to the claims, which BambuLab successfully argued would be understood to refer to the creation of a new horizontal layer with each purge operation, consisting of only one type of material. The Bambulab device distributed purged material at different places in the same plane rather than stacking it.
While the LD was not convinced by Bambulab’s argument that the H2C printer could not infringe because it was “priming” and not “purging”, the narrow construction arising from submissions made by the patentee during prosecution meant that the LD deemed it more likely than not that the Patent would not be infringed by H2C as it did not reproduce the layer by layer printing of a purge tower whereby each layer consists of one type of material.
As this defence was sufficient for the LD to reject the application for provisional measures, no other arguments were addressed. However, the LD indicated that if needed it would have considered that in the circumstances the application was filed without unreasonable delay. The parties agreed that Stratasys would pay BambuLab €112,000 in costs after the LD indicated that the value of the dispute would be set at €1 million.
Quantificare v Canfield [UPC_CFI_559/2024, UPC_CFI_106/2025]
April 2026Parties
Case and decision number
UPC_CFI_559/2024, UPC_CFI_106/2025
Judges
Jule Schumacher
Peter Agergaard
Ronny Thomas
On 23 April 2026, the Dusseldorf Local Chamber held that a patent owned by Quantificare was valid and infringed by US company Canfield Scientific through its EU subsidiaries. Quantificare’s patent related to stereophotogrammetry devices and methods using predefined capture distances for different image formats (e.g. face and body imaging). In addition to considering in detail the technical infringement and validity of the patent, the Court gave important guidance concerning the territorial scope of relief in respect of a basket of European Patents where on EP territory has been ‘carved out’ to avoid conflict with parallel national proceedings.
Earlier German national proceedings had concluded that infringing acts had taken place in Germany. Quanitificare relied upon those acts notwithstanding that its UPC action ‘carved out’ any relief in respect of Germany itself. The Court confirmed that establishing an infringing act in a single Contracting Member State is sufficient to justify injunctive relief covering all Member States where the patent is in force, even where the claimant has procedurally carved out that state from the infringement action and granted multi‑territorial relief covering Belgium, France, Italy and the Netherlands on the basis of the German acts.
The decision confirms the broad interpretation of Art. 34 UPCA previously adopted by the Munich Local Division (LD) but is in contrast to the narrower approach taken by the Paris LD in Seoul Viosys decision where it considered relief should only be granted for territories where the patentee had shown that acts of infringement were taking place.
It will, therefore, be interesting to see what the Court of Appeal (CoA) will make of those contrasting positions as and when a suitable case arrives at its door.
Advanced Standard Communication LLC v Xiaomi [UPC_CFI_617/2025]
April 2026Parties
Case and decision number
UPC_CFI_617/2025
Judges
Daniel Voß
Georg Werner
Rute Lopes
On 23 April 2026, the Munich LD dismissed an application by Advanced Standard Communication LLC (ASC) for panel review of the Judge-Rapporteur’s Order requiring it to provide €300,000 security for costs in its infringement action against Xiaomi concerning an SEP. Xiaomi had sought security on the basis that ASC appeared to have no valuable assets, no apparent financial reserves, no revenue stream, and no physical office space, and appeared to be a “simple shell company”, such that any costs order might not be recoverable.
ASC resisted the application on three main grounds. First, it said that Xiaomi had failed to prove that its financial position was weak, pointing in particular to its patent portfolio, which it said was a valuable asset. Second, it argued that Xiaomi’s own FRAND security – a bank guarantee provided in connection with Xiaomi’s compulsory licence / FRAND defence – was itself an asset available to satisfy any costs order. Third, it relied on the possibility of ATE insurance, noting that it was in the process of obtaining such insurance following the CoA’s recent confirmation in Syntorr v Arthrex (previously reported here) that ATE insurance may, in principle, obviate the need for security in the form of a cash deposit or bank guarantee.
The Judge-Rapporteur was not persuaded and found that ASC’s financial position gave rise to a real and legitimate concern that any costs order might not be recoverable. The patent portfolio was not shown to have concrete value. The FRAND security was not an asset of ASC as it had been provided as security for potential licence payment obligations towards ASC and to avoid an injunction claim asserted by ASC. It therefore could not be treated as a general fund against which Xiaomi could recover costs. As for ATE insurance, none was yet in place, and ASC had not shown that such cover would in any event be sufficient.
On review, the panel upheld the Judge-Rapporteur’s order, re-affirming the CoA set principle that once a defendant presents credible reasons for concern the burden shifts to the claimant to show why in fact no security is necessary. The LD confirmed that in the present case the FRAND security did not relieve ASC of the separate obligation to provide security for costs. FRAND security was not an asset available to ASC, nor something against which Xiaomi could set off a costs claim. The panel also agreed that ASC’s financial position was weak, it had no proven business activity beyond holding and asserting patents, no shown revenue, and no demonstrated assets beyond an unvalued patent portfolio. ATE insurance did not assist either given that ASC had not actually obtained one. The panel further confirmed that even where ATE insurance exists, the court must assess its terms on a case-by-case basis.
Nokia v Geely [UPC_CFI_1291/2026]
April 2026Parties
Case and decision number
UPC_CFI_1291/2026
Judges
András Kupecz
Peter Tochtermann
The UPC continues to provide anti-suit relief in FRAND actions where it considers its jurisdiction may be compromised by the grant of interim licence applications in other Courts. In the UPC, Nokia is pursuing SEP infringement actions against Chinese car manufacturer, Geely. In response Geely initiated rate-setting proceedings in a parallel action before the Hangzhou Court in China and applied for a worldwide “interim licence” by way of a preservation order.
The judgment notes Nokia’s submission that Geely applied to the Chinese Court for its interim licence application to be classified as confidential and, accordingly, little information on it is set out in the UPC’s judgment. However, relying on an affidavit from Nokia’s Chinese legal representatives, the Mannheim LD concluded there was a risk of a similar order being granted by the Hangzhou Court as was given in Huawei v Conversant and therefore Nokia’s ability to enforce its patents before the UPC could be severely hampered with significant monetary penalties if it breached the Order.
The Mannheim LD held that Geely’s application for a global interim licence constituted, in substance, an anti‑suit injunction directed at preventing Nokia from exercising its right to seek and enforce injunctions before the UPC. The procedural enforceability of patent rights, including access to the UPC, was found to be an inherent element of the patent right itself, protected by Art. 47 of the Charter of Fundamental Rights of the EU, Art. 6 of the ECHR (Right to a fair trial) and the Enforcement Directive (2004/48/EC).
Michelin v Goodyear [UPC_CFI_138/2025, UPC_CFI_522/2025]
April 2026Parties
Case and decision number
UPC_CFI_138/2025, UPC_CFI_522/2025
Judges
Carine Gillet
Camille Lignieres
Stefan Johansson
On 16 April 2026, the Paris LD revoked Compagnie Générale des Etablissements Michelin’s European patent EP 2 323 858 B1 (EP 858) in its entirety and dismissed Michelin’s infringement action against three Goodyear group companies. The case involved allegations that Goodyear’s Fuelmax D Endurance and Fuelmax D GEN‑2 tyres infringed claims 1, 3 and 13 of EP 858, which relates to a multi-stage tyre tread with a variable surface area. Goodyear denied infringement and counterclaimed for revocation, with the dispute turning on novelty over a single piece of prior art.
The decisive prior art was Japanese patent application JP 2001/063323, referred to as ‘Kunugi’, which was cited in the specification of EP 858 as disclosing the preamble of claim 1. The Court found that Kunugi directly and unambiguously disclosed all structural features of the claimed tyre tread, including the allegedly characterising longitudinally alternating arrangement of lateral grooves. On that basis, claim 1 was held to lack novelty.
A key aspect of the decision was the Court’s clear articulation of the limited role that technical effects can play in the novelty analysis of a product claim defined by structural features. Michelin sought to distinguish Kunugi by arguing that, although similar in appearance, the claimed tread achieved different technical effects, including improved water drainage, controlled exposure of grooves during wear, and specific stiffness characteristics. The Court rejected these arguments, emphasising that where a product claim is defined by its structural features, novelty depends on whether those features are disclosed in the prior art, not on the technical problem addressed or the effects said to result from them. Differences in purpose, optimisation, or performance were therefore irrelevant if the same structure was already made available to the skilled person.
The Court’s reasoning underscores a strict approach to novelty under the EPC framework, now applied in the UPC context. It confirms that patentees cannot rescue a structurally anticipated product claim by recharacterising the invention through the lens of technical effects, unless those effects are reflected in additional limiting structural features of the claim itself. The decision highlights the risk of relying on unclaimed effects where the prior art discloses a similar physical configuration.
In construing the claims, the Court considered issues such as the meaning of “tread element” and the correct method for measuring the spacing between lateral sipes, but concluded that, on any construction advanced by Michelin, Kunugi disclosed the same structural arrangement. The Court also confirmed that written technical statements from company employees, while lacking the value of independent expert evidence, could nevertheless be taken into account as technical information when assessing the disclosure of the prior art. Once claim 1 was found to lack novelty, all dependent claims fell with it. Michelin did not advance substantiated arguments to support the independent validity of claims 2 to 14 in the event that claim 1 was revoked, and those claims were therefore also revoked. The Court further rejected all 14 of Michelin’s conditional auxiliary requests, finding that none overcame the lack of novelty over Kunugi and that several either introduced added matter or lacked an inventive step.
The Court dismissed the infringement action in its entirety, revoked EP 858 with effect in France, and ordered Michelin to bear the costs of the proceedings. The decision provides a clear early indication of the UPC’s willingness to dispose of cases on novelty grounds where a single prior art document discloses the claimed structure, and serves as a reminder that, for product claims, technical effects will only assist if they are translated into distinguishing structural limitations.
BMS v BYD [UPC_CFI_2070/2025]
April 2026Parties
Case and decision number
UPC_CFI_2070/2025
Judges
Carine Gillet
The Paris LD has decided that it has no jurisdiction over a defendant domiciled in a third country (i.e. not UPC or EU), where that defendant is not alleged to have committed any act of infringement within the territory of the EU.
BMS Innovations brought infringement proceedings against multiple BYD group entities domiciled in the Netherlands, France, Germany as well as China and the UK. The Chinese and UK defendants raised a preliminary objection under r.19 RoP, challenging the UPC’s international jurisdiction, particularly in relation to alleged infringing acts in the UK. The Court confirmed that the preliminary objection was admissible and decided, despite the Claimant’s request for one, to rule without holding an oral hearing.
In considering jurisdiction over the Chinese defendants, the court noted that they were accused of infringing acts within the EU as well as the UK. The Court decided that the claims against them were closely connected to those against the EU‑domiciled defendants, creating a potential risk of irreconcilable judgments if proceedings were split. In those circumstances, the Court considered it appropriate and expedient to hear the claims together. However, rather than finally determining jurisdiction at this stage, it held that the question of the UPC’s international jurisdiction over these defendants for alleged UK acts should be examined by the full panel in the decision on the merits.
The position in relation to the UK defendant was different. The only acts of infringement alleged against this defendant had occurred exclusively in the UK. The Court found that jurisdiction could not be based on Art.4 Brussels I bis (domicile), Art. 7(2) (place of harmful event), or Art. 8(1), as there was no connecting factor with the territory of the EU or the UPC creating a risk of irreconcilable judgments. The Court also rejected the defendants’ alternative request to refer questions on “long‑arm” jurisdiction to the CJEU, finding no need for a preliminary ruling. Accordingly, the Paris LD held that it had no international jurisdiction over the UK defendant and upheld the preliminary objection in relation to the UK defendant.
Suinno v Microsoft [UPC_CoA_21/2026]
April 2026Parties
Case and decision number
UPC_CoA_21/2026
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 7 April 2026, the CoA reaffirmed that a request for Security of Costs (SoC) may be made against an appellant, regardless of the party’s status as a claimant/defendant in first instance proceedings. However, it refused to exercise its discretion to stay ongoing appeal proceedings pending payment of an earlier costs order. This decision follows numerous others in the litigation between the parties: Suinno Mobile & AI Technologies Licensing Oy (Suinno) and Microsoft Corporation (Microsoft).
Suinno initiated an infringement action against Microsoft before the Paris CD, whereupon Microsoft lodged a counterclaim for revocation. Suinno failed to pay the SoC ordered by the CD in respect of Suinno’s claim, and Microsoft therefore requested, and ultimately obtained, a decision by default from the CoA. Following this final dismissal of the infringement action, Suinno also failed to pay Microsoft’s awarded costs. The revocation counterclaim continued, however, in which the Court found in favour of Microsoft. Again, Suinno was ordered to pay Microsoft’s costs. Suinno appealed the revocation decision, and this appeal was ongoing at the time of the judgment.
By way of an application in the appeal proceedings, Microsoft sought: (i) SoC for the appeal; (ii) a stay of the appeal proceedings pending payment of SoC for the appeal and payment of the costs associated with first instance proceedings.
The Court reaffirmed that Art. 69(4) UPCA permits an order for security for costs only against the “applicant”, defined as the party initiating the relevant proceedings finding that the specific terms of Art. 69(4) UPCA took precedence over the more general provisions in r. 158.1 RoP. Because, however, it is the appellant who initiates appeal proceedings, then that appellant is the applicant for the purposes of Art. 69(4) UPCA, with the result that the respondent is entitled to seek security for costs in the appeal. If both parties lodge an appeal, each party may only request SoC in respect to the costs of the other party’s appeal. This also applies in the case of a cross-appeal. The Court confirmed that this principle applies even where the respondent was the claimant at first instance, subject only to a narrow exception where the defendant can show a manifest error in the first instance decision.
The Court was guided by the principle that a party who is not involved in proceedings on their own initiative should be protected from difficulties in enforcing a claim for reimbursement of costs. Applying this principle, the Court held that Microsoft’s request for SoC was admissible insofar as it related to costs to be incurred in the appeal proceedings, and then granted the application for security. In terms of the substance of the application, the Court attached significant weight to the fact that Suinno had failed to pay the substantial costs previously ordered in the infringement proceedings and had not put forward evidence to dispel concerns about its financial position. The Court also rejected Suinno’s argument that the conclusion of the infringement action rendered the counterclaim for revocation, and related procedural requests, inadmissible, noting that a counterclaim has an autonomous existence. The Court drew an inference from r. 265.2 RoP, under which the withdrawal of an action by the claimant shall have no effect on any counterclaim in the action.
The Court also concluded that once a costs decision has been issued for incurred costs at first instance, a request for security in respect of those costs is no longer permissible.
By contrast, Microsoft’s application for a stay of the appeal proceedings until Suinno had satisfied the outstanding infringement costs award was rejected. In the Court’s view, the proper administration of justice did not require a stay: it emphasised the UPC’s commitment to expeditious proceedings and the principle that a party’s financial difficulties, without more, do not justify halting proceedings. The Court considered that the protection afforded by an order for SoC was generally sufficient, and that the possibility of additional costs being incurred before security was provided did not warrant a stay. However, the Court did grant a limited extension of time for Microsoft to file its statement of response, pending payment of the further awarded SoC.
SharkNinja v Groupe SEB [UPC_CFI_ 1594/2025]
April 2026Parties
Case and decision number
UPC_CFI_ 1594/2025
Judges
Marjolein Visser
Camille Lignieres
Carine Gillet
On 10 April 2026, the Paris LD issued a decision dismissing SharkNinja’s application for provisional measures in respect of EP 3 689 198, having concluded that it was more likely than not that the patent lacked novelty. The application had originally been brought on the basis of two patents covering SharkNinja’s popular “Foodi” range of cooking devices, but one of them, EP 3 689 201, was withdrawn during the written phase of the proceedings. The decision forms part of a wider dispute between the parties, who are direct competitors in the small kitchen appliances market, with related UPC litigation already pending between them with SEB as claimant.
The Court’s novelty analysis was notable for its focus on implicit disclosure. The decisive issue was not whether Chinese Utility Model CN202312830U (CN 830) explicitly disclosed every element of the claim, but rather whether there was implicit disclosure of a particular component. The component in question, a fan, was not itself expressly discussed in the citation, but was deemed inherently necessary to support the air fryer functionality that the art disclosed. The Court reiterated that, for novelty purposes, a feature may be disclosed not only expressly but also implicitly, where the skilled person would “inevitably and without reasonable doubt” derive it from the prior art.
Applying that approach, the Court accepted that CN 830 disclosed all of the claimed features, including “all the essential elements” for an air frying mode, even though the document did not explicitly mention an air frying mode (or the necessary fan). The presence and orientation of an electric motor in the figures were sufficient, in the Court’s view, to lead the skilled person to conclude that a fan must necessarily be present, since there was no technically plausible alternative explanation for the presence of the motor. That implicit disclosure of the fan was decisive, because it underpinned the finding that the prior art anticipated the claimed air frying functionality.
The decision also provides useful guidance on interim costs awards. Following the withdrawal of one of the patents and the dismissal of the application on the other, SharkNinja was treated as the unsuccessful party overall. Deciding only on interim costs for the withdrawn patent, the Court first reiterated the principle set out by the CoA in Meril v Edwards that interim costs awards will generally be capped at 50 per cent of the applicable ceiling of recoverable costs for the case as a whole, meaning that a maximum of EUR 150,000 could be awarded. The Court then also took account of the fact that no oral hearing had taken place for the withdrawn patent (and thus no hearing-related costs had been incurred), and applied a further reduction in costs, granting SEB an interim award of EUR 120,000.
Establishment Labs S.A. v G C Aesthetics and ors [UPC_CFI_1357/2025, UPC_CFI_629/2026]
April 2026Parties
Case and decision number
UPC_CFI_1357/2025, UPC_CFI_629/2026
Judges
Marije Knijff
Samuel Granata
Carine Gillet
On 14 April 2026, the Brussels Local Division (LD) handed down an order under r.190 RoP requiring Establishment Labs S.A (LABS) to produce a range of evidence, including soft tissue implant samples and various technical and regulatory documents, within 21 days, following a successful application made by GC Aesthetics.
LABS brought a patent infringement action against a number of GC Aesthetics companies, and one of its distributors (collectively, GCA), in November 2025, alleging infringement of its patent EP 3 107 487 by GCA’s manufacture and sale of its Perle implant. GCA consequently brought a counterclaim for invalidity, including an allegation of prior use based on LABS’ own breast implant. GCA consequently made a reasoned request for LABS to provide related evidence within LABS’ control under r.190 RoP.
The Court considered that GCA had met various factors which an applicant needs to show on a prima facie basis under a r.190 application:
- Has the requesting party put forward reasonably available evidence supporting its case?
- Has the requesting party specified the evidence sought?
- Is the other party’s confidential information able to be protected?
- Are the requirements of proportionality, equity and fairness satisfied?
GCA had presented “reasonably available and plausible” evidence to prima facie support that the evidence requested would prove its assertions for all but one category of documents (post-priority date samples). LABS had not contested “specifically or in detail”. The threshold by which an applicant’s requested evidence is required in order to assist them to conclusively prove their assertions is “considered to be low”.
The question of whether the evidence fell within LABS control only applied to the requests for samples. Whilst LABS claimed that it had no pre-priority date samples in its possession in line with its internal policies, the Court was mindful of the absence of sanctions for a party’s failure to comply with its obligation under r.284 RoP not to “misrepresent cases or facts”, and that there was a lack of evidence of said policy and proof of actual sample destruction. The Court, of its own volition, therefore ordered LABS to produce two witness statements from duly authorised officers specifically stating the actual unavailability of the samples.
The Court imposed a confidentiality club, as GCA had proposed, limiting visibility of any confidential information to independent experts and one natural person of GCA, plus GCA’s legal team.
The decision confirms that an applicant under r.190 RoP can submit an application at any stage of the proceedings, including prior to the Reply to the Defence and Counterclaim, where it is clear which facts need to be proven and what is in dispute. LABS claimed a number of GCA’s requests were too broad but failed “to put forward detailed arguments which limitation of the requested information would suffice”. Preference was therefore given to GCA’s actual requested measures, as LABS could mitigate its burden in complying with the order i.e. if it declared that its own implants were publicly available pre-priority date.
21 days was considered a proportionate timeframe for providing the evidence, with the Court noting that it would be procedurally efficient for LABS to have already made “the necessary preparations to comply with the order from the date the Application was introduced” i.e. 20 March 2026. LABS was also ordered to produce a witness statement from a duly authorised officer or person acquainted with the facts to confirm the provisions of the order had been complied with in full, and that any redactions applied by LABS related only to irrelevant information.
Fisher v Flexicare [UPC_CFI_480/2025]
April 2026Parties
Case and decision number
UPC_CFI_480/2025
Judges
Andrea Postiglione
Anna-Lena Klein
On 10 April 2026, the Milan Central Division (CD) revoked Flexicare (Group) Limited’s unitary patent EP 4 185 356 following a revocation action brought by Fisher & Paykel Healthcare Limited. The patent concerned a nasal cannula with a swivel connection intended to improve patient comfort. The Court held that claim 1 as granted lacked novelty over WO 2015/193833 (D2), and that none of the auxiliary requests could rescue the patent, either because they also lacked novelty or because they lacked clarity.
The Court reiterated previous guidance on claim interpretation under Art. 69 EPC and its accompanying Protocol. In particular, it emphasised that any feature in a patent claim must be interpreted in light of the claim as a whole (Court of Appeal (CoA) in VusionGroup v Hanshow), and that embodiments in the description will generally not limit the scope of the claims (Munich LD in Brita v AQUASHIELD). Finally, the Court reaffirmed that claim construction is a matter of law for the Court, rather than for party-appointed experts.
The patentee argued for a narrow construction of claim 1 to avoid the novelty attack. For example, claim 1 required a swivel connection with “an axis of rotation configured to be substantially normal to a face of the user”. The patentee contended that this limited the swivel connection to a single plane of rotation, arguing that nowhere does the description suggest a multi-axis rotational arrangement. However, the Court rejected this construction given there was no explicit limitation in claim 1. The Court also held that although a gas tube is referred to in claim 1 (“a connector for attaching a gas tube to the manifold”) this was merely a purpose feature and so the gas tube was not required. A broad construction was also applied to D2, with the Court assessing components by their technical function, and not their label.
Applying these broad constructions, the Court found that D2 directly and unambiguously disclosed all features of claim 1. In reaching this conclusion the Court stated that if “one way of ‘mapping’ [the prior art onto the claim] leads to the assessment that a piece of prior art is novelty destroying, this leads to the result that the patent must be revoked”.
The patentee’s first auxiliary request was admitted but also failed for lack of novelty.
Auxiliary requests 2 to 13 all failed for lack of clarity under Art. 84 EPC. These requests introduced a feature of an aperture which “fluidically connects the gas tube to the manifold”. The Court found that this introduced ambiguity as to whether the gas tube had become a mandatory component of the claim. Finally, the Court found no implicit request to maintain the patent on the basis of the dependent claims, as the patentee neither defended their validity nor restructured them once claim 1 fell. The Court emphasised that it is for the patentee, not the Court, to formulate and formally restructure amended claims that could survive revocation, and that dependent claims cannot be salvaged in the absence of a clear amendment request that complies with Art. 84 EPC.
Valeo v Bosch [UPC_CFI_1963/2025]
March 2026Parties
Case and decision number
UPC_CFI_1963/2025
Judges
Camille Lignieres
Carine Gillet
Art. 33(1)(b) UPCA provides that “An action may be brought against multiple defendants only where the defendants have a commercial relationship and where the action relates to the same alleged infringement”.
In Valéo v Bosch, an infringement action before the Paris Local Division (LD), the Bosch defendants challenged the judge-rapporteur’s February decision to accept jurisdiction in relation to all defendants. The judge-rapporteur had refused permission to appeal but Bosch filed an application for review within 15 days in accordance with r. 333.2 RoP, arguing that: (i) the required “commercial relationship” must exist individually between the so-called anchor defendant and each other defendant, and (ii) the requirement that the action concern “the same alleged infringement” necessitates identity of accused products or processes across all defendants. The review application was ruled admissible by the LD but dismissed on the merits.
The LD’s decision sets out a broad interpretation of Art. 33(1)(b), with the LD concluding that the provision is satisfied “where all the defendants belong to the same group of companies, and where the respective activities of each of the defendants are related and pursue the same objective, namely the research and development, manufacture, sale and distribution of the same products or the same range of products”, with no requirement that the products alleged to infringe are identical across all the defendants or that each defendant has a “special commercial relationship" with the anchor defendant. The LD noted that this flexible interpretation avoids “a proliferation of parallel proceedings and the risk of conflicting decisions”. However, recognising the legal significance of the issues raised concerning the interpretation of Art. 33(1)(b), it granted leave to appeal.
Amazon v InterDigital [UPC_CoA_12/2026]
March 2026Parties
Case and decision number
UPC_CoA_12/2026
Judges
Peter Blok
Emmanuel Gougé
Ulrike Voß
On 30 March 2026, the CoA overturned a decision of the Mannheim Local Division (LD) that had refused Amazon permission to produce a private transcript of an oral hearing in proceedings UPC_CFI_936/2025 between Amazon and InterDigital.
Following an oral hearing on 14 November 2025, Amazon applied under r. 115 RoP for access to the audio recording and permission to engage a professional stenographer to assist in producing a transcript. The judge-rapporteur granted access to the recording but refused the transcription request, holding that r. 115 RoP did not permit private transcripts and expressing concerns about accuracy, misuse in foreign proceedings, and the risk to open judicial exchange. A full panel of the LD upheld that decision on review.
The CoA disagreed, holding that r. 115 RoP does not prohibit the preparation of a private transcript. The Court was further persuaded by the Drafting Committee's (DC) commentary following the 16th draft of the RoP which expressly noted that parties are free to take notes or arrange for a private transcript to be made. The Court also rejected the suggestion that by analogy, Art. 85 of the CJEU RoP should be seen as indicating that a restrictive approach should be taken by the UPC, noting that the DC adopted only limited aspects of the CJEU provision.
The Court confirmed that the transcript need not be prepared by the party or representative personally: support staff such as a stenographer may assist, provided they work in the presence and under the supervision of the entitled person, and are bound by any applicable confidentiality order. The audio recording remains the authoritative record; if a transcript's accuracy is disputed, the recording prevails.
As to use, private transcripts may be deployed in UPC proceedings and, in certain conditions, in related parallel proceedings in other jurisdictions, provided they are clearly marked as private, non-authoritative documents and include an express statement that judicial observations during the hearing are provisional.
EOFlow v Insulet [UPC_CoA_930/2025]
March 2026Parties
Case and decision number
UPC_CoA_930/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
This decision concerned EOFlow’s request for an order that certain information on the extent to which it had committed acts of infringement of Insulet’s patent be designated as confidential and withheld from public inspection.
Although it does not have direct effect under EU law, the TRIPS Agreement (in particular, Art. 39(2)) is a relevant source of law on which the UPC shall base its decisions (Art. 24(1)(d) UPCA) and therefore to consideration of whether information is a trade secret. Under TRIPS, the classification of information as a trade secret requires that (a) the information is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) the information has commercial value because it is secret; and (c) the information has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.
There was no evidence that the relevant information was kept secret through protective measures taken by the parties. The Court rejected EOFlow’s argument that information provided to Insulet during an obligation to render accounts could only be used for the purposes of pursuing their claims for patent infringement and therefore had not become publicly available. Citing the decision of the Court of Appeal in Kodak v Fujifilm (UPC_CoA_699/2025, decision of 14 October 2025, para. 45) the Court held that there is no such implicit limitation.
Since the information was disclosed to Insulet without an order pursuant to r. 262A RoP, or without any other restriction (such as an agreement or voluntary undertaking), it lost its character as confidential information.
Ecovacs v Roborock [UPC_CoA_3/2026]
March 2026Parties
Case and decision number
UPC_CoA_3/2026
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
The Court of Appeal has upheld the revocation of an order obtained ex parte by Ecovacs against Roborock for inspection of robot vacuum cleaners at a trade fair. The Düsseldorf Local Division had revoked the order in its entirety, concluding that Ecovacs presented an incomplete and misleading factual picture in its application.
Ecovacs’ application stated that the trade fair was its only opportunity to secure evidence of Roborock’s manufacturing and supply activities because Roborock operated from Hong Kong and sold through European affiliates. However, this was inconsistent with facts submitted in Ecovacs’ parallel infringement action, which provided evidence that Roborock directly sold the allegedly infringing products to German customers via an Amazon webstore. The evidence sought could, therefore, have been obtained through ordinary test purchases, a significantly less intrusive route than the inspection ordered.
The Court agreed that the omissions and inconsistencies were not mere clerical errors or insignificant in nature but were material facts that were of central importance to the decision whether to allow the request. Furthermore, the errors could not be compensated for via later submissions made in response to the request for review.
The Court also rejected Ecovacs’ suggestion of a CJEU referral, to clarify the scope of “relevant evidence” obtained pursuant to Art. 7 of Directive 2004/48. The issue under consideration was not the notion of relevant evidence but the applicant’s duty to disclose material facts which might influence the Court in determining whether to make an order without hearing the Defendant. Furthermore, the envisaged preliminary ruling would not concern the interpretation or validity of EU law, since the RoP are procedural rules that can be equated with national procedural laws.
The decision provides a reminder that applicants must disclose any material fact that might influence the court when it is being asked to proceed without hearing the defendant (r.192.3 RoP) and that where less intrusive means exist, particularly through straightforward test purchases, attempts to justify an ex parte inspection will face close scrutiny.
Dolby v Beko [UPC_CFI_135/2024, UPC_CFI_477/2024]
March 2026Parties
Case and decision number
UPC_CFI_135/2024, UPC_CFI_477/2024
Judges
Ronny Thomas
Jule Schumacher
Margot Kokke
The Düsseldorf Local Division’s (LD) application of the Huawei v ZTE factors has clarified how that LD of the UPC intends to approach the framework. The judges treated the CJEU’s sequence as a structure to be followed by the parties, rather than a sequential checklist. It was reaffirmed that the SEP holder’s initial notification (Step 1) must be sufficiently detailed to put the implementer on notice of a potentially essential patent and that such a notice does not need to prove essentiality in advance. Once that threshold is met, the implementer must react in a timely and unambiguous manner that signals a genuine willingness to take a licence on FRAND terms rather than mere “lip service” (Step 2).
The UPC looked at the underlying competition law principles, finding that a SEP holder (in this case, for the Opus codec) holds a dominant position under Art.102 TFEU, as the end consumer (here, purchasers of smart TVs) would expect their TVs to work with all common codecs.
As regards Step 2, the implementer must do more than express abstract willingness. Its conduct must support its assertion that it is willing to take a FRAND licence. The LD left it an open question as to whether such a declaration could be made after injunctive proceedings had begun. The LD did not need to resolve this question, because it found that Beko had not made such a declaration of willingness in its defence, as Beko’s ‘willingness’ was justified on the grounds that it already had a licence to the AAC standard.
When assessing the Huawei v ZTE steps, the relevant factors are keeping open the possibility of a FRAND agreement. A breakdown in negotiations caused by the implementer’s lack of cooperation can expose that implementer to a finding of unwillingness. In this case, Beko did not respond to a letter containing claims charts for over 2 months prior to proceedings being brought.
Another consideration, although ultimately not decided by the LD, was whether the Huawei v ZTE framework should be adapted in a situation where the SEP holder had not made a FRAND declaration in relation to a standard (although the LD did note that this does not change the position under competition law and the SEP holder would still be subject to Art.102 TFEU). The SEP holder had not been involved in the development of the standard, and the pool in relation to the standard was set up at a later stage (the Opus standard itself was developed as open source).
Ultimately, Beko was found to have not complied with Step 2 so the rest of the framework was not analysed. On the technical side, the patent in dispute was found to be valid, standard-essential and infringed and an injunction was ordered.
SPT v Vivo [UPC_CoA_904/2025, UPC_CoA_905/2025]
March 2026Parties
Case and decision number
UPC_CoA_904/2025, UPC_CoA_905/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
On 16 March 2026, the CoA handed down its decision in Sun Patent Trust v Vivo. This decision arises against the backdrop of the parties ongoing litigation involving FRAND at the Paris LD. There, Sun Patent Trust (SPT) has sought an injunction based on infringement of its 4G SEPs, if Vivo does not enter a licence on terms determined to be FRAND by the Court.
Vivo filed a Preliminary Objection (PO) contesting the UPC and LD’s competence to determine the FRAND terms of a licence. However, the LD dismissed Vivo’s objection holding that it was appropriate for the question of whether the FRAND determination was admissible as regards Art. 32.1 UPCA to be postponed to the main hearing. This was because the question was incidental to the main issue of the proceedings: which was to determine whether Vivo infringed SPT’s SEPs. Vivo appealed the Paris LD’s decision on two grounds:
- Under r. 20.1 and r. 20.2 RoP only the Judge-Rapporteur (JR) may defer a PO to the main proceedings.
- The request for the Court to determine the FRAND terms of SPT’s licence was not incidental to the patent infringement claim but an independent claim in its own right – for which the UPC lacks jurisdiction to determine.
Regarding (1), the CoA found that under r. 20.2 RoP, a decision to deal with a PO in the main hearings may be taken by either the JR or by the panel if the JR has decided to refer the matter to the panel. R. 102.1 RoP provides the JR discretion to do this during the interim procedure and the CoA confirmed that the JR has equal discretion during the written procedure. Additionally, the JR has responsibility over Case Management (CM) and as part of their discretionary powers can refer a proposed order to the panel. Under the RoP CM includes deciding the order and the manner in which issues are heard together. Therefore, the decision to defer the PO to the main hearing was a CM decision that the JR was entitled, under the RoP, to refer to the panel. The CoA confirmed that the Court of First Instance (CFI) has a margin of discretion to decide whether to hear the PO as soon as practicable or to deal with it in the main proceedings. As such, the review by the CoA is limited. Instead, the question the CoA must answer is whether the CFI overstepped the boundaries of its discretion and could not reasonably have come to its decision. In the present case, the CoA held that the LD had not exceeded its margin of discretion.
As regards the characterisation of the claim, the CoA held that the LD rightly found that SPT’s claim was a claim for patent infringement and that the request for a determination of FRAND terms was not an independent claim, not least because it would fall away if Vivo is found not to infringe SPT’s patents in the main proceedings.
The CoA therefore dismissed Vivo’s appeal on both grounds.
Neurocrine v Spruce Biosciences [UPC_CFI_722/2025]
March 2026Parties
Case and decision number
UPC_CFI_722/2025
Judges
Andrea Postiglione
Marije Knijff
The Milan Central Division has dismissed ongoing revocation proceedings between Neurocrine Biosciences and Spruce Biosciences as devoid of purpose under r. 360 RoP. This was because the patent in suite had been revoked by the EPO Opposition Division and the patentee, Spruce Biosciences, had not appealed the decision. Neurocrine’s request that the revocation action should only be disposed of on the condition that Spruce gave a non-confidential undertaking not to enforce any divisional patents against Neurocrine was rejected, the Court holding that this request fell outside the scope of r. 360 RoP. The Court also observed that the revocation action before it was solely directed to the (now revoked) patent and not to any other claim scope. Accordingly, the mere fact that the patent has been revoked does not mean that every divisional will suffer the same fate.
IDC v Amazon [UPC_CFI_936/2025]
March 2026Parties
Case and decision number
UPC_CFI_936/2025
Judges
Peter Tochtermann
Two further judgments have been issued by the UK Court and the UPC’s Mannheim LD in the ongoing multi-jurisdictional dispute between Amazon and InterDigital over the terms of a RAND licence to InterDigital’s SEP video codec portfolio.
In the UK Court’s judgment of 5 March 2026, Mr Justice Meade has “reluctantly” allowed Amazon to make a declaration in the proceedings demanded by the Mannheim LD, effectively curtailing the final RAND relief Amazon seeks in the UK concerning damages if InterDigital refuses to grant a RAND licence. Mr Justice Meade described the declaration frankly as: “a purely performative statement of Amazon’s intention which the UPC LD requires to be made in my Court for some reason.” He was furthermore careful to stress that it was “not, for the avoidance of doubt, a declaration required by me, or a declaration made by me, and is not an undertaking to me that InterDigital or anyone else can enforce.”
The Mannheim LD’s unprecedented requirement that Amazon make such a declaration before the UK Court was in spite of the fact that Amazon and InterDigital were both agreed that the UK action on final RAND relief should proceed to the September trial without the restriction set out in the declaration. The parties were also in agreement on how to end the “anti-suit battles” between them. However, the Mannheim LD, having found Amazon to be in breach of its Anti-Suit-Injunction, had still held that Amazon was liable for contempt and penalties in “the tens of millions of euros” unless Amazon curtailed the way it framed certain damages claims. Faced with this, and despite saying that he had “very considerable reservations” about the fairness and cross border effects of the UPC’s approach, Mr Justice Meade concluded that acceding to the declaration was the least bad way to avoid further cross-jurisdictional escalation and to preserve the timetable to the September 2026 UK trial on final RAND relief. Any remaining challenges to the UPC Anti Suit Order are to be worked out on appeal within the UPC system. Two Orders were made by the UK Court which arose out of the hearing. The first, dated 5 March 2026, was a Case Management Order related to costs, while the second, dated 9 March 2026, was a Consent Order limiting the final RAND relief sought by Amazon. Further, unusually frank, commentary on the procedural history of the proceedings, judicial communication and comity are also provided by the UK Court.
Mr Justice Meade’s comment that “one or the other court has to make the decision to take no further action, and I have concluded that that should be [the UK Court]” sounded like the end of the matter. However, the Mannheim LD has subsequently issued a further Order on 9 March 2026, under Art. 82(4) UPCA and r. 354.4 RoP, indicating that the UPC considers the matter very much still open. In the Order, Judge Tochtermann requires that Amazon explain the differences between the UK Court’s 5 March and 9 March Orders. The UPC’s questions, however, appear to stem from an apparent misapprehension that the 9 March Order is an alteration to the 5 March Order. Further questions are also raised in relation to the legal effect of the order for “liberty to apply” – a standard form of wording in all such UK consent Orders – and whether this wording means that Amazon has not given “legally binding effect” to its declaration as required by the LD. As such, the LD has held that Amazon may not yet have avoided the position of penalties by the UPC. The UK Court’s comments on the difficulties of judicial communication that have arisen in the case, therefore, appear particularly apposite in light of this latest Order of the LD.
Dyson v Dreame [UPC_CoA_789/2025, UPC_CoA_813/2025]
March 2026Parties
Case and decision number
UPC_CoA_789/2025, UPC_CoA_813/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
In its first ever referral to the CJEU, the Court of Appeal (CoA) has sought clarity on the application of long-arm jurisdiction in situations involving non-EU defendants alleged to have infringed patents using the services of an EU-based intermediary, such as an authorised representative. The referral also seeks clarity on whether Preliminary Injunctions (PIs) can be granted against non-EU defendants or Authorised Representatives (AR) in such circumstances.
The reference arises from Dyson’s application for provisional measures against Dreame and its AR, which covers Spain in addition to UPC territories. Dreame’s products (hair treatment devices) fall under EU Regulation No. 2023/998 (the General Product Safety Regulation) and EU Regulation No. 2019/1020 (the Market Surveillance Regulation), which require an AR established in the EU.
The two relevant defendants for the long-arm jurisdiction referral are Dreame International, a Hong Kong company that manufactures the accused devices that are sold via country specific websites for Germany and Spain (among others), and Eurep, a German company that appears on Dreame’s product packaging and websites as Dreame’s EU representative and acts as its AR in the EU.
At first instance, the Hamburg Local Division (LD) determined that Eurep could be subject to a PI covering both UPC territories and Spain because, as the AR, it is an intermediary whose services are being used to infringe a patent within the meaning of Directive 2004/48/EC (the Enforcement Directive). The Hamburg LD found that it had jurisdiction over Eurep in respect of Spain because Eurep is domiciled in Germany (a UPC state). It also decided that an AR can act as an anchor defendant within the meaning of Art. 8(1) Brussels I bis Regulation (Recast) (BR), and thus the UPC has long-arm jurisdiction over Dreame International in respect of Spain via Eurep as anchor defendant.
On appeal, the CoA confirmed that the UPC has jurisdiction over Eurep based on its domicile in Germany under Art. 4 and 71b(1) BR. However, it stayed the appeal proceedings insofar as they relate to the action against Dreame International in respect of Spain, and the action against Eurep in respect of all states.
Four questions were referred to the CJEU:
In the first question, the Court focuses on the issue of anchor defendants. It asks whether Art. 8(1) BR in conjunction with Art. 71b(2) BR allows a common Court to hear a claim that a first company in a third state (i.e. a non-EU member state) infringes a European patent in an EU member state that is not a party to the instrument establishing the common Court, where a second company in an EU member state that is a party to the instrument establishing the common Court is alleged to be an intermediary whose services are used by the first company to infringe in the EU member state that is not a party to the instrument establishing the common Court. For readers struggling with the language of the question, in the case at hand the common Court is the UPC, the company in a third state is Dreame International (based in Hong Kong), which is alleged to have infringed the patent in Spain (an EU but non-UPC state) via the services of Eurep (based in Germany, an EU and UPC country).
If the answer is yes, Art. 8(1) together with Art. 71b(2) could allow the UPC hear the claim against Dreame International for infringement of the Spanish designation of the patent via its jurisdiction over Eurep. An important point to note is that this the question refers generally to intermediaries whose services are used, rather than authorised representatives specifically. The question is not limited to PIs and would apply to any patent infringement action.
The remaining questions relate specifically to provisional measures, and may allow the UPC to hear the PI claim in relation to the Spanish patent even if the first question is answered in the negative.
In the second question, the Court asks whether Art. 71b(2), second sentence, can itself support an action for provisional measures against a company established in a third state that is alleged to have infringed a European patent in force in an EU member state that is not party to the instrument establishing the common Court and in some or all EU member states that are party to the instrument establishing the common Court by offering the same products in all those EU member states, through websites that are identical apart from the language. This addresses the question of whether the UPC can bring a PI action directly against Dreame International based on the link between its alleged infringing acts in the UPC territory and its acts in Spain.
In the third question, the Court asks whether the fact that the company established in a third state uses the services of a company that is established in an EU member state that is party to the instrument establishing the common Court in order to infringe is relevant to question 2. This addresses Eurep’s role as AR.
Finally, the Court asks whether the Enforcement Directive or any other provision of EU law precludes case law of national Courts or a common Court that allows a PI aimed at preventing or prohibiting infringement of a patent by a third party to be granted directly against the AR that performs the tasks laid down in the General Product Safety Regulation and the Market Surveillance Regulation on behalf of that third party.
This referral builds on the CJEU’s February 2025 judgment in BSH v Electrolux, which confirmed the long-arm jurisdiction of EU national Courts and the UPC. The referred questions seek clarity on the circumstances in which that reach can extend to non-EU manufacturers and what role EU-based group entities or AR can play in anchoring jurisdiction. For EU product safety and surveillance representatives, the answers could increase the litigation risk that comes with acting as the EU face of a third country manufacturer.
UERAN v Xiaomi [UPC_CFI_609/2025]
February 2026Parties
Case and decision number
UPC_CFI_609/2025
Judges
Tobias Pichlmaier
On 24 February 2026, in UERAN v Xiaomi, the Munich Local Division (LD) corrected an unopposed clerical omission in its January confidentiality order by adding several missing paragraphs of the Statement of Defence. The more interesting aspects concern the other amendments requested by the defendants that were opposed by the claimant and refused by the Court.
The Court reaffirmed that Art. 48 UPCA gives parties a “fundamental right to freely choose” their representatives and that this choice cannot depend on whether they have a legal or technical background. It emphasised that the competence of patent attorneys is not limited to purely technical matters, meaning the claimant’s patent attorneys could not be excluded from the confidentiality club and prevented from accessing information about the defendant’s negotiations and licence agreements simply for being technically qualified.
The Court also rejected the defendants’ attempt to exclude the claimant’s proposed expert, a Chinese lawyer, from the confidentiality club. In opposing her admission, the defendants had not shown what new confidential licensing information she would obtain. Concerns raised by the defendants about her independence were held to be irrelevant at this stage and “will have to be answered (if necessary) in the context of possible expert evidence.” Exclusion from a confidentiality club is therefore not the appropriate vehicle for testing expert impartiality, and the only issue to determine at this stage was whether there as a legitimate interest in keeping the expert away from certain information.
Overall, the order signals that confidentiality clubs before the UPC will remain tightly confined to genuine confidentiality needs and not extend to strategic attempts to reshape the other party’s team.
TCL v Corning [UPC 337/2025]
February 2026Parties
Case and decision number
UPC 337/2025
Judges
András Kupecz
Daniel Severinsson
On 24 February 2026, the Munich Central Division dismissed TCL’s revocation action against Corning’s patent concerning methods for producing alkali free glass for display substrates. These glass sheets are used in Active Matrix Liquid Crystal Display (AMLCD) applications.
The Court rejected each ground of attack including added matter, insufficiency, lack of novelty and lack inventive step. The main points of interest in this judgment relates to the approach to the disclosure of ranges in a novelty attack and the approach to inventive step.
When construing the claims, the Court emphasised that the skilled person always interprets the features in light of the claim as a whole and would understand there to be important and inherent interdependencies between the various claimed features. The skilled person therefore understood the claim to relate to a specific method for producing glass sheets that required components to be selected, melted and refined such that they were suitable for use in a drawdown process.
The novelty challenges failed because neither of the pieces of prior art disclosed the claimed method in a direct and unambiguous way. Although the first document disclosed a glass composition that fell within the claim, this was not disclosed in the context of a downdraw process for making glass sheets. Although the downdraw process was generally disclosed, the particular composition in question was explicitly described in the context of an experiment where no glass sheets were produced. In addition, elsewhere in the document this composition was described as being unsuitable for a downdraw method. There was therefore no clear and unambiguous disclosure of the combination of features for the use described in the claim.
The second document disclosed a method for production of glasses with component ranges that overlapped partially with or subsumed the claimed component ranges. However, the claimed composition would only be arrived at if the skilled person made a considerable number of choices from multiple broad ranges to select values within the claimed ranges without there being any justification for these choices in the prior art itself. In making this determination, the Court rejected the claimant’s argument, that was said to be based on German case law, that disclosure of a range in document included disclosure of all possible intermediate values within the stated limits and therefore the entire range was disclosed. In the Court’s view, a generic disclosure did not take away the novelty of a specific combination of features.
Turning to the inventive step analysis, the Court applied the approach set out in by the Court of Appeal in Amgen v Sanofi order of 25 November 2025, UPC_CoA_528/2024, UPC_CoA_529/2024, and Meril v Edwards order of 25 November 2025, UPC_CoA_764/2024; UPC_CoA_774/2024. It first identified the objective problem as providing a more environmentally friendly method for manufacturing alkali free glass sheets that were suitable for AMLCD applications, without costly post forming operations. The patent’s solution to this problem was through the combination of the claimed features, i.e. a downdraw process using a specifically designed and interdependent glass composition, which allows fining to take place in the presence of a tin oxide instead of toxic arsenic or antimony components.
The Court then examined several proposed starting points and found that none of these formed the basis of a valid inventive step attack when considered without using hindsight. Although each of the documents contained individual teachings of a number of features present in the claims, there was nothing in the documents to suggest combining the features disclosed and/or adjusting them in such a way as to maintain the required viscosity in the glass, avoid crystallisation and achieve the mechanical properties needed for downdraw.
When considering one of the inventive step arguments the Court specifically criticised the selection of one out of a number of different examples in the document as the starting point merely because it happened to come closest to the claimed composition. Without any particular direction to do so in the document, this approach in itself was a result of hindsight. In light of the strong interdependencies of the glass components, the Court emphasised that the skilled person could not reasonably expect success when attempting to assemble the claimed combination from disparate prior art disclosures. Each of the pieces of prior art disclosed different components of this claimed combination and none of the documents provided pointers to adapt the disclosed compositions in such a way that would lead to the claimed combination. Against this backdrop the Court found no basis for a reasonable expectation of success.
As none of the attacks succeeded the revocation action was dismissed and TCL was ordered to bear Corning’s costs.
Sumi v Syngenta Limited [UPC_CoA_10/2026]
February 2026Parties
Case and decision number
UPC_CoA_10/2026
Judges
Ingeborg Simonsson
On 24 February 2026, the CoA issued a decision that reinforces the need for precise requests from third parties for public access under r. 62.1(b) RoP.
In Sumi Agro v Syngenta the Court emphasised that “a request for written pleadings and evidence must be specified to the greatest extent possible and cannot be made in terms which would require the Court to search and select documents based on relevance criteria set up by the requesting party” (emphasis added). As a result, broad formulations such as a request for “all exhibits” were dismissed in both matters.
The Court repeated that “reasoned requests for written pleadings and evidence, lodged at the Court of First Instance, shall be made to the relevant Division” and that the same principle applies independently to the CoA. The Court further reminded applicants that the CoA “shall consult the file of the proceedings before the Court of First Instance” without reproducing those documents in its own file, meaning requests must be directed to whichever instance received the document originally.
The Court accepted the third party's request for the appeal pleadings because the action had concluded. The decision noted that access once a case has ended is usually compatible with the balance of interests, explaining that “these interests are usually properly balanced and duly weighed … if access … is given to a member of the public after the proceedings have come to an end”. The exhibits request was refused because the formulation was “ambiguous” and insufficiently specific. Access was therefore allowed only to the identified pleadings, with personal data to be removed.
Boehringer Ingelheim v Zentiva [UPC_CoA_9/2026]
February 2026Parties
Case and decision number
UPC_CoA_9/2026
Judges
Ingeborg Simonsson
On 24 February 2026, the CoA issued a decision that reinforces the need for precise requests from third parties for public access under r. 62.1(b) RoP.
In Boehringer v Zentiva , the Court emphasised that “a request for written pleadings and evidence must be specified to the greatest extent possible and cannot be made in terms which would require the Court to search and select documents based on relevance criteria set up by the requesting party” (emphasis added). As a result, broad formulations such as a request for “all exhibits” were dismissed in both matters.
The Court repeated that “reasoned requests for written pleadings and evidence, lodged at the Court of First Instance, shall be made to the relevant Division” and that the same principle applies independently to the CoA. The Court further reminded applicants that the CoA “shall consult the file of the proceedings before the Court of First Instance” without reproducing those documents in its own file, meaning requests must be directed to whichever instance received the document originally.
Zentiva had argued that a stricter stance was required because, whilst the appeal case in question had concluded, an underlying merits action was still pending. It argued that, in those circumstances, the protection of the integrity of the case carries “significantly greater weight” and a general interest in UPC transparency cannot displace that concern alone. However, the CoA does not appear to have accepted this reasoning.
The third party again to obtain access to exhibits for lack of specificity, but the Court granted access to certain appeal pleadings in the redacted form submitted by Boehringer. The Court accepted that the passages identified contained “sensitive, non public commercial information relating to Boehringer’s revenues and its detailed litigation costs” that required confidential treatment.
Rematec v Europe Forestry [UPC_CoA_302/2025, UPC_CoA_305/2025]
February 2026Parties
Case and decision number
UPC_CoA_302/2025, UPC_CoA_305/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
On 17 February 2026, the CoA issued its decision in Rematec GmbH & Co. KG v Europe Forestry B.V., reinstating European patent EP 2 548 648 and overturning the Mannheim LD’s earlier revocation. Applying Art. 75 UPCA, the Court also exercised its power to give a final decision, ruling on both validity and infringement without remitting the case to the first instance tribunal.
Both parties to the case operate in the forestry machinery sector, supplying mills for grinding wood chips. The patent concerns a mill design and although initially opted out of the UPC system was brought back in when Rematec withdrew the opt-out in 2023. At first instance, the LD revoked the patent in its entirety for lack of novelty and inventive step and dismissed the infringement action without examining the substantive issues of infringement.
On appeal, Rematec sought reversal of the revocation, dismissal of the counterclaim for revocation, and, if claims 1 and 15 in granted form were found invalid, maintenance of the patent in amended form based on auxiliary requests. Having heard the appeal, the CoA found the LD’s analysis unsustainable and held that claims 1 and 15 of the patent were novel and inventive over the cited prior art. The defendant’s sufficiency and added-matter objections were rejected.
Referring to Art. 75 UPCA, the Court confirmed that it must issue a final decision and may remit only in exceptional circumstances, which were absent. It also clarified that where an independent claim is upheld, dependent claims cannot be attacked separately for lack of legal interest. As infringement had not been assessed below, the Court addressed it itself and found that Europe Forestry’s “Europe Grinders” and “Europe Chip Mills” fell within claim 1, in particular satisfying the key requirement that the mill be “free of sieves.” Bars spaced at ≥70 mm in the infringing products did not produce a sieve effect for standard chip sizes, so the discharge opening was considered to remain “sieve-free” and within the meaning of the claim. The Court also found indirect infringement of claim 15, as the mills were capable of carrying out the patented method (features 15a–15g).
The remedies granted included an injunction, recall and removal, destruction or modification (including replacement of the ≥70 mm bars), an information order, liability for damages from 8 November 2014, and a €20,000 interim lump-sum award (reduced from the €50,000 requested).
However, the Court refused Rematec’s request to publish the decision at the defendant’s expense. Under Art. 80 UPCA, a publication order requires a demonstrated legitimate interest, which was not established.
Overall, the decision underscores the CoA’s willingness to exercise its Art. 75 UPCA power to finally determine cases where the LD revoked a patent without addressing infringement and grant the full range of remedies even where infringement relates to particular embodiments. Parties before the Court, therefore, should be mindful that aspects of a case not substantively considered at first instance can be decided at the appeal stage by the UPC without any further judicial recourse.
Messerle v Sabert Corporation [UPC_CFI_26/2025, UPC_CFI_375/2025]
February 2026Parties
Case and decision number
UPC_CFI_26/2025, UPC_CFI_375/2025
Judges
Anna-Lena Klein
Walter Schober
Kai Härmand
On 19 February 2026, the Vienna Local Division (LD) handed down its decision in Messerle GmbH v. Sabert Corporation Europe S.A., finding that EP 3 705 415, which relates to food packaging, valid, but not infringed by the Defendant’s Tray2Go product. This case stresses the front-loaded nature of the UPC.
Construction
In construing claim 1, the Court was required to interpret the German wording of the claim, despite the language of the proceedings being in English. Although the Court did not address all features of the claim, a key issue particularly in infringement, was in relation to the meaning of German word “knick” which was found to describe a sharp, visible crease created by folding along a predefined line.
Novelty
The Defendant initially submitted as prior art a brochure depicting an image of the food packing (D4). However, it was not clear what all four sides of the food container looked like. In light of this, the Defendant attempted to submit samples of the food container in its Reply to Defence to Counterclaim, arguing it was not new prior art, but supportive of the disclosure in D4 which only became necessary to submit when doubt arose as to what the other sides of the packaging looked like. The Court rejected the introduction of these samples, commenting that considering them would introduce hindsight when analysing D4. The samples should be considered prior public use, and it was too late to introduce this argument in the proceedings.
Under r. 25.1 RoP, parties are under a strict obligation to set out their full case, including all facts and available evidence, as early as possible. The Court emphasised that any attempt to submit evidence of prior use at a later stage requires a compelling justification regarding timeliness, which the Defendant did not satisfy.
Because D4 did not directly and unambiguously disclose every technical feature of the claim, most notably the requirement for connection elements on at least two side walls of the lid, the patent was found novel. The inventive step challenge also failed, with there being no statement or argument as to why it would have been obvious to the skilled person to modify the packaging.
Infringement
The Defendant’s product, Tray2Go, did not infringe claim 1 literally or under the doctrine of equivalents. This was because, Tray2Go used gradual bends, which were not “Knicks” i.e., a sharp crease, as required by claim 1. Similarly, there was no infringement under the doctrine of equivalents. Although the Court of Appeal has yet to set out a test for the doctrine of equivalents, the local division noted that there was agreement that the means must fulfil essentially the same function in order to achieve essentially the same effect. This was not the case for Tray2Go.
As a result of both parties being unsuccessful in their primary claims, the Court ordered that each party bear its own costs.
Valeo v Robert Bosch [UPC_CoA_4/2026]
February 2026Parties
Case and decision number
UPC_CoA_4/2026
Judges
Klaus Grabinski
Emmanuel Gougé
Ingeborg Simonsson
On 11 February 2026, the CoA provided further guidance on routes of appeal detailed in the RoP.
The case concerns an appeal of a decision from the Paris Central Division (CD), which had previously ruled that it did not have jurisdiction to hear an infringement claim by Valeo Systemes D’essuyage (Valeo). This decision was reached following a Preliminary Objection (PO) lodged by Robert Bosch France SAS, Robert Bosch GmbH, Robert Bosch S.A, and Robert Bosch Produktie S.A (together Bosch) (the PO related to jurisdiction and language of proceedings). The CD ordered that the claim should be transferred to the Düsseldorf LD and the language of proceedings should be in English (the Order). Valeo appealed this Order and Bosch opposed Valeo’s appeal on the basis that it was inadmissible.
Valeo appealed the Order on the basis of r. 220.2 of the RoP. Several Orders are ‘carved-out’ from this rule, including final decisions of First Instance Courts, decisions terminating proceedings and others listed in r. 220.1(c) and r. 97.5. Valeo argued that the Order was not listed in those carved-out from r. 220.2, so r. 220.2 was the provision applicable to the appeal. In contrast, Bosch considered that r. 220.1(a) applied because r. 21.1 confirms that “A decision of the judge-rapporteur allowing the PO may be appealed pursuant to r. 220.1(a).
The CoA noted that the Order in question concerned a matter of internal jurisdiction and ordered the transfer of the action to another division without terminating the proceedings against any of the parties. As such, the Order was neither a "decision" upholding Bosch’s PO, nor an order that "rejected" the PO. As a result, Bosch’s argument was rejected and it was concluded that r. 21.1 RoP did not apply. Valeo was correct to lodge an appeal under r. 220.2 RoP.
In its decision, the Court clarified that two separate regimes apply to appeals of orders, and these regimes are distinguished in r. 220:
- Decisions and orders against which an appeal may be lodged immediately and without prior authorisation from the first instance court (r. 220.1 RoP); and
- Orders, other than those referred to in r. 220.1 [incorrectly referred to as 221.1 in the decision] RoP, which may be appealed either together with the appeal against the decision on the merits or with the permission of the first instance court (r. 220.2 RoP).
It should be noted that the Court had already suspended the deadline for Bosch to file their defence to Valeo’s appeal of the Order, pending determination of the admissibility of said appeal. However, the CoA did not suspend the first instance infringement proceedings pending the appeal. It commented that first instance cases should proceed without being delayed by appeals as a general rule. Suspensions would only be granted in exceptional circumstances and translation costs were not considered ‘exceptional’.
Papst v EPO [UPC_CoA_8/2026]
February 2026Parties
Case and decision number
UPC_CoA_8/2026
Judges
Ingeborg Simonsson
On 9 February 2026, the Court of Appeal (CoA) dismissed an appeal from Papst Licensing GmBH & Co. KG (Papst) against a decision of the European Patent Office (EPO) rejecting Papst’s application for unitary effect. The CoA found that Art. 3(1) of Regulation (EU) No 1257/2012 of the European Parliament and of the Council dated 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (Regulation 1257/2012) cannot be interpreted to allow registration of unitary effect for a granted European patent which does not include the designation of one of the participating states (i.e. a Member State which participates in enhanced cooperation in the area of the creation of unitary patent protection by virtue of Decision 2011/167/EU or by virtue of a decision adopted in accordance with Article 331(1) of the TFEU a Participating Member State), in this case Malta.
Papst’s patent application had been filed on 11 December 2017 as a divisional application of an earlier European patent application, which was in turn a divisional application of a Euro-PCT application filed on 31 July 2005. As this was before 1 March 2007 (the date on which Malta acceded to the EPC), the application could not include the designation of this Participating Member State. Consequently, when the patent granted on 16 April 2025, its designations did not include Malta. Papst filed an application for unitary effect, which was deemed to have been filed on 16 April 2025.
Art. 3(1) of Regulation 1257/2012 provides that a European patent granted with the same set of claims in respect of all the Participating Member States shall benefit from unitary effect in the Participating Member States provided that its unitary effect has been registered in the Register for unitary patent protection. Art. 3(2) provides that a European patent granted with different sets of claims for different Participating Member States shall not benefit from unitary effect.
The EPO had rejected Papst’s application for unitary effect on the basis that the patent did not contain claims for Malta and was consequently not granted with the same claims for all Participating Member States. The Paris Central Division rejected Papst request for annulment of the EPO’s decision. Papst subsequently appealed to the CoA seeking, inter alia, a reference to the Court of Justice of the European Union (CJEU) for a preliminary ruling.
Rejecting Papst’s argument that the reference to “all the participating Member States” in Art 3(1) of Regulation 1257/2012 should be interpreted as “all the participating Member States designatable for this European patent” (effectively, unitary effect with a carve-out for Malta), the CoA held that it was apparent from the wording of Art. 3(1) that a European patent can only benefit from unitary effect if it is granted with the same set of claims in respect of all Participating Member States and that Papst’s proposed application of Art. 3(1) would be contra legem. Papst’s appeal was therefore rejected by the CoA.
As its decision to reject the appeal was based on a literal reading of Art. 3(1) of Regulation 1257/2012, the CoA also declined to refer any questions to the CJEU. As yet, the UPC has not referred any questions of EU law to the CJEU.
Canon v Katun [UPC_CFI_351/2024, UPC_CFI_595/2024]
February 2026Parties
Case and decision number
UPC_CFI_351/2024, UPC_CFI_595/2024
Judges
Marije Knijff
Ronny Thomas
Jule Schumacher
On 11 February 2026, the Düsseldorf LD found that Katun Germany GmbH, Katun (E.D.C.) B.V, Katun Corporation and General Plastic Industrial Co., Ltd (together Katun) infringed a patent held by Canon Kabushiki Kaisha (Canon) which relates to a printer’s developer supply container. Katun’s infringing products were low-cost alternatives to Original Equipment Manufacturer (OEM)-brand products. The Court also rejected Katun’s counterclaim for invalidity.
Several remedies were sought by Canon in its infringement claim. In particular, Canon sought an order for Katun to publish the operative part of any infringement decision on their websites and confirmation that Canon could publish an announcement of the decision on its own website and in the public media.
Canon relied upon Art. 80 UPCA for its request, which allows the Court to order appropriate measures for the dissemination of information concerning a Court decision. This includes displaying the decision and publishing it in the public media.
When it considered Canon’s publication request, the Court applied a two-step test:
- whether the claimant has a legitimate interest in publishing the decision; and
- whether the defendant’s interests outweigh this interest.
The Court found support for this two-step test in a relatively recent decision by the Court of Appeal: Meril v Edwards (UPC_CoA_464/2024, Decision of 25 November 2025). The Meril decision did not expressly state that a two-step test applied, but did conclude that a “legitimate interest” in publication is a relevant consideration and that the interests of the defendants did not outweigh this legitimate interest.
Applying the aforementioned test, the Court held that Canon had demonstrated a legitimate interest in publication. In particular, the Court noted that Katun had stated on their own websites that their products were non‑infringing, which created a misleading impression as to their authorisation to sell the contested products. Publication was therefore justified to correct that impression and to reach Katun’s extensive customer base, which private notifications alone would not adequately address.
The Court rejected Katun’s argument that such publication would cause confusion, because Canon had already reached an industry voluntary agreement in which it committed to not designing machines that prevent the use of non‑OEM cartridges. The proposed publication concerned only the finding of patent infringement and did not relate to that agreement. Katun had therefore not shown that their interests outweighed Canon’s interest in publication.
While Canon had a right to publish the decision, the Court imposed proportionality limits. Canon was permitted to publish the decision online for one month and in no more than five industry publications. This number was considered appropriate in light of the level of industry attention on the issue and the number of companies affected by this issue. In addition, Katun was ordered to publish the operative part of the decision on their own websites for one month, which the Court considered an appropriate measure as Katun had used its own websites to create an impression that it did not infringe the patent. Publication on Katun’s own websites was ordered to remove this impression.
InterDigital v Amazon [UPC_CFI_936/2025]
February 2026Parties
Case and decision number
UPC_CFI_936/2025
Judges
Peter Tochtermann
On 11 February 2026, the Mannheim Local Division (LD) (Judge Tochtermann presiding) issued a further order (the Order) in the ongoing cross-border proceedings between Amazon and Interdigital. The LD reiterated its position that if there was a future UK Court-determined FRAND contract, Amazon would breach the UPC’s Order of 30 September 2025 if it argued that Interdigital was in breach of such a contract by continuing patent infringement proceedings against Amazon in the UPC.
The Order re-stated the UPC position that “no foreign Court should block any other Court from rendering justice, when it is being approached by a party to do so on its territory”.
Centripetal v Palo Alto Networks [UPC_CoA_891/2025]
February 2026Parties
Case and decision number
UPC_CoA_891/2025
Judges
Klaus Grabinski
Peter Blok
Emanuela Germano
The Court of Appeal (CoA) recently dismissed Centripetal’s appeal against the Mannheim LD’s decision (following a request for review) to revoke an earlier saisie order, on the basis that Centripetal’s request was inadmissible.
On appeal, Centripetal no longer attempted to defend the saisie order as granted but instead asked the CoA to maintain it in an amended form. The Court held that the amended request was inadmissible under r. 222.2 RoP, which allows new submissions to be disregarded by the CoA, because it introduced new and broader demands that had not been made before LD at first instance. In particular, Centripetal sought the production of documents regardless of location and requested vague, expanded categories of technical descriptions going beyond the scope and location specific limits of the original order. The Court found that Centripetal had offered no justification for not submitting these amendments earlier and that introducing them on appeal would seriously prejudice Palo Alto’s ability to defend itself.
Because Centripetal did not defend the original saisie order and its amended request was inadmissible, the CoA upheld the LD’s revocation of the saisie order in full. The appeal was therefore rejected, and Centripetal was ordered to bear the costs of the appeal proceedings.
Bostik v Henkel [UPC_CFI_583/2025]
February 2026Parties
Case and decision number
UPC_CFI_583/2025
Judges
Carine Gillet
On 4 February 2026, the Paris LD granted Bostik’s request that Henkel (the alleged infringer) produce evidence under Art. 59 UCPA and r. 190 RoP. The request was for current data sheets for certain of Henkel’s Loctite Liofol branded flexible laminate packaging products.
The Paris LD considered it to be reasonable and proportionate to grant the request to produce documents. Bostik’s provision of available historical data sheets and testing of a sample were considered necessary and sufficient to make the infringement allegations plausible. The data sheets requested were in Henkel's possession, and it was not relevant that Bostik could obtain such sheets by filling in a form on its website when it was unclear the relevance of any documents that could be obtained.
The Paris LD refused to order:
- that the data sheets be provided by email and the CMS; instead ordering the use of the CMS in accordance with r. 4.1 RoP;
- a €2,000 per day penalty for failure to comply, noting that the Court can draw its own conclusions about non-compliance; and
- that the parties had permission to submit further written
pleadings in light of the evidence produced under r. 36 RoP, accepting that the parties should be able to comment on the documents in subsequent submissions but that r. 36 RoP did not apply at this stage of proceedings.
Abbott v Microtech [UPC_CFI_875/2025, UPC_CFI_830/2025]
February 2026Parties
Case and decision number
UPC_CFI_875/2025, UPC_CFI_830/2025
Judges
Samuel Granata
Edger Brinkman
Margot Kokke
On 6 February 2026, The Hague Local Division (LD) granted Abbott provisional injunctions in relation to two of its Continuous Glucose Monitoring (CGM) patents, EP 3 960 072 (the insertion device patent) (EP 072) and EP 2 720 610 (the stacked sensor patent) (EP 610). The actions were brought against the China-based MicroTech, its Hong Kong based subsidiary SenEaron, The Netherlands-based companies Lotus and Medeco, and a number of Mediq entities based in The Netherlands and Germany. The allegedly infringing products were manufactured by MicroTech and imported into several EU countries by Medeco. Lotus was the EU Authorised Representative (EUAR) under the Medical Devices Regulation for MicroTech’s CGM products.
Confirming that all divisions of the UPC are Courts of domicile of a defendant domiciled anywhere within the UPC, The Hague LD had jurisdiction over all Dutch and German entities. That domicile also gave jurisdiction to hear the case of alleged infringement of the Spanish designation in Spain (following BSH). It further had international jurisdiction over the non-UPCA companies, on the basis that Lotus - the named EUAR - was an anchor defendant under Art. 8(1) Brussels I Recast, acting as at least an intermediary for MicroTech and SenEaron in the EU, including Spain. It was noted that it was “foreseeable” for MicroTech and SenEaron that they might be sued in the Member State where Lotus, is domiciled.
On urgency, in the EP 610 proceedings, The Hague LD considered that a period of three months from receipt of samples to commencing proceedings did not constitute undue delay, in circumstances where the infringement testing took 3 months and proceedings were commenced the day after the testing was completed. In the EP 072 proceedings, a period of 2.5 months was also acceptable, where the testing took a little over a month and proceedings were commenced 6 weeks later. Samples obtained, but satisfactorily evidenced as lost by a courier, did not start the urgency clock ticking.
On validity, the Court held that the defendants failed to meet the threshold for establishing that either patent was more likely than not invalid, due to added matter, sufficiency attacks and lack of novelty/inventive step. Infringement of EP 072 was undisputed, and infringement of EP 610 was established in relation to one of the products to which the testing related (Abbott confirming at the hearing that its application was limited to that product). In granting provisional measures in a number of UPC contracting states as well as Spain, the Court took into account submissions that an injunction was necessary and urgent to prevent aggressive and irreversible price reduction resulting in unquantifiable damage. Relief included the grant of provisional injunctions, delivery up of goods and the provision of information regarding distribution channels, but not information on prices and sales as this was deemed only necessary for the calculation of damages.
Labrador Diagnostics v bioMérieux [UPC_CFI_315/2024]
January 2026Parties
Case and decision number
UPC_CFI_315/2024
Judges
Mélanie Bessaud
Ronny Thomas
Bérénice Thom
The Düsseldorf Local Division (LD) dismissed Labrador’s infringement action against bioMérieux following a pivotal development in the bifurcated parallel revocation proceedings. Early in the case, LD, upon request by the claimant and absent any objection from the defendants, bifurcated the defendants’ revocation counterclaim and referred it to the Milan Central Division (CD), where a separate revocation action was already pending. This referral proved determinative. In October 2025, the CD upheld the patent in amended form (auxiliary request 3), maintaining only a narrowed claim 1 (instrument) and claim 2 (method). Bound by the CD’s amended claim text, the LD proceeded on the basis of these revised claims alone.
The amendments proved decisive for infringement. The newly limited claims were construed as requiring a single “device” combining both reagent units and a sample unit. After analysing the allegedly infringing VIDAS 3 system, the Court found that bioMérieux’s products do not include any such combined device; its sample racks, reagent strips and other components are instead separate. This meant that an essential claim feature was missing and neither the instrument nor the method claim was infringed. Because the amended claims were construed in line with the CD’s reasoning to make structural integration in the device a necessary feature, the Court rejected Labrador’s argument that a functional or conceptual link between the sample containers and reagent strips could satisfy the claim. With the claimed “device” absent, there was no basis for literal infringement, nor for infringement under the doctrine of equivalents as the Court considered there to be no means performing the same function as a combined device.
Ericsson v ASUS [UPC_CoA_631/2025, UPC_CoA_632/2025]
January 2026Parties
Case and decision number
UPC_CoA_631/2025, UPC_CoA_632/2025, App_33679/2025, App_33696/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
On 26 January 2026, in the Ericsson v ASUS proceedings, the CoA ruled on the appropriate confidentiality regime to apply to confidential information that Ericsson intended to submit in the proceedings, relating to confidential licence agreements it had entered into with third parties. At first instance the Milan LD imposed a confidentiality regime which allowed one natural person from each party access to the confidential information.
Ericsson appealed the decision, requesting that an External Eyes Only (EEO) regime be in place in respect of the agreements where the counterparties had objected to the first instance confidentiality order. The CoA rejected Ericsson’s request. The Court’s reasoning was similar to the Sun Patent Trust v VIVO decision which was heard on the same day. The Court considered that access by a party’s employee to all documents in the proceedings “will often be essential to ensure compliance with the right of that party to an effective remedy and to a fair trial”. On the facts of the case, there were no substantiated concerns as to the trustworthiness of the proposed ASUS employee and the Court considered that access to the licences was necessary for the employee to perform their role in the litigation. Further, merely having access to aggregated data about the licences (as proposed by the intervener, Apple) would not be sufficient to allow the ASUS employee to examine and challenge the underlying information.
The Court observed that the potential harm to the licence counterparty by allowing a party’s employee access can be mitigated by imposing a licensing bar (i.e. that the employee refrains from involvement in licensing negotiations with the relevant counterparties for a certain period). The Court therefore imposed a 5-year licensing bar on the ASUS employee as a condition for having access to the confidential licence agreements.
10x Genomics v Curio [UPC_CFI_658/2025]
February 2026Parties
Case and decision number
UPC_CFI_658/2025
Judges
Ronny Thomas
On 2 February 2026, the Düsseldorf LD confirmed that costs incurred in Preliminary Injunction (PI) proceedings and those incurred in proceedings on the merits are subject to separate recoverable cost ceilings. This is even though the Court decides reimbursable costs for both PI and the merits proceedings in a single post merits cost procedure. The Court therefore rejected 10x Genomics’ argument that the two ceilings should be combined into a single aggregate cap. Further, in instances where there has been a partial success and a party is only awarded a proportion of its costs (here 70%), that reduction applies both to: (i) the costs incurred by the party; and (ii) the applicable cost ceiling.
EOFlow v Insulet [UPC_CoA_930/2025]
January 2026Parties
Case and decision number
UPC_CoA_930/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 29 January 2026, the Court of Appeal (CoA) handed down a decision addressing confidentiality and r. 262A RoP in the dispute between EOFlow and Insulet. The CoA held that, absent explicit confidentiality provisions in the order as provided for under r. 191 RoP, there is no implied duty of confidentiality imposed when information was provided by one party to another pursuant to an order from the Court. If a party wanted to keep such information confidential, then an application must be filed pursuant to r. 262A RoP which can be made to restrict the use of confidential information to specific people. In the absence of such a r. 262A RoP application, the information provided can be freely used by the party receiving it and is therefore no longer confidential.
ALD v Nanoval [UPC_CFI_999/2025]
January 2026Parties
Case and decision number
UPC_CFI_999/2025
Judges
Maximilian Haedicke
Tatyana Zhilova
The Paris CD has held that ALD France S.A.S. is entitled to bring revocation proceedings against Nanoval’s patent EP 3 083 107 B1, notwithstanding the parallel infringement and revocation actions involving ALD’s German parent company and Nanoval before the Munich LD.
The Paris CD held the concept of ‘same parties’ under Art. 33(4) requires the parties to be identical. It acknowledged that there were circumstances where the interests of two legal entities may coincide to such an extent that a judgment against one entity has res judicata effect on the other, in which case the entities are to be regarded as the same party. On the facts, however, the panel held that ALD France was a genuine, independent business with its own assets and employees, and therefore was not a front company for nor same party as its parent. The degree of control the parent company held over ALD France was not a decisive factor given its independent business activity.
The CD also refused to stay the proceedings pending a decision in the counterclaim in the Munich LD proceedings, holding that the requirement of effective legal protection demands a “swift decision” in the nullity action.
Sun Patent Trust v Vivo [UPC_CoA_755/2025, UPC_CoA_757/2025 , UPC_CoA_791/2025, UPC_CoA_793/2025]
January 2026Parties
Case and decision number
UPC_CoA_755/2025, UPC_CoA_757/2025 , UPC_CoA_791/2025, UPC_CoA_793/202
Judges
Klaus Grabinski
Peter Blok
Emanuela Germano
Emmanuel Gougé
On 26 January 2026, the Court of Appeal (CoA) handed down its decision on appeals from the Paris Local Division (LD) concerning access to information designated confidential and Highly Confidential (HCI) – including Sun Patent Trust’s comparable licences. The CoA gave guidance on confidentiality regimes in FRAND cases and, notably, imposed a two-year licensing bar on the three Vivo employees permitted to access the HCI.
SPT had brought two infringement actions against Vivo before the LD, seeking (among other relief) the determination of a FRAND licence for SPT’s 4G patents. The LD allowed three named Vivo employees to access the HCI. SPT appealed, arguing that if access were granted to those employees, it should be coupled with a licensing bar preventing their involvement in any licensing negotiations with the counterparties to the disclosed agreements for a defined period.
Apple applied to intervene, supporting SPT to the extent Apple’s own confidential information was concerned. Apple argued that the LD should have imposed an External Eyes Only (EEO) regime for its information and that Vivo’s employees should face a five-year licensing bar. Vivo, for its part, maintained that the appeals – and Apple’s intervention – should be dismissed. Vivo argued that EEO regimes are incompatible with the UPC framework (including the minimum standards in the EU’s Trade Secrets Directive), and would be disproportionate.
The CoA held that the Trade Secrets Directive does not directly apply to patent proceedings, though its underlying principles are useful when interpreting UPC’s RoP. It emphasised that, as a general rule, at least one employee of each party must have access to confidential material to ensure an effective remedy and a fair trial.
However, the CoA accepted that once the employees had seen the HCI, they could not unlearn the information. To avoid creating an information asymmetry in future negotiations, the Court deemed it proportionate to impose a two-year licensing bar, preventing the three employees from participating in or advising on licensing negotiations with the counterparties to the disclosed agreements (absent those counterparties’ consent).
As for Apple’s intervention, the Court held that several of Apple’s requests went beyond the scope of SPT’s appeal and beyond the parameters set when Apple was admitted. To the extend the Apple’s requests did not support SPT’s appeal, it was dismissed as inadmissible.
Guardant v Sophia Genetics [UPC_CFI_808/2025]
January 2026Parties
Case and decision number
UPC_CFI_808/2025
Judges
Maximilian Haedicke
Camille Lignieres
Carine Gillet
In a decision delivered on 23 January 2026, the Paris LD rejected Guardant Health, Inc’s (Guardant) application for provisional measures on SOPHiA GENETICS' (SOPHiA) liquid biopsy test. Bristows represented SOPHiA in these proceedings.
Guardant, a cancer diagnostics company based in the US, filed a PI application against SOPHiA in August 2025 based on alleged infringement of four of its patents by MSK-ACCESS® powered with SOPHiA DDM™, SOPHiA's liquid biopsy test. The four allegedly infringed European patents were EP 3470533 B2 (EP 533), EP 3591073 B2 (EP 073), EP 3443066 B1 (EP 066), and EP 3766986 (EP 986). In the course of the proceedings, Guardant withdrew its claim based on EP 533. The oral hearing at the LD on 12 December 2025 considered the remaining three patents.
Of particular interest are the Court's findings on added matter, urgency, and the need for a sufficient degree of certainty for infringement.
Urgency
Based on the standard outlined by the CoA in Mammut v Orvotox under r. 211.4 RoP, the Court found that SOPHiA failed to demonstrate that Guardant had sought provisional measures with unreasonable delay. The Court considered when Guardant had sufficient evidence to commence the action and set the starting point for assessing urgency as 27 May 2025, when correspondence between the parties began. It held that three months was a reasonable delay to prepare the application for provisional measures given the complex technology and multiple patents involved in the case.
Insufficiency, validity and added matter
The first of the patents was EP 073, a divisional of EP 533, and relates to methods which allow sequences of cell-free DNA (cfDNA) molecules to be identified after amplification and sequencing through tagging with non-unique barcodes.
The infringement arguments for this patent primarily focused on the wording in the claim relating to consensus sequencing. The Court found that the construction of this feature was constrained by the fact that alternative methods for analysing sequence reads were disclosed in EP 073 but not claimed. The judgment found that infringement had therefore not been met with sufficient certainty as required by r. 211.2 RoP.
SOPHiA was also successful in their validity arguments on EP 073. They argued that Claim 1 comprises a combination of features not disclosed directly and unambiguously in the application as filed, with which the Court agreed, as the original application cannot be treated as a “reservoir from which scattered fragments can be combined”. The Court also referred to the preliminary opinion given by the EPO Board of Appeal on 18 December 2025 (after the oral hearing) in an opposition against EP 073, which also indicated that that the claims of EP 073 fell foul of added subject-matter and that therefore, the patent will likely be revoked.
The second patent, EP 066, concerns a method for identifying four cancer types using ‘deep sequencing’ of cfDNA at a read depth of at least 50,000x with a 25-gene panel. The Court also found EP 066 more likely than not to be invalid on grounds of added matter. It found that the selection of 25 genes and the four cancer types were essential to the invention as claimed; however, Guardant had failed to show that the skilled person would arrive at the claimed subject matter as a clear and unambiguous consequence of what is disclosed in the original patent application. The claims and description of the application concerned five rather than four cancers, and there was no teaching regarding a panel comprising one or more loci from each and every one of the 25 genes.
The third and final patent, EP 986, concerns the use of a computer database to link longitudinal cfDNA testing data with tumour tracking and treatment efficacy. The alleged infringement relates to SOPHiA’s software platform, ‘SOPHiA DDM’. The Court found that Guardant failed to demonstrate infringement of Claim 1 or its dependent claims with a sufficient degree of certainty as required by r.211.2 RoP. It accepted SOPHiA’s argument that the manner of information processing in the SOPHiA DDM software had not been sufficiently proven, as Guardant relied primarily on information from a disputed press release which provided no meaningful technical detail about the operation of SOPHiA’s database.
Guardant’s requests for provisional measures against SOPHiA were rejected for each of EP 073, EP 066 and EP 986. Guardant was ordered to pay SOPHiA €400,000 as an interim costs award.
Guardant v Sophia Genetics [UPC_CFI_808/2025]
January 2026Parties
Case and decision number
UPC_CFI_808/2025
Judges
Maximilian Haedicke
Camille Lignieres
Carine Gillet
In a decision delivered on 23 January 2026, the Paris LD rejected Guardant Health, Inc’s (Guardant) application for provisional measures on SOPHiA GENETICS' (SOPHiA) liquid biopsy test. Bristows represented SOPHiA in these proceedings.
Guardant, a cancer diagnostics company based in the US, filed a PI application against SOPHiA in August 2025 based on alleged infringement of four of its patents by MSK-ACCESS® powered with SOPHiA DDM™, SOPHiA's liquid biopsy test. The four allegedly infringed European patents were EP 3470533 B2 (EP 533), EP 3591073 B2 (EP 073), EP 3443066 B1 (EP 066), and EP 3766986 (EP 986). In the course of the proceedings, Guardant withdrew its claim based on EP 533. The oral hearing at the LD on 12 December 2025 considered the remaining three patents.
Of particular interest are the Court's findings on added matter, urgency, and the need for a sufficient degree of certainty for infringement.
Urgency
Based on the standard outlined by the CoA in Mammut v Orvotox under r. 211.4 RoP, the Court found that SOPHiA failed to demonstrate that Guardant had sought provisional measures with unreasonable delay. The Court considered when Guardant had sufficient evidence to commence the action and set the starting point for assessing urgency as 27 May 2025, when correspondence between the parties began. It held that three months was a reasonable delay to prepare the application for provisional measures given the complex technology and multiple patents involved in the case.
Insufficiency, validity and added matter
The first of the patents was EP 073, a divisional of EP 533, and relates to methods which allow sequences of cell-free DNA (cfDNA) molecules to be identified after amplification and sequencing through tagging with non-unique barcodes.
The infringement arguments for this patent primarily focused on the wording in the claim relating to consensus sequencing. The Court found that the construction of this feature was constrained by the fact that alternative methods for analysing sequence reads were disclosed in EP 073 but not claimed. The judgment found that infringement had therefore not been met with sufficient certainty as required by r. 211.2 RoP.
SOPHiA was also successful in their validity arguments on EP 073. They argued that Claim 1 comprises a combination of features not disclosed directly and unambiguously in the application as filed, with which the Court agreed, as the original application cannot be treated as a “reservoir from which scattered fragments can be combined”. The Court also referred to the preliminary opinion given by the EPO Board of Appeal on 18 December 2025 (after the oral hearing) in an opposition against EP 073, which also indicated that that the claims of EP 073 fell foul of added subject-matter and that therefore, the patent will likely be revoked.
The second patent, EP 066, concerns a method for identifying four cancer types using ‘deep sequencing’ of cfDNA at a read depth of at least 50,000x with a 25-gene panel. The Court also found EP 066 more likely than not to be invalid on grounds of added matter. It found that the selection of 25 genes and the four cancer types were essential to the invention as claimed; however, Guardant had failed to show that the skilled person would arrive at the claimed subject matter as a clear and unambiguous consequence of what is disclosed in the original patent application. The claims and description of the application concerned five rather than four cancers, and there was no teaching regarding a panel comprising one or more loci from each and every one of the 25 genes.
The third and final patent, EP 986, concerns the use of a computer database to link longitudinal cfDNA testing data with tumour tracking and treatment efficacy. The alleged infringement relates to SOPHiA’s software platform, ‘SOPHiA DDM’. The Court found that Guardant failed to demonstrate infringement of Claim 1 or its dependent claims with a sufficient degree of certainty as required by r.211.2 RoP. It accepted SOPHiA’s argument that the manner of information processing in the SOPHiA DDM software had not been sufficiently proven, as Guardant relied primarily on information from a disputed press release which provided no meaningful technical detail about the operation of SOPHiA’s database.
Guardant’s requests for provisional measures against SOPHiA were rejected for each of EP 073, EP 066 and EP 986. Guardant was ordered to pay SOPHiA €400,000 as an interim costs award.
Fujifilm v Kodak [UPC_CFI_365/2023]
January 2026Parties
Case and decision number
UPC_CFI_365/2023
Judges
Peter Tochtermann
On 20 January 2026, the Mannheim LD imposed €1.72 million in penalties on Kodak for failing to comply with a final injunction and associated disclosure of information, destruction, recall and removal orders relating to Fujifilm’s patent EP 3 511 174.
The penalties arose from continued non-compliance after 23 July 2025, following LD’s earlier enforcement order and the partial confirmation by the CoA in October 2025. Fujifilm argued that Kodak still had not provided complete and verifiable information, nor carried out the required recall and destruction steps, despite proper notices of enforcement.
LD agreed – it found significant shortcomings across several fronts:
- Missing export-related information: Kodak only disclosed deliveries and revenues for Germany, arguing that foreign sales were irrelevant. The Court rejected that and held that given the infringing manufacturing took place in Germany, all profits causally linked to that manufacturing – including profits realised abroad by other Kodak entities – fell within the scope of the information order.
- Non-verifiable quantities: Kodak provided production data in square metres but delivery data in units, without revealing how many square metres each unit contained. The Court held that this made verification impossible and therefore directed Kodak to disclose quantities square metres, broken down by delivery and market.
- Insufficient revenue data: Kodak withheld key deductions and relied on an external auditor’s memorandum, but the Court held that the auditor did not have full access to data and could not replace Kodak’s duty to disclose complete information.
- Incomplete recall: Recall letters were not sent to all customers, including insolvent companies or customers who had received demo samples or stock with expired shelf life. The Court held that expiry does not excuse recall – the plates could still be used in other markets.
- Advertising: The Court held that Kodak could not refuse to provide advertising information simply because other Kodak group entities handled marketing. The obligation to provide information was not limited to that what is readily available, but also extended to information that was held with other Kodak entities which the Kodak German entities should have reached out to – particularly because the Kodak Germany entities used those advertising materials.
Given these shortcomings in compliance with the Court’s previous order, the Court imposed penalties of €1.72 million, consistent with the first enforcement order (as modified by the CoA).
The Court warned that for any further non-compliance after 21 January 2026, the daily penalty would increase to €25,000 per day.
Heraeus v Vibrantz [UPC-CFI-1510/2025]
January 2026Parties
Case and decision number
UPC-CFI-1510/2025
Judges
Matthias Zigann
Tobias Pichlmaier
Edger Brinkman
On 13 January 2026, the Munich LD granted Heraeus Reestablishment of Rights (RoR) after it missed the r. 151 deadline to apply for a cost decision, determining that the failure resulted from an excusable legal misjudgment in an unclear area of procedural law.
Heraeus’ made an application for RoR under r. 320 RoP after missing the one-month deadline in r. 151 RoP to file its own application for a cost decision, following the earlier judgment of 10 October 2025 allocating costs 60% to Heraeus and 40% to Vibrantz. Vibrantz filed its cost application on time; Heraeus did not.
Heraeus explained that its representative had not recorded the deadline because they believed that, as the “net payer” under a mixed cost apportionment, they did not need to lodge their own application. When Vibrantz later argued that Heraeus’ application was out of time, Heraeus filed for reestablishment, submitting that the deadline had been missed due to an excusable legal misinterpretation.
The Court confirmed that missing a r. 151 deadline can only be remedied through r. 320 RoP reestablishment. RoR is a remedy that allows a party to regain a procedural right lost because a deadline was missed, but only where the party acted with all due care and the failure occurred for reasons outside its control. Granting reestablishment lets the Court treat the late filing as if it had been submitted on time, preventing the automatic loss of that right. It also held that the full panel, not the judge rapporteur alone, is competent to decide such applications, based on the need to reconcile the differing language versions of r. 320 RoP and to ensure legitimacy in non-appealable decisions.
The panel found Heraeus’ application admissible: it was filed within the one-month period required by r. 320 RoP, and the omitted act (its cost application) had been completed. The key question was whether Heraeus’ failure occurred “despite all due care”.
Here, the LD provided an important clarification. It acknowledged that, although parties and their representatives are generally expected to be fully aware of procedural requirements, the RoP do not clearly state that both parties must file cost applications where a cost ratio is set. There was no established UPC case law on this issue, and commentary was not decisive. In light of this genuine legal uncertainty, the panel accepted that Heraeus’ misunderstanding was an excusable error, not a lack of diligence. The panel granted Heraeus RoR, allowing its late cost application to proceed. The order is final and not open to appeal.
A dissenting opinion argued that reestablishment was unnecessary because Heraeus was not seeking a cost decision but merely raising defensive offsetting arguments permitted under r. 156 RoP. The dissent expressed concern that the majority’s interpretation could create unnecessary procedural burdens by encouraging parties to file cost applications in every mixed costs case purely to preserve their position.
ZTE v Samsung [UPC_CFI_850/2024]
January 2026Parties
Case and decision number
UPC_CFI_850/2024
Judges
Dirk Böttcher
ZTE and Samsung are involved in a multi-jurisdictional FRAND dispute across the US, the UK, Germany and the UPC.
The order issued by the Mannheim LD stems from an application from Samsung triggered by ZTE referring to a rate in a licence between Samsung and a third party to justify that its offer was FRAND. Samsung argued that this submission was introduced too late into the proceedings, and asked for it to be disregarded. The Judge Rapporteur, however, declined to rule on that request at the interim stage, as it would require an in-depth analysis that can only be made at the end of the oral hearing.
In the alternative Samsung had asked for the written procedure to be extended under r. 36 RoP to enable it to file submissions in response to ZTE’s reliance upon the licence material. With the timing of the oral hearing in mind, however, the Judge Rapporteur declined that request but gave Samsung provisional permission to respond in writing during the interim procedure, with the full panel to decide on the admissibility of both parties’ submissions at the final oral hearing. The Court noted that the scope of this provisional submission should be restricted to the assessment of the third party licence, and not cover more general submissions on the FRAND conformity of Samsung or ZTE’s previous offers.
Samsung also requested an order from the Court positively requiring it to produce the third-party licence in question, subject to appropriate confidentiality protections under r. 262A RoP. The Court agreed with Samsung that the licence was highly confidential and that a confidentiality order was justified. Access was restricted to ZTE’s authorised UPC representatives and its legal representatives in the parallel German proceedings, provided they were also registered UPC representatives, three individuals at ZTE, and ZTE’s economic expert. Should it be necessary to discuss the confidential details of the licence at the oral hearing, then the hearing would be moved into private.
Therefore, the Court granted Samsung’s request for an order against itself to produce the third-party licence.
Ona Patents v Google [UPC_CFI_100/2024 / UPC_CFI_411/2024]
January 2026Parties
Case and decision number
UPC_CFI_100/2024 / UPC_CFI_411/2024
Judges
Ronny Thomas
Bérénice Thom
Margot Kokke
On 15 January 2026, the Düsseldorf Local Division (LD) handed down its decision dismissing Ona Patents SL’s (Ona) infringement action against Google Ireland Limited and Google Commerce Limited (together, Google) while simultaneously upholding the patent’s validity by dismissing Google’s counterclaim for revocation. The proceedings also considered the question as to the correct party to a revocation action where entitlement is in dispute and late-filed pleading amendments.
Ona filed a claim for infringement of EP 2 263 098 (EP 098), which relates to location pairing technology, commonly used to pair and locate accessories such as headphones via a smartphone or tablet. Ona alleged direct infringement of EP 098 by Google’s smartphones and tablets bearing pre-installed Android operating systems which included the location tools “Google Location Service” or “Google Location Accuracy”. After written submissions were concluded and the oral hearing had been scheduled, however, Ona sought to introduce to its claim allegations of indirect infringement based on the combination of the targeted Google devices with accessories such as headphones or controllers.
The Court, however, refused to entertain the late filed allegations. The LD made it clear that the front-loaded system of the UPC requires that all allegations must be presented in the Statement of Claim so that they can be answered by the Defendant and may only be admitted later with some justification, which was not the case in these proceedings.
Under Art. 25 UPCA, for direct infringement to be proven, it must be shown that every claimed feature is present in the alleged infringing product. The relevant claims of EP 098 require that a positioning engine, including a different means, data model and controller, is present. Without the controller, which is located on the accessory, i.e. headphones, there can be no claim for direct infringement. The infringement claim was therefore dismissed.
Although validity was ultimately not decisive in these proceedings, the LD also considered the Defendant’s counter-claim to revoke the patent, concluding it was not made out on the basis of the prior art and arguments made. The Court also considered issues of entitlement in circumstances where the chain of ownership of the patent was not straightforward and had evolved during the course of the proceedings. While the point was largely academic given the substance of the infringement and invalidity findings, the Court noted that as a starting point a claimant (or counter claimant) is entitled to take the details included on the official patent register at face value.
IMC Creations v Mul-T-Lock [UPC_CFI_702/2024 / UPC_CFI_369/2025]
January 2026Parties
Case and decision number
UPC_CFI_702/2024 / UPC_CFI_369/2025
Judges
Rute Lopes
Camille Lignieres
Carine Gillet
In a decision handed down on 16 January 2026, the LD upheld IMC Creations’ (IMC) patent as valid in amended form and infringed by Mul-T-Lock’s MVP1000 padlock in the UPC territory, but not in Switzerland.
The dispute concerned IMC's European patent (which acquired unitary effect from 1 November 2023) relating to a single-sole security lock. The European patent is also in effect in the UK, Spain and Switzerland. Mul-T-Lock manufactures and markets the MPV1000 padlock, which IMC alleges infringes claims 1 and 6 of the unitary patent (as amended), and claims 1, 2 and 7 the Swiss part of its European patent as granted.
IMC argued the international jurisdiction of the LD extended to infringement proceedings relating to a national patent granted in a state bound by the Lugano Convention, as this contains similar provisions to the Brussels I Bis Regulation. It cited an earlier decision of the LD (UPC_CFI_355/2023), in which the panel did not exclude the possibility that UPC decisions may have effect beyond the territory of the UPC contracting states. Mul-T-Lock argued that infringement of a national part of a patent is governed by national law, and therefore the claim in relation to the Swiss designation must be dismissed because IMC had not pleaded infringement under Swiss law. It also argued that patent validity is a prerequisite for a finding of infringement, and the Swiss designation as granted is likely to be declared invalid because IMC had amended the claims of the unitary patent in response to an inventive step attack.
Referring to the CJEU’s decision in BSH-Electrolux, the panel held that the UPC does not have jurisdiction to assess the validity of a national patent granted by a non-UPC state. However, the UPC does have jurisdiction to hear actions for infringement of a patent granted by an EU or Lugano Convention state, unless there is a reasonable risk that the patent will be revoked nationally. In such cases the UPC must stay proceedings until the national court has ruled on validity.
On the facts, the panel agreed that the claim amendments made to the unitary patent left ‘serious doubt’ as to the validity of the Swiss patent as granted, which constituted a reasonable risk that the Swiss patent would be revoked. It was incumbent on IMC to take steps to amend the Swiss patent, where appropriate. As no national validity proceedings were pending, the panel could not stay the case. Therefore, the infringement claim relating to the Swiss designation was dismissed.
The panel upheld the unitary patent as valid in amended form and found Mul-T-Lock’s MPV1000 padlock infringed amended claims 1 and 7 on a literal interpretation. Regarding the effective date of the claim amendments, the court confirmed that under Art. 64(1) and 68 EPC, and Art. 4(1) of Regulation 1257/2012, claim amendments take effect retroactively from the date of grant. The court ordered an injunction including the delivery up and destruction of all MPV1000 products in France (the sole UPC state where the unitary patent has effect).
This decision indicates a reluctance from the UPC to rule on the infringement of national patents in non-UPC states where there is a reasonable risk the patent may be revoked. Any claim amendments sought in UPC proceedings that are not mirrored in the national designations may be indicative in assessing whether a national patent faces a reasonable risk of invalidity.
Emboline v AorticLab [UPC_CFI_628/2024 / UPC_CFI_125/2025]
January 2026Parties
Case and decision number
UPC_CFI_628/2024 / UPC_CFI_125/2025
Judges
Petri Rinkinen
Matthias Zigann
Tobias Pichlmaier
On 13 January 2026, the Munich LD dismissed Emboline's infringement action against AorticLab with respect to its embolic protection medical device. In doing so, the LD held that, for medical devices, use of a device that differs from the manufacturer's intended operation only constitutes infringement if such use is in line with professional medical practice and the recognised rules of medical science.
Emboline asserted EP 2 129 425 (EP 425) against AorticLab with respect to AorticLab's FLOWer embolic protection device. Such devices are used during vascular procedures to catch plaques or debris released into the bloodstream of the patient, thereby preventing downstream blockages which can lead to a stroke or a heart attack.
The LD first addressed claim construction. EP 425 teaches that, amongst other features, the device can be retrieved from the patient after the need for it has passed. To achieve this, the claim specifies that the device is engageable by a hook on the distal end (to enable retrieval). Emboline argued that this feature only requires some type of graspable structure for a hook to engage. AorticLab contended that there must be a certain degree of intention and suitability for the component to act as a graspable structure for retrieval purposes. Given that the device is intended for use in a blood vessel, the LD held that the claim must be construed with safety and quality standards in mind; a hook simply being capable of being inserted in the device "somehow or somewhere" is not sufficient. This narrower construction also afforded suitable legal certainty to third parties in accordance with the Protocol on the Interpretation of Art. 69 EPC.
Turning to infringement, the FLOWer device is intended to be removed from the blood vessel via its fixed rod. Emboline asserted that the FLOWer could be removed by alternative means, namely using a hook to engage a V shaped structure in the frame of the device (i.e. a graspable structure). However, if such a hook was inserted, it would pierce and damage the filter material of the device. The LD opined that patent infringement is not excluded if a non-infringing use of a device is the norm, even if the manufacturer expressly specifies a non-infringing use for its device, provided that the infringing use remains possible. However, an exception applies in the context of medical devices, insofar as the possibility of an infringing-use can only be assumed if such use is in line with professional practice and the recognised rules of medical science. In this case, this includes the correct removal of the device to avoid harm to the patient. Because use of a hook to engage a graspable structure in the FLOWer device for removal would damage the device, and potentially cause harm to the patient, it did not comply with medical standards and thus was held not to infringe EP 425.
Finally, AorticLab's counterclaim for revocation had been made conditional on the LD making a finding of infringement. As the LD dismissed the infringement action, it did not need to consider the revocation claim. Consequently, the LD held that AorticLab was responsible for the unnecessary costs associated with preparing for the revocation counterclaim. In the circumstances, as Emboline had lost the infringement action and was thus responsible for those costs, the parties were ordered to bear their own costs.
Microsoft Corporation v Suinno Mobile & AI Technologies Licensing Oy [UPC_CFI_433/2024]
January 2026Parties
Case and decision number
UPC_CFI_433/2024
Judges
Paolo Catallozzi
Tatyana Zhilova
In the dispute between Microsoft Corporation and Suinno Mobile & AI Technologies Licensing Oy, the admissibility and handling of auxiliary requests to amend the patent became the central issue after the patent as granted was found invalid for added subject-matter.
Suinno had sought to safeguard the patent by filing a series of auxiliary requests. These ranged from targeted corrections to specific claims (Auxiliary Request I), to proposals such as deleting dependent claims (Auxiliary Request II), and reformulating claim 1 by combining it with various dependent claims (Auxiliary Requests III–XVII).
The Court, applying r. 30 RoP (Application to amend the patent), distinguished between objective and discretionary requirements for patent amendments in revocation proceedings. Objectively, amendments must be filed within the prescribed deadline, in the language of the patent, and must include at least one clear amendment. Discretionary factors include the clarity and comprehensibility of the amendments, the sufficiency of the explanation for their validity, and the reasonableness of the number of requests given the complexity of the case. The Court emphasised that, except for simple claim deletions, amendments generally require the submission of a full set of amended claims, enabling both the Court and the counterclaimant to immediately understand the scope and content of the changes without needing to reconstruct the applicant’s intent.
On the facts of the case, only Auxiliary Request I (amending claims 6, 10, and 12) was found to be properly filed and accompanied by the necessary documentation. However, this amendment did not address the fundamental defect in claim 1, meaning the patent remained invalid. The other auxiliary requests were found inadmissible: Auxiliary Request II was too vague, as it proposed deletions “as needed” without specifying which claims or providing supporting documents, while Auxiliary Requests III–XVII lacked clarity and were not accompanied by the required reformulated claim sets at the time of filing.
The Court emphasised that the responsibility for drafting clear and intelligible amendments lies solely with the applicant, and that neither the Court nor the opposing party should be required to interpret or reconstruct the proposed changes.
Papst v EPO [UPC_CoA_1771/2025]
December 2025Parties
Case and decision number
UPC_CoA_1771/2025
Judges
Tatyana Zhilova
On 30 December 2025, the Paris CD confirmed that the unitary effect of a patent is not linked to the designation of countries in the patent application, but to the grant of the European Patent (EP) and to the date of the request for unitary effect. This affects whether unitary effect is available, as the EP must have been granted with the same set of claims in respect of all countries participating in the UPCA. The case concerns the “Malta issue” that many commentators had identified prior to introduction of the Unitary patent regime (the same concern would also apply in relation to Croatia should that country ever join the Unitary patent regime).
In this case, PAPST filed an application for the unitary effect of EP 3 327 608 (EP 608) in April 2025. The parent application of EP 608 was filed on 31 July 2005, at a time when Malta was not a member of the EPC. EP 608 was granted 20 years later, after Malta had ratified the UPCA. The Court agreed with the EPO's refusal to grant the patent as a Unitary Patent.
The inability to designate a specific state at the date of filing due to it not being an EPC member was not a "regulatory gap" as argued by the applicant. The purpose of the phrase "for all participating Member States" in r. 5(2)(a) of the Rules relating to Unitary Patent Protection, as amended (RUPP) was to ensure the unitary character of the unitary patent.
The Court also clarified that r. 7(2) RUPP was not a discretionary power. If the conditions for registering for unitary effect are not met, the EPO must reject the application. The decision will have broader effect, at least in the short term, as it will apply to all patent applications filed before Malta acceded to the EPC on 1 March 2007.
UERAN v Xiaomi [UPC_COA_903/2025]
December 2025Parties
Case and decision number
UPC_COA_903/2025
Judges
Rian Kalden
Ingeborg Simonsson
Nathalie Sabotier
In UERAN v Xiaomi the Court of Appeal has provided guidance on the assessment to be taken by the UPC when deciding a request to change the language of proceedings to the language of the patent in suit (English) on grounds of fairness under Art. 49(5) UPCA. The Court emphasised that all relevant circumstances must be taken into account. Relevant factors include the domicile or seat of the parties and the size of the parties relative to each other. The language qualifications of the UPC representatives were less relevant. When balancing the interests of the parties, if all else is equal, the position of the defendant is the decisive factor.
InterDigital v Amazon [UPC_CFI_936/2025]
December 2025Parties
Case and decision number
UPC_CFI_936/2025
Judges
András Kupecz
Peter Tochtermann
Dirk Böttcher
By its order dated 22 December 2025 the Mannheim Local Division (LD) continued the Anti-Interim Licence Injunction (AILI) in the InterDigital v Amazon proceedings. The background is that both the German and UPC Courts previously granted injunctive relief on an ex parte basis against Amazon to prevent it from continuing its request in UK proceedings for an interim licence declaration. This led to an application by Amazon in the UK for an Anti-Anti-Suit Injunction (AASI) to prevent InterDigital from seeking to restrain final relief in the UK proceedings (including a declaration of RAND terms), this AASI was initially granted on an ex parte basis. It was subsequently continued by a decision dated 2 December 2025 after hearing both parties, on the basis that there was a high likelihood that InterDigital would seek to expand the injunctive relief in Germany and the UPC to prevent final RAND relief being sought in the UK.
On 26 November 2025, the Munich Regional Court confirmed the AILI it had previously granted. In the UPC proceedings, Amazon sought to set aside the UPC AILI on the basis that it is legitimately entitled to seek an interim licence declaration (and enforce such a licence) in the UK in accordance with the RAND framework and Swiss law.
In maintaining the injunction, the LD explained that it considered an interim licence is essentially an anti-suit injunction directed to prevent InterDigital from enforcing IP rights in other jurisdictions, including the UPC. Its reasoning was that the aim of an interim licence (whether specific performance is ordered or only merely declaration made that a willing patent owner would enter into one) is to force the patent owner to enter into such an interim licence which then provides the implementer with a contractual defence in other jurisdictions. The UPC considered such measure was "abusive and inappropriate", noting that an interim licence is not needed to protect the UK proceedings and that the UK court is free to impose measures which have effects limited to the UK territory, rather than an interim licence which the UPC considered to be a "far-reaching intrusion into the legal order of a different territory, which violates comity". The Court further noted that it considered an interim licence to be in violation of fundamental property rights, EU antitrust law and in conflict with the TRIPS agreement and as such contrary to the EU order public. It ordered that the EU Commission be provided with a copy of the order maintaining the AILI and previous AILI order.
The UPC went further to consider the position on final relief in the UK. The Court clarified that the AILI order encompasses all measures by a court or a public authority "which directly or indirectly or due to a de facto effect prevent [InterDigital] from pursuing their patent rights before the UPC". As such, while Amazon is free to seek final relief in the UK, it could only do so insofar as the effects of the final relief are "strictly limited to the UK territory and do not attach any negative consequences whatsoever to [InterDigital] for enforcing their patent rights in relation to the UPCA contracting member states". The LD explained that any order which had the effect of coercing the parties to enter into a final RAND licence determined by the UK court would be in breach of the UPC AILI. In this context, the Court noted that the UK AASI, protecting the pursuit of final relief in the UK, may already be in breach of the UPC AILI, depending on the consequences of the final relief when that is ultimately granted. The LD set a penalty of up to €50 million for any non-compliance by Amazon with the order with up to €500,000 per day for continuing non-compliance.
Amazon appealed the order and requested suspensive effect of the order. On 29 December 2025, the UPC Court of Appeal dismissed Amazon’s request for suspensive effect on the basis that Amazon failed to demonstrate the AILI order was "manifestly erroneous" or that it would cause imminent irreversible harm.
Sanofi v Stada, Dr Reddy & Zentiva [UPC_CFI_146/2024]
December 2025Parties
Case and decision number
UPC_CFI_146/2024
Judges
Alima Zana
Matthias Zigann
Tobias Pichlmaier
Sanofi’s cabazitaxel second medical use patent (European Patent No. 2 493 466) has been the subject of much litigation to date. The Patent claims cabazitaxel, in combination with prednisone or prednisolone, for treating castration-resistant metastatic prostate cancer in patients previously treated with docetaxel. Cabazitaxel is sold by Sanofi as its second-line prostate cancer treatment, Jevtana®.
National patents had already been invalidated in the UK and France in actions dating as far back as 2018. On the other hand, the patent withstood a validity challenge at the EPO, with the Board of Appeal earlier this summer dismissing the appeals against the Opposition Division decision upholding validity. Against that background, Sanofi brought UPC infringement proceedings against Stada, Dr Reddy’s and Zentiva (an action against Accord was settled before the oral hearing) alleging infringement in Germany, Denmark, Sweden, France, and Italy. The defendants counterclaimed for revocation.
The Munich Local Division (LD) consolidated the revocation actions. With various invalidity grounds at issue, the crux of the challenge was whether the patent was obvious over prior art describing the Phase III TROPIC trial for cabazitaxel in the claimed indication, as against the backdrop of earlier trials and pre-clinical data.
On 12 December 2025, the LD held the patent invalid. The panel applied the UPC Court of Appeal’s recent guidance on inventive step of second medical use claims, i.e.:
- Framing the ‘objective problem’ of the invention, which is to be done by reference to the underlying technical teaching of the patent rather than isolated differences over the prior art, and should avoid hindsight or pointers to the claimed solution;
- the selection of one or more realistic starting points in the prior art; and
- whether the claimed solution would be obvious in light of the objective problem, specifically whether the skilled person would be motivated to implement it as the “next step” (i.e. would, not only could).
The key focus for inventive step was whether the skilled person would have pursued the claimed treatment with a reasonable expectation of success.
The crucial point was the fact that the trial had been ongoing for 3 years without incident, and was nearing the end with six months left to run. This meant that Sanofi’s reliance on other discontinued authorised Phase III trials involving taxane did not support inventive step because the key point was not the authorisation of the Phase III trial.
Sanofi’s arguments emphasizing the unpredictability of oncology trials, toxicity concerns, and the absence of Phase II data in prostate cancer were thus rejected. The panel noted that while success was uncertain, the threshold for inventive step is lower: a reasonable expectation suffices.
The LD acknowledged the EPO decisions, and how they differed from the national decisions, but noted that national and EPO decisions are merely persuasive, and not binding on the UPC.
All infringement actions were dismissed, and Sanofi was ordered to bear the costs of both the revocation counterclaims and infringement proceedings. The decision underscores the UPC’s willingness to diverge from EPO findings and confirms that disclosure of an advanced clinical trial can render a second medical use claim obvious.
Hoffman-La Roche v Menarini [UPC_CFI_712/2025]
December 2025Parties
Case and decision number
UPC_CFI_712/2025
Judges
András Kupecz
Ronny Thomas
Jule Schumacher
On 5 December 2025, the Düsseldorf LD granted an application for provisional measures against Menarini in a dispute over Roche’s patent for an implantable sensor used in continuous glucose monitoring. The Court found a high likelihood of infringement of claims 1 and 16 and ordered a broad injunction covering manufacture, marketing, and distribution in Germany, France, and Italy, alongside seizure and disclosure obligations. It rejected arguments on urgency and validity, emphasising the need for effective enforcement given the short remaining patent term and competitive market dynamics.
The decision clarifies two key legal points. First, an independent process claim (and the corresponding process description) can only influence the interpretation of an independent product claim if the patent specification explicitly states that the process imparts characteristics to the claimed product. The respondents argued that the manufacturing steps described in the patent should limit the scope of the product claim, pointing to process claim 18 and passages describing cutting and structuring methods. The Court rejected this, stressing that claim 1 is a product claim and its scope cannot be narrowed by manufacturing details unless the specification makes clear that those steps define essential properties of the claimed product. The judgment noted that the patent merely described simplified manufacturing as an advantage, not as a mandatory feature, and that the ability to produce the claimed structure without complex lithography sufficed to achieve the inventive concept. This interpretation aligns with Art. 69 EPC and the Protocol, ensuring legal certainty and preventing retroactive importation of process limitations.
Second, the Court confirmed the breadth of UPC injunctions. Menarini argued that an order prohibiting manufacture was disproportionate because the contested product was made by Sinocare in China and not within a UPC member state. The Court disagreed, holding that injunctions under Art. 62 UPCA may cover future acts of manufacture regardless of where prior production occurred. The rationale was to prevent infringers from relocating production or initiating manufacturing within contracting member states after the injunction. The Court emphasised that effective enforcement requires covering other acts, including making, and that such relief does not unfairly burden the respondents since they have no entitlement to manufacture in the relevant states.
M-A-S Maschinen v Altech [UPC_CFI_316/2024 & UPC_CFI 547/2024]
December 2025Parties
Case and decision number
UPC_CFI_316/2024, UPC_CFI 547/2024
Judges
Ronny Thomas
Jule Schumacher
Mojca Mlakar
On 10 December 2025, the Düsseldorf LD delivered its decision on infringement and validity in the proceedings between M-A-S Maschinen against Altech Makina.
The claimant, M-A-S Maschinen, had brought infringement proceedings in relation to its European Patent which claimed a rotating hollow body filter system with a disc‑shaped filter for filtering impurities from a plastic melt. The claimant alleged direct infringement in relation to the defendant's acts relating to the whole filter system and indirect infringement in relation to the defendant's acts relating to the disc-shaped filters for use in the system. Remedies including an injunction, destruction, recall, and removal of infringing products and damages were sought by the claimant.
The Court found direct infringement and also held that the defendant's offer and supply of filters constituted indirect patent infringement insofar as the filters were intended for the defendant's system.
Insofar as the filters were intended for the claimant’s systems, the Court considered whether exhaustion had occurred under Art. 29 UPCA. The Court held that lawful purchasers of the claimant’s systems were entitled to use it for its intended purpose, which included maintenance and restoration. Such maintenance required that the filter be replaced every 2 - 4 weeks. This replacement was therefore held to be a normal and permissible maintenance measure, and the technical effects of the invention were not considered to be reflected precisely in the replacement part. Therefore, the claimant’s patent rights were held to have been exhausted in this context.
While the remedies sought by the claimant were granted in respect of direct infringement, the Court declined to order recall, permanent removal from distribution channels and destruction of the disc-shaped filters found to indirectly infringe the claimant’s patent under Art. 64(1) UPCA. Such decision was made on the basis that there were other possible uses for the defendant's filters, such as distribution in patent-free countries (see also the decisions in Panasonic v OPPO (UPC_CFI_140/2023) and OrtovoxvMammut (UPC_CFI_16/2024)).
While the claimant had sought provisional damages under r. 199 RoP, the Court declined to make such an award on the basis that the claimant’s submission did not show the claim was a plausible estimate based on specific facts.
The defendant had counterclaimed for revocation of the patent, alleging that the patent lacked an inventive step over a number of prior art references. In rejecting the defendant's arguments, the Court held that it was not sufficient to merely name the documents on which it based its attack; rather, it should have explained the disclosure of the relevant documents and explained specifically why and how the skilled person would have combined the documents and arrived at the claimed solution without engaging in inventive activity.
ASUS v Oppo [UPC_CFI_525/2025]
December 2025Parties
Case and decision number
UPC_CFI_525/2025
Judges
Petri Rinkinen
Matthias Zigann
Tobias Pichlmaier
On 12 December 2025, the Munich LD ordered ASUS Technology Licensing Inc. (ASUS) to provide security for costs in the amount of EUR 200,000 following an application by the defendants, including Guangdong OPPO Mobile Telecommunications Corp. Ltd (OPPO), under r. 158.1 RoP.
Background
OPPO sought security for costs on the basis that ASUS’ registered office was in Taiwan, which lies outside the UPC Contracting Member States. OPPO argued that Taiwan is not a contracting state to the Hague Judgments Convention and that no bilateral agreement exists governing the recognition and enforcement of foreign judgments. As a result, enforcement of a UPC costs order would depend on principles of reciprocity and a case-by-case review by Taiwanese courts, creating a substantial enforcement risk.
ASUS opposed the application on two grounds: (i) it argued that any costs award could be offset against FRAND licence fees owed by OPPO, which ASUS contended would exceed any recoverable costs; and (ii) ASUS submitted expert evidence on Taiwanese law asserting that enforcement of foreign judgments in Taiwan was not unduly burdensome and that Taiwan effectively complied with Hague Judgments Convention principles, despite not being a formal contracting state.
ASUS’s financial standing was not disputed. The central issue was whether enforcement of a UPC costs order in Taiwan would be unduly burdensome.
The Court’s decision
The Court accepted that enforcement of foreign judgments in Taiwan is, in principle, possible but noted that recognition by a Taiwanese court is a prerequisite to enforcement. It found that enforcement is subject to material uncertainty, given the absence of domestic law or international agreements guaranteeing recognition. The Court also noted that enforcement timeframes could vary significantly, from around six months to as long as six years. In those circumstances, the Court concluded that enforcing a UPC costs decision in Taiwan would be at least unduly burdensome, justifying an order for security.
Amount of security
In determining quantum, the Court noted that OPPO had not provided any estimate of its expected costs for the action. In the absence of such evidence, it ordered security of 50% of the maximum recoverable costs, based on the value of the dispute and the applicable ceiling.
OPPO also sought security in respect of a prospective counterclaim for revocation. As no counterclaim had yet been filed, the Court rejected that request, while noting that a further application could be made once a counterclaim is brought.
Innovative Sonic v Oppo [UPC_CoA_838/2025]
December 2025Parties
Case and decision number
UPC_CoA_838/2025
Judges
Rian Kalden
Ingeborg Simonsson
Nathalie Sabotier
On 1 December 2025, the Court of Appeal upheld the change of language in Innovative Sonic v OPPO, confirming that the proceedings will continue in English. The Court found that the President of the Court of First Instance had properly applied the Art. 49(5) UPCA fairness assessment, taking into account the parties’ international circumstances, the prevalence of English in the relevant technology sector, and the need for the parties themselves, not only their representatives, to fully follow the case.
The UPC Court of Appeal has dismissed Innovative Sonic’s appeal and confirmed that the proceedings will continue in English rather than German. The Court reaffirmed that the test under Art. 49(5) UPCA is one of overall fairness, requiring consideration of all circumstances specific to the case, with particular emphasis on the defendant’s position.
The President of the Court of First Instance had found that English is widely used in the wireless communications sector and is the internal working language of the OPPO group. The Court of Appeal agreed that proceeding in English would therefore better ensure that OPPO can fully understand the submissions and evidence. It stressed that parties cannot reasonably rely on machine translations, particularly when operating under strict procedural deadlines. The Court also confirmed that the language abilities of the parties’ representatives, the presence of German speaking judges, and the existence of parallel national litigation are of limited relevance to the Art. 49(5) assessment.
Reiterating its earlier case law, the Court emphasised that a party must be able to fully understand both what is submitted on its behalf and what is submitted by the opposing side.
Finally, the Court noted that, because the language had already been changed at an earlier stage, maintaining English promoted stability and procedural efficiency.
Bhagat v Oerlikon [UPC_CoA_8/2025]
December 2025Parties
Case and decision number
UPC_CoA_8/2025, APL_366/2025
Judges
Klaus Grabinski
Emanuela Germano
Emmanuel Gougé
On 9 December 2025, the Court of Appeal of the UPC set aside an interim damages award from the lower court for reputational damage. Bhagat Textile Engineers (Bhagat) appealed the decision of the Milan Local Division to award provisional damages of EUR 15,000 for reputational damage to Oerlikon Textile GmbH & Co KG (Oerlikon) resulting from Bhagat’s infringement of Oerlikon’s patent. Bhagat also appealed the costs award at first instance in addition to the decision to not stay infringement proceedings pending the outcome in a parallel validity action (the appeal of this stay decision was ultimately dropped).
Bhagat's original infringing act was to offer a structuring/texturing machine to the public at a trade fair in Milan. During the appeal, it was not disputed that this machine infringed Oerlikon’s patent. It was also accepted that Oerlikon had failed to present evidence of negative economic consequences suffered by it or unfair profits made by Bhagat as a result of this exhibition. The parties did however disagree on the award of damages resulting from the alleged moral prejudice to Oerlikon pursuant to Art. 68(3)(a) UPCA.
The Court of Appeal concluded that Bhagat was at least negligent in failing to monitor the patent landscape before exhibiting its product. As an “active stakeholder in the industry”, there were reasonable grounds for Bhagat to know about the existence of Oerlikon’s patent and the corresponding infringement risk. Art. 68(1) UPCA therefore applied. Under this provision, the Court shall order the infringer to pay the injured party damages “appropriate to the harm actually suffered by that party as a result of the infringement”. In addition, the Court should take into account all appropriate factors when setting damages. These factors include economic factors and factors such as moral prejudice (Art. 68(3)(a) UPCA).
The Court of Appeal concluded that Oerlikon had failed to evidence reputational damage: statements made by the Managing Partner of Bhagat Group were too general and merely indicated that Bhagat was present at the relevant trade fair. Oerlikon’s request for interim damages resulting from moral prejudice was therefore rejected.
The Court of Appeal did uphold the first instance decision to award costs to Oerlikon. Bhagat had argued that it should be liable for a lower portion of the costs due to its efforts to settle the dispute. However, the Court of Appeal noted that Art. 69(1) UPCA establishes reasonable and proportionate legal costs and other expenses should be borne by the unsuccessful party as a general rule. Oerlikon’s failure to send a warning letter was justified given the urgency and limited length of the relevant trade fair (7 days). As no unnecessary costs had been incurred by Bhagat, the first instance costs award was maintained.
Bhagat was ordered to bear 80% of Oerlikon’s appeal costs and Oerlikon was required to pay 20% of Bhagat’s appeal costs.
Vivo v SPT [UPC-COA-0000904/2025 & UPC-COA-0000905/2025]
November 2025Parties
Case and decision number
UPC-COA-0000904/2025, UPC-COA-0000905/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
On 27 November 2025, the Court of Appeal rejected an application to stay proceedings under r. 21.2 RoP, specifically relating to staying deadlines.
Sun Patent Trust (SPT) had brought infringement actions against Vivo in the Paris Local Division which requested an injunction to restrain Vivo if it did not enter a FRAND licence. Vivo had filed a preliminary objection and requested that the deadlines for its Statement of Defence and Counterclaim for Revocation be stayed until the preliminary objection decision had become final. The request to extend the deadlines was denied at first instance.
The Court of Appeal found that the period for lodging a Statement of Defence should not be affected by the lodging of a preliminary objection. However, if there was an appeal against a decision or order regarding a preliminary objection, then the main proceedings can be stayed on a “reasoned request”, so the Court had the power to grant a stay under “exceptional circumstances”.
The fact that Vivo’s preliminary objection (related to jurisdiction) had never been decided before and was allegedly of “controversial discussion among scholars” did not constitute “exceptional circumstances”. Additionally, Vivo’s interest in avoiding costs (for preparing its Statement of Defence) did not outweigh SPT’s interest in obtaining an infringement decision without delay.
Meril v Edwards Lifesciences [UPC_CoA_464/2024, UPC_CoA_530/2024 , UPC_CoA_21/2025 , UPC_CoA_457/2024, UPC_CoA_532/2024 , UPC_CoA_27/2025 , UPC_CoA_458/2024 and UPC_CoA_533/2024]
November 2025Parties
Case and decision number
UPC_CoA_464/2024, UPC_CoA_530/2024, UPC_CoA_21/2025, UPC_CoA_457/2024, UPC_CoA_532/2024, UPC_CoA_27/2025, UPC_CoA_458/2024, UPC_CoA_533/2024, APL_45049/2024, APL_51701/2024, APL_1926/2025, APL_44701/2024, APL_51746/2024, APL_2205/2025, APL_44702/2024, APL_51748/2024
Judges
Klaus Grabinski
Peter Blok
Emanuela Germano
On 25 November, the Court of Appeal (CoA) issued its decision in the Meril v Edwards Lifesciences appeal concerning Edwards’ patent to prosthetic heart valves (EP 3 646 825). In short, the Court upheld the first instance decisions insofar as the Edwards' patent should be maintained in amended form and Meril's prosthetic heart valve infringed the patent. Notably, the Court adopted the same "holistic" approach for assessing inventive step as set out the in Amgen v Sanofi and Regeneron decision. This alignment from the two panels indicates that a concerted effort has been made by the CoA to harmonise the test for inventive step in the UPC.
Background
In June 2023, Edwards issued infringement proceedings against Meril DE and Meril IN in the Munich Local Division (LD). Shortly thereafter, in August 2023, Meril IT issued a revocation action in the Paris Central Division (CD). In November 2023, Meril DE and Meril IN counterclaimed for revocation; these counterclaims were transferred to the revocation action in the CD. After the patent was maintained in amended form by the CD in July 2024, the LD found that Meril’s “Myval” valves infringed the patent and ordered injunctive relief in November 2024.
Appeal
The CoA decision deals with multiple procedural and substantive appeals. For brevity, this update shall address a selection of the issues.
In deciding the substantive appeals, the Court provided guidance on claim construction. Whilst embodiments in the specification will typically fall within the claim, that is not necessarily the case in circumstances where the specification teaches that a specific embodiment is not claimed. In this instance, Meril sought to argue that certain embodiments in the specification which included rhomboid cells fell within the claim. The Court held that the claim is limited to valves made up entirely of hexagonal cells, meaning that the rhomboid cell embodiments did not fall within the claim. This finding was particularly relevant to the assessment of inventive step.
As it did in Amgen v Sanofi and Regeneron, the CoA set out the test for inventive step. First, the object of the invention (i.e. the objective problem) should be identified on the basis of the teaching of the patent. To avoid hindsight, this should not include pointers to the claimed solution. The claim will be obvious from a realistic starting point if the skilled person would arrive at the claimed solution as a routine next step. A realistic starting point is a teaching that would have been of interest to the skilled person, may address a similar problem to the claimed solution and/or may include similar features to the claimed solution. The skilled person requires a pointer or motivation from the prior art and it is a question of whether they “would” arrive at the claimed solution (rather than “could”).
In the context of this case, the Court held that the objective problem is the improvement of the design of a balloon-expandable transcatheter prosthetic heart valve. This is achieved by reducing the crimping profile of the valve and providing stability during crimping and subsequent expansion by using valves with entirely hexagonal cells. The key prior art, Levi, discloses prosthetic heart valves comprising layers of rhomboid and hexagonal cells. Levi teaches that different parts of the valve with different functions should have different cell structures. The combination of hexagonal cells and rhomboid cells has multiple benefits in relation to the overall dimensions of the valve, providing structure to the leaflet and reducing the crimping profile. The Court held it would go against the teaching of Levi to replace the rhomboid cells with hexagonal cells, meaning that the claimed solution was not obvious. Meril’s other inventive step attacks failed for similar reasons. The Court also dismissed Meril’s arguments on appeal relating to added matter, clarity, novelty and non-infringement.
In the context of the procedural disputes, the CoA provided guidance on the following issues:
- Competence: Edwards appealed the finding that the CD was competent to hear the revocation action in circumstances where the infringement action between the same parties on the same patent was already pending in the LD. In addition, it argued that the CD action constituted an abuse of right. In dismissing this appeal, the CoA noted that “same parties” under Art. 33(4) UPCA means identical parties. Different Meril entities were party to the two actions such that a decision in one action would not be res judicata against the other parties. Further, the CD action did not constitute an abuse insofar as Meril IT distributed products in Italy and therefore had a legitimate interest in bringing an action.
- Application to amend the patent: Meril appealed the decision to allow Edwards' application to amend the patent. This was Edwards' third application to do so, having filed one with its defence to the revocation action and a second in response to the counterclaims to revocation (this was inadmissible on the basis of being too broad and the judge-rapporteur suggested Edwards narrowed its request). The Court dismissed Meril’s appeal on the basis that Edwards could not have introduced the amendments any earlier in proceedings and the application did not hinder Meril in preparing for the revocation action hearing. In doing so, it noted that the first instance court has discretion when deciding to admit such an application, whereas the review by the Court is limited.
- Application to amend the scope of the claim: the Court refused Edwards’ appeal against the Munich Local Division’s refusal to amend Edwards’ claim for injunctive relief to include Romania, following its ratification of the UPCA. Edwards could not satisfy the Court that the amendment could not have been made with reasonable diligence at an earlier stage. Ratification occurred on 1 September 2024, but Edwards did not indicate its intent to amend its claim until 24 September 2024 at the oral hearing and neglected to mention it at an earlier interim conference on 5 September. Such delay would have unreasonably hindered Meril in preparing its defence, as it would have had to conduct fact investigation.
- Limitation of injunction: Meril offers certain XL valves that Edwards does not. The LD held that there is a legitimate interest in the availability of Meril’s XL valves. For the use of such valves to be excepted from the injunction, the LD ordered that patient data must be submitted to an Edwards portal to allow Edwards doctors to confirm that the patient cannot be treated with an Edwards valve. On appeal, the Court did not consider that this adequately addressed the legitimate interest, insofar as it requires Edwards to maintain the portal and make the assessment. The Court adjusted the requirements for the exception, such that notification of intention to use the Meril XL valve from a physician confirming that such product is the only available treatment option for a particular patient is sufficient.
Barco v Yealink [UPC_CoA_317/2025 & UPC_CoA_376/2025]
November 2025Parties
Case and decision number
UPC_CoA_317/2025, UPC_CoA_376/2025, APL_16185/202, APL_19989/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 28 November 2025, the Court of Appeal (CoA) issued an order in an appeal and cross-appeal in the dispute between Barco and Yealink, emanating from a request for provisional measures heard by the Brussels Local Division. The dispute centred on the protected subject matter of EP 3 732 827, namely methods and systems for making functional devices available to participants of meetings, as well as software for carrying out such methods. A diverse range of questions were at issue in the appeal and cross-appeal including the competence of different divisions of the UPC in the context of the interplay between Art. 33(1)(a) and Art. 33(1)(b) UPCA, how urgency is to be assessed during the grant procedure at the EPO, and how interim costs are to be handled.
On competence, the CoA upheld the first instance decision and dismissed Yealink’s cross-appeal in this regard, finding the Brussels Local Division competent to hear the case. The Court clarified that UPC internal competence (Art. 33 UPCA) is not governed by the Brussels I Recast Regulation and that there is no hierarchy between competence based on the place of infringement (Art. 33(1)(a) UPCA) and the defendant’s domicile (Art. 33(1)(b) UPCA).
With respect to urgency, the Court also upheld the first instance court’s dismissal of Barco’s application for provisional measures on the basis of lack of urgency. The Court found that Barco could have acted sooner after the patent grant and did not exercise sufficient diligence, meaning provisional relief was not warranted. The Court noted that Barco and their validation representative did not appear to have acted with the requisite urgency when completing the unitary patent registration process and that Barco could have made its test purchases prior to the registration of the unitary patent. Both considerations argued against a finding that the claimant had demonstrated the requisite urgency.
On costs, the Court took the view that granting an interim award up to the applicable ceiling makes the costs determination procedures under r.150 RoP effectively redundant, and opined that an interim award of costs of up to equal to half of the ceiling is generally more appropriate.
Merz v Viatris [UPC_CFI_697/2025]
November 2025Parties
Case and decision number
UPC_CFI_697/2025
Judges
Samuel Granata
Camille Lignieres
Carine Gillet
The UPC has issued its first decision involving an SPC, setting an important precedent for the assessment of urgency in the context of generic product launches. At the Paris LD, Merz sought a Preliminary Injunction (PI) against Viatris for alleged infringement of French SPC No. FR13C0033, based on EP 2377536 and protecting fampridine (FAMPYRA®) until July 2026. Viatris launched its generic, FAMPRIDINE VIATRIS LP 10 mg, in France in June 2025.
Viatris opposed the application, challenging urgency, patent validity and SPC validity, citing prior marketing in Bulgaria and Poland.
The Court rejected the application for unreasonable delay under r. 211.4 RoP, stressing that urgency is a decisive threshold. A key conclusion was that imminent infringement and actual infringement are alternative triggers for provisional measures, not sequential stages. Having the necessary evidence for either of these situations puts the patentee in a position where a PI action can be initiated. Therefore, if there is an existing case for imminent infringement, the clock for assessing urgency cannot be restarted once actual infringement begins. Regulatory steps performed by Viatris (pricing and reimbursement, which had been completed by November 2024) made entry of the generic product foreseeable, and the Court therefore considered that Merz should have had the necessary knowledge of imminent infringement at an earlier stage. Even taking account of the fact that Merz only regained direct exploitation rights from its licensee on 2 January 2025, the delay until 31 July 2025 to file the application resulted in a lack of urgency. The Court also stressed that Merz should have exercised due diligence when reacquiring the rights and that in doing so would have gained knowledge of the imminent infringement by Viatris.
The application was therefore denied, and Merz was ordered to pay €56,000 in costs. In light of the lack of urgency the Court declined to comment on SPC validity and infringement, so these remain open issues for future proceedings. The decision underscores that originators must act promptly when regulatory milestones signal generic entry.
Morello Forni v GastroTeam [UPC CFI No. 802/202]
November 2025Parties
Case and decision number
UPC CFI No. 802/202, App_576355/2023
Judges
Samuel Granata
Pierluigi Perrotti
Alima Zana
On 19 November 2025, the Milan Local Division (LD) issued a default judgment under Art. 37 UPCA, finding and declaring that the defendants’ Pizza Former machine infringed EP 3 691 454 B1 (EP 454), a unitary patent. The patent protects a method for shaping pizza dough and a machine for implementing that method.
The defendants, Gastroteam and Salvatore Marciuliano, formerly exclusive distributor of Morello’s Pizzarella machine in Sweden, ceased their commercial relationship with Morello in 2018 and subsequently began manufacturing and marketing the Pizza Former across Europe. Neither defendant filed a defence to the Statement of Claim served earlier this year by Morello, which asserted that the Pizza Former infringed EP 454. This prompted the claimants’ request for judgment in default.
The Court confirmed proper service and that the defendants had failed to comply with the imposed procedural deadlines before assessing whether the claim met the evidentiary threshold required under Art. 54 UPCA and r. 355.2 RoP. It emphasized that default does not equate to automatic success; the claimant must still prove the facts on which its claim is based. The Court found that the claimants had satisfied this standard of proof and the facts presented justified the measures requested.
Technical analysis presented by the claimants demonstrated that the Pizza Former machine infringed nearly all of the patent claims; the Pizza Former was deemed to literally reproduce all but two of the claims of EP 454. Documentary evidence also satisfied the Court that the defendants were manufacturing, offering for sale, and distributing the infringing product throughout UPC Contracting Member States.
Upon finding the defendants liable for patent infringement, the Court found that the infringement was sufficiently serious to justify a pan-UPC injunction prohibiting the continuation of the infringement. Given that the Pizza Former was a direct replacement for the Pizzarella, each infringing product sold was deemed to be directly taking a sale from the claimants and eroding their market share, justifying the need for an injunction. This injunction takes immediate effect in all UPC Contracting Member States.
The Court also ordered the withdrawal and destruction of all infringing products within 30 days, disclosure of commercial documentation relating to the infringing products, and publication of the decision. Quantum of damages is to be determined at a subsequent hearing.
Amgen v Sanofi & Regeneron [UPC_CoA_528/2024 & UPC_CoA_529/2024]
November 2025Parties
Case and decision number
UPC_CoA_528/2024, UPC_CoA_529/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 25 November, the Court of Appeal (CoA) handed down its decision in Amgen v Sanofi and Regeneron, reversing the decision of the Central Division in Munich (CD) to revoke Amgen’s patent EP 3 666 797 (EP 797). The claims of EP 797 relate to antigen binding proteins that bind to proprotein convertase subtilisin kexin type 9 (PCSK9). By targeting PCSK9, it reduces binding to low density lipoprotein receptor (LDLR), which is important in lowering cholesterol levels. The CD had found that EP 797 lacked inventive step, using the problem-solution of the EPO.
In contrast, the CoA did not adopt the EPO’s problem-solution approach, instead opting to set guidance broadly aligned with the approach the Paris CD previously coined the ‘holistic’ approach, which is derived from the CoA’s guidance in the Nanostring/10X Genomics PI case. The Court acknowledged that National Courts have adopted various tests to assess inventive step, including the problem-solution-approach used by the EPO, and the “holistic” approaches used in the UK and Germany. The Court commented that, when properly applied, these approaches should and generally do lead to the same conclusion. However, the guidance is clear - the holistic approach is preferred by the UPC and the headnotes set out clear steps in the analysis which should be followed. The approach shares a degree of commonality with the EPO, but there are some marked differences, discussed below.
The Court also set guidance on claim construction, addressing medical use claims and the effect of dependent claims.
Claim Interpretation
Independent claim 1 was drafted as a medical-use claim. Consequently, the claimed invention must result in a lowering that brings about a therapeutic effect. The fact that the skilled person does not derive any minimum effect from the claim or description does not alter this conclusion, as the therapeutic effect derives from the use of the medical-use claim format, not the claim language.
The CoA also stated that the question as to whether conclusions can be drawn from the subject-matter of dependent claims will depend on the circumstances of the individual case. If the dependent claim is adding additional features, then it argues against drawing conclusions in relation to how the main claim is interpreted. In this case, dependent claims 6 and 7, which claimed the administration of the antibodies with another medicament that lowers cholesterol, did not support an interpretation that the antibody is not therapeutically effective on its own.
Inventive Step
The CoA’s guidance for assessing inventive step can be broadly summarised as comprising three steps:
- Framing the ‘objective problem’ of the invention, which is to be done by reference to the underlying technical teaching of the patent rather than isolated differences over the prior art, and should avoid hindsight or pointers to the claimed solution;
- the selection of one or more realistic starting points in the prior art; and
- whether the claimed solution would be obvious in light of the objective problem, specifically whether the skilled person would be motivated to implement it as the “next step” (i.e. would, not only could).
What is the objective problem?
This is assessed from the perspective of the skilled person with their common general knowledge at the priority date. As outlined above, the objective problem should not contain pointers to the solution (e.g. using PCSK9 inhibitors to lower cholesterol). Further, this is to be based on the claim as a whole in context of the description and the drawings and must be based on the technical effect that the skilled person on the basis of the application understands is achieved with the claimed invention. This is a distinct difference compared to the EPO, where the problem is instead framed with reference to distinctions over the prior art.
The CoA began by setting out that the underlying problem the invention purports to solve was in providing a therapeutically effective treatment of hypercholesterolemia or atherosclerotic disease or other conditions related to elevated serum cholesterol levels. It noted that the use of PCSK9 inhibitors to target LDLR levels should not be within the problem, as it already points to the solution and introduces hindsight into the inventive step assessment.
What is a realistic starting point?
A starting point is realistic if it would have been of interest to the skilled person who wishes to solve the problem. This may be the case if the relevant piece of prior art already discloses several features similar to those relevant to the invention as claimed and/or addresses the same or a similar underlying problem as that of the claimed invention. There can be more than one starting point and inventive step must be assessed from each.
The relevant field of technology is not just the field relevant to the objective problem, but also fields where the same or a similar problem has arisen of which the skilled person must be expected to be aware.
Would (not only could) the skilled person, starting from a realistic starting point in the state of the art in the relevant field of technology, wishing to solve the objective problem, arrive at the claimed solution? (i.e. would they have been motivated to arrive at the claimed solution?)
The CoA stressed that the skilled person is uninventive, and there must be a pointer/motivation from the starting point to implement the next step. A solution is obvious where the skilled person would take the ‘next step’ indicated by the pointer or as a matter of routine.
Reasonable expectations of success are relevant in this regard and the burden to prove the expected success lies with the party asserting invalidity of the patent. A reasonable expectation of success implies that whilst the skilled person may perform some routine experimentation, they must have been able to rationally predict, based on the known facts, the successful conclusion of that work.
This question will always depend on the circumstances of the case. The more unexplored the technical field, the lower the expectation of success. Practical and technical difficulties as well as the costs involved in testing whether the desired result will be obtained are also relevant factors. However, generally, the stronger the pointer to the claimed solution, the lower the threshold for a reasonable expectation of success. The fact that multiple teams are working contemporaneously on the project does not necessarily imply there was a reasonable expectation of success.
Finally, where the patentee submits evidence that there were uncertainties or practical/technical difficulties, the burden of showing that this will not prevent the skilled person from having a reasonable expectation of success falls on the party alleging obviousness.
Applying the above assessment to the facts in this case, the CoA ultimately found that despite there being a pointer in the prior art that would provide the skilled person with a strong incentive to block PCSK9 activity to reduce LDL levels in order to be able to treat hypercholesterolemia and similar diseases, they would not have a reasonable expectation of success. This is because the prior art only contained data on the extracellular activity. At the priority date it was not known whether the contribution of the PCSK9 inhibitors were intracellular and extracellular, and without in vivo data, the skilled person could not reasonably predict whether the antibody route would lead to a therapeutically effective treatment of hypercholesterolemia and similar diseases.
Sufficiency
The CoA also offered guidance on the application of the sufficiency test to functional features. The test is whether the skilled person is able to reproduce the claimed subject-matter on the basis of the patent without any inventive effort and without undue burden.
Commenting specifically on functional features, the CoA said that a patentee is not required to disclose how every embodiment within the functional definition should be obtained. Therefore, the non-availability of some embodiments is immaterial to sufficiency for a functionally defined claim. The only requirement is for the skilled person to be able to obtain suitable embodiments within the scope of the claim.
EP 797 was held to be sufficiently disclosed. The respondents were unable to show that, based on the teachings to measure the binding of the antibodies and the common general knowledge, the skilled person would be unable to obtain further antibodies with the claimed functional properties, i.e. “to the catalytic domain of a PCSK9 protein of the amino acid sequence of SEQ ID NO: 1”. No evidence was submitted showing that the screening methods disclosed would be unsuitable to enable the skilled person to identify whether an antibody binds to the catalytic domain without undue burden.
The CD’s decision was reversed, and the respondents ordered to pay the costs of the proceedings.
ACD v Molecular Instruments [UPC_CFI_187/2024 & UPC_CFI_507/2024]
November 2025Parties
Case and decision number
UPC_CFI_187/2024, UPC_CFI_507/2024
Judges
Alima Zana
Edger Brinkman
Margot Kokke
On 18 November 2025, The Hague Local Division (LD) held that two European patents owned by Advanced Cell Diagnostics, Inc. (ACD) were valid but not infringed by the defendant, Molecular Instruments, Inc. ACD’s patents (EP 1 910 572 (EP 572) and EP 2 500 439 (EP 439) related to assays for the detection of RNA molecules using RNA in situ hybridization (ISH) technology, marketed as RNAscope. ACD brought an infringement action against the defendant in relation to its kits of probes that detect RNA in the cell using ISH techniques (the HCR Products). The defendant counterclaimed for the revocation of both patents.
Validity
For assessing validity, the parties had agreed that the assessment for inventive step should follow the more holistic approach set out in Amgen v. Regeneron/Sanofi decision (UPC_1/2023 of 16 July 2024) citing the explanation that “a claimed solution is obvious if, starting from the prior art, the skilled person would be motivated to consider the claimed solution and to implement it as a next step in developing the prior art.” The Court noted that, in practice, the parties appeared to apply the problem-solution but explained that the “result does not depend on the specific test and as the cited sentence seems to apply to both, the Court will apply principles that are common to both tools for assessing inventive step”.
The Court considered the three pieces of prior art, noting that the skilled person would have knowledge of in vitro and in situ assay methods for detecting RNA. However, none of the prior art documents would lead the skilled person to the invention as there was no teaching at priority date that use of the required “cruciform” DNA probes in an in situ assay would work.
The defendant also raised an insufficiency/inventive step squeeze and added matter arguments that were rejected by the Court.
Infringement
ACD alleged that the HCR Products infringed the method claims of EP 572 and kit/sample claims of EP 439. For the purposes of claim construction, the Court focussed on the interpretation of Claim 1 of EP 572. In considering the knowledge of the skilled person, the Court took into account the CGK agreed by the parties in the parallel UK proceedings, where ACD’s patents were found to be invalid. It was also agreed that the product description from the UK proceedings could be used for the infringement assessment.
The defendant’s product was found not to infringe on a literal interpretation as the label probes were overlapping, while the wording of claim 1 of EP 572 specifically stated that there were “non-overlapping regions”. It was noted that “non-overlapping” is a word known in the art and would be given its literal meaning by the skilled person and there was nothing in the patent specification to suggest otherwise.
On infringement by equivalence, the defendant objected to the late introduction of equivalence arguments by the claimant in the reply to the statement of defence on the basis that the claimant had run an equivalence case in the UK from 2022 and could have included such arguments in its Statement of Case dated 22 April 2024. The Court rejected this objection explaining that the defendant was not prejudiced by the arguments as it had the opportunity to respond in writing in its statement of rejoinder and orally at the oral hearing in the main proceedings.
The Court held that there was no infringement by equivalence on the basis that it was necessary for legal certainty (it would be impossible to construe how much overlap would be considered equivalent) and the invention was not so significant (given all the ingredients of the invention were already known, just not the combination) that a finding of equivalence was necessary for fair protection of the patentee. The Court also accepted the defendant’s argument that the overlap used was necessary for the different way that the result is achieved in the HCR Products, which arguably lead to an improvement over the claimed inventions, and was not just a work around of the claims.
Organon v Genentech [UPC_CFI_407/2025 & UPC_CFI_408/2025]
November 2025Parties
Case and decision number
UPC_CFI_407/2025, UPC_CFI_408/2025, ORD_23125/2025, ORD_23121/2025, ACT_21478/2025, ACT_21486/2025
Judges
Samuel Granata
Petri Rinkinen
Rute Lopes
On 30 May 2025, the Brussels Local Division (LD) granted a request from Roche and Genentech under Art. 60 UPCA and r. 197.1 RoP for an Order to preserve evidence on an ex parte basis. The Order allowed Roche and Genentech to obtain information from Organon regarding its biosimilar pertuzumab product at its manufacturing sites in Belgium and the Netherlands. The Order was executed on 27 June 2025, and Organon issued an application for review under r. 197.3 on 25 July 2025. In this this application for review, decided on 12 November 2025, the LD refused Organon's application.
A review of such an ex parte Order is a two-step process. For both steps the Court should place itself on the date of issuance of the ex parte Order. First, the Court must assess whether it rightly decided to issue the ex parte Order. And second, the Court must assess whether the Order should be confirmed, modified or revoked.
In the first step, the Court will consider the facts and evidence which were presented in the original application, and any additional evidence which should have reasonably been known to the applicants (Genentech and Roche) when making the application. An essential part of this test is whether the applicants had breached their duty of full disclosure to the Court.
In relation to the first step, Organon argued that Roche and Genentech misled the Court on the question of urgency and the probability of evidence being destroyed or made otherwise unavailable (see r. 194(2)). Urgency related to the timeline to product launch; Organon argued that Genentech and Roche had presented too fast a timeline to MA grant, but the Court found that there was nothing inaccurate in the timeline, and in any event Organon's own announcements on launch timing aligned with that timeline. Organon did persuade the Court that it was improbable that it would destroy evidence due to regulatory requirements, but not that it wouldn't move evidence between sites so as to avoid the effect of the Order. Therefore, the Court decided it had been right to issue the ex parte Order.
In relation to the second step, the Court can consider any evidence presented by either party save that it cannot have been obtained as a result of executing the Order (which is to be assessed in any resulting PI or merits proceedings).
Unlike the first step, which requires urgency due to its ex parte aspect, this second step is instead concerned with whether the patent is infringed or "about to be infringed" (Art. 60(1)). The parties debated the meaning of "about to be infringed"; Organon submitted that it was akin to urgency but the Court rejected this holding instead that it means simply that it is apparent that there is a risk of infringement which will occur in the future. How far into the future depends on the facts of the case. Here the possible imminent MA grant and launch timing announcements indicated that the patent was "about to be infringed".
Having confirmed that the Order should have been made, the Court then reviewed its scope. The Court considered the balance of interest between the parties; for example, Organon had been entitled to contact a lawyer to participate in the execution of the Order, but could not delay matters waiting for their arrival. The Court considered an adequate balance had been struck in the terms of the Order and so Organon's application failed and the Order was left unaltered.
Onward Medical v Niche Biomedical [UPC_CFI_693/2025]
October 2025Parties
Case and decision number
UPC_CFI_693/2025
Judges
Tatyana Zhilova
Matthias Zigann
Tobias Pichlmaier
On 17 October 2025, the Munich Local Division (LD) dismissed Onward Medical N.V.’s application for a Preliminary Injunction (PI) against Niche Biomedical Inc. (trading as ANEUVO). The application was based on EP 3 421 081 B1, concerning neuromodulation treatment systems. The Court assessed both the likelihood of the patent being upheld in light of cited prior art and the patentee’s attempt to rely on auxiliary claim amendments.
Background
The Applicant sought a PI in Germany and France in relation to the Defendant’s “Exa Stim” neurostimulation system. The original PI request relied on Claim 1 as granted. In response to the Defendant’s protective letter, the Applicant requested that, if the Court considered the granted claims to be invalid, it be allowed to amend its PI application to rely upon an auxiliary request. In its protective letter and its response to the PI application, the Defendant asserted that the patent was not new in light of three prior-art citations.
The application was rejected by the Court.
Prior art
The Court had considerable doubts as to the novelty of granted Claim 1 under Art. 54 EPC. In particular, it relied on the prior-art document known as “Yoo,” which disclosed the combination of features forming Claim 1. Yoo was held to describe all relevant elements of the claimed neuromodulation system, including pre-programmed stimulation patterns with both spatial and temporal elements, and time-varying stimulation parameters. Therefore, applying the principles from the Court of Appeal’s decision in 10x Genomic v NanoString (UPC_CoA_335/203), it was predominantly probable that the patent as granted was valid.
Auxiliary Requests
While auxiliary requests may generally be admissible in interim-relief proceedings (UPC_CoA_182/2024), provisional measures under Art. 62 UPCA will not be granted if the patent must be amended to be considered valid. As such, the auxiliary requests must be rejected. This rule applies both to auxiliary requests filed with the original PI application, as well as those submitted later in response to validity challenges. Therefore, as a rule, applications for PIs must be rejected if they are based on an alternative version of the claim. If the patentee considers amendment necessary, the patent as granted is likely invalid. Interim measures cannot be granted if the patent is recognisably defective in its granted form and the Court cannot consider application to amend the patent under r. 30 RoP in the proceedings for interim measures.
Costs
As the PI application failed, the Applicant was ordered to bear the costs of the proceedings. However, the Defendant’s claim for provisional reimbursement was rejected because the information provided in the incurred costs was not even remotely comprehensible or verifiable.
HP v Andreas Rentmeister [UPC_CFI_515/2025]
November 2025Parties
Case and decision number
UPC_CFI_515/2025
Judges
Ronny Thomas
Jule Schumacher
Rute Lopes
On 11 November 2025, an Order was given by the Düsseldorf Local Division (LD) which considered whether the attempts to effect service of a Preliminary Injunction (PI) application on a Chinese-based defendant were sufficient to constitute good service pursuant to r. 275.2 RoP.
The PI application was filed on 13 June 2025 and 5 days later, service was initiated in accordance with the Hague Convention via the official online portal of the Central Authority of China. The Chinese authorities subsequently forwarded the documents to the Supreme People’s Court of China on 19 June 2025. However, no further processing took place. A subsequent request for the Defendant to accept service voluntarily had also failed. Finally, in late October and early November, the LD sent inquiries to the Chinese Authorities about the status of service but these were not answered.
In reaching its conclusion, the Court noted that even though r. 275.2 RoP concerns service of the statement of claim, it must also apply to PI proceedings given their urgent nature. All available means for formal service had been exhausted and service under the Hague Convention was regarded as having definitely failed. The applicant had comprehensively shown that the address provided for service was correct.
Taking into account the time period and the unsuccessful attempts to contact the Defendant and the authorities, the Court considered it was justified to deem the steps taken as adequate for proper service. The Court also noted that its decision was not contrary to the provisions of The Hague Convention. Applying the requirement to let a six-month period pass cannot apply without restriction to PI applications as it risks the applicant’s legal protection becoming ineffective. Further, any additional delay would be incompatible with the urgent nature of PI proceedings.
The Court therefore ordered that the steps already taken constituted good service, that service was deemed effective as of the date of the Order and that the Order should be published on the Court’s website.
Steros v OTEC [UPC_CoA_579/2025]
November 2025Parties
Case and decision number
UPC_CoA_579/2025, APL_30654/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
In UPC_CoA_579/2025, STEROS GPA Innovative S.L. (STEROS) had obtained provisional measures against OTEC Präzisionsfinish GmbH (OTEC) from the Hamburg Local Division, Court of First Instance (CFI), alleging infringement of EP 4 249 647. The patent relates to an electrolytic medium used in electropolishing. Claim 1 required the electrolytic medium to be comprised, inter alia, of both a conductive solution (with an electrical conductivity greater than 10 micro S/cm) and a non-conductive fluid. STEROS had argued that OTEC’s product satisfied the requirement for a non-conductive fluid through the use of an emulsion which itself separated into phases, one of which is non-conductive. The CFI held that OTEC’s product was likely to infringe claim 1, interpreting the claim to require separate conductivity assessments of emulsion phases.
On appeal, OTEC challenged this interpretation, arguing that conductivity should be assessed for the emulsion as a whole. The Court applied the decision in UPC_CoA_335/2023, NanoString v 10x Genomics, 26 February 2024 that the “description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim”, and ruled in favour of OTEC.
Where an emulsion was identified as the non-conductive fluid of Claim 1, it was the overall conductivity of the emulsion that had to be assessed. It further held that the limit of “non-conductive” should be considered by reference to the numerical value provided in claim 1 in relation to the conductive solution (i.e. 10 micro S/cm). STEROS had, relying on experimental data not disclosed in the patent, argued against applying this limit. However, the Court reaffirmed the principle that experimental data not disclosed in the patent specification is generally irrelevant to claim interpretation. Since, on an overall assessment of the conductivity of OTEC’s emulsion it did not fall below the limit of 10 micro S/cm the Court held that it was not a non-conductive fluid within the proper construction of Claim 1.
The Court therefore found no infringement and set aside the provisional measures. STEROS was ordered to bear the costs of both instances.
Seoul Viosys v expert e-Commerce [UPC_CoA_762/2024 & UPC_CoA_773/2024]
November 2025Parties
Case and decision number
UPC_CoA_762/2024, UPC_CoA_773/2024, APL_64022/2024, APL_64706/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 5 November 2025, the Court of Appeal rejected an appeal by Seoul Viosys Co Ltd (Viosys) against the decision of the Düsseldorf Local Division (LD) revoking its EP 3 223 320 patent for inadmissible broadening. Note that in a separate appeal between the same parties concerning similar issues related to a Viosys patent from the same family, the Court of Appeal overturned the first-instance decision and also revoked that patent for added matter.
Background
Viosys, together with Seoul Semiconductor Co Ltd, brought infringement proceedings against Expert e-Commerce GmbH and Expert Klein GmbH (together Expert), alleging that certain smartphone LEDs manufactured by Emporia Telecom GmbH + Co KG and distributed by Expert infringed the patent. The alleged infringement concerned an LED chip installed in the phone’s camera unit. Expert counterclaimed for revocation, arguing that the patent (a divisional of EP 2 757 598 A2) contained subject-matter extending beyond its Korean-language PCT application. The LD agreed, finding claim 1 invalid because it covered LEDs with one mesa (a raised semiconductor region), whereas the Korean PCT application disclosed only embodiments with multiple mesas.
The Appeal
Viosys argued that the Korean PCT application did, in fact, disclose a single-mesa embodiment, relying on specific figures and passages in the specification. It further contended that a skilled person would understand from the drawings and description that claim 1 encompassed a single-mesa design. Viosys maintained that the LD had misinterpreted both the technical teaching and the English translation of the Korean PCT, and submitted a revised translation asserting that errors in the earlier version had led to a misunderstanding of the disclosure. Expert maintained that the patent was invalid. It relied on the principle that the number of mesas must correspond to the number of electrodes, and that the Korean PCT application consistently referred to “a plurality of mesas” and “reflective electrodes” in the plural, ruling out a single-mesa embodiment.
The Court of Appeal’s decision
The Court upheld the LD’s decision and confirmed the strict approach to added subject-matter under Art. 123(2) and 138(1)(c) EPC. It agreed that there is a one-to-one relationship between mesas and electrodes. Although claim 1 of the patent as granted referred to “a mesa”, the use of the singular did not confine the claim to a single mesa but rather meant “at least one”. The Court found that the Korean PCT application did not disclose an embodiment with only one mesa - properly read, the specification and figures showed multiple mesas corresponding to multiple electrodes. The skilled person, reading the application as a whole, would therefore find no “clear and unambiguous disclosure” of a single-mesa embodiment.
The Court also emphasised that when an international application is filed in a non-EPO language, the translation submitted by the applicant on entry into the European phase forms the basis for examination and is presumed accurate. Both the EPO and third parties are entitled, prima facie, to rely on that translation. The translation requirement is not a mere formality, and applicants must exercise diligence to ensure its correctness.
Black Sheep Retail Products v HL Display [UPC_COA_897/2025]
November 2025Parties
Case and decision number
UPC_COA_897/2025
Judges
Rian Kalden
Ingeborg Simonsson
Nathalie Sabotier
On 6 November 2025, the Court of Appeal handed down a decision rejecting an application by Black Sheep Retail Products BV (Black Sheep) for suspensive effect of the first-instance decision requiring it to disclose information to HL Display AB (HL) to assist in calculating damages.
Background
In the infringement proceedings before The Hague Local Division, HL succeeded on validity and infringement of EP 2 432 351. The Court ordered Black Sheep to (amongst other things) provide details to HL of production quantities, prices, profits, origins and distribution channels of the infringing products, and related advertising.
The Appeal
Black Sheep appealed the first instance decision and sought for suspensive effect of the disclosure aspect of the Order, arguing that compliance would involve disclosure of confidential commercial information which could not later be “uncommunicated” if the appeal succeeded. It also contended that without suspensive effect, it would have no recourse should it succeed in the appeal, as any financial compensation would be inadequate.
The Court of Appeal’s decision
The Court confirmed that per Art. 74 UPCA appeals have no automatic suspensive effect. A stay may be granted only in exceptional circumstances, such as where an order is manifestly wrong or where, without a stay, the appeal would be rendered pointless. The Court found that the disclosure order was justified to enable calculation of damages and to prevent further infringement. Black Sheep failed to establish any exceptional circumstances, accordingly the application was dismissed.
The Court emphasised that parties who foresee that disclosure may require production of confidential information should raise the issue during first-instance proceedings so that appropriate safeguards can be built into the Order. It noted that Black Sheep did not raise such request in the first-instance proceedings.
IMI Hydronic v Belparts [UPC_CFI_104/2025 & UPC_CFI_364/2025]
October 2025Parties
Case and decision number
UPC_CFI_104/2025, UPC_CFI_364/2025, App_36631/2025, ACT_6739/2025
Judges
Maximilian Haedicke
Marjolein Visser
Belparts Group N.V. (Belparts) sought, under r.340.1 RoP, to consolidate infringement and revocation actions pending before the Munich Local Division (LD) and Paris Central Division (CD) relating to the same patent. A claim between Belparts and IMI Hydronic International SA and IMI Hydronic Engineering AB for infringement of the patent, with a counterclaim for revocation, is pending before the LD. A claim between Belparts and IMI Hydronic Engineering Deutschland GmbH for revocation of the patent, with a counterclaim for infringement is pending before the CD. Prior to the request for joinder, the LD had consulted the parties on bifurcation of its infringement and validity proceedings. The parties voted against bifurcation.
The request aimed to have the Paris counterclaim for infringement heard jointly with the Munich infringement action and, conditionally, to refer the Munich revocation counterclaim to Paris for joint hearing with the revocation action already pending there. All parties agreed to the request.
The Court analysed the request under r. 340.1 RoP and Art. 33 UPCA, which allows a joinder in the interest of justice and to avoid inconsistent decisions. The Court found that granting the request would still result in multiple oral hearings and decisions concerning the same patent where the infringement and revocation issues are not heard and decided simultaneously. The Court noted that this is because of the “(procedural) choices the parties made”. The Court concluded that the proposed consolidation did not meet the criteria for proper administration of justice and rejected the request. Proceedings will continue as scheduled in their respective divisions.
SPT v Vivo [UPC_CFI_361/2025]
October 2025Parties
Case and decision number
UPC_CFI_361/2025
Judges
András Kupecz
Camille Lignieres
Carine Gillet
In Sun Patent Trust (SPT) against several companies in the VIVO group the Paris Local Division (LD) has rejected a preliminary objection filed by VIVO to dismiss the action brought by SPT.
Earlier this year, SPT brought a claim against VIVO in the LD for infringement of Standard Essential Patents (SEPs) relating to 4G+ technology. As part of that claim SPT asked for a finding: (i) of infringement; (2) that SPT has offered licence terms to VIVO which are FRAND or that the Court determines any adjustments to the licence terms offered to bring those terms into the FRAND range; and (3) if VIVO does not take a licence on FRAND terms, to issue an injunction.
In its preliminary objection VIVO argued that the UPC did not have jurisdiction to hear the claim (under R 19.1(a) RoP) because SPT’s claim includes a request for the determination of FRAND terms, which VIVO argued falls outside the subject matter of actions exhaustively listed in the UPCA as being within the competence of the UPC. SPT responded to the objection that it has not brought a separate claim for a FRAND determination. Rather it brought an action for patent infringement within Art. 32(1)(a) UPCA and the relief it seeks, including the injunction, is conditional on the Court resolving the factual and legal FRAND issues.
In its Order dated 30 October 2025 the LD agreed with SPT. The Court considered that the action brought by SPT is primarily an infringement action and that SPT had merely anticipated the FRAND defence that would be raised by VIVO. It was further noted that it has been decided already (in Panasonic v OPPO before the Mannheim LD) that a FRAND defence is within the jurisdiction of the UPC. The Court therefore concluded that it had jurisdiction to hear the FRAND issues and the objection was rejected. The LD noted, however, that the admissibility of the request for a FRAND determination is an issue for the main proceedings.
VIVO also raised a second objection about the jurisdiction of the LD to hear the action given none of the defendants are domiciled in France. SPT based the jurisdiction of the LD on the first criterion of Art 33.1(a), namely that a claim can be brought before a LD where actual or threatened infringement may occur. SPT had a made a purchase of an alleged infringing product offered by the VIVO group on a website dedicated to the French market. This was enough to demonstrate the concerns of alleged infringement in France and confirm the competence of the LD. This second objection was therefore also rejected. The costs of the preliminary objection were ordered to be dealt with as part of the main proceedings.
Oerlikon v Bhagat [UPC_CoA_8/2025]
October 2025Parties
Case and decision number
UPC_CoA_8/2025, APL_366/2025
Judges
Klaus Grabinski
Emanuela Germano
Emmanuel Gougé
On 30 October 2025, the Court of Appeal Issued an Order relating to security for costs. By way of background, the Appellant before the Court, Bhagat Textile Engineers (Bhagat), had been found liable for infringing a patent owned by Oerlikon Textile GmbH & Co KG (Oerlikon). Bhagat had sought to appeal the Order from the Court of First Instance on limited grounds. Following the decision at first instance, a costs award had been made against Bhagat which it had failed to pay. As part of the appeal, Oerlikon filed an application for security for costs. The application was made following the summons for the appeal hearing and requested payment of a security or a bank guarantee in favour of Oerlikon for costs in the appeal proceedings as well as the costs incurred, and not paid, from the first instance proceedings.
The Court admitted the application for security of costs, even though it was filed after the summons to the oral hearing, holding that subject to the circumstances of the case and provided it is substantiated by compelling reasons, an application for security for costs may be filed after the summons for oral hearing has been issued. Further, the Court was willing to grant the security in favour of Oerlikon in relation to costs in the appeal proceedings. However, it set the amount at half the ceiling costs, far less than requested. The Court also refused the part of the application in relation to first instance costs. This was primarily on the basis that it was a matter for enforcement of a costs decision and not security for costs.
bioMérieux v Labrador Diagnostics [UPC_CFI_497/2024 & UPC_CFI_571/2024]
October 2025Parties
Case and decision number
UPC_CFI_497/2024, UPC_CFI_571/2024
Judges
Andrea Postiglione
Marije Knijff
On 23 October 2025, the Milan Central Division gave its decision on the consolidated revocation actions brought by bioMérieux against Labrador Diagnostics in relation to a patent claiming an instrument for detecting a biological analyte. The Court found that the patent as granted and as amended by the patentee’s Main Request and Auxiliary Requests 1 and 2 lacked novelty and contained added subject-matter, but upheld the patent in the form of Auxiliary Request 3, which overcame the objections of lack of novelty, lack of clarity, inventive step, and sufficiency.
The Court noted that, across the Main Request and Auxiliary Requests, bioMérieux filed a significant number of attacks: about 50 invalidity attacks, more than 12 added matter attacks, 3 novelty attacks, 1 insufficiency attack, and 6 different starting points for 30 inventive steps attacks.
Importantly, the Court ruled that, if the number of arguments proves unmanageable or overly complex for the panel, the party that filed them must, if not reduce them, at least arrange the legal pleadings in order of importance and likelihood of success. However, it clarified that the judges’ impartiality prevented the Court from indicating which validity attacks it considered to be the most promising or most likely to be successful.
Labrador Diagnostics requested that the award of costs be subject to an order for confidentiality. However, the Court found that the sum of legal costs should not be kept confidential because that amount does not say anything about the company's financial capacity, its commercial strategy, or the importance of the patent as a corporate asset.
Amycel v Szymon Spyra [UPC_CFI_499/2024]
October 2025Parties
Case and decision number
UPC_CFI_499/2024, ACT_48877/2024
Judges
Rute Lopes
Edger Brinkman
Margot Kokke
On 21 October 2025, The Hague Local Division (LD) issued a decision by default judgment in an infringement action after the defendant’s failure to file its Statement of Defence by the deadline. The patent, EP 1 993 350 B2, concerns a particular strain of brown mushroom for commercial production. The same court had already issued a preliminary injunction against the defendant for its offer and sale of its Cayene mushroom strain in The Netherlands, Germany, France and Italy. In the merits action, the claimant (Amycel) sought inter alia to make the injunction permanent.
Amycel filed its Statement of Case on 30 August 2025. The acts of infringement occurred in The Netherlands, Germany, France and Italy, but the defendant was located in Poland, consequently r. 274(a)(i) RoP applied for service. The defendant’s representative at the preliminary injunction hearing had not been retained for the merits action and would not accept service on the defendant’s behalf. The Registry sent registered letters with acknowledged receipt to the defendant on two occasions. On both occasions, the letters were returned unopened. Amycel also attempted to effect service through a Dutch bailiff in two alternative ways. On both occasions, the defendant refused to accept the service documents and returned the packages to the Dutch bailiff unopened. The defendant did not make a written declaration of refusal.
After three and a half months, Amycel filed an application for alternative service on the defendant. The Judge-Rapporteur considered Amycel’s service attempts were in accordance with the UPC principles of efficiency and fairness (RoP Preamble, points 4 and 5) and constituted "good service" pursuant to r. 275.2 RoP. A copy of the Order of the date of deemed service was sent to the defendant’s representative from the preliminary injunction hearing, who was requested to forward it to the defendant. The deadline for filing a Statement of Defence (SoD) was 25 February 2025.
The defendant finally registered a representative for the merits action on 6 January 2025. The SoD was not uploaded until 4 March 2025, along with an application to re-establish the rights in respect of the deadline to file the SoD (under r. 320 RoP). On 1 April 2025, this application was refused by the court and a decision by default in the infringement action announced. However, the defendant went on to file a further six applications between 1 April and 12 June 2025. In response, Amycel asked the Court to issue the decision by default and grant the relief requested. The Court determined that the factual and legal arguments had not changed since the preliminary injunction hearing and a permanent injunction was granted with immediate effect. The Court also ordered the defendant to provide detailed sales and distribution information, recall and destroy infringing products, notify customers and publish a notice on its website, and imposed penalty payments for non-compliance with any of these steps. The defendant was also held liable for damages and ordered to pay an interim award of €50,000, as well as bear the costs of the proceedings.
Abbott v Sinocare & Menarini [UPC_CFI_587/2025]
October 2025Parties
Case and decision number
UPC_CFI_587/2025
Judges
Camille Lignieres
Edger Brinkman
Margot Kokke
On 22 October 2025, The Hague LD provided its decision in Abbott Diabetes Care Inc.’s application for provisional measures against Sinocare Inc. and A. Menarini Diagnostics s.r.l. relating to displays for continuous glucose monitoring (CGM) systems. Abbott claimed that the defendants’ GlucoMen iCan CGM system and its associated iCAN GSM App infringed several claims of European patent with unitary effect EP 3 988 471 (UP 471). Abbott sought a preliminary injunction, ancillary corrective measures and costs (including an interim award of costs).
Jurisdiction
Menarini, the European distributor of the CGM system in dispute, did not challenge jurisdiction. On the other hand Sinocare, a Chinese company, argued that it was not domiciled in a UPC member state and that its threatened infringement had not been substantiated. The Court disagreed. Sinocare manufactures the GlucoMen iCan device and it was not disputed that Sinocare makes the iCAN GGM App available on its website for customers in the UPC territory. Additionally, Menarini and Sinocare announced that they would cooperate in bringing GlucoMen iCan to the European market. There was therefore at least combined/joint threatened infringement in the UPCA territory. Further, the allegations concerned threated infringement of the same patent in the same territory with the same product. The Court therefore decided that jurisdiction as regards Sinocare was established based on Art. 7(2) of the Brussels Regulation.
Unreasonable delay
The Court held that there had been no unreasonable delay in seeking provisional measures. The defendants argued that Abbott should have been aware that GlucoMen iCan was going to be launched in Europe from December 2024. However, the Court agreed with Abbott that it needed time to assess the interaction between the GlucoMen iCan and iCan CGM App, and to assess the functionality against the final wording of the claims following the opposition proceedings against the patent, which did not crystalise until March 2025. The latest version of the iCan CGM App only became available on 21 April 2025 and the GlucoMen iCan samples were obtained on 24 April 2025. The court felt that two months to assess infringement and then start the PI proceedings was reasonable.
Claim interpretation and infringement
UP 471 relates to the displays of, in particular, the receiver unit of a CGM system. These displays provide comprehensive and easily understandable information to assist a user with diabetes management and glycaemic control. The claim features in issue are particularly directed to a so-called “timeline graph display”. The display allows the user to identify how an event (input by the user) affected their glucose level. The defendants’ non-infringement arguments hinged on the construction of the characteristics of the timeline graph display, in particular whether the wording of the claim required the event data icons to be displayed on the timeline graph itself or also covered displays where the event data icons were included in a separate panel/section on the same screen. The Court considered that UP 471 describes and claims the layout in great detail, and that the teaching required the event icons to appear on the graph itself. Any differences from the layout claimed and described were a key distinction.
The Court therefore held that the GlucoMen iCan did not infringe because the App contained a display in which the event icons are not included on the graph, but are instead included on another panel of the screen below the graph. Since the court considered it was more likely than not that the product did not infringe this feature, the other non-infringement arguments were not considered, nor were the validity arguments.
As to costs, both sides had incurred costs in excess of the applicable ceiling of €400,000, which the court deemed reasonable and proportionate in the absence of any objections from the parties. The Court clarified that an applicant for provisional measures may be ordered to pay an interim award of costs, in case this was not already clear from r. 211.1(d) RoP. Abbott was therefore ordered to pay €400,000 to the defendants by way of interim award.
Occlutech v Lepu [UPC_CFI_553/2025]
October 2025Parties
Case and decision number
UPC_CFI_553/2025
Judges
Samuel Granata
Sabine Klepsch
Stefan Schilling
On 21 October 2025, the Hamburg Local Division granted a Preliminary Injunction (PI) in Occlutech v Lepu on the basis of Occlutech's patent for a braided occlusion device, EP 2 387 951. Of particular interest are the Court’s findings on imminent infringement, urgency and the balance of interests between the parties.
Imminent Infringement
The Court noted that in Boehringer/Zentiva the Court of Appeal held that whether there is an imminent infringement must be decided on a case-by-case basis considering whether the potential infringer has “set the stage” for the infringement to occur (previously reported here).
In Boehringer the grant of a marketing authorisation to a generics company alone was held not amount to an imminent infringement. However, completion of the national procedures for health technology assessment, pricing and reimbursement for a generic medicine can amount to an imminent infringement.
The Court noted that it was relevant that a medical device may be placed on the market anywhere in the EU as soon as it has obtained its CE-mark. This is in contrast to generic drugs which require certain national procedures to be completed after a marketing authorisation is granted before such drugs can be placed on the market. Therefore, the combination of Lepu obtaining CE-mark approval for its products, its announcement that it would showcase its products at a trade fair and its active and constant presence at key medical conferences was sufficient to “set the stage” to market its products and therefore establish the threat of imminent infringement.
Urgency
The Court held that when assessing whether the applicant has acted with sufficient speed, the relevant point in time is when the threat of infringement was imminent. In this case, this was when the CE-mark was obtained for Lepu’s products as prior to this Lepu’s product could not be sold in the European Union. The argument that Occlutech could have potentially assessed product features based on a product catalogue before the CE-mark was obtained was considered irrelevant.
Weighing of interests
When considering the balance of interests of the parties, the Court found that there was a reasonable potential for significant harm to Occlutech, justifying the PI. As a result of the parties being direct competitors in the field of occlusion devices, the Court considered that it was likely that the introduction of Lepu’s device would adversely affect Occlutech’s sales opportunities. Further, Occlutech had argued that Lepu would likely offer its product at a significantly lower price leading to price erosion, which Lepu had not sufficiently substantiated was incorrect.
Kodak v Fujifilm [UPC_CoA_699/2025]
October 2025Parties
Case and decision number
UPC_CoA_699/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 14 October 2025, the UPC Court of Appeal addressed an appeal by Kodak against penalty orders issued by the Mannheim Local Division in an infringement action brought by Fujifilm concerning EP 3 511 174.
In its decision the Court gave extensive guidance on the system of penalties under R. 354 RoP. Of note were:
- Penalty orders may be issued separately after the main decision (even if they had previously not been requested or had been refused) and do not require an appeal against the original decision.
- The amount of any penalty must be set by the Court at an amount which is sufficiently deterrent to be coercive, but also proportionate, considering the importance of the order in question.
- The Court should generally specify when and under what conditions the penalty is due. In the extraordinary situation when a compliance period is not provided for in the penalty order, the claimant must set one. At this point the defendant can object and, if the parties cannot agree, it will be decided by the Court.
- An order to pay any penalty sum under R. 354.4 RoP must be based on a prior penalty order from the Court. Thus a claimant alleging a defendant has not complied (or not complied in a timely manner) with an order from the Court must request the Court who made such order, to make a further order for the defendant to pay the penalty sum.
- The burden of proof for compliance with any penalty order lies with the defendant, and evidence requirements may include verification by independent professionals.
HL Display v Black Sheep Retail Products [UPC_CFI_386/2024 & UPC_CFI_610/2024]
October 2025Parties
Case and decision number
UPC_CFI_386/2024, UPC_CFI_610/2024
Judges
Mélanie Bessaud
Edger Brinkman
Margot Kokke
On 10 October 2025, the Local Division of the Hague upheld the validity of HL Display AB's patent for shelf dividers and found Black Sheep Retail Products B.V. (BSRP) had directly and indirectly infringed the patent.
Validity and infringement
Noting that the description and drawings do not generally limit the subject-matter of the claimed invention, the Court held that BSRP had not shown any special circumstances to add features to the claim wording from the description and drawings. Along with its arguments for a narrow claim construction, BSRP's added matter attack (that certain features omitted from the claim were inextricably linked to other features within the claim) also failed.
Following the lead of both parties, the Court applied the problem solution approach to considering inventive step. On that basis, as the prior art did not disclose a system for preventing the rear end of a shelving accessory from being accidentally disengaged, the patent was found to inventively solve the problem of providing a shelving system in which an accessory is more securely fixed to a shelf, whilst also allowing for simple release and repositioning.
BSRP's non-infringement arguments were also dismissed. When its shelf accessory and rear securing device were sold together, it was held to constitute direct infringement despite not being sold in an assembled state, as the system claimed by the patent was being sold. When each component was sold separately, this was indirect infringement as each were found to be means relating to essential elements of the invention.
Counterclaim for non-infringement
BSRP had developed a second product consisting of the rear securing device sold with a new accessory (or the new accessory alone). However, their counterclaim for a declaration of non-infringement for this revised product was held to be inadmissible - there was no assertion by the patentee of infringement prior to BSRP instituting the counterclaim, nor had the defendant applied in writing to the proprietor for an acknowledgement to the effect of the declaration claimed under R. 61.1 RoP. The Court did not infer any assertion of infringement from the mere fact that the patent had been asserted against BSRP's un-modified product. In terms of substance, however, the Court did not include BSRP's second product within the scope of its injunction (see below).
Jurisdiction and scope of the decision
There were no prior or pending proceedings relating to the patent before the UPC or any national court or authority, and the defendant was domiciled in the Netherlands. Following BSH v Electrolux, the Court applied long arm jurisdiction to countries outside the UPC Territory where the patent was in force: Liechtenstein, Ireland, Norway, Poland, Switzerland and the United Kingdom.
The defendant's counterclaim for revocation only pertained to the Contracting Member States (CMS), and was asserted as a defence for the non-CMS. For the EU member states in which the patent was in force that were Lugano member states but were not UPC CMS, the Court found there was no serious, non-negligible chance that the patent would be revoked by the competent national court. Therefore, for both these states, and the non-CMS that were not Lugano member states where the patent was in force, the Court held inter partes that the patent is valid. As infringement was found, the Court ordered a final injunction in all territories where the patent was in force.
Roku v Dolby [UPC_CoA_288/2025 & UPC_CoA_290/2025 & UPC_CoA_291/2025]
October 2025Parties
Case and decision number
UPC_CoA_288/2025, UPC_CoA_290/2025, UPC_CoA_291/2025, APL_15039/2025, APL_15067/2025, APL_15072/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On the 6 October 2025, the UPC Court of Appeal rejected an appeal filed by Roku International B.V and Roku, Inc (Roku) against several orders issued by the Munich Local Division. This preliminary decision relates to wider patent infringement actions commenced by Dolby International AB (Dolby) and Sun Patent Trust (Sun).
The Court concluded that the compatibility of the Agreement on a Unified Patent Court (UPCA) and European primary law could be considered at a preliminary stage as part of an objection to jurisdiction. However, jurisdictional objections lodged in this case were nevertheless unsuccessful on the merits.
The lower court had determined that the question of UPC compatibility with primary law of the European Union could not be considered as part of a preliminary objection to jurisdiction. However, the Court adopted a contrary position. It found that the incompatibility of the UPCA with European primary law could be examined in the context of a preliminary jurisdictional objection because the challenge concerned the basis of the UPC’s jurisdiction. The Court noted that the UPC was obliged to examine the validity of European primary law in the same way as national courts of Contracting Member States, and this obligation was not restricted to a review in main proceedings only. The UPC should interpret its own substantive and procedural law in accordance with EU law on an ongoing basis and disregard it where a consistent interpretation could not be achieved.
Having reached this conclusion, the validity of the UPC’s jurisdiction was then substantively considered.
Roku had argued that the competencies of the UPC set out in the UPCA were incompatible and interfered with the respective competencies of the Court of Justice of the European Union (CJEU) and national Courts. As part of its argument, Roku classified the UPC as an international Court, rather than a Court of a Member State. However, the Court drew a parallel with the CJEU decision that found the Benelux Court of Justice could refer questions to it, despite being a common court for several member states. The Court saw no reason to distinguish the position of the Benelux Court from that of the UPC: the UPC had a “sufficient connection” with the Court systems of Contracting Member States to make it a court common to the Contracting Member States. By extension, and pursuant to Art. 71a Brussels Ia Regulation, the UPC should be deemed to be a court of one of the Contracting Member States.
The aforementioned “sufficient connection” arose from a number of factors, the primary one being the express clarification in Art. 1 UPCA that “The Unified Patent Court shall be a court common to the Contracting Member States and thus subject to the same obligations under Union law as any national court of the Contracting Member States.” Having come to this decision, the Court rejected Roku’s request for the issue of compatibility to be referred to the CJEU.
The Court also found as inadmissible Roku’s objection that its right to a lawful judge had been violated. The objection was also unfounded on the merits as Roku had failed to demonstrate that the absence of a London division created legitimate doubts about the independence and impartiality of judges appointed to the UPC. Furthermore, the substitution of Milan for the London division was allowable as it ensured the UPCA could continue to function after the UK failed to ratify it.
Finally, when considering the Court fee of the two appeals, it was stated that the fee must be paid for each infringement proceeding, although they raised the same issues.
expert e-Commerce v Seoul Viosys [UPC_CoA_764/2024 & UPC_CoA_774/2024]
October 2025Parties
Case and decision number
UPC_CoA_764/2024, UPC_CoA_774/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On the 2 October, the Court of Appeal handed down its decision on the validity of a patent held by Seoul Viosys Co., Ltd. (Viosys) relating to improving the current spread and light output of flip-chip type LEDs. The appellants, expert e-Commerce GmbH and expert klein GmbH challenged the Dusseldorf Local Division’s finding that Viosys’ patent was valid and infringed on the basis that claim 1 of the patent was not disclosed in the original parent application as filed.
Viosys’ patent was a divisional patent based on an application of a European patent which in turn is a divisional application of a European patent application. The Court confirmed that an inadmissible extension of the subject matter exists if the subject matter of the granted claim is not immediately and unambiguously derived from the application by the person skilled in the art. In this case, it was necessary for the Court to consider whether the granted claim went beyond both the divisional application and the parent application.
After considering the disclosure in parent application in detail, the Court held that the parent application did not disclose the required embodiment and did not support required feature of the claim as granted. The Court also held that even if an embodiment of the feature was disclosed, it was not adequately supported in the application because the skilled person would not interpret the figures or description in such a way.
As a result, the Court declared that claims 1, 4, 5, 6, and 9 of Viosys’ patent were invalid across all designated territories (Germany, Austria, Belgium, France, Italy, Luxembourg, the Netherlands, and Sweden). Consequently, the infringement action brought by Viosys was dismissed in its entirety and Viosys was ordered to bear the costs of both the appeal and first instance proceedings.
InterDigital v Amazon [UPC_CFI_936/2025]
September 2025Parties
Case and decision number
UPC_CFI_936/2025
Judges
András Kupecz
Peter Tochtermann
Dirk Böttcher
The Mannheim Local Division has granted InterDigital ex parte provisional measures against Amazon, designed to protect InterDigital’s ability to pursue infringement actions before the UPC. The order prohibits Amazon from commencing or continuing proceedings, particularly in the UK, that would result in an interim licence or similar relief, which could otherwise prevent InterDigital from litigating or enforcing its European patents within the UPC’s jurisdiction. The decision has attracted notable attention in the press, where these provisional measures are being described as an “anti-interim licence injunction”.
The background to the decision includes Amazon’s initiation of UK rate-setting and DNI actions concerning several European patents, as well as similar proceedings in Brazil. InterDigital argued that Amazon was likely to seek an interim licence order in the UK, which could block enforcement of its patents before the UPC by enabling Amazon to raise a licence defence. The UPC found this risk credible, noting that recent UK case law (including Panasonic v Xiaomi, Lenovo v Ericsson, and Samsung v ZTE) has established a practice of granting interim licence declarations that (in the UPC’s view) have a coercive effect, deterring patent holders from asserting their rights in other jurisdictions.
The Court emphasised the UPC’s duty to prioritise the application of European law, as required by Art.20 of the UPC Agreement. In SEP/FRAND disputes, it held that this means proceedings must comply with EU antitrust law (specifically Art. 101 and 102 TFEU) and that any questions of interpretation must be potentially at least referable to the ECJ for clarification. The Court expressed concern that UK interim licence orders, which by their nature may be granted without a full FRAND and/or antitrust scrutiny, risk compelling SEP holders to accept terms at the lower end of the FRAND range, or even outside it, without proper review under EU law. Such outcomes could undermine the integrity of the European patent system, as determinations made outside the EU legal framework may not be consistent with the single market and could even conflict with public policy. The UPC made it clear that in its view only by ensuring compliance with EU competition law can it safeguard patent holders’ rights and maintain the proper functioning of the European patent enforcement regime.
The order is immediately enforceable, subject to InterDigital providing a security deposit within 20 days. It will lapse if InterDigital does not initiate main UPC proceedings within 31 calendar days or 20 working days (whichever is longer). Amazon may request a review of the order within 30 days. In the UPC’s view, the order is said to be defensive in nature, shielding UPC proceedings but not interfering with Amazon’s rights in other forums.
Why it matters:
This decision is a clear statement of the UPC’s willingness to assert its authority in SEP/FRAND disputes, and to protect the integrity of its own proceedings. By granting this anti-interim licence injunction, the UPC has directly addressed the risks to its jurisdiction which it perceives are posed by UK interim licence orders, making it clear that attempts to use foreign proceedings to effectively short-cut or block UPC actions will not be tolerated. The Court’s reasoning also underscores its view that EU law and competition principles must take precedence within the UPC territory.
The decision takes the view that the UPC’s order is defensive, as it is designed to shield UPC litigation, not to interfere with Amazon’s ability to pursue its rights elsewhere, nor to restrict the jurisdiction of foreign courts. The UK Courts, are said, therefore to remain free to give declaratory relief in respect of FRAND rates and to determine the consequences of such relief within their own territory. In this respect, the UPC recognised that parties may face parallel FRAND determinations in different jurisdictions, and that resolving any differences arising from such parallel proceedings is ultimately a matter for the parties themselves.
Philips v Belkin [UPC_CoA_534/2024 & UPC_CoA_19/2025 & UPC_CoA_683/2024]
October 2025Parties
Case and decision number
UPC_CoA_534/2024, UPC_CoA_19/2025, UPC_CoA_683/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 3 October 2025, the Court of Appeal handed down its decision in a dispute between Philips and Belkin relating to the validity and infringement of one of Philips’ patents relating to wireless charging technology. The Munich Local Division had found the patent valid and infringed in September 2024 but both sides had appealed various aspects of the decision, with Belkin challenging the first instance court’s findings on validity and infringement. While the Munich Local Division’s decision is left mostly intact by the Court of Appeal, a number of important clarifications were made on the infringement side of the case.
Firstly, the Munich Local Division had ordered that managing directors of Belkin were infringers and issued an order against them for patent infringement. The Court of Appeal considered Art. 63(1) EPC read together with Art. 25 EPC meant that an infringer could be someone who, while not carrying out infringing acts themselves, can have the acts of the principal infringer attributable to them as they are an instigator, accomplice or accessory. To be e.g. an accomplice that person would need to be aware of the patent infringement and that it is unlawful. The Court held that while a managing director could be an instigator, accomplice or accessory the mere position of being a managing director does not mean that they necessarily will be. The fact that a managing director can control the risk in a situation does not give rise to legal liability on its own. A managing director was held only to be liable for patent infringement if the action complained of goes beyond the typical duties of a managing director e.g. where the managing director uses the company to deliberately carry out patent infringements. In terms of the awareness of the illegality, if the company has sought a legal opinion, it can usually rely on that advice until a first instance decision. The Court was clear that to have broader liability for managing directors would have required a specific provision by the legislator as while some countries recognise the liability of directors as patent infringers others, like France and the UK, do not.
Second, the Court clarified that the term “offering” within Art. 25(a) EPC does not require a binding contractual offer to have been made. It is enough that an item is presented in such a way that a viewer can make an offer to purchase it e.g. to conclude a purchase, rental or lease agreement. This takes a board economic sense of the term and meant that the advertising products, even without a price, was considered patent infringement.
Third, Art. 64(1) EPC states that the Court may order appropriate measures to be taken in relation to products which are found to infringe. In this case Philips had requested the recall and removal of infringing products from distribution channels as well as the destruction of the products. This request was refused by the Munich Local Division. However, the Court of Appeal allowed it stating that the words “may” or “peut” did not confer a discretion on the court to grant additional requested measures unless it would be disproportionate to do so. The Court also went further, saying the ordering of such additional measures should be the norm and it is for the infringer to present sufficient arguments and evidence that the measures would be disproportionate. While the arguments of Belkin that it would be burdensome to recall its products were heard by the Court, it ultimately held that this did not justify refraining from order the additional measures.
Finally, there were some interesting comments on res judicata. The patent in issue in the UPC proceedings had already been the subject of infringement proceedings before the German national courts in relation to two of the defendants in the UPC action but not a third, Belkin International Inc. The infringement action had been dismissed, up to appeal level. The Court clarified that the German infringement action did not apply to Belkin International and, in any event, only had effects within Germany and not in other contracting member states of the UPC.
OTEC v Steros [UPC_CFI_885/2025]
September 2025Parties
Case and decision number
UPC_CFI_885/2025
Judges
Ronny Thomas
Jule Schumacher
Walter Schober
On 22 September 2025, the Düsseldorf LD issued an ex parte order under Art. 60 UPCA in respect of a machine being exhibited at the EMO Hannover trade fair. The dispute pertained to alleged infringement of a patent belonging to OTEC Präzisionsfinish GmbH directed to a method of polishing workpieces, with OTEC alleging the high end “DLyte PRO500 Automated Cell” electropolishing machine sold by defendant Stereos infringed its patent. The patent in question was already the subject of ongoing infringement and invalidity proceedings before the UPC in respect of a different machine produced by Stereos. In respect of the DLyte PRO500, OTEC argued that the trade fair was its only viable opportunity to gather evidence due to the high cost of this particular machine and the closed channels through which it was distributed. OTEC requested the opportunity to inspect and measure the operation of the machine at the fair, or in the alternative, to seize one of the machines and associated documentation for inspection. The request was made on an ex parte basis, with OTEC alleging a serious risk that the machine could be removed from the exhibition grounds or altered via software update at short notice.
The Order was granted under Art. 60 UPCA, and on-site inspection and measurement of the machine’s operation by an expert (a patent attorney) and bailiff was ordered. The applicant’s own lawyer and patent attorney were permitted to be present during the inspection. The Court held the application admissible, urgent, and sufficiently substantiated. It held that a detailed validity assessment was not required at this stage in spite of the fact that the patent was the subject of an invalidity counterclaim at the UPC, with the court reasoning that there was no “clear indication” that would cast doubt on validity, such as an extant negative decision. The Court also accepted OTEC’s view that there was a risk of evidence loss that justified the ex parte nature of the order.
The Court also permitted seizure of the machine in the event inspection proved impossible and imposed strict confidentiality obligations on all participants. In recognition of Stereos’s interest in protecting their trade secrets, the expert, bailiff and the applicant’s representatives were placed under a duty of confidentiality and the expert’s report was only to be disclosed to OTEC after Stereos was given an opportunity to be heard on the subject of its confidentiality interests and further consideration by the court. Stereos was ordered to cooperate and penalties were set for non-compliance.
The decision illustrates the use of the UPC’s robust “saisie-style” ex parte evidence preservation tools in the classic setting of a trade fair, and demonstrates its readiness to act swiftly when infringement is suspected but access to products is limited. It also confirms the Court’s commitment to balancing enforcement needs with protection of trade secrets.
SPT v Apple [UPC_CoA_755/2025 & UPC_CoA_757/2025]
September 2025Parties
Case and decision number
UPC_CoA_755/2025, UPC_CoA_757/2025, App_35938/2025, App_35936/2025, APL_34965/2025, APL_34967/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
On 23 September 2025, the Court of Appeal granted Apple’s application to intervene in Sun Patent Trust’s appeal against a confidentiality order issued by the Paris Local Division (LD).
The underlying dispute concerns two patents asserted by Sun Patent Trust (SPT) against Vivo, claiming – amongst other things – that the terms of a license to the patents at issue that SPT had offered to Vivo were FRAND-compliant. SPT sought to restrict access to the unredacted statement of claim and certain exhibits containing highly confidential information (HCI), including agreements with Apple. Initially, SPT’s request was to limit access to the documents to Vivo’s counsel and, under certain conditions, three Vivo employees. SPT subsequently sought to limit its request for confidentiality under r. 263 RoP to an “External Eyes Only” regime, thereby excluding Vivo employees from access. The Paris Local Division issued an order in line with SPT’s original request, granting access to three Vivo employees in addition to Vivo’s counsel. SPT appealed, requesting an “external eyes only” regime, or in the alternative, that access to three Vivo employees be granted on the basis that they would be barred from participating or advising in certain licensing negotiations for a given period.
Apple supported the appeal, and sought to intervene pursuant to r. 313 RoP, arguing that disclosure of its licensing terms to a competitor would cause commercial harm. Vivo opposed the intervention, claiming Apple lacked a legal interest because the Vivo employees had already accessed the HCI.
The Court of Appeal held that Apple retained a direct and present interest in the appeal outcome. It clarified that, notwithstanding the fact that the HCI had already been disclosed to the Vivo employees, a decision to revoke access would result in the personnel no longer having access and would prohibit them from using the HCI and any further exchanges of confidential information in the ongoing proceedings or for any other purpose.
Apple was granted 15 days to file a Statement in Intervention and was granted permission to participate in the oral hearing. The decision confirms the UPC view that access to confidential information is not a binary state, and that seeking to limit ongoing access to confidential information is a sufficient legal interest to support an application to intervene.
Huawei v MediaTek [UPC_CFI_247/2025]
September 2025Parties
Case and decision number
UPC_CFI_247/2025, App_33294/2025
Judges
Tobias Sender
On 16 September 2025, the Mannheim Local Division issued an order requiring Huawei to disclose certain licences in its FRAND and SEP litigation with MediaTek.
Huawei objected to the disclosure of two of these licence agreements on the grounds that (i) they were not relevant to the smartphone technology in suit and therefore not relevant for a comparable licence exercise; and (ii) because Huawei had not been able to obtain approval to disclose these licences from the respective licensees as required by the confidentiality terms of the licences.
The Court ordered Huawei to disclose the two licences, in addition to the licence agreements mentioned in its pleadings. In reaching this decision, the Court clarified that it has discretion under r.190 RoP to order the production of evidence. It also noted that, when assessing such an application, it will take into account the stage of the proceedings.
The Court ordered disclosure of the two licences on the basis that there was no evidence of other equally suitable licences being available. The Court further noted that disclosure of the licences would enable a proper comparative exercise to be undertaken, which would assist the Court (and Mediatek) in determining whether Huawei’s offer is FRAND compliant. However, the Court did allow Huawei to redact those parts of the licences on which it did not intend to rely.
Bodycap v EPO [UPC_CoA_796/2025]
September 2025Parties
Case and decision number
UPC_CoA_796/2025, APL_35508/2025
Judges
Emmanuel Gougé
On 16 September 2025, the Court of Appeal dismissed an application to annul a decision of the EPO to reject a request for unitary effect under r.97 RoP. In doing so, the Court provided guidance on the procedure for challenging decisions from the EPO with respect to requests for unitary effect and the need for strict adherence to deadlines associated with correcting deficiencies in the original request.
Following the grant of the patent at issue, Bodycap, CNRS and Université de Rennes (the Co-proprietors) had filed a request for unitary effect at the EPO. On 27 January 2025, the EPO invited the Co-proprietors to correct a deficiency in the request, namely the particulars of one of the Co-proprietors did not match up with the details on the EP register (there were differences in the University’s name and address). Pursuant to r.7(3) of the Rules relating to Unitary Patent Protection (UPR), the Co-proprietors had a non-extendable period of one month to correct the deficiencies. The Co-proprietors filed their response on 3 March 2025, thereby missing the deadline and causing the EPO to reject the request for unitary effect.
On 8 July 2025, the Co-proprietors lodged an application at the Milan Central Division to reverse the EPO’s decision by way of an interlocutory revision (r.91 RoP) or, in the alternative, an annulment of the decision to reject the request for unitary effect (r.97 RoP). On 6 August 2025, the Court of First Instance rejected the application, citing the exception in r.85.(2) RoP which means that interlocutory revision is not available in the context of an application under r.97 RoP. As to the annulment, the Court agreed that the request for unitary effect had been deficient (with respect to the particulars of the Co-proprietor) and the appellants had failed to rectify the request within the non-extendable one month period.
On 26 August 2025, the Co-proprietors lodged an appeal seeking to overturn the first instance order, arguing, inter alia, that interlocutory revision by the EPO is only excluded in the context of expedited actions; given that the parties had not requested expedition, interlocutory revision by the EPO should be possible. In reaching its decision, the Court held that an application under r.97 RoP constitutes an expedited action due to the timings set out in the rules and the pace at which the application must move forwards (e.g. “as soon as practicable” and three-week deadlines). Therefore, the application to annul the decision falls within the exception in r.85(2) RoP and interlocutory revision by the EPO is excluded. On the application to annul, the Court noted that failure to observe a time limit can, under certain circumstances, be subject to a request for a re-establishment of rights (r.22 UPR). However, r.22(6) UPR includes an express exclusion for the one-month period in r.7(3) UPR. Accordingly, compliance with this deadline is mandatory and an applicant who fails to do so cannot have their rights reinstated. The Court therefore dismissed the appeal.
Washtower v Wasombouw [UPC_CFI_479/2025]
September 2025Parties
Case and decision number
UPC_CFI_479/2025, ORD_36708/2025, ACT_25599/2025
Judges
Samuel Granata
Edger Brinkman
Margot Kokke
On 11 September 2025, The Hague Local Division issued a Preliminary Injunction (PI) in the case of Washtower v Wasombouw, having found infringement more likely than not following the Plant-e v. Arkyne equivalence test previously put forward by the same local division.
Washtower initiated PI proceedings against the defendants, alleging infringement of EP 3 522 755 relating to a washing machine cabinet that holds a washing machine at waist level. The defendants argued that there was no infringement, as their L-shaped retaining member is made of plastic rather than metal, as required by the claim and that the PI application was not brought with the required urgency. The defendants also argued that the patent was invalid due to added matter and a lack of inventive step.
Most notably, the PI was granted on the basis of infringement by equivalence in relation to the L-shaped retaining member. Although the patent claim specified a metal strip, the defendants used a plastic component. Applying the four-part equivalence test from Plant-e v. Arkyne (put forward by both parties, and in absence of a test being set by the CoA) the Court concluded that the plastic strip performed the same function: preventing the washing machine from sliding off the carrier, with essentially the same result. The Court dismissed arguments that the plastic strip was merely aesthetic, noting that it was positioned and dimensioned to serve a retaining function. It also found that extending protection to cover the plastic variant was fair to the patentee and did not undermine legal certainty for third parties, especially given the absence of any technical reason in the patent why only metal would suffice.
This case demonstrates the “more likely than not” requirement for assessing infringement in granting a PI may also require an assessment of equivalents.
The Court also rejected the defendants’ added matter objection, which focused on the inclusion of an L-shaped retaining member in claim 1. The Court found that this feature was disclosed independently of the cover plate in both the original application text and figures. It agreed with the EPO Technical Board of Appeal that the retaining member was not inextricably linked to the cover plate and was sufficiently supported by the application as filed.
On inventive step, the Court held that the combination of prior art documents cited by the defendants did not render the claimed invention obvious. It emphasised the synergistic effect of the vertical support plate (for transmitting vertical forces) and the L-shaped retaining member (for preventing horizontal displacement), concluding that these features together addressed the challenge of stabilizing a vibrating washing machine in a cabinet. The Court found no motivation in the prior art to combine the cited references in a way that would lead to the claimed invention.
Another notable point in the decision was on the issue of urgency. Although the defendants argued that the claimants could have prepared earlier given the EPO’s “intention to grant” notice in December 2024, the court accepted that Washtower moved promptly after the patent was formally granted four months later, in April 2025. Within weeks of formal grant, Washtower had ordered and examined the accused products, sent a cease-and-desist letter, and filed the application for relief (all within two months of formal grant). In light of this timeline, the court did not consider it decisive that the claimants could have ordered the accused product earlier. The Court therefore rejected the notion of undue delay.
On the question of whether a preliminary measure is necessary, the Court was persuaded by the risk of irreparable harm, including price erosion, loss of market share, and brand dilution. It noted that washing machine cabinets are infrequent purchases, meaning each lost sale could represent a long-term customer loss. The Court also accepted Washtower’s argument that it was rebuilding its market presence following the termination of its prior licensing arrangement with the defendants, and that continued infringement would undermine those efforts. These factors justified the need for swift intervention.
As a final point, the Court rejected a request for enforcement security of EUR 500,000: “Since the Applicants are an SME, and given the relatively minor impact on Defendants’ overall sales, the Court will order a security of € 25,000 to be deposited at the Court.”
bellissa v Windhager [UPC_CFI_338/2024]
September 2025Parties
Case and decision number
UPC_CFI_338/2024
Judges
András Kupecz
Peter Tochtermann
Dirk Böttcher
On 12 September 2025, the Mannheim Local Division handed down its decision relating to an infringement action filed by bellisaa HAAS GmbH (bellissa) against Windhager GmbH (Windhager) and two of its managing directors. bellissa’s patent, EP 2 223 589 (EP 589) protects a garden bed edging system with lockable metal strips. bellissa alleged patent infringement with reference to Windhager’s Austrian website with supply of infringing products to Germany, Austria and Luxembourg. Windhager counterclaimed for revocation of EP 589 on the grounds of lack of novelty and inventive step.
The invention of EP 589 allows the metal strips to be assembled in a simple manner at the place of use without the addition of further objects. In its assessment of validity, the Court considered the prior art and found the invention to be both novel and inventive, noting that for inventive step it was not sufficient to combine prior art without either explaining why the skilled person would do so or proving that the relevant prior art formed a part of the common general knowledge.
Turning to infringement, the Court found that at least two components of the contested embodiment, assembled as intended, realise the teaching of claim 1. The contested embodiments are advertised for sale via Windhager’s website, amounting to direct infringement in accordance with Art. 25(a) UPCA. It was not relevant that the edging strips are sold separately; the website emphasised that the edging is easy to install by the customer and can be extended as required. Windhager had not denied the supply of the lawn edges and in particular had not proved that the edging was only sold individually and that orders for more than one component were denied. The Court clarified that it is irrelevant for direct patent infringement that the edgings are only offered in a non-assembled state. The offering and sale of all components of an infringing product to be assembled in a modular system at the place of use constitutes direct infringement. Further, the sale of just one edging strip may also amount to direct infringement as the possibility of later adding further edging strips was advertised and evident.
The Court also considered the acts of the managing directors and found it had not been established that the individuals were responsible for the patent infringing acts of Windhager. Under the UPCA, it is not sufficient to assume that the managing directors of a company have infringed a patent simply by virtue of being a managing director; to prove such liability the individual must be involved in the specific patent infringement in question.
The Court accepted jurisdiction for acts committed in Germany, Austria and Luxembourg and pan-territorial relief was granted, including (i) an injunction, (ii) recall, removal and destruction, (iii) provision of information, (iv) damages, and (v) penalty payment up to €250,000 for each case of infringement. The infringement claims against the managing directors were dismissed along with the counterclaim for revocation.
HP v Zhuhai Electronic [UPC_CFI_449/2025]
September 2025Parties
Case and decision number
UPC_CFI_449/2025, App_33210/2025, ACT_24346/2025
Judges
Ronny Thomas
Jule Schumacher
Rute Lopes
On 3 September 2025, the Düsseldorf Local Division handed down its decision in an application brought by Hewlett Packard (HP) who sought a preliminary injunction and related relief against two defendants - Zhuhai ouguan Electronic Technology Co., Ltd, based in China (Defendant 1), and Andreas Rentmeister e.K., based in Germany (Defendant 2)—for alleged infringement of two European patents (EP 2 826 630 B1 and EP 3 530 469 B1), both concerning ink cartridges for inkjet printers.
The Court noted that service to Defendant 1 was not completed, but Defendant 2 had acknowledged the proceedings and reached a settlement with HP. Defendant 2 explicitly stated it would not contest the application and agreed to a decision by default. HP withdrew one motion and requested a decision by default on the remaining claims.
However, the Court clarified that under the RoP, a regular order - not a decision by default - is appropriate when a defendant chooses not to contest. Although HP requested a decision by default, the Court clarified that such decisions are not applicable under r. 205 RoP when a defendant is informed and chooses not to contest. Instead, a regular order is appropriate under r. 209.1(a) RoP, allowing the Court to decide based on the applicant’s submissions. This approach ensures that defendants who decline to respond do not benefit from procedural advantages such as the ability to set aside a default judgment. The Court issued a regular preliminary injunction order against Defendant 2 based solely on HP’s submissions.
The Court conducted a feature-by-feature comparison of the challenged cartridges with the claims of both patents. It concluded that the cartridges directly and literally implemented all elements of claim 1 in both patents, including structural features. The analysis was supported by visual evidence and technical descriptions. The Court found no credible challenge to the validity of either patent. Neither had been subject to opposition or revocation proceedings, and Defendant 2 had not raised any arguments. The granting process had addressed and rejected third-party observations. Therefore, the patents were considered valid with a sufficient degree of certainty.
The Court also found urgency and necessity for provisional measures. HP had acted promptly upon discovering the alleged infringement and demonstrated that continued sales of the infringing cartridges would cause irreparable harm, including loss of market share, price erosion, and reputational damage.
Brita v Watershield [UPC_CFI_248/2024]
August 2025Parties
Case and decision number
UPC_CFI_248/2024
Judges
Mojca Mlakar
Ulrike Voß
Daniel Voß
On 22 August 2025, the Munich Local Division handed down a decision upholding EP 2 387 547 (EP 547) in amended form. The Local Division found that the defendants’ (AquaShield) sale of replacement water filter cartridges indirectly infringed EP 547 in its amended form. A qualified injunction was thus granted to Brita requiring AquaShield to include warning notices setting out that its cartridges should not be used with some Brita products.
Background
Brita owns EP 547 which relates to a valve actuating device for a valve located in the outlet opening of a liquid container of a liquid treatment device. AquaShield was involved in the sale of replacement water filter cartridges which were compatible with Brita’s water jugs. Brita alleged that the sale of these cartridges infringed several claims of the patent both directly and indirectly.
Construction and validity
The Local Division deemed that claim 1 of EP 547, as granted, only protected a valve actuating device, not an overall device consisting of a valve actuating device and a valve. Placing emphasis on the word ‘for’ in the claim language, it was considered that the mention of the valve in claim 1 was merely a statement of purpose (“valve actuating device for a valve”). Based on this construction, only the claimed device as opposed to the device for a particular purpose was relevant for the validity assessment, and claim 1 of EP 547 was deemed to be anticipated by the prior art.
Brita had applied to amend its patent in line with various auxiliary requests. The Local Division held that in an auxiliary request containing a closed claim set each of the claims in the claim set must be valid. On this basis, only auxiliary request 16 was held to be valid.
Infringement and exhaustion
Claim 1 of auxiliary request 16 related to a liquid treatment device with a liquid treatment cartridge. Therefore, the claim for infringement in relation to AquaShield’s cartridges was limited to indirect infringement only. AquaShield’s product was objectively suitable for use in line with the claimed invention as it was designed in such a way that direct use of the patented teaching would be possible by the user. Further, the subjective elements of indirect infringement were present as AquaShield was aware that its product was suitable and intended for use in line with the invention. This was evidenced by recommendations on the packing of its cartridges which cited the compatibility of the product with Brita’s water filter systems.
Further, AquaShield’s product was also deemed to be a means that related to an essential element of the invention protected by the patent. The Local Division stated that this can be assumed to be the case if the means is capable of interacting functionally with one or more features of the patent claim in achieving the patented inventive concept. In this case, the liquid treatment cartridge was mentioned in claim 1 of auxiliary request 16, did not play a subordinate role in the context of the patented invention, and there were no indications that it should nevertheless be regarded as non-essential.
Finally, the Local Division considered AquaShield’s defence of exhaustion. This was assessed under Art. 29 UPCA as opposed to under national law. It was noted that the intended use of a patent-protected product also includes usual maintenance of the product. However, this does not extend to any measures that result in the reproduction of a patented product, which would be considered manufacture. Although it was noted that a factor in the assessment was whether the replacement of the part in question can normally be expected during the product’s lifetime, the situation was deemed to be different in exceptional cases in which the technical effect of the invention was embodied in the replacement part. This issue did not need to be decided in the present case. It was found that Brita’s product did not itself have all the features of claim 1 of auxiliary request 16 so the defence of exhaustion necessarily failed.
Qualified injunction
The Local Division found that in the case of an indirect infringement, if a product can used without infringing the patent, as in the present case, only a limited prohibition is justified. In these circumstances, a limited injunction should aim to ensure that trade in the product outside the scope of the patent remains unaffected, whilst excluding infringing use with sufficient certainty. Suitable measures may include warnings to customers not to act in accordance with the patented teaching, as well as a contractual cease and desist agreement with the customer which may be linked to the payment of a contractual penalty in the event of a breach.
In the present case, the Local Division noted that AquaShield’s product was sold to both commercial and private customers. With regard to commercial customers, the Local Division ruled that a warning notice should set out that these customers may not offer and supply AquaShield’s product for the purpose of using the invention without the consent of Brita. For private customers, it was ruled that simplified wording must be included on AquaShield’s product stating that it should not be used in certain Brita branded water containers. The Local Division noted that there were no circumstances presented that would cause it to doubt that commercial and private customers would heed these warnings.
The Local Division refused to order a contractual cease and desist agreement with a penalty clause in favour of Brita as it was not deemed to be justified in the present case, because Brita had not substantiated why a warning notice would be insufficient.
Finally, the Local Division rejected Brita’s argument that, due to the reputation and popularity of Brita’s products, infringement would be inevitable if AquaShield’s cartridges were to be sold. The Local Division asserted that AquaShield could not be held responsible for this. According to Article 26 UPCA, AquaShield could only be held liable if, at the time of sale of the cartridges, they knew or should have known that customers would use the cartridges in accordance with EP 547. The warning notice on the package was deemed to clearly point out that AquaShield’s cartridge should not be used in Brita’s product, and it was noted that there were water filter containers on the market from other brands.
Security and costs
An order for security for enforcement was deemed to be at the discretion of the Local Division. Factors such as the financial situation of the claimant had to be taken into account. AquaShield had not presented any reasons that would justify making enforcement dependent on the provision for security from Brita.
Finally, the costs of the infringement action were ordered to be split 50/50 between Brita and AquaShield. However, given that AquaShield had prevailed in the revocation action on the granted patent, the Local Division ordered Brita to bear 90% of the costs of the revocation action.
Cilag v RiVOLUTION [UPC_CFI_374/2025]
August 2025Parties
Case and decision number
UPC_CFI_374/2025, ORD_32992/2025, ACT_19943/2025
Judges
Edger Brinkman
Margot Kokke
Stefan Johansson
In Cilag GmbH International & Ethicon LLC v Rivolution GmbH, The Hague Local Division (LD) dismissed Cilag’s application for provisional measures based on EP 3 689 262, a unitary patent concerning surgical staple cartridges.
Cilag sought a preliminary injunction in all UPCA contracting member states against Rivolution, a distributor of cartridges from two Chinese manufacturers, Bluesail and David Medical, which were already the subject of injunctions issued by the Munich Regional Court in 2023 and 2024 based on the parent patent, EP 2 621 360. Cilag argued that Rivolution’s activities, including participation in tenders and a large-scale clinical study, amounted to infringement in Germany and Austria (where sales had taken place) and posed an imminent threat of infringement in other UPC territories.
In relation to jurisdiction and competence, the panel was not convinced by Rivolution’s argument that, in the case of a unitary patent, all UPC divisions are competent to hear a case so the infringement in Germany created jurisdiction and competence for all divisions of the Court, noting that this would make Art. 33.1 UPCA regarding the internal distribution of competences of the UPC effectively meaningless for unitary patents. However, The Hague LD found jurisdiction and competence under Art. 33.1 UPCA and Art. 7(1) Brussels Regulation based on Rivolution’s cross-border activities, including workshops in the Netherlands and its English-language website, which did not include a disclaimer limiting sales to certain countries.
Ultimately Cilag’s application was dismissed due to lack of urgency. The Court held that Cilag had unreasonably delayed bringing the proceedings after learning that Rivolution was seeking participants for the clinical study in November 2024, waiting until late April 2025 to file the application. The Court rejected Cilag’s arguments that urgency revived due to expanded study scope, tender outcomes, or market erosion, finding these developments foreseeable and insufficiently substantiated.
The Court also dismissed applications to submit further evidence post-hearing and confirmed an earlier preliminary confidentiality order. Cilag was ordered to pay EUR 80,000 in interim costs to Rivolution.
Cilag was successful in a parallel preliminary injunction application against Rivolution in the Munich LD based on a separate patent concerning medical staplers. The grounds for that decision have not yet been published.
Centripetal v Keysight [UPC_CoA_805/2025]
September 2025Parties
Case and decision number
UPC_CoA_805/2025, APL_35593/2025
Judges
Emmanuel Gougé
In Centripetal v Keysight, the Court of Appeal considered a discretionary review application by Centripetal under r. 220.3 RoP. This followed the Mannheim LD’s refusal to allow Centripetal to file further written pleadings in its infringement case under r. 36 RoP to allege the newly released “AI Stack” feature of Keysight’s software infringed Centripetal’s patent.
AI Stack was released after the deadline for regular submissions and Centripetal argued that the refusal to allow additional pleadings was manifestly wrong and would deprive it of an effective judicial remedy in relation to “AI Stack”. It also sought clarification on whether parties in UPC infringement actions should be allowed to address newly released infringing products post-deadline.
The Court of Appeal found the request admissible but ultimately denied it. It held that the Mannheim LD had properly exercised its discretion considering the advanced stage of proceedings and the timing of Centripetal’s request—four months after the release of AI Stack and five weeks after filing its final submissions in the case. The Court emphasised the importance of expeditious proceedings and noted that Centripetal retained the right to bring separate actions for newly released products, thus avoiding res judicata concerns.
The Court concluded that the impugned order did not violate principles of proportionality, flexibility or fairness, and that Centripetal had failed to demonstrate that the impugned order raised a fundamental question of law and that its review was necessary to ensure a consistent application and interpretation of the RoP.
NEC v TCL [UPC_CFI_487/2023]
August 2025Parties
Case and decision number
UPC_CFI_487/2023, ORD_33611/2025, ACT_595922/2023
Judges
Ulrike Voß
On 26 August 2025, the Munich Local Division handed down its Order in relation to an application by Taylor Wessing (a law firm) to access documents in the now-terminated proceedings between NEC and TCL. Taylor Wessing had made a request under r. 262.1 RoP to view NEC’s written pleadings and evidence (as redacted versions, for confidential documents), which was opposed by both NEC and TCL.
The panel largely granted the request, holding that Taylor Wessing had submitted a reasoned request. Even though Taylor Wessing’s statement of grounds was brief, its explanation that it had a general interest in inspecting the files as a member of the public were held to be sufficient. Applying the necessary balancing of interests (as set out, for example, in Ocado v Autostore, UPC_CoA_404/2023, Order of 10 April 2025), the panel held that following their termination, the integrity of the proceedings did not outweigh the general public’s interest in accessing the pleadings and evidence.
The panel ordered that Taylor Wessing should be granted access initially to certain written pleadings and evidence in their redacted versions, with further specific exhibits/appendices available to be requested from the registry at a later date.
MED-EL v Zheijang [UPC_CFI_688/2025]
August 2025Parties
Case and decision number
UPC_CFI_688/2025, ORD_35448/2025, ACT_33777/2025
Judges
Stefan Johansson
On 25 August 2025, the Hamburg Local Division issued an order in MED-EL v Zhejiang Nurotron Biotechnology & Nurotron Global. The first defendant, a Chinese company, had previously authorised its representatives to accept service of provisional measures on its behalf, but subsequently stated that it would not accept service by alternative means of the main infringement action.
The panel held that a lawyer which is authorised to represent a party in proceedings relating to an application for provisional measures is not automatically authorised to represent that party in a subsequent main infringement action, even if there is a link between the two proceedings. The panel contrasted their decision with that of the Mannheim Local Division in Interdigital v Disney (UPC_CFI_445/2025, Order of 9 July 2025), where the service of an anti-anti-suit injunction was held to be inextricably linked to the main action, such that the defendants in that action were ordered to accept service upon their representatives.
The Court held that since the first defendant had its statutory seat, central administration, and principal place of business outside the UPC territory, service upon it should be conducted in accordance with the Hague Convention in line with r. 274(a)(ii) RoP.
Moderna v Genevant [UPC_CFI_191/2025 & UPC_CFI_192/2025]
August 2025Parties
Case and decision number
UPC_CFI_191/2025, UPC_CFI_192/2025, ORD_34976/2025, ACT_10280/2025, ACT_10284/2025
Judges
Samuel Granata
Edger Brinkman
Margot Kokke
In Moderna v Genevant (UPC_CFI_191/2025 and UPC_CFI_192/2025), the Hague Local Division (LD) reviewed Moderna’s r..333 RoP application seeking revision of a procedural order, dated 23 May 2025, that dismissed its preliminary objections to the UPC’s jurisdiction and competence in two parallel infringement actions brought by Genevant and Arbutus Biopharma.
The claimants had alleged infringement of EP 2 279 254 and EP 4 241 767 by fifteen Moderna entities domiciled across UPC contracting states, other non-UPC EU member states and third states such as the US, UK and Switzerland. In its preliminary objections, Moderna had challenged the UPC’s international jurisdiction over certain defendants, particularly those domiciled outside UPC member states, and argued that the court lacked long-arm jurisdiction for acts outside the UPC territory. Furthermore, Moderna had challenged the Hague LD's jurisdiction in respect of the Moderna entities which were neither domiciled nor accused of infringing acts in the Netherlands.
The Hague LD's 23 May 2025 procedural order dismissed Moderna's preliminary objections, save that it reserved a decision on international jurisdiction to the main proceedings. Moderna sought to review this order under r. 333 RoP on the following bases:
- The decision did not take into account the burden of proof for infringing acts within the UPC territory.
- The decision did not reflect the fact that holding a marketing authorisation for use by other entities within a group structure does not qualify as an act of patent infringement, but was merely an unlawful act for which the UPC had no competence.
- The decision wrongly stated that the requirements of Art. 8(1) of the Brussels Recast Regulation (or Art. 6(1) of the Lugano Convention) had been met.
The Hague LD panel (comprising Judges Brinkman, Granata and Kokke) found that Moderna had only substantiated its r. 333 RoP application for Moderna Spain and Norway. Therefore, Moderna were found not to have challenged the referral of the decision on long-arm jurisdiction to the main proceedings, the Hague LD's international jurisdiction over the defendants other than the Norwegian and Spanish entities, and the internal competence of the Hague LD or the UPC to hear the claims.
As to Moderna's first ground, the Hague LD held that the burden for establishing international jurisdiction is considerably lower than for the establishment of infringement in the main proceedings. Accordingly, the claimants were found to have sufficiently alleged collective infringement involving Moderna Netherlands in Spain and Norway, to justify international jurisdiction for those entities and avoid the risk of irreconcilable judgments under Art. 8(1) of the Brussels Recast Regulation. The decision noted that Art. 8 of the Brussels Recast Regulation does not require that collective infringement takes place in a UPC territory.
Moderna's second ground, relating to the nature of activities relating to a marketing authorisation was referred to the main proceedings.
Finally, it was held that since Moderna Netherlands was alleged to infringe the national parts of the same European Patent in Spain and Norway with the same product, the combination of same patent, same product, same country was sufficient connectivity for them to be considered co-defendants under Art. 8(1) Brussels Recast Regulation. The panel noted throughout the decision that the claimants' assertions were not so far-fetched that they could be deemed to have the sole object of ousting the national courts of Spain and Norway.
The Hague LD confirmed the previous procedural order and refused the defendants’ request for an interim appeal of the present decision.
Sunstar v CeraCon [UPC_CFI_745/2024]
August 2025Parties
Case and decision number
UPC_CFI_745/2024, ORD_32795/2025, ACT_63395/2024
Judges
Mélanie Bessaud
Peter Tochtermann
Dirk Böttcher
On the 8 August 2025, the Mannheim Local Division rejected CeraCon GmbH's (CeraCon) request to review an order rejecting its application under r. 263 RoP for leave to amend its counterclaim for revocation by introducing a new prior art document.
Sunstar Engineering Inc issued infringement proceedings against CeraCon, claiming it infringed EP 4 108 413 and on 6 March 2025, CeraCon counterclaimed for revocation. On 8 May 2025, CeraCon then filed an application pursuant to r. 263 RoP to amend its counterclaim, alleging lack of novelty over a new prior art document. The Judge-Rapporteur dismissed the application on the basis that this application did not satisfy the requirements of r. 263 RoP. In response, CeraCon filed a request for review (r. 333 RoP), arguing that the judge-rapporteur had misapplied r. 263 RoP and that not allowing new prior art documents into a case where it is clear that the patent is invalid over such new prior art documents would create a materially unlawful situation that would not be in the interests of the UPC or the public.
The panel found that the request for review was unfounded. R. 263 RoP is a discretionary power, and the interests of the parties and the public should be balanced. With that in mind, the Judge-Rapporteur rightly weighed up the interests involved, including the fact that introducing the new prior art document into the case would unreasonably hinder the patentee which would need time to respond to the new citation. In addition, in this case, the new prior art document was a patent application that would have easily been discoverable using a standard prior art search. CeraCon had therefore not acted with reasonable diligence in conducting its prior art search when first preparing its counterclaim for revocation, contrary to the requirements of r. 263.2(a) RoP.
The panel further noted that any hardship to CeraCon could be remedied by suspending the infringement proceedings pending a separate revocation action (r. 118.2(b) ROP) or rendering a conditional decision on the merits of the infringement action (r. 118.2(a) RoP)) pending the outcome of a separate revocation action.
Bodycap v EPO [UPC_CFI_628/2025]
August 2025Parties
Case and decision number
UPC_CFI_628/2025, ORD_33325/2025, ACT_32529/2025
Judges
Andrea Postiglione
On 6 August 2025, the Milan Central Division dismissed an appeal brought by (1) Bodycap, (2) the National Centre for Scientific Research and (3) the University of Rennes against the EPO, in which they appealed against the EPO’s rejection of their request for unitary effect concerning patent EP 3 691 518.
The UPC has exclusive jurisdiction over actions brought against decisions of the EPO relating to unitary protection within the meaning of Art. 9 of Reg. No 1257/2012 and Art. 32(1)(i) UPCA.
The appellants’ initial request for unitary effect, filed on 17 January 2025, contained inaccuracies in the address of the third patent proprietor. The EPO consequently issued a notification under r. 7.3 RoP granting a non-extendable deadline of one month (until 27 February 2025) to correct the irregularities. The appellants responded on 3 March 2025, four days after the deadline.
The EPO rejected the request, observing that the full address was required for reasons of legal certainty as to the identity of the European patent proprietor, and the time limit for remedying any irregularities had been missed (and was not extendible).
The appellants based their appeal of the EPO’s rejection on two main arguments:
- The information relating to the address of the third patent proprietor was sufficient to identify it, taking into account also the correct indication of the other two proprietors, and it was merely a minor error; and
- The time limit for remedying the irregularities was exceeded by a negligible amount.
The court found that the appellants’ arguments did not justify overturning the EPO’s decision, noting:
- R. 41 of the EPC Implementing Regulations (which governs requests for grant) requires that the information contained within the request is precise, i.e. a complete identification of the patent proprietors, including accurate addresses, is required. This approach is adopted with a view to safeguarding the rights of third parties and achieving legal certainty. In this instance, there were significant discrepancies in the address that had been provided by the appellants; and
- The time limit under r. 7.3 RoP is mandatory and a failure to comply with it automatically results in the rejection of the application. If the EPO were to accept documents received after the time limit, this would call into question the legal certainty of the system, as other users would seek to benefit from it, on the basis of the principle of equality, and it would be impossible to establish a time limit for the period.
This decision emphasises the importance of legal certainty and strict adherence to procedural rules, and confirms the limited scope for flexibility in correcting formal errors.
Boehringer Ingelheim v Zentiva [UPC_CoA_446/2025 & UPC_CoA_520/2025]
August 2025Parties
Case and decision number
UPC_CoA_446/2025, UPC_CoA_520/2025, APL_24205/2025, APL_27935/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 13 August 2025, the Court of Appeal (CoA) granted Boehringer Ingelheim International GmBH (BI) a preliminary injunction (PI) against Zentiva Portugal, LDA. (Zentiva PT) in all contracting member states for which the patent in issue (EP 1 830 843) had effect, overturning the Lisbon Local Division's decision to refuse the PI based on this second medical use patent. Unlike the Lisbon Local Division, the CoA found that there was an imminent risk of infringement due to Zentiva PT's actions in Portugal.
The Portuguese regulatory authority, INFARMED, granted Zentiva PT two marketing authorisations on 30 August 2024 for Zentiva PT’s generic product referencing Ofev®, comprising the active ingredient nintedanib, for the treatment of idiopathic pulmonary fibrosis. Zentiva PT also applied to INFARMED for an agreed price, an agreed reimbursement rate and a Prior Evaluation Procedure (PEP) the purpose of which is the establishment of conditions for purchase of the product by public hospitals (this is a hospital use only medicine). This application was granted and on 12 December 2024, INFARMED issued a notice stating that the Zentiva PT’s product was available to purchase.
BI applied for an order for provisional measures on 23 January 2025, following the withdrawal of its opt out for its second medical use patent EP 1 830 843, which expires on 21 December 2025. It was undisputed that the generic product fell within the scope of the patent.
As a preliminary argument, Zentiva PT argued that the provisional measures were not needed because, on 25 March 2025, the Portuguese Intellectual Property Court had granted a PI to BI’s Portuguese entity for the same product, albeit on the basis of a different intellectual property right (an SPC based on a different patent). Both the Lisbon Local Division and the CoA rejected this argument - the national injunction was on the basis of the SPC and unlike the UPC application was territorially limited to Portugal.
Regarding the preliminary injunction:
Imminent infringement
PIs can be granted to prevent imminent infringement (Art. 62(1) and (4) UPCA). It is necessary to show that it is more likely than not that infringement is imminent.
At first instance, the Lisbon Local Division held that there was no imminent infringement because requesting a marketing authorisation or PEP does not establish a risk of imminent infringement and Zentiva PT had not engaged in any conduct indicating it will likely place the product on the market.
The Court of Appeal stated that there will be imminent infringement where the potential infringer has "set the stage for it to occur". The preparations for the infringing act have been fully completed. For generics, the mere application or grant of a marketing authorisation is not enough. However, the completion of national procedures for health technology assessment, pricing and reimbursement can amount to an imminent infringement. This assessment must be made with due regard to the national regulatory and legislative context.
In this case, Zentiva PT obtained its PEP more than a year before the expiry of the patent. The CoA considered this to be premature and to constitute an imminent threat of infringement. In coming to this conclusion it considered a number of factors which related to the question of whether any further administrative steps or procedures were required before Zentiva PT could offer (and sell) its generic products to public hospitals. The CoA concluded that no such further steps or procedures were required – it was more likely than not that the approved PEP would enable Zentiva PT to offer its products to Portuguese public entities. The only thing preventing acts of infringement was effectively self-restraint. Further, Zentiva PT was unable to explain why it would be useful to obtain a PEP more than one year before patent expiry.
Necessity
The CoA also held that the necessity requirement was met (r. 6.2(c) RoP). Boehringer Ingelheim argued that the prices of Zentiva PT's product would be 30% lower than Ofev®. The CoA accepted that having two competing products on the market can not only lead to price pressure, but a permanent price erosion, which is an important factor when considering whether provisional measures are necessary.
Urgency
There was no unreasonable delay in seeking provisional measures per r. 211.4 RoP.
The preliminary injunction was therefore granted, covering each of the territories in which the patent had effect. The CoA held that there were no circumstances that would require a restriction in the territorial scope (Art. 76(1) UPCA). The fact that Zentiva PT did not hold any marketing authorisations outside Portugal did not matter.
SWARCO v Strabag [UPC_CoA_70/2025 & PC_CoA_001/2025]
August 2025Parties
Case and decision number
UPC_CoA_70/2025, PC_CoA_001/2025, App_23417/2025, App_23417/2025, App_25317/2025, App_25067/2025, APL_4377/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 1 August 2025, the Court of Appeal (CoA) handed down its decision relating to applications filed by Strabag and Chainzone to designate certain technical information as confidential in relation to the ongoing infringement proceedings against Swarco. The CoA ruled that confidentiality restrictions could not be imposed on material previously submitted at first instance, and only upheld the confidentiality of certain material submitted for the first time on appeal.
The applications related in part to a measurement report, stated to be internal know-how of the intervener, Chainzone, which was not publicly known and kept confidential. However, this report had been submitted at first instance in order to refute the infringement allegation, with no accompanying confidentiality application, and was therefore accessible to the opposing party without restrictions. Further, part of the information contained in the report had already become publicly available by being included in the decision of the Vienna Local Division at first instance. The CoA emphasised that an application under r. 262A RoP must be made at the same time as lodging the information and therefore rejected the application so far as it related to such information already submitted. The CoA clarified the type of information that can be classified as a trade secret under Art. 58 UPCA. Trade secrets include information that (i) is not generally known or readily accessible (i.e. can only be determined through time consuming analysis), (ii) has commercial value because it is secret, and (iii) has been subject to reasonable steps to maintain its confidentiality.
The decision also explained the correct procedure for applying for confidentiality restrictions. Requests under r. 262.2 RoP relate to public access to the information only and do not extend to confidentiality obligations on the opposing party and its representatives. Only under r. 262A RoP can an application be made to restrict the use of confidential information, e.g. by limiting distribution to a group of authorised persons.
NJ Diffusion v Gisela Mayer [UPC_CFI_363/2024]
August 2025Parties
Case and decision number
UPC_CFI_363/2024, ORD_69410/2024, ACT_39091/2024
Judges
Stefan Schilling
Camille Lignieres
Carine Gillet
On 1 August 2025, the Court of Appeal gave its decision in proceedings brought by NJ Diffusion against Gisela Mayer for alleged infringement of its patent relating to the construction of wigs. The patent in suit claimed a wig which has a cap made up of pieces of lightweight, fine-mesh fabric including a transparent fabric called a “monofilament”. One integer of the claim required that the “adjacent edges of the monofilament piece and parts of the cap contiguous with said monofilament pieces are placed edge to edge” (emphasis added). The claim also required a translucent assembly strip which “covers and overlaps said edges”.
Considering literal infringement, the Court found that in the Defendant’s wigs the two fabric types are “superimposed”, rather than placed “edge to edge”, under the assembly strip and that this fell outside the scope of the claim. In coming to this decision, the Court noted that the description contained two distinct embodiments, one where the fabrics are connected “edge to edge” and the other where the fabrics are “superimposed”, yet the scope of protection defined by the claims was expressly limited to “edge to edge”. The Court also observed that the claim feature of placing the pieces edge to edge was introduced during prosecution at the EPO and considered this “enabled the patent to be granted in this version by limiting its scope”. The Court also suggested that this should have led to the deletion of the description of the “superimposed” method in the patent before it was granted.
In the context of the Claimant’s case for infringement by equivalence, given the parties had not agreed to apply any particular national law to determine infringement by equivalence, the Court considered it should apply case law developed within the UPC (but not using the test from UPC cases which had applied national law following an agreement of the parties, such as Plant-e v Arkyne which applied the test under Dutch law). The Court considered it was necessary to start by answering a question which was the “lowest common denominator” in view of the differing tests within the UPC contracting member states, in particular, whether “the modified (or substitute) means essentially fulfil the same function to achieve essentially the same effect?”. Applying this to the facts of the case, the Court considered that the function of the assembly strip taught in the patent in suit was to assemble the two fabrics, whereas in the alleged infringing products the two fabrics are assembled by the two seams and so the “essential function” of the assembly strip is to cover the seams for greater user comfort. As such the infringing products did not have the same function as the claim and the case for infringement by equivalence was also rejected.
Centripetal v Palo [UPC_CFI_636/2025]
July 2025Parties
Case and decision number
UPC_CFI_636/2025
Judges
Peter Tochtermann
On 25 July 2025, the Mannheim Local Division rejected Centripetal Limited's application for a penalty order against Palo Alto Networks following difficulties in the execution of a saisie order (itself the subject of an earlier decision of the Court of Appeal), the scope of which allowed Centripetal to monitor Palo Alto's encrypted network security system at their Munich office.
When Centripetal went to execute the sasie, they found that Palo Alto's Munich premises was a co-working space, at which only one sales person worked, who did not have any access to the layers of the system Centripetal wanted to monitor under the order. Palo Alto refused to set up access rights for this sales person from their US headquarters and the execution of the order was thereby frustrated.
The case is a good illustration that saisie orders will be interpreted narrowly. The Munich premises were specified in the text of the order and it was thus held that the inspection could not be extended to other locations. Furthermore, the right of inspection was held not to extend to what would effectively amount to an order to procure steps to ensure compliance (including no requirement for Palo Alto to set up any system that was not physically present at the premises listed in the order). The Court held that Palo Alto only had to “cooperate actively” to enable Centripetal to inspect the ordered premises, and in this case was under no obligation to increase the sales person's access rights so that Centripetal could access the encrypted security network, as this was not necessary for the sales person to carry out their duties.
Therefore, Palo Alto's conduct did not constitute a breach of the saisie order and no basis was found for imposing a penalty payment.
Microsoft v Suinno [UPC_CoA_363/2025]
July 2025Parties
Case and decision number
UPC_CoA_363/2025, APL_19133/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
This case before the Court of Appeal concerned an application by Microsoft for a decision by default against Suinno Mobile & AI Technologies Licensing Oy.
Suinno had initiated infringement proceedings against Microsoft in April 2024 before the Central Division in Paris. In response, Microsoft filed a counterclaim for revocation and requested security for costs under r.158 RoP. The Central Division granted this request in September 2024, ordering Suinno to provide €300,000 as security within one month and informed Suinno that, pursuant to r.158.4 RoP, if it failed to provide the security within the time stated, a decision by default may be given in accordance with r.355 RoP. Suinno appealed the order, but the appeal was dismissed.
When Suinno failed to provide the security within the stipulated time, Microsoft applied for a decision by default under r.158.5 and 355 RoP. The Central Division rejected this application in April 2025, reasoning that, pursuant to r.355.2 RoP. the pleadings did not allow a confident assessment of the patent’s validity or infringement and so, in exercising its discretion, a default judgment would not be entered.
The Court of Appeal clarified that r.355.2 RoP applies only to decisions by default against defendants, not claimants. Therefore, the Central Division had erred in applying this rule to deny Microsoft’s request. The Court held that under r.355.1(a) RoP, a decision by default may be issued against a claimant who fails to take a procedural step (such as providing security for costs) within the required timeframe.
The Court emphasised that the effectiveness of r.158 RoP depends on the enforceability of consequences for non-compliance. It rejected Suinno’s arguments that the status quo of the action or the merits of the case should prevent a default decision (or its argument that it could in fact lead to a default decision going against either party). The Court also dismissed Suinno’s reliance on art. 37 of the Statute of the UPC, stating that the RoP allow for additional grounds for default decisions.
Accordingly, the Court revoked the Central Division’s order, issued a decision by default against Suinno dismissing the infringement action and ordered Suinno to bear the costs of the first instance and appeal proceedings.
This decision underscores the UPC’s strict approach to procedural compliance, particularly regarding security for costs, and shows that the Court can and will issue default judgments where parties fail to meet procedural obligations.
Maguin v TIRU [UPC_CoA_327/2025]
July 2025Parties
Case and decision number
UPC_CoA_327/2025, APL_16749/2025
Judges
Klaus Grabinski
Emanuela Germano
Emmanuel Gougé
The UPC Court of Appeal has upheld an ex parte order for preservation of evidence and inspection of premises (commonly referred to as a "saisie-contrefaçon") in Maguin v. TIRU, clarifying key procedural standards. The case involved European Patent EP 3 178 578, owned by TIRU, covering a waste incineration plant and process. TIRU had sought ex parte measures against Maguin and VALINEA, the furnace manufacturer and operator, after discovering a YouTube video suggesting potential infringement. The application was filed just over 2 months after that YouTube video became available.
Maguin appealed an order of the Paris Local Division that allowed evidence-gathering measures without prior hearing, arguing lack of urgency, no real risk of evidence loss, and failure by TIRU to disclose allegedly relevant prior art (the "Laurent Bouillet" furnace). The Court rejected these claims. It confirmed that urgency for preservation measures (r. 194.2 RoP) is distinct from the urgency standard for provisional injunctions (PIs). For evidence preserving measures, the Court shall exercise its discretion by taking into account the urgency of the need to preserve the evidence in question in order to determine whether and to what extent it wishes to hear the defendant. This is distinct from the requirement to avoid unreasonable delay in respect of PI measures.
The Court stressed that the risk of evidence disappearance need only be probable, not certain, and that digital data risks and operational constraints justified swift, coordinated inspections in this case.
Notably, the Court also held that a patentee seeking evidence preservation does not need to disclose prior art unless it is clearly material to the ex parte decision. Also in contrast to PIs, the validity of the patent does not need to be assessed at this stage; such issues are reserved solely for proceedings on the merits (or a PI) except where the presumption of validity can clearly be called into question, for example, following a decision by an Opposition Division or a Board of Appeal of the EPO.
This decision provides important guidance on the thresholds for ex parte saisie applications, the limits of the applicant’s duty of candour, and the discretion afforded to UPC judges when balancing efficiency, proportionality, and due process.
Fujifilm v Kodak [UPC_CFI_359/2023 & UPC_CFI_365/2023]
July 2025Parties
Case and decision number
UPC_CFI_359/2023, UPC_CFI_365/2023
Judges
Peter Agergaard
Peter Tochtermann
Dirk Böttcher
In a recent decision by the Mannheim Local Division, it was held that the UPC had jurisdiction to grant an injunction covering the UK. Fujifilm had brought proceedings against three Kodak companies domiciled in Germany (together Kodak) for infringement of the German and UK designations of its European patents related to printing plates in both the Düsseldorf and Mannheim Local Divisions. The proceedings against Kodak in the Düsseldorf division were concluded earlier this year when the UPC held it did have jurisdiction to rule on infringement in the UK but this was not necessary as the patent was held to be invalid in Germany and likely invalid for the same reasons in the UK.
In the Mannheim Division, the infringement claims were separated for each patent (EP 3 511 174 (EP 174); case UPC_CFI_365/2023 and EP 3 476 616 (EP 616); case UPC_CFI_359/2023) with Kodak challenging the validity in both cases. The Court also separated the part of the decision relating to its jurisdiction over the UK designations as the CJEU’s decision in BSH v Electrolux (C‑339/22) had not been handed down by the end of the oral hearing in this case. In April this year, the Court held that the German designation of EP 174 was valid based on Fujifilm's main request and that Kodak infringed the patent in Germany while EP 616 was held to be invalid.
In the separated proceedings relating to the UK designation of EP 174, the Judges confirmed that as a result of the CJEU’s ruling in Electrolux, the UPC did have jurisdiction to decide infringement of the UK patent, even if invalidity was raised as a defence. This was on the basis that Art. 4(1) of the Brussels I Regulation applied as the Defendants were domiciled in an EU Member State (Germany) and the patent was granted in a non-EU member state (the UK) that was not a party to the Lugano Convention or another bilateral agreement. The Court noted that there were no infringement or validity proceedings in the UK relating to the patent so Art. 33 or 34 (pursuant to which the Court of the Member State may be required to stay proceedings) did not apply. The Court also concluded that Art. 34 of the UPC Agreement (UPCA) did not restrict the UPC’s ability to apply the Electrolux jurisdiction. There was no indication that the UPCA contracting states had intended to transfer to the UPC their jurisdiction with regard to their own designation of a European patent whilst reserving jurisdiction to their national courts for other designations.
The Court considered the validity of the UK designation as a pre-requisite for a finding of infringement and stated that the UK designation of EP 174 in the proposed amended form was deemed valid for the same reasons as the German designation had been found to be in the earlier hearing. No arguments had been put forward that an English Court may apply UK or EPC law in a different way which would lead to a different outcome on validity. Kodak argued that, given EP 174 had been upheld in amended form, Fujifilm should notify the UK patent office of these amendments as this is a requirement of UK procedural law. The Court disagreed, explaining that procedural matters are governed by the procedural law of the forum at hand (i.e. UPC law) in accordance with the fundamental principles of international law. In addition, a finding of infringement and validity based on an amended form of the UK patent would only have inter partes effect and would not require the UK register to be amended.
In considering validity, the Court held that Kodak’s request for a declaration in relation to the validity of EP(UK) 174 patent was inadmissible but left it open as to whether Kodak were requesting the UPC to grant declaratory relief or to revoke the national patent. In any event, it reiterated that the UPC did not have jurisdiction to revoke the national part of a European bundle patent for non-UPCA contracting states. On declaratory relief, the Court left open the possibility that, following BSH v Electrolux, courts in the European Union had jurisdiction to grant declaratory relief in relation to UK patents. However, the Judges commented on the fact that Kodak did not actually have a relevant interest in a declaration that the UK part of the patent was invalid as it would not be binding on the UK authorities or on the patentee in revocation proceedings in the UK (if it was, the UPC would indirectly decide on the validity of the UK national patent and this would be counter to the principles established by the CJEU).
Fujifilm put forward evidence of Kodak’s activity in the UK and on the law of infringement in the UK, including the law on direct infringement and joint tortfeasorship. Kodak disputed the infringement allegations, arguing that title in the products manufactured for the UK rested with Kodak’s UK affiliate and that it was entitled to rely on a private/continuing prior use defence. However, the Court held that Kodak had failed to provide sufficient evidence to support its position. As such, the Court found that all three Kodak defendants were either directly or jointly carrying out infringing acts in the UK and rejected arguments on the prior use defence (as it had done in the main proceedings), whether under German or UK law.
Following this, the Mannheim Local Division considered the Claimant’s request for a permanent injunction, noting that although the request had its basis in UK law it had not been submitted that the Court’s powers to grant an injunction differed from its powers under the UPCA. As such, the Court had discretion to grant the permanent injunction under both UK law and the UPCA which it chose to exercise, referring to the reasoning in its main decision relating to the German designation in which a permanent injunction had been granted. The Court ordered Kodak to pay damages to compensate all losses caused by infringing acts in the UK since 2019, destroy any infringing products in the UK and set a penalty due in the event that the injunction was breached.
In the proceedings relating to the UK designation of the patent EP 616, of which the German part had been revoked in the earlier main proceedings, it was held that the UK patent would likely be invalid for the same reasons and given Fujifilm had failed to provide any evidence that validity would be assessed differently under UK law. As such, the infringement action regarding the UK designation was unfounded and inadmissible. As in the EP 174 proceedings, the Court held that the request for a declaration on validity was inadmissible as the UPC only has jurisdiction to assess the validity of a UK patent as a pre-requisite for a finding of infringement.
Walt Disney v InterDigital [UPC_CFI_445/2025]
July 2025Parties
Case and decision number
UPC_CFI_445/2025, ACT_24153/2025
Judges
Peter Tochtermann
As part of an ongoing dispute between the parties over InterDigital’s standard essential patents, InterDigital applied for an anti-anti-suit injunction (AASI) in the UPC. The AASI was pursued in response to the anti-suit injunction (ASI) sought by Walt Disney from the United States District Court for the Central District of California in relation to the proceedings brought by InterDigital in Brazil. In its application, InterDigital explained (and the Court agreed) that there was a risk that Disney may also apply for an ASI to prevent the main proceedings conducted before the UPC. The order for the AASI was issued on 27 May 2025 as separate proceedings to the main case between the parties. Due to the urgent nature of the order, InterDigital’s representatives were ordered to serve Walt Disney’s representatives in the main UPC proceedings via “beA” a special electronic mailbox for lawyer to lawyer communications.
Following this, Disney’s representatives in the main UPC action refused to acknowledge receipt of the order on the basis that they had only been made aware of the AASI on an informal basis and were not yet instructed to act for Disney in the AASI proceedings. However, at the same time Disney’s representatives stated in the main UPC proceedings that they had been informed by their clients that they would not be seeking revocation of the AASI under r. 213.1 RoP as it was never their client’s intention to apply for an ASI in relation to the UPC proceedings.
On 20 June, the Mannheim Local Division issued an order stating that, in its preliminary view, the appointment by Disney of the representatives in the main proceedings was sufficient for them to be considered as Disney’s representatives in the associated AASI proceedings (which were primarily concerned with shielding the main proceedings). It was noted by the judge that Disney’s refusal to accept service may be considered in the main proceedings with regard to Disney’s willingness to enter into a licence.
In a further order of 9 July 2025, it was again confirmed by the Court that “defendants cannot limit the authorisation to conduct the legal dispute before the UPC to individual acts at the defendants' discretion” and that limits on a power of attorney made for tactical procedural reasons are invalid. It was noted that the AASI application and main proceedings were inextricably linked and a respondent’s representation should not be affected by whether an AASI application is made in the main proceedings pursuant to r. 206 RoP or in a separate application. The Court held that service had been effected and that the defendants’ representatives should submit their acknowledgement of receipt. The Court also ordered that, in the event of further disobedience, a penalty payment of €100,000 would be imposed.
Fujifilm v Kodak [UPC_CFI_355/2023 and UPC_CFI_186/2025]
July 2025Parties
Case and decision number
UPC_CFI_355/2023, UPC_CFI_186/2025, ACT_10138/2025, ACT_578607/2023, CC_3088/2024, CC_3090/2024, CC_3093/2024
Judges
Ronny Thomas
On 9 July 2025, the Düsseldorf Local Division issued a significant costs decision in the dispute between Fujifilm Corporation and several Kodak entities concerning EP 3 594 009 B1. Following an earlier ruling on 28 January 2025, which revoked Fujifilm’s patent in its entirety and dismissed its infringement claims, Fujifilm was ordered to bear the costs of both the infringement and revocation proceedings. The value in dispute was set at €15 million for each action, with a ceiling for recoverable costs fixed at €1.5 million (reflecting a 25% uplift on the default ceiling).
Perhaps the most notable aspect of the latest decision is the Court’s clear stance that parties cannot recover legal costs specifically incurred in relation to the costs of proceedings themselves. The Court underlined that applications for costs under r. 150 et seq. RoP are intended to be summary proceedings determined by the judge-rapporteur. Allowing “costs upon costs” would undermine this purpose, so a successful party must ordinarily bear its own costs for the costs process, except in exceptional circumstances where a party has caused unnecessary costs.
Other notable points from the decision include:
- To be eligible for reimbursement, costs must be both reasonable and appropriate. The Court interpreted ‘reasonable’ as objectively necessary for achieving the legitimate aim of the proceedings; and ‘appropriate’ as not disproportionate in light of the value in dispute, the significance, complexity, and prospects of the case.
- The Court accepted the complexity of the dispute and found that Kodak’s use of a large legal team was justified. The €1.5 million ceiling for recoverable costs, agreed during the oral hearing and left unchallenged thereafter, was confirmed to apply, and Fujifilm’s objections to the increased ceiling were dismissed as unfounded.
- Travel expenses for two Kodak representatives to attend hearings, as well as fees for an appointed scientific expert, were considered reasonable and eligible for reimbursement. However, costs relating to additional “experts” or attorneys acting as experts, and fees for UK barristers, were disallowed, particularly as Kodak already had multiple UK solicitors as representatives, and there were no concurrent UK proceedings.
- Travel costs for a preparatory meeting were partially reduced, as the meeting coincided with other activities deemed unreasonable for reimbursement.
The Court ordered Fujifilm to reimburse Kodak’s legal costs (the final figure is redacted) within three weeks of service of the decision.
Renault v Avago [UPC_CFI_448/2025]
July 2025Parties
Case and decision number
UPC_CFI_448/2025, APP_28457/2025
Judges
Florence Butin
On 3 July 2025, the Munich Local Division granted the Defendants’ request to change the language of proceedings from German to the language of the patent (English).
In coming to its decision the Court considered the circumstances, including that: English is the language commonly used in the technical field of the patent relating to vehicular electronics, the disputes involve companies operating worldwide, the Defendants (French and German entities) commonly communicate in English and the Claimant (registered in Singapore) did not substantiate how it would be affected by the requested change.
The Court further noted that the Claimant’s arguments as to the language skills of the authorised representatives and the nationality of the judges forming the panel are not generally considered as relevant circumstances. Overall, the Claimant had not demonstrated that there should be any deviation from the general principle that the defendants’ position should be the decisive factor.
Headwater v Motorola [UPC_CFI_127/2024]
July 2025Parties
Case and decision number
UPC_CFI_127/2024, ORD_47961/2024, ORD_18005/2025, ACT_14859/2024
Judges
Daniel Voß
The Court dismissed the Claimant’s application on the basis that Art. 69.4 UPCA does not provide a legal basis for a claimant to provide security for costs. The Court considered that the rationale behind granting security for a defendant to an action does not apply to the ‘defendant’ to a counterclaim for a declaration of invalidity because a counterclaim is the “direct consequence” of the infringement action and ordering such security would unreasonably restrict the defendant’s ability to defend itself.
On the other hand, the Court granted the Defendants’ request for security. The Court considered a number of factors which put into doubt the ability of the Claimant to fulfil a future costs order requiring payment of the Defendants’ costs. These factors included: that the Claimant’s business is in licensing patents but there was no information as to the extent that it generates income from licensing its patents or the value of the portfolio, it is exposed to cost risks form other proceedings, its creditworthiness was assessed by a third party as ‘low’ and it appears to be essentially funded by third partes. Significantly, the Claimant had not put forward information to substantiate its arguments as to its assets and liquidity, nor had it argued that a provision of security would unreasonably prejudice its right to an effective legal remedy.
The Court ordered the Claimant to provide a total security of €300,000 split between the different groups of Defendants (i.e. half of the ceiling for recoverable costs based on the value of both the infringement proceedings and invalidity counterclaim).
Plant-e Knowledge v Arkyne [UPC_CoA_46/2025 & UPC_CoA_48/2025]
June 2025Parties
Case and decision number
UPC_CoA_46/2025, UPC_CoA_48/2025, APL_3486/2025¸ APL_3595/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
The Court of Appeal issued a decision on 23 June 2025 confirming a settlement between Arkyne Technologies S.L. and Plant-e Knowledge B.V./Plant-e B.V. in a patent dispute over EP 2 137 782, a patent covering plant-based microbial fuel cell technology. The dispute had drawn attention as one of the first major UPC cases to address infringement by equivalence.
The Hague Local Division had previously ruled in favour of Plant-e, finding that Arkyne had infringed the patent and rejecting Arkyne’s revocation claim. This led Arkyne to file two appeals, one against the infringement ruling and another against the rejection of its revocation counterclaim.
However, before the written procedure in the appeal process was completed, both parties reached a confidential settlement. Plant-e, on behalf of both parties, submitted applications to the Court of Appeal requesting confirmation of the settlement and confidentiality of its contents under r. 365.2 and 262.2 RoP. The Court agreed to confirm the settlement under r. 365.1 RoP, making it enforceable as if it was a final court judgment.
Regarding the confidentiality request, the Court ordered that only a redacted version of the agreement be entered into the public register. The full contents of the settlement therefore remain confidential and it is only if a request for access is made by a third party under r. 262.1(b) RoP that the request for confidentiality from the public will be decided.
In addition to confirming the settlement, the Court also addressed a request from Arkyne for reimbursement of court fees. Under r. 370.9(b)(i) RoP, a party is entitled to a 60% refund of court fees if a case is settled before the closure of the written procedure. Since Plant-e’s deadline to file its statement of response was 24 June 2025, after the settlement was reached, the written procedure had not yet closed. As a result, Arkyne’s request for reimbursement was granted.
Headwater v Motorola [UPC_CFI_149/2024]
June 2025Parties
Case and decision number
UPC_CFI_149/2024, ORD_69211/2024, ACT_16251/2024
Judges
Daniel Voß
In a decision issued on 20 June 2025, the Munich Local Division ruled on jurisdictional objections raised by all 4 active defendants in a patent infringement case brought by Headwater Research LLC concerning European Patent EP 3 110 069. The defendants included 3 Motorola entities (Defendants 1 to 3): Motorola Mobility LLC, Motorola International Sales LLC, and Motorola Mobility Germany GmbH, and Flextronics International Europe B.V. (Defendant 5), which was named as a logistics partner allegedly involved in distributing the infringing devices across Europe.
Defendants 1 and 2, both US-based, objected to the jurisdiction of the Munich Local Division under r. 19.1 RoP. However, the Court dismissed their objections as inadmissible on procedural grounds. The objections were filed one day after the expiry of the one-month deadline following service of the statement of claim. The Court clarified that service rules for non-EU defendants do not allow for presumed delayed service dates and confirmed that the actual date of service, not the date displayed by the Court’s case management system, controls the deadline.
Defendant 3, based in Germany, also challenged jurisdiction, asserting that the requirements under Art. 33(1)(b) UPCA were not satisfied. The company argued that Headwater had not adequately alleged any specific acts of infringement or shown that it was meaningfully involved in the sale or distribution of the accused products. The Court rejected these arguments. It held that Defendant 3’s registered office in Germany was sufficient to establish jurisdiction under Art. 33(1)(b) sentence 1 UPCA. The Court also accepted the Claimant’s argument that there was a business relationship, within the meaning of Art. 33 1(b) sentence 2 UPCA, between Defendants 1 to 3, as Defendant 3 operated as the German distribution subsidiary and participated in the distribution of the accused Motorola devices, which was sufficient at this stage of the proceedings.
Defendant 5, based in the Netherlands, raised a more complex jurisdictional objection. It contended that it had no direct role in sales to Germany, lacked a relevant business relationship with Defendant 3, and merely operated as a holding company. The Court, however, found these arguments unpersuasive. It held that jurisdiction existed under both Art. 33(1)(a) and 33(1)(b) UPCA. Under Art. 33(1)(a), Headwater’s allegation that Flextronics delivered a sample of an infringing Motorola device into Germany was accepted as sufficient at the jurisdictional stage, even if Flextronics disputed the facts. Under Art. 33(1)(b), the Court found a qualifying business relationship between Flextronics and the Motorola defendants based on their shared commercial operations in the distribution of the accused devices, noting that the threshold for such a relationship should not be interpreted too narrowly in light of the UPC's objectives of procedural efficiency and avoiding contradictory judgments.
The Court also addressed Headwater’s procedural shift in legal argumentation. While Headwater initially relied only on Art. 33(1)(b) to establish jurisdiction, it later invoked Art. 33(1)(a) in response to the jurisdictional challenges. The Court accepted this additional legal basis, citing the principle of iura novit curia (the Court knows the law) and confirming that legal arguments can be supplemented after the filing of the statement of claim, particularly when they respond to objections and rely on the same factual foundation.
In dismissing all jurisdictional objections, the Court emphasised the importance of adjudicating the infringement claims in a single, consolidated proceeding. It noted that any attempt to exclude Flextronics or the foreign Motorola entities would fragment the case, cause procedural inefficiencies, and risk inconsistent outcomes. This decision allows the proceedings to continue on the merits against all defendants.
AorticLab v Emboline [UPC_CoA_393/2025]
June 2025Parties
Case and decision number
UPC_CoA_393/2025, APL_20694/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
A decision from the Court of Appeal in AorticLab v Emboline , issued on 20 June 2025, provides important clarification on the availability of security for costs under the UPC framework.
This decision establishes a clear precedent: under the UPCA, security for costs under Art. 69(4) UPCA may only be requested by defendants. Procedural mechanisms cannot be used by a claimant to circumvent this limitation, and this limitation is unchanged by a defendant filing a counterclaim for revocation.
The Court emphasised that under the UPCA and RoP a defendant is not allowed to bring forward an invalidity defence without at the same time lodging a separate counterclaim for revocation.
The case arose from an infringement action initiated by Emboline against AorticLab concerning EP 2 129 425, relating to an embolic protection device. In the course of the proceedings, Emboline requested an order requiring AorticLab to provide security for costs, citing concerns over AorticLab’s financial stability and the risk of insolvency should an injunction be granted. AorticLab responded with a counterclaim for revocation and challenged the admissibility of the request, arguing that under Art. 69(4) UPCA, only a defendant may request such a measure.
The Munich Local Division initially granted the security request in the amount of €200,000, prompting an appeal by AorticLab. On appeal, the Court of Appeal focused on the interpretation of Art. 69(4) UPCA and r. 158 RoP. It found that the right to request security for costs is deliberately limited to defendants in Art. 69(4). Unlike earlier paragraphs of Art. 69, which refer generally to parties, paragraph 4 specifically names the defendant as the party entitled to make such a request. This limitation was deemed intentional, aligning with the underlying rationale of protecting defendants from the risk of an insolvent claimant initiating litigation without sufficient resources to cover potential costs.
Although r. 158 RoP uses broader wording by referring to “a party,” the Court stressed that the UPCA takes precedence in the event of a conflict between the two.
The Court also dismissed the suggestion that Emboline’s dual role as claimant in the infringement action and defendant in the revocation counterclaim could justify the security request. It emphasised that the counterclaim was a direct and necessary response to the infringement action and did not transform AorticLab into the initiating party in the proceedings. Since the revocation action is procedurally required for a validity challenge by way of defence under the UPCA system, allowing a claimant to seek security from a defendant in such circumstances would place an unreasonable and disproportionate burden on the defendant’s ability to mount a defence.
Accordingly, the Court set aside the Munich Local Division’s order and dismissed Emboline’s application for security for costs as inadmissible.
Alexion v Samsung Bioepis [UPC_CoA_402/2024]
June 2025Parties
Case and decision number
UPC_CoA_402/2024, App_8340/2025, APL_40470/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
Following the Court of Appeal’s rejection of Alexion’s PI applications against Samsung and Amgen, Alexion filed a request for a rehearing based on a fundamental procedural defect pursuant to Art. 81(1)(b) UPCA and r. 247(c) RoP. This was on the basis that the Court of Appeal had applied a new standard for claim interpretation without providing an opportunity for Alexion to be heard, and had based its decision on incorrect facts.
The Court stressed that Art. 81(1) UPCA makes clear that a rehearing may only exceptionally be granted in cases of a criminal offence or fundamental procedural defect. The procedural defect must be so fundamental that it is intolerable for the legal system, and must override the principle that proceedings which have led to a final decision (i.e. a decision of the Court of Appeal) should not be re-opened in the interest of legal certainty. Furthermore, a defect may only be considered fundamental if it can be established that without the defect the same decision would not have been taken (and the applicant has the burden to show this).
In relation to Alexion’s arguments regarding the deficiency of the Court of Appeal decision (which are not outlined in detail in the decision on the application), the Court stressed that the parties are expected to have knowledge of case law of the Technical Boards of Appeal and the Enlarged Board of Appeal of the European Patent Office relevant for the issues at hand and the arguments advanced.
Further, the right to be heard, which is reflected in Art. 76(2) UPCA, does not dictate that the parties must have had the opportunity to provide comments in writing, nor does this provision require that the Court notifies the parties in advance in the form of a preliminary opinion on any issue in dispute.
Overall, it was not considered by the Court that the order under review suffered from a fundamental procedural defect in the sense of Art. 81(1) UPCA. In essence, Alexion did not agree with the conclusions drawn by the Court. However, a mere disagreement regarding the reasoning and considerations by the Court does not constitute grounds for a rehearing.
10x Genomics v Curio Bioscience [UPC_CFI_140/2024]
June 2025Parties
Case and decision number
UPC_CFI_140/2024, ACT_15774/2024
Judges
András Kupecz
Ronny Thomas
Bérénice Thom
On 16 June 2025, the Düsseldorf Local Division granted 10x Genomics a permanent injunction against Curio Bioscience in Germany, France, and Sweden. This decision follows the court's previous decision in April 2024 granting 10x Genomics a Preliminary Injunction (PI) following a finding that claim 14 of its patent had been infringed.
In December 2023, the Claimant, 10x Genomics, Inc., filed an application for a preliminary injunction against the Defendant, Curio Bioscience Inc., on the basis of alleged infringement of claims 1 and 14 of its European patent (EP 2 697 391 B1) which claimed a "method and product for localised or spatial detection of nucleic acid in a tissue sample". Following an oral hearing, in its order dated 30 April 2024, Court found infringement of claim 14 (but not claim 1) and issued a PI on that basis, preventing the defendant from offering, marketing, using, or possessing the product of the infringed claim in Germany, France and / or Sweden. In doing so, the court found the patent's validity to be 'sufficiently certain' for the purposes of granting provisional measures.
During the May 2025 merits hearing to which this latest judgment pertains, the claimant sought inter alia a permanent injunction on the basis of indirect infringement of claim 1 (notwithstanding the court's previous decision that it was not infringed) and direct infringement of claim 14. In response, the defendant did not expressly challenge the patent's validity (having had its validity arguments dismissed by the court at the PI hearing) and instead concentrated its technical arguments on non-infringement.
At the oral hearing, the claimant argued that the specification and, in particular, the embodiments covered by claims 7 and 9 were key to the interpretation of claim 1, such that claim 1 was infringed. In addressing this argument, the court referred to Art. 69 EPC in conjunction with the Protocol on its interpretation, affirming that while the claims are 'not only the starting point but also the decisive basis for determining the scope of protection of a European Patent', the description and drawings must always be taken into account as aids to the interpretation of the claim and not only to resolve any ambiguities in the claim. However, it also noted that adequate protection for the patentee must be combined with sufficient legal certainty for third parties.
On the facts of the case, the court did not consider that subclaims 7 and 9 supported a different construction to that which the court had previously found for claim 1. Accordingly, claim 1 was held to be not infringed, but infringement of claim 14 was upheld and a permanent injunction was granted prohibiting the Defendant from offering, placing on the market, utilising or either importing or stocking for the above purposes, products falling within claim 14 of the patent. Recall of products, destruction of products, provision of sales information, damages and costs were also ordered by the court.
Tiroler Rohre v SSAB [UPC_CFI_324/2024 & UPC_CFI_487/2024]
June 2025Parties
Case and decision number
UPC_CFI_324/2024, UPC_CFI_487/2024, ACT_369096/2024
Judges
Matthias Zigann
Tobias Pichlmaier
Margot Kokke
On 6 June 2025, the Munich Local Division handed down its decision in Tiroler Rohre v SSAB, holding that an amended version of Tiroler Rohre’s patent, EP 2 839 038 (EP 038), is valid and infringed.
In March 2024, Tiroler Rohre (Tiroler) filed an application for a Preliminary Injunction (PI) against SSAB in the Munich Local Chamber. Tiroler later withdrew its application, after the Judges at the oral hearing expressed doubts as to the validity of its granted patent. Tiroler later filed infringement proceedings, and SSAB counterclaimed for revocation.
EP 038 concerns an improved pile driving tip which is placed on a cylindrical pile driver to assist in driving hollow piles into the ground to create stable foundations for structures.
During the revocation action, Tiroler maintained the validity of its patent in both its granted version, and in the alternative, with multiple auxiliary requests. EP 083, in its granted form was held not to be novel but the amended EP 083 in the form of auxiliary request 3, was maintained as valid. In coming to its conclusion on validity, the Court affirmed that the problem-solution approach is the correct assessment for inventive step and should be “applied first and foremost, insofar as this is possible…to increase legal certainty and further align the case of the UPC with the EPO and Boards of Appeal.”.
With regard to infringement, SSAB tried to argue that its pile tips did not infringe the amended EP 038 because the pile drives could not be attached to the bottom grooves in its pile tips (due to the wall thickness of SSAB’s piles); and because it was allegedly not technically feasible to design a pile end to match the dimensions of the base of the groove. SSAB also sought to rely on the fact that neither the piles it sold or other piles supplied on the market had dimensions that match that of its grooves.
The Court dismissed the relevancy of the argument that SSAB’s driven piles (or indeed other suppliers’ piles) did not have the appropriate dimensions because that concerned circumstances outside the scope of protection of the patent claim, which is focussed purely on the design of the pile-driving tip. If SSAB wants to assert that patent infringement is impossible due to circumstances outside the patent claim, it bears the burden of proof in accordance with Art 54 of UPCA. For the purposes of infringement, it is enough that Tiroler demonstrates the realisation of all the claim features of its patent. The Court was also not convinced of SSAB’s arguments that it would be “technically and functionally impossible” to manufacture driven piles with dimensions matching that of its pile tips.
The Court held the amended patent to be valid and infringed. SSAB now faces an injunction across all UPC Member States in which the patent is in force (and not just those where it sold its product). Tiroler was ordered to bear 20% of the costs of the dispute and SSAB 80% of the costs.
Hybridgenerator v HGSystem [UPC_CoA_233/2025]
June 2025Parties
Case and decision number
UPC_CoA_233/2025, APL_13146/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 4 June 2025, the Court of Appeal issued an Order clarifying the required court composition when considering requests for imposing periodic penalty payments when an Order for preservation of evidence is breached.
In August 2024, the Copenhagen Local Division, with a single Judge presiding, granted an application by Hybridgenerator for an order to preserve evidence and for inspection. The Order included a provision for potential penalty payments if the respondents failed to comply. The Judge also set the value of these periodic penalty payments. When the Respondents allegedly failed to comply, the Judge declined Hybridgenerator’s application to impose the payments.
Hybridgenerator appealed the decision, arguing that the decision not to impose penalty payments should have been made by a panel, not a single judge. The UPC Court of Appeal agreed with Hybridgenerator's position and distinguished between two stages concerning penalty payments:
- Setting the value of periodic penalty payments (r. 354.3 RoP) - The Court confirmed that the initial setting of the value of periodic penalty payments can be done by a single Judge, such as the presiding Judge or a Judge-Rapporteur, as there is no explicit requirement in the rules for a panel at this stage.
- Imposing periodic penalty payments (r. 354.4 RoP) - The Court ruled that when it comes to imposing penalty payments, the composition of the court must be a panel. The Court emphasised that r. 354.4 RoP explicitly states that such an Order must be made by the panel, on an inter-partes basis.
The Court of Appeal set aside the Copenhagen Local Division's order refusing to impose penalty payments, finding that it was issued without the correct court composition. The matter has been referred back to the Copenhagen Local Division for further consideration by a panel.
Xsys v Esko [UPC_CoA_156/2025]
June 2025Parties
Case and decision number
UPC_CoA_156/2025, APL_8790/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
On 2 June 2025, the UPC Court of Appeal (CoA) handed down its decision in ESKO v XSYS, finding, in line with Fives v REEL, that the UPC has jurisdiction over infringement claims relating to acts in the period before the entry into force of the UPCA. It also held that the UPC is competent to decide on alleged acts of infringement which have occurred between the date of the opt-out of a patent from the UPC and the date of the withdrawal of that opt-out.
ESKO’s patent was granted on 30 June 2021, and was opted-out from the UPC on 12 May 2023. This opt-out was withdrawn on 26 August 2024 and, the next day, ESKO commenced an infringement action against XSYS in the Munich Local Division of the UPC in relation to acts alleged to have taken place before and after the entry into force of the UPCA on 1 June 2023, as well as before and after the withdrawal of the opt-out. XSYS raised a preliminary objection alleging the UPC had no competence and that the action should be declared inadmissible. The Munich Local Division rejected the preliminary objection, and granted leave to appeal.
XSYS’ appeal requested that the infringement action be dismissed to the extent it related to the time on or before the date of the effective date of the withdrawal of the opt-out. Alternatively, XSYS requested the proceedings be stayed to ask the CJEU to give preliminary rulings on the interpretation and application of the UPCA.
The CoA dismissed XSYS’s appeal, making the following findings:
- As per Fives v REEL, the wording of Art. 32(1) UPCA (“Competence of the Court”) does not provide for any temporal limitation of the UPC’s exclusive competence concerning acts of alleged infringement, whether these acts have taken place before or after the entry into force of the UPCA. This absence of any temporal limitation under Art. 32(1) UPCA reflects the object and purpose of the UPCA, to create a court common to the contracting member states;
- Regarding the rights to which the UPCA applies (Art. 3 UPCA, “Scope of application”), there is also no indication in this provision of any temporal limitation of the Court’s competence to infringing acts occurring only after the UPCA’s entry into force (again, considering Fives v REEL). As Art. 3 UPCA does not address temporal scope, it therefore leaves open whether acts occurring before the UPCA’s entry into force are within the scope of application of the UPCA;
- During the transitional period of the UPC, and unless the patent has been opted out, the exclusive competence of the UPC coexists in parallel with the national courts (Art. 83 UPCA). This concurrent competence, however, does not provide for a partial or limited competence of the elected court, such as in relation to the time period for which the chosen court is competent. This consistent with Art. 71c (2) of Regulation (EU) No 1215/2012, which provides for this concurrent competence during the transitional period, and which does not give exclusive competence to national courts during this period for acts of infringement occurring prior to the entry into force of the UPCA. It follows that the concurrent jurisdiction of the UPC and the national court during the transitional period also applies to acts of infringement occurring prior to the UPC’s entry into force; and
- Finally, when a patentee decides to withdraw an opt-out, the patent is brought back under the (exclusive) competence of the UPC. There is no partial or limited withdrawal: if the patent is opted-out, the patent is entirely out of the exclusive competence of the UPCA or, if the opt-out is no longer in force, the patent is entirely under the exclusive competence of the UPC, without limitation (without prejudice to the parallel competence of national courts during the transitional period under Art. 83). Any different approach would lead to a fragmented system that would be contrary to the UPCA’s objective and purpose. As a result, the UPC is competent to decide on alleged acts of infringement which have occurred between the effective date of the opt-out and the date of the withdrawal.
Swarco v Strabag [UPC_CoA_70/2025]
May 2025Parties
Case and decision number
UPC_CoA_70/2025, APL_4377/2025, PC_CoA_001/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 26 May 26, 2025, the Court of Appeal dismissed Chainzone Technology (Foshan) Co, Ltd.'s (Chainzone) request to suspend an Order for provisional measures issued by the Vienna Local Division. In this infringement action, the patentee, Swarco, alleged infringement by Strabag who installed LED variable message signs purchased from Chainzone at the A12 sites (VKP Kundl, RFB Innsbruck) on behalf of a third-party company.
On 15 January 2025, the Vienna Local Division ordered Strabag to provide detailed information on the origin, distribution, and commercial customers of the infringing goods; submit purchase and sales documents as proof; destroy all infringing items in its possession and recall all sold infringing items at its own expense.
Both Strabag and Chainzone appealed this decision. Strabag's initial application for suspensive effect was rejected on 28 January 2025, and Chainzone filed a similar application on 15 May 15 2025. Chainzone sought to suspend the enforcement of the decision, arguing that the Local Division: had interpreted claim 1 in a manifestly incorrect manner; failed to apply basic rules on the burden of proof such that Swarco had not met its burden; drew technically untenable conclusions; and failed to take account of relevant facts/arguments and failed to provide sufficient reasons.
The Court of Appeal rejected Chainzone's application, reiterating that an appeal does not automatically suspend a lower court's order. Such an exception is only granted if the appellant's interest in maintaining the status quo outweighs the respondent's, or if the initial order is "manifestly erroneous" or its enforcement would render the appeal "irrelevant or purposeless.". The Court held that Chainzone had not sufficiently demonstrated manifest errors in the Order or that there was an infringement of fundamental procedural rights on which the decision was based Chainzone failed to explain how specific arguments would have led to a different conclusion by the lower court.
The Court of Appeal also held that the correctness of the claim interpretation and the proof of infringement would be thoroughly reviewed during the main appeal proceedings, not at this preliminary stage.
Nanoval v ALD Vaccum [UPC_CFI_63/2025]
May 2025Parties
Case and decision number
UPC_CFI_63/2025
Judges
Matthias Zigann
Tobias Pichlmaier
Walter Schober
On 28 May 2025, in the ongoing infringement action between Nanoval GmbH and ALD Vacuum Technologies, the Munich Local Division confirmed an earlier Order made against an alleged infringer for evidence preservation measures and inspection. Following a request pursuant to r. 197.3, the Court reviewed an Order made in February for inspection and evidence preservation. That Order was made without hearing the defendant.
The review application was unsuccessful, and the Court considered the applicant had submitted all evidence reasonably available. In particular, the Court noted the arguments made by the alleged infringer in the application for review did not address that there were sufficient indications of likelihood of infringement provided when the original Order was granted. Further, when granting the Order, the Court had concluded that the alleged infringer had deliberately failed to provide any specific information about its system in its protective letter and, therefore, was apparently unwilling to co-operate in clarifying the facts. As such, the Order could have been avoided if sufficient information had been provided by the alleged infringer.
InterDigital v Walt Disney [UPC_CFI_445/2025]
May 2025Parties
Case and decision number
UPC_CFI_445/2025
Judges
Mojca Mlakar
Peter Tochtermann
Dirk Böttcher
As part of a global patent infringement dispute between InterDigital and Disney, infringement proceedings are pending before the Mannheim Local Division (LD). In parallel US proceedings Disney applied for an anti-suit injunction regarding proceedings being conducted in Brazil. Clarification was sought from Disney as to whether such an injunction would also be sought in the UPC proceedings, but no clear response was given. InterDigital therefore issued an ex parte application for an Anti-Anti-Suit Injunction (AASI) to prevent Disney from seeking an anti-suit injunction or an equivalent measure that would prevent InterDigital from enforcing decisions of the UPC in patent infringement proceedings over which the UPC has jurisdiction.
The Mannheim LD considered the application for the AASI was well founded and that the LD had jurisdiction to grant such an injunction. On the merits, the lack of a clear response in correspondence about whether an anti-suit injunction would be sought in relation to the UPC was a factor of relevance to the Court. When weighing the interests of the parties, the Court noted that the application was intended to secure the international context of the dispute and ensure that each jurisdiction is able to exercise its judicial powers undisturbed. Further, the Court noted that it was important that the proceedings, which relates to the SEPs, are conducted in accordance with EU antitrust laws as the UPC must ensure the primacy of European law.
Hologic v Siemens [UPC_CFI_758/2024]
May 2025Parties
Case and decision number
UPC_CFI_758/2024, App_16529/2025, ACT_63758/2024
Judges
Ronny Thomas
Bérénice Thom
Petri Rinkinen
On 21 May 2025, the Düsseldorf Local Division rejected Siemens’ request for security of costs in the ongoing Hologic v Siemens proceedings. The defendants sought security for their costs in respect of both the infringement claim and revocation counterclaim on the basis that enforcing a potential costs order against the claimant would be unduly burdensome given the claimant’s registered place of business was in the USA, which has not ratified any international agreement recognising foreign judgments.
The Court considered the defendants were, as a matter of principle, permitted to submit a request for security in respect of the revocation counterclaim as well as the infringement claim and that establishing that “enforcement of a cost order is unduly burdensome” would be a ground for granting such request. However, the Court rejected the request because the defendants had not met their burden of proof, in particular evidence was required of the applicable foreign law and its application which had not been provided.
Hurom v NUC Electronics [UPC_CFI_163/2024]
May 2025Parties
Case and decision number
UPC_CFI_163/2024, ORD_69293/2024, ACT_17434/2024
Judges
Pierluigi Perrotti
Camille Lignieres
Carine Gillet
On 23 May 2025, the Paris Local Division dismissed Hurom's claim for infringement against NUC Electronics, and revoked the Dutch, French, German and Italian parts of the patent in suit as unconditionally and conditionally amended. The Local Division also ruled on an infringement claim in the non-UPC territory of Poland.
Added matter
When considering whether Hurom's claim amendments added matter, the Local Division applied the Court of Appeal's test from Abbott v Sibio. The Court considered that features may be used to illustrate the working of an embodiment that are not an essential part of the invention. The removal of such features (when compared to the disclosure of a patent application) does not constitute an intermediate generalisation and does not add matter.
Territorial scope of the UPC
Hurom additionally requested that the Court rule on infringement in Poland on the basis of the Polish designation of the patent as granted. In its Statement of Defence, NUC objected that the UPC lacks jurisdiction to rule on injunctions and remedies in Poland. Despite Hurom protesting that this objection should have been raised as a Preliminary Objection pursuant to r. 19 RoP (and so was made out of time), the Court found it was admissible on the basis that the territorial scope of decisions under Art. 34 UPCA fell outside of the matters governed by preliminary objections under r. 19 RoP.
The Court noted that the Polish part of the patent in suit cannot be revoked by the UPC nor amended, but that the claim concerning alleged acts of infringement on Polish territory is admissible in light of the decision handed down by the CJEU in BSH v Electrolux (previously reported here). However, Hurom did not meet the burden of proof for the alleged infringement in Poland (relying only on availability of the relevant websites throughout Europe and an allegation that the first defendant’s turnover covered all of Europe) and so this claim was dismissed.
Genevant v Moderna [UPC_CFI_191/2025, UPC_CFI_192/2025]
May 2025Parties
Case and decision number
UPC_CFI_191/2025, UPC_CFI_192/2025, ORD_21852/2025, ACT_10280/2025, ACT_10284/2025
Judges
Margot Kokke
On 23 May 2025, the Hague Local Division made its order in respect of a number of preliminary objections made by the defendants in Genevant v Moderna.
The claim was filed against fifteen different Moderna entities based both within and outside the UPC territories (including Moderna Netherlands, Spain, Norway, Poland, UK, US). The different Moderna defendants made different preliminary objections contesting the jurisdiction of the UPC.
First, Moderna argued that the UPC does not have jurisdiction in respect of the claims against Moderna Spain, Poland and Norway as those entities had not infringed the patent within the UPC territory. The Court considered it had jurisdiction against those defendants as the claimants had sufficiently substantiated alleged infringement in those defendants’ home countries jointly with Moderna Netherlands, which provided jurisdiction under Art. 8(1) Brussels I Recast Regulation (and the equivalent provisions of the Lugano Convention in respect of Norway). The defendants did not substantiate any objection regarding jurisdiction over any of the other defendants based outside of the territory of the UPC, e.g. Moderna US, and so the Court considered those defendants submitted to the UPC’s jurisdiction.
Second, Moderna argued that the Hague Local Division does not have jurisdiction in respect of the defendants which are neither domiciled nor accused of infringing acts in the Netherlands. The Court also dismissed this objection as it considered that under Art. 33(1)(b) UPCA: (i) the multiple defendants have a “commercial relationship” with Moderna Netherlands as they belong to the same group of companies and have related commercial activities aimed at the same purpose; and (ii) the action relates to the same alleged infringement.
Finally, Moderna argued that the UPC does not have long-arm jurisdiction for infringing acts outside of the UPC territory allegedly committed by entities that are not based within the UPC territories (e.g. Moderna US and UK). The Court held that this is an issue to be dealt with in the main proceedings.
Maschio v Spiridonakis Bros [UPC_CFI_513/2024]
May 2025Parties
Case and decision number
UPC_CFI_513/2024, ORD_22310/2025, ACT_50468/2024
Judges
Andrea Postiglione
The Milan Court of First Instance ordered, pursuant to r. 170.1(c) and 170.2(f) RoP and Art. 53(f) UPCA 2025, that the device falling within the scope of the patent together with the allegedly infringing device should be brought to the oral hearing scheduled for 4 June 2025. The Claimant stated that transporting the patented agricultural machine to the Court for the oral hearing would be impossible due to its weight and proposed that inspection of the machine equipped with the patented tool be carried out at one of its sites near the Court.
The Court confirmed that Art. 53(f) UPCA has a scope of application that covers a series of activities detailed in the RoP, and extends beyond them in a broader and more comprehensive manner. According to Art. 53(f) UPCA, the Court has the ability to compare the patented and allegedly infringing devices by viewing their dynamic functionality, not limited to a mere inspection. If a party offers to exhibit a device in accordance with r. 170.1(c) and submits a video of its operation to the court in accordance with r. 170.1(d), the court may also order dynamic experiments and comparative tests based on the principle established in Art. 53(f) UPCA.
Thus, it was ordered that inspection of the patented device and the allegedly infringing device should take place at the Claimant’s site in the morning of 4 June 2025, be videoed and form part of the oral hearing, with the oral hearing continuing at Court in the afternoon.
Hisense v Coring [UPC_CoA_423/2025, UPC_CoA_424/2025]
May 2025Parties
Case and decision number
UPC_CoA_423/2025, UPC_CoA_424/2025, APL_22327/2025 , APL_22355/2025
Judges
Patricia Rombach
The Claimant brought an action for infringement against Hisense, TCL and LG before the Mannheim Local Division.
Hisense, TCL and LG lodged a request for separation of proceedings, arguing that they would have to disclose sensitive supply chain information in order to defend themselves against Corning’s allegations. Exchange of such confidential information amongst the competing companies had to be restricted to avoid potential conflicts with EU competition law. The Court of First Instance rejected this request, and the Defendants made a request for discretionary review under r. 220.3 RoP.
The request for discretionary review was deemed unfounded by the Court of Appeal. It was noted that although separation of the proceedings can prevent other defendants from obtaining access to the confidential information, this was not the only option available to the Court. Instead, the Court may order that access to confidential information can be restricted to specific persons under Art. 58 UPCA and r. 262A RoP. Therefore, there was nothing fundamentally wrong with the Court’s decision not to separate the proceedings and no misuse of its discretionary power. Whether to separate proceedings was a matter to be determined based on the circumstances of the case, and the assessment should include considerations of procedural economy.
Ballinno v Kinexon [UPC_CoA_328/2024]
May 2025Parties
Case and decision number
UPC_CoA_328/2024, APL_36389/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 12 May 2025, the Court of Appeal of the UPC handed down a decision in the context of the long running dispute between Ballinno B.V. and Union des Associations Européennes de Football (UEFA) and its technology provider Kinexon GmbH.
The Hamburg Local Division of the UPC previously rejected a Preliminary Injunction (PI) application brought by Ballinno against UEFA and Kinexon in relation to the use of goal technology at the European Football Championships (EFC), which were held in Germany in the summer of 2024. The basis for the PI rejection was that Ballinno had not acted with the necessary urgency, nor had it sufficiently proved its case on infringement and Ballinno was ordered to pay the costs of the proceedings. Prior to the PI being refused, Ballinno had also been ordered to provide security for costs. Ballinno appealed the PI decision and the costs orders but then subsequently withdrew its PI request on the basis that the EFC were over and therefore it’s urgent interest in securing a PI had significantly diminished.
Nevertheless, Ballinno maintained its requests to set aside the costs order along with the order for security for costs.
The Court found that Ballinno decided not to pursue its request for a PI, not because it was forced to do so, but as a consequence of the risks inherent in its litigation strategy. The Court went on to state that where a party builds its case entirely on a single event or window of time where there is an alleged patent infringement, in this case a particular sporting event, then that party must accept an inherent risk in its procedural strategy that its interest falls away once the event is over and that its requests must be rejected for lack of urgency. The scheduling of the 2024 EFC was well known to Ballinno along with the risk that any alleged infringement would have ended before its PI application had been finally determined and Ballinno could have timed its application accordingly. It was Ballinno’s decision to withdraw its PI request prior to a final decision and to rely solely on the European Championships for its urgent interest. As such, when the championships ended, its action had become devoid of purpose, and it must therefore be considered the unsuccessful party and be held liable for the costs of the proceedings under the general rule of Art. 69(1) UPCA.
Nevertheless, the Court ruled that Ballinno’s appeal against the security for costs order was admissible given that it was brought together with an appeal against the PI Order and that this admissibility was not affected by the subsequent withdrawal of the PI request. The parties had until 22 May to confirm they did not require a further oral hearing so the Court can make a final costs adjudication based on the written submissions.
Sanofi v Amgen [UPC_CFI_505/2023]
May 2025Parties
Case and decision number
UPC_CFI_505/2023, ACT_597355/2023
Judges
András Kupecz
Ronny Thomas
Bérénice Thom
On 13 May 2025, the Düsseldorf Local Division handed down the UPC's first decision specifically addressing infringement of second medical use claims. The proceedings concerned EP 3 536 712 (EP 712) which is owned by Regeneron with Sanofi the exclusive licensee. EP 712 relates to the use of PSCK9 inhibitors to reduce elevated lipoprotein(a) (Lp(a)) levels in a defined patient group. Regeneron and Sanofi alleged that Amgen's PCSK9 inhibitor, evolocumab marketed as Repatha®, infringed EP 712. Amgen counterclaimed, arguing EP 712 was invalid and should be revoked.
Claim 1 was structured in paragraph 81 into the following features "A pharmaceutical composition comprising a PCSK9 inhibitor, the PCSK9 inhibitor is an antibody or antigen-binding fragment thereof that specifically binds PCSK9, for use in reducing lipoprotein(a) (Lp(a)) levels in a patient who is diagnosed with or identified as being at risk of developing a cardiovascular disease or disorder or a thrombotic occlusive disease or disorder prior to or at the time of administration of the composition, is not on a therapeutic statin regimen at the time of administration of the composition, and exhibits a serum Lp(a) level above 30 mg/dL".
Claim Construction
PCSK9 inhibitors were known to lower low-density lipoprotein (LDL-C) and administered to patients with high cholesterol. The Court found that the skilled person would therefore interpret the claim to exclude the use of PCSK9 inhibitor solely for that purpose. However, the claim does not exclude the use of PCSK9 inhibitors for other purposes, including to lower LDL-C, as long as it also is used to achieve the claimed therapeutic effect of reducing elevated Lp(a) serum levels. Further, the requirement for the patient to exhibit a serum Lp(a) level above 30 mg/dL meant that objectively the patient has such levels. This means that, without specifying when it is done or how or by whom, patient Lp(a) levels are measured at some point before treatment is started.
Infringement
The Court held that there are no separate statutory provisions regarding infringement of second medical use claims, nor is it harmonised across the UPC member states. The Court noted it was necessary to obtain a balance between a fair protection for the patent proprietor and a reasonable degree of legal certainty for third parties. For such purpose-limited product claims, the Court held that the relevant test for infringement was:
- Objective element: The alleged infringer must offer or place the medical product on the market in such way that it leads, or may lead, to the claimed therapeutic use; and
- Subjective element: The infringer must have known, or reasonably should have known, that the medical product was being used, or may be used, to the claimed therapeutic use.
The Düsseldorf Local Division stressed that this must be assessed by analysing all the relevant facts and circumstances of the case. Relevant factors may include: the extent or significance of the allegedly infringing use; the relevant market including what is customary on that market; the market share of the claimed use compared to other uses; what actions the alleged infringer has taken to influence the respective market, either ‘positively’ encouraging patented use, or ‘negatively’ by taking measure to prevent the product from being used for patented use.
The Claimants sought to argue that s. 5.1 of the Summary of Product Characteristics (SmPC) for Repatha® established infringement as it reported on a clinical trial where "Repatha reduced unbound…Lp(a)” by around 25%. Although the court agreed that the SmPC of a product is important, it held it was not decisive. Ultimately, the Court was not satisfied on the evidence before it that physicians were prescribing Repatha® for the claimed use, or that there was a likelihood of this happening. The Court was also not satisfied that the Defendants were aware, or should have been aware, that their product was being used to lower Lp(a) levels in patients with high levels. Therefore the Court held that neither the objective or subjective elements of the test for infringement had been satisfied.
Validity
The Court was clear that the known use, in this case lowering LDL-C levels, could not take away from the novelty of the claimed second medical use as this would ignore the notional novelty of second medical use claims afforded protection by Art. 54(4) EPC. None of the prior art relied on by the Defendants directly and unambiguously disclosed the use of an anti-PCSK9 antibody for lowering Lp(a) levels. On inventive step, although the prior art may give the skilled person some motivation to consider PCSK9 inhibitors to lower Lp(a) levels, the documents disclosed multiple compounds that had this effect, and there were technical reasons teaching away from the motivation to use PCSK9 inhibitors at the priority date. Amgen's attacks on priority, added matter and sufficiency also failed.
EP 712 was therefore found valid but not infringed.
Grundfos v Hefei [UPC_CFI_11/2024]
May 2025Parties
Case and decision number
UPC_CFI_11/2024, ACT_2097/2024
Judges
Ulrike Voß
András Kupecz
Ronny Thomas
The Düsseldorf Local Division delivered its decision on 8 May 2025 regarding Grundfos’ patent infringement claim against Chinese manufacturer Hefei Xinhu Canned Motor Pump Co, Ltd (Hefei Xinhu). Grundfos’ patent is to a heating circulation pump unit involving means that automatically detect whether an external control is connected. If detected, the system automatically switches from internal to external speed control. Ultimately the Court found that the patent was valid and infringed, ordering the recall and destruction of the infringing products and an injunction against Hefei Xinhu.
In doing so, the Court clarified the interpretation of functionally defined features (e.g. "means for switching") in claims and addressed procedural limitations on introducing new prior art after the counterclaim. The Court also affirmed that injunctions following trial can be enforced without a need to provide security where there was no argument as to why security would be required.
Construction
In construing a functional claim feature, “means for switching” the court considered that the claim defined the “means” functionally rather than structurally and that this was allowable provided the function is clearly defined and the skilled person can implement it. The Court considered that the ‘means’ must be “capable” of determining connection of an external control and initiating the switch-over, but how this is done is left to implementation by the skilled person.
In doing so the Court construed this feature very broadly, finding that any mechanism that automatically triggers the switch is sufficient to meet this feature. Hefei Xinhu argued that the claim was insufficiently disclosed in the patent, on the basis that the description includes examples like a ‘microswitch’ or ‘sensor’ and that these generic examples of components would leave the skilled person implementing the invention with undue difficulties even in the light of their common general knowledge. Despite its broad construction, the Court disagreed.
New Prior Art
Having found the patent valid in the light of the prior art originally cited by the Defendant, the Court addressed new prior art and new attacks raised late in the procedure (specifically in the reply to the revocation counterclaim) under r. 263 RoP. It found that if a defendant introduces new prior art only in the reply to the revocation counterclaim (to argue lack of novelty or inventive step), this constitutes an extension of the original revocation action.
The Court stated that such late-submitted prior art or attacks can only be admitted if a) the defendant convincingly shows that the documents could not reasonably have been submitted earlier, and b) the admission does not unduly prejudice the claimant’s ability to conduct the case.
Furthermore, the Court stated that even if the prior art was already part of the case, any new arguments or combinations based on this also amounts to an extension and is subject to the same strict test.
Following these tests the Court rejected late-filed prior art documents put forward by Hefei Xinhu, along with new inventive step combinations.
Relief
Having found that the patent was valid and infringed, the Court ordered recall of the infringing products, finding this proportionate and rejecting arguments about excessive cost or impact on third parties (e.g. installers, building owners) as Grundfos had a legitimate interest in clearing the market of infringing products. The Court also ordered the destruction of infringing products, finding that Hefei Xinhu had not sufficiently demonstrated that the products could be made non-infringing. Finally, the court awarded €64,000 in provisional damages, reflecting likely lost revenue/licensing fees, with the exact damages to be determined in further proceedings. No security pending any appeal was ordered as Hefei Xinhu did not request it or show grounds for it, and the Court found no significant risk of unjust harm to the defendant from immediate enforcement.
BI v Zentiva [UPC_CFI_41/2025]
May 2025Parties
Case and decision number
UPC_CFI_41/2025, ACT_3186/2025
Judges
Petri Rinkinen
Rute Lopes
Camille Lignieres
On 8 May 2025, the Lisbon Local Division rejected Boehringer Ingelheim’s (BI) application for a preliminary injunction against Zentiva for lack of an imminent threat of infringement. The patent in question, EP 830843 B1, protects the use of nintedanib or nintedanib esylate for treating fibrotic diseases and is due to expire in December 2025.
Zentiva had obtained two Marketing Authorisations (MAs) for generic nintedanib products in August 2024 and sought a Prior Evaluation Procedure (PEP) necessary for public reimbursement of its product which was approved on 6 December 2024. It was agreed that it is customary for generic pharmaceutical companies in Portugal to request a PEP before the expiration of a patent, but BI argued that the PEP was requested prematurely, more than a year before the patent expires. BI therefore sought a PI on the basis that Zentiva was now free to sell its generic products to both private hospitals and public hospitals.
The Court cited the decision of the Düsseldorf Local Division in Novartis/Genentech v Celltrion and noted that it must be established on a case-by-case basis that the potential infringer has carried out acts that make it more likely than not that the Defendant intends to offer or place the product on the market before the patent expires. Imminent infringement must then be assessed from the point of view of the concrete likelihood that, in light of the circumstances of the case, the Defendant is more likely than not to commit an act of infringement.
On the evidence before it, the Court was not satisfied that there was evidence of imminent infringement. While Zentiva obtained a PEP, it had not offered or marketed the products and had not participated in tenders for public hospital sales.
Kinexon v Ballinno [UPC_CFI_230/2024]
April 2025Parties
Case and decision number
UPC_CFI_230/2024, ORD_69092/2024, ACT_27358/2024
Judges
Maximilian Haedicke
François Thomas
On 30 April 2025, the Paris Central Division gave its decision in the revocation action filed by Kinexon Sports & Media GmbH against Ballinno B.V. regarding Ballinno’s patent entitled “Method and system for detection an offside situation”. The patent relates to a method and system designed to assist sports referees by detecting when a player makes contact with a ball by sensing a sound signal produced by the ball. The Court held that broad terms used in the independent claims should not be limited by more specific features disclosed in dependent claims or embodiments of the description, as these merely indicate possible ways in which in the invention can be utilised.
Ballinno had argued for a narrow claim construction that would limit the scope of the claims to offside detection in football, relying on wording in dependant claim 2 (referring to a “first player” and “second player”, which they asserted to introduce a temporal element to independent claim 1 and tie claim 1 to offside rules) and the description of the patent (which includes a statement that an object of the invention is to help a referee and linesman to correctly judge offside). Ballinno also pointed to the reference to “an offside situation” in the title of the patent as justification for restricting the claim's scope. The Court rejected this construction, finding that the claims did not mention football or offside, and instead used general terms like “games and sports”. The description also made it clear that offside detection in football is only one application of the claimed technology. Embodiments mentioned in the patent description only permit the conclusion that they fall under the claim; they do not necessarily restrict the scope of a claim. The Court also found that the title of a patent was non-limiting.
Following its finding that the claims related to a broader general detection method applicable across multiple sports contexts, not confined to football or offside detection, the Court went on to find that the claims lacked novelty and inventive step over the prior art. The patent was therefore revoked in its entirety and the Court ordered Ballinno to pay Kinexon’s legal costs.
Insulet v EOFlow [UPC_CoA_768/2024]
April 2025Parties
Case and decision number
UPC_CoA_768/2024, APL_64374/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
Following its decision overturning the rejection of a preliminary injunction (PI) in the case of Abbott v Sibio earlier this year, on 30 April 2025 the Court of Appeal handed down a further decision granting a PI on appeal in Insulet v EOFlow, overturning the first instance decision of the Milan Central Division. The patent in question related to a fluid delivery device for delivering therapeutic liquids to a patient, and more particularly, to an infusion pump.
Claim construction and expert evidence
The Court of Appeal took a fundamentally different view on claim construction to that of the Milan Central Division at first instance, adopting a narrower reading of the claim. The main point of distinction was that the Court of Appeal construed the claim as being limited to the device in its assembled state, following previous Court of Appeal guidance in VusionGroup v Hanshow (UPC_CoA_1/2024) that claim features must be interpreted in light of the claim as a whole. The claim required that a “nut” must be allowed to pass through a “clutch mechanism when disengaged” but the Court of Appeal ruled out an interpretation that this might only occur while the device was being assembled and not in its final assembled state. As a result, the claim was found more likely than not to be novel over a prior art document, which the Milan Central Division had considered likely to deprive the claim of novelty on the basis of its broader construction. The Court of Appeal was also satisfied that the claim was more likely than not to be inventive.
In reaching its conclusion, the Court considered the role of expert opinions and emphasised that the interpretation of a patent claim is a judicial task, not to be left solely to experts. EOFlow had provided expert evidence on the interpretation of the claim and the disclosure of the prior art to support their argument that the claim was anticipated by this document. As Insulet had not provided an expert opinion of its own, EOFlow argued that the Court should follow that of their expert. However, the Court noted that just because Insulet had not provided opposing expert evidence, this did not mean that the Court must follow the only expert’s view. Further, although the Court acknowledged that the basis of claim construction is the skilled person’s understanding of terms used in the patent claim, the decision emphasises that the decisive factor is “not the individual knowledge and abilities of a person, but rather the general specialist knowledge that is customary in the relevant field of technology, as well as the average knowledge, experience, and abilities in this specialist field”. The Court concluded that it is for the Court, not an individual expert, to assess these circumstances. The Court noted, however, that if claim construction is dependent on facts that can be proven, the Court shall consider the expert opinions submitted by the parties with respect to such facts.
Infringement and the balancing of interests
Having concluded that the patent was more likely than not to be valid, the Court of Appeal was satisfied that infringement was also more likely than not to have occurred, although this portion of the decision is heavily redacted to remove confidential information.
Regarding the balancing of interests and irreparable harm, which are to be taken into account by the Court when exercising its discretion to grant a PI, the decision sheds some more light on relevant factors that will be considered at the UPC. In this case, these included: direct competition between the parties’ products; price pressure, price erosion and the prospect of an increase in sales of allegedly infringing products; lock-in effects, such that market access is blocked once the alleged infringing product is adopted by patients and hospitals; expected timing of the main action decision and whether Insulet had acted quickly enough to start main action proceedings; and the status quo and whether there was an established market for the alleged infringing products, including the volume and timeframe of sales by the defendant made prior to grant of the patent.
EOFlow had made arguments regarding patients’ interests, arguing that their products provided benefits over Insulet’s products. However, the Court disregarded these arguments, considering that the grant of the PI would lead to mere inconvenience for patients, who could easily switch to other devices available on the market.
Having weighed the various factors, the Court of Appeal was satisfied that the balance of interests tipped in favour of granting the PI to Insulet.
Security and costs
No security was required for Insulet to enforce the PI as the Court considered it unlikely that a main action decision would lead to a different outcome, or that enforcing an order for compensation if the PI was revoked would entail an undue burden.
Insulet was also awarded 100% of its recoverable costs, with no costs awarded to EOFlow. Although it had been unsuccessful in its request for information regarding the sales quantity and the price obtained for the EOFlow’s products, it was successful on all other elements and the Court considered that the unsuccessful request had been relatively minor and caused no further costs.
AFGA v Gucci [UPC_CFI_278/2023]
April 2025Parties
Case and decision number
UPC_CFI_278/2023, ACT 561734/2024
Judges
Sabine Klepsch
Stefan Schilling
Camille Lignieres
The Hamburg Local Division delivered its judgment on 30 April 2025 in respect of AGFA NV’s patent infringement claim against several companies under the Gucci brand. AGFA’s patent is to a method for decorating natural leather with an image using an achromatic base coat (other than black) and inkjet printing with UV curable inks. AGFA claimed that Gucci's "Pikarar Collection" infringed the patent but the Court found that the base coats of Gucci's products were not achromatic.
Gucci's counterclaim for revocation was also dismissed. Gucci had argued invalidity on the basis of lack of novelty over the prior art and public prior use as well as obviousness. In relation to the novelty arguments, the Court again found that the disclosed base coats in the prior art and prior use were not achromatic as taught by the patent. In relation to obviousness, the Court decided that the prior art did not provide a clear motivation or teaching to combine the specific features in the way claimed by the patent. It also found that the use of an achromatic base coat and UV curable inks, as claimed in the patent, was not obvious to a person skilled in the art based on the cited prior art.
The Court ordered AGFA to bear 40% and Gucci 60% of the costs of the proceedings on the basis that AGFA had been fully unsuccessful with regard to the claims in the infringement action but the Gucci companies were equally unsuccessful in their counterclaim for revocation.
Seoul Viosys v Laser Components [UPC_CFI_440/2023]
April 2025Parties
Case and decision number
UPC_CFI_440/2023, ORD_598601/2023, ACT_588685/2023
Judges
Peter Tochtermann
Camille Lignieres
Carine Gillet
On 24 April 2025, the Paris Local Division of the UPC issued a permanent injunction in France against Laser Components SAS (Laser), a French entity belonging to a European distribution group that markets UVC LED chips.
An infringement action against Laser in relation to some of its LED chip models was initiated by Seoul Viosys Co Ltd (Viosys) in December 2023. Viosys relied on European Patent EP 3 404 726 (the Patent), which was in force in France, Germany, the Netherlands and the United Kingdom and protects a structure for a UV light emitting device. The manufacturer of the infringing chips, a Korean company named Photon Wave Co., Ltd (Photon Wave), was an intervening party.
Viosys relied upon: (i) a private expert opinion from an independent testing laboratory (in response to a questionnaire from Viosys) to support its technical infringement case and (ii) a report of purchases made via the Lasercomponents.com website to demonstrate the infringing acts.
Laser argued that the expert opinion could not support the technical infringement case, but the Court found no evidence of bias and considered that its own interpretation of technical terms used in the Patent and the questionnaire were consistent with those adopted in the expert opinion.
A permanent injunction was requested to cover France, Germany, the Netherlands and the United Kingdom but the Court found that Viosys had failed to demonstrate acts of infringement in any jurisdiction other than France. Website extracts relied on by Viosys indicated that the Defendant (being the French entity in a European distribution group) only sold products in France. Despite this “sectorisation” of sales areas, only one test purchase had been made and was delivered in France and no other entities in the distribution group had been included in the action. The Court commented that the claim to infringement in the United Kingdom may be admissible in light of the CJEU’s decision in BSH v Electrolux (see further commentary on this judgment here), but the factual evidence presented by Viosys had failed to demonstrate the existence of infringing acts by the Defendant in the United Kingdom.
Syngenta v Sumi [UPC_CFI_566/2024 & UPC_CFI_39/2025]
April 2025Parties
Case and decision number
UPC_CFI_566/2024, UPC_CFI_39/2025, ORD_16126/202, ACT_53813/2024
Judges
Matthias Zigann
Tobias Pichlmaier
Walter Schober
Following the CJEU’s decision in BSH Hausgeräte v Electrolux (C-3999/22), Syngenta sought permission to amend its UPC claim to cover infringement of the Polish, Czech and UK parts of the patent in suit.
The Defendant (Sumi Agro) sought to resist the application on the basis that the amendment could have been made with reasonable diligence earlier (i.e. when the proceedings were commenced in September 2024) and therefore that permission should not be granted in accordance with r. 263(2)(a) RoP. The court disagreed. In light of the ECJ case law when the claim was filed, the panel considered the Claimant could not have expected to include non-UPC territories at that stage. Further, the AG opinion available was not binding on the CJEU and there was therefore legal uncertainty around the issue at the time the claim was filed.
Accordingly, by way of its order dated 14 April 2025, panel 1 of the Munich Local Division allowed the application to amend. There was no discussion on the substance of the amendment, for example, as to whether the UPC does in fact have jurisdiction to determine infringement in the non-UPC territories in the circumstance of this case.
Meril v Edwards [UPC_CoA_166/2025]
April 2025Parties
Case and decision number
UPC_CoA_166/2025,App_9095/2025
Judges
Klaus Grabinski
Peter Blok
Emmanuel Gougé
On 18 April 2025, the Court of Appeal gave an Order in relation to an application by Meril GmbH and Meril Life Sciences Pvt Ltd (collectively Meril) for suspensive effect of an injunction (or a stay of enforcement) pending their appeal. Edwards Lifesciences Corporation’s (Edwards) patent, EP 3 646 825, which relates to a prosthetic heart valve, had been maintained in amended form by the Paris Central Division following revocation proceedings. The injunction was then granted by the Munich Local Division in its decision in the infringement action, with the decision also allowing Edwards to publish the Court’s decision.
Meril argued that the Munich Local Division’s first instance decision was unclear and manifestly erroneous. Further, Meril argued that the decision violated fundamental procedural rights, in particular the right to be heard, as it had (i) failed to consider relevant statements and evidence submitted by Meril and, (ii) disregarded Meril’s arguments against Edwards’ claim to allow publication of the decision. Meril also submitted that their interests in maintaining the status quo outweighed Edwards' enforcement interests and the appeal against the decision to allow publication of the decision would become devoid of purpose if suspensive effect was not ordered. Edwards subsequently declared that it had not published and will not publish the decision pending appeal.
The Court of Appeal dismissed Meril's application for suspensive effect as unfounded, noting that such applications may only be granted if the circumstances of the case justify an exception to the principle that an appeal shall have no suspensive effect. The Court of Appeal found that the appeal would not be devoid of purpose without suspensive effect further to Edwards’ commitment not to publish the decision pending appeal. Further, the Munich Local Division’s decision was not manifestly erroneous, the obligations were sufficiently clear and there was no manifest violation of procedural rights. In relation to the right to be heard, the Court of Appeal considered that the mere fact that expert opinions had not been expressly addressed and that the Court did not expressly decide on Meril’s requests to appoint and hear experts was not sufficient, since the Court may have implicitly addressed Meril’s evidence and requests in its decision. Meril had therefore failed to demonstrate an overriding interest in maintaining the status quo, and the application was rejected.
Yellow Sphere v Knaus Tabbert [UPC_CFI_50/2024]
April 2025Parties
Case and decision number
UPC_CFI_50/2024
Judges
Ronny Thomas
Bérénice Thom
Edger Brinkman
In a significant judgment from the Düsseldorf Local Division, the Court found infringement of EP 3 356 109 B1 (relating to a vehicle frame with structural foam components), dismissed a counterclaim for revocation, and provided guidance on the treatment of product-by-process claims under UPC procedure.
The claimants, Yellow Sphere Innovations GmbH and Erwin Härtwich, alleged that Knaus Tabbert’s “DESEO” and “AZUR” caravan models infringed the patent. The Court agreed, finding that the accused frames included foam components manufactured via a process falling within the product-by-process claims of the patent and coated with an external protective layer as claimed. That was the case notwithstanding that manufacturing involved two moulds, whereas the defendant had argued, based on prosecution history, that the claims required only one casting mould to have been used. The Court noted that the Court of Appeal had not yet decided on the relevance of the file wrapper to the interpretation of patent claims but in any event disagreed. The decisive factor is whether it is clear from the patent specification that the use of the process described is essential for technical reasons in order to achieve certain features of the product. The Court ordered Knaus Tabbert to cease the infringing activities, recall and destroy the infringing products, and provide financial compensation to the plaintiffs.
The Court reiterated that the technical content of the invention protected by product-by-process claims lies in the technical properties imparted to the product by the process, rather than the process itself. The process serves solely to define the product, but itself is not the subject of protection. The Court clarified that the relevant technical properties must be understood by a skilled person from the manufacturing method described and the conclusions drawn about the inventive nature of the product.
On damages for the pre-grant period (between publication and grant of the patent), the Court confirmed its competence under Art. 32(1)(f) UPCA and applied Art. 67 EPC, placing the burden on the claimant to explain the national requirements for each member state in question, in the absence of harmonised UPC provisions. Another time-related aspect of the decision was the Court’s confirmation that it is competent to consider the dispute in respect of acts committed before the UPC came into effect, and before the opt-out of the patent in suit was withdrawn.
In relation to the invalidity counterclaim, the chief battleground was novelty and inventive step, but the Court rejected the arguments on all fronts. Additionally, Knaus Tabbert argued it held the right to use the invention based on prior development agreements. The Court rejected this, finding no binding licence had been granted and no estoppel or exhaustion defence was available, despite past collaboration. The Court noted that the right of prior use requires more than the mere entitlement to use. In what amounts to requiring serious and effective preparations do the acts, the Court noted that the defendant must have made a firm and final decision to exploit the invention commercially and they must have taken steps to prepare for the prompt implementation of that decision and have the intention to exploit the invention. On the facts of the present case, such preparations were held to be lacking.
Alpinestars v Dainese [UPC_CFI_792/2024]
April 2025Parties
Case and decision number
UPC_CFI_792/2024, ORD_64124/2024, App. 61708/2024, ACT_45469/2024
Judges
Alima Zana
On the 8 April 2025, the Milan Local Division confirmed the UPC's long arm jurisdiction to determine the validity of European Patents validated in non-UPC Countries. This is following the CJEU's decision in C‑339/22 Electrolux that found that a national court has jurisdiction to hear and determine an infringement action of a patent granted in another European Member State if, in the context of that action, the defendant disputes the validity of that patent and the defendant is domiciled in that jurisdiction.
In this case, Dainese spa brought an infringement action of EP 4072364 (EP 364) in the "Territory for Relief", namely the UPC Contracting Member States and Spain, against six defendants. Alpinestars S.P.A, one of the defendants that is domiciled in Italy, filed preliminary objections under r. 19.1 RoP arguing that the UPC lacked jurisdiction to determine the Spanish infringement in Spain of the Spanish national validation of EP 364.
The Court noted that the UPC is "deemed to be a court of a Member State" under Art. 71 Regulation (EU) 1215/2012 (recast) as amended by Regulation (EU) 542/2014 and, therefore, it must apply the CJEU's interpretation as if it were a national court.
Applying the Electrolux decision, the Milan Local Division held that, due to Alpinestars being domiciled in Italy, it had “universal” jurisdiction over the infringement issues, including of the Spanish designation of EP 364. It does not lose jurisdiction just because the validity of the patent has been challenged.
The Court noted that applying any other interpretation would have the effect of recognising that the UPC has less territorial jurisdiction than a national court and would be contrary to Art. 71a.
TGI v AIM [UPC_CoA_169/2025]
April 2025Parties
Case and decision number
UPC_CoA_169/2025, APL_ 9191/2025
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
In a procedural appeal, on 11 April 2025, the Court of Appeal has upheld the Helsinki Local Division's decision to allow the claimant to amend its Statement of Case to include new territories and a new defendant.
At first instance, following a jurisdictional challenge by the defendant TGI, the claimant, AIM, was successful with its requests under r. 263 and r. 305 RoP to amend its claim by adding TGI UK as new defendant, covering Germany and Spain as additional territories, and adding infringement by equivalence and liability based on the defendants acting as intermediaries. TGI appealed this procedural decision.
First, the Court of Appeal stressed that r. 263 and r. 305 RoP are discretionary powers, meaning the scope for an appellant court to review is limited. In this case, TGI failed to establish that the Helsinki Local Division went beyond the boundaries of its discretion.
The Court of Appeal found that the Helsinki Local Division took into account all of the required considerations when applying the relevant Rules of Procedure. In particular, AIM had only just become aware of the allegedly infringing acts in Germany of TGI UK, part of the same group as TGI. Furthermore, the infringements alleged to be performed jointly by TGI and TGI UK were based on the same patent and concerned the same product and the same pleaded facts. The existing proceedings could not be described as advanced given TGI had not served its Statement of Defence so there was little prejudice in allowing the amendments. The Court noted that the result could not be avoided in any event because AIM could just lodge separate proceedings if the order was refused and then apply to join the cases under r. 340 RoP. For the addition of Spain as a territory, it would not have been reasonable to include it earlier, given its inclusion was in anticipation of a change in the law in C‑339/22 Electrolux.
In rejecting the appeal, the Court of Appeal noted that allowing the amendments meant that the case was essentially restarted, and TGI had 3 months to file its Statement of Defence.
Edwards v Meril [UPC_CFI_501/2023]
April 2025Parties
Case and decision number
UPC_CFI_501/2023, ORD_598588/2023, ACT_597277/2023
Judges
Matthias Zigann
Tobias Pichlmaier
Margot Kokke
As part of a number of ongoing cases between Edwards Lifesciences Corporation (Edwards) and a number of Meril companies (together Meril), on 4 April 2025 the Munich Local Division rejected Meril’s counterclaim for revocation of Edwards’ patent and held that the Meril defendants were directly infringing the patent in the amended form that had been upheld by the EPO Opposition Division in June 2024. The patent EP 3 669 828 B2 (EP 828) relates to the design of an implantable prosthetic heart valve.
In assessing the validity of EP 828, the Court dismissed Meril’s arguments in relation to added matter, novelty and sufficiency. In considering the inventive step requirements under Art. 56 EPC, the Court applied the problem-solution approach developed by the European Patent Office noting that this would “enhance legal certainty and further align the jurisprudence of the Unified Patent Court with the jurisprudence of the EPO and the Boards of Appeal”. In doing so, the Court acknowledged that the Court of First Instance and the Court of Appeal had adopted a range of approaches some of which were similar but not identical to the problem-solution approach. The Court also noted that the problem-solution approach was the tool applied by both parties in their briefs. Meril relied on a key piece of prior art (a US patent application referred to as Nguyen) which it then argued the skilled person would combine with other documents and the CGK. The Court held that the Nguyen document was a realistic starting point but found that the technical solution provided was completely structurally different to that disclosed in the patent and did not disclose “the core of the technical teaching”. As a result, Nguyen taught away from the additional features claimed, and no motivation existed to modify Nguyen as proposed by Meril. Nor would (as opposed to could) the skilled person combine Nguyen with another piece of prior art, starting from that other piece of prior art, as there was not no motivation to do so. Thus, Meril’s obviousness attack under Art. 56 EPC failed.
On claim construction, the Court noted that a broad claim should only be construed in a narrower manner on the basis of the description or drawings in exceptional cases. It rejected Meril’s narrower interpretation of claim 1 of EP 828 and held that Meril’s product directly infringed.
Meril also argued that the Munich Local Division did not have jurisdiction over its Italian subsidiary, Meril Italy S.r.l. Edwards had brought the proceedings against three defendants in the Meril group and argued that the Munich Local Division had jurisdiction over all three group companies under Art. 33(1)(b). The second defendant was the Indian parent company of the first and third defendants (German and Italian subsidiaries) and responsible for manufacturing and supplying the infringing product to both subsidiaries as well as offering the product for sale in UPC member states via its website. The first defendant (Meril GmBH) was identified as the “European Headquarters” responsible for the distribution of products in Europe, while the third defendant was responsible for distribution of Meril’s products in Italy.
In considering its jurisdiction, the Court held that Art. 33(1)(b) UPCA allows multiple defendants to be sued at the place of business of one of the defendants, provided that the defendants have a commercial relationship, and the action concerns the same alleged infringement. In relation to non-unitary patents this applies to situations where multiple defendants in different member states are “accused of infringing the relevant national designations of the same European patent by the same product or process”. The Court noted that any alternative view of the legislation would undermine the purpose of the UPC to “overcome the fragmented patent litigation landscape”.
On the facts, the Court held that the requirement for the same alleged infringement was met as the case was considering the same attacked embodiments in relation to the national designations of the same European patent. Further, there was a sufficient commercial relationship between the defendants as both the second defendant (as the parent company) and first defendant (the European Headquarters) were responsible for the Italian defendant. Although Meril Italy’s representatives stated that the infringing product had not been sold in Italy, a search for “Meril Italy” would lead a consumer to the second defendant’s website where they would be able to purchase the infringing product and therefore Meril Italy was held to be offering the product for sale as it uses and benefits from the offer activities on the website.
The Court ordered all three Meril companies to cease and desist from offering, placing on the market, using, or importing the infringing products. A carve-out from the injunction was allowed where a physician has successfully applied for an individual exemption on behalf of a patient. No grace period was allowed in light of the statement of claim having been received 12 months before the oral hearing, with the judgment following 2 months later. In addition, the Court ordered Meril to recall and destroy its infringing products (other than in relation to the individual exemption carve-out) and pay provisional damages of EUR 663,000 to Edwards. Meril were also ordered to provide information on the extent to which the defendants had committed the infringing acts as well as information on distribution channels, to be provided within 3 weeks.
Maguin v Tiru [UPC_CFI_813/2024]
March 2025Parties
Case and decision number
UPC_CFI_813/2024, ORD_9276/2025, ACT_66560/2024
Judges
Rute Lopes
Camille Lignieres
Carine Gillet
Tiru is the proprietor of a patent covering waste incineration technology and, in October 2024, had become aware of a YouTube video showing an incineration furnace installed at a French waste management facility by Maguin. It claimed that Maguin's incineration furnace appeared to infringe the patent and on 17 December 2024, filed two ex-parte requests (against Maguin, the manufacturer and Valinea Energie, the operator of the waste management facility) with the Paris Local Division for preservation of evidence and on-site inspection. Tiru claimed that a visit to the waste management facility by a court expert was necessary to confirm infringement.
On 23 December 2024, ex-parte orders were granted by the Paris Local Division, limiting the scope of the measures to confirming infringement of the patent. The preservation measures were carried out simultaneously at Maguin's offices and Valinea Energie's site where the incineration furnace was located.
On 12 February 2025, Maguin requested that the Court retract the preservation of evidence measures on the grounds that there was an absence of risk of destruction of evidence, a lack of urgency, and on the basis that Tiru deliberately concealed information in its ex-parte application.
The Paris Local Division heard the parties' arguments on 10 March 2025. First, on the absence of risk of destruction of evidence, Maguin argued that the arguments made by Tiru at the ex-parte hearing were insufficient to justify ex-parte proceedings under r. 197 RoP and, in any event, it was a well-established company which was required to keep technical documents about its incineration furnace in order to certify its regulatory compliance. The Court held that this obligation on Maguin did not preclude the possibility that documents could be partially modified or that the search could be made impossible on the day of seizure, noting that the "legal texts" on the ex-parte seizure procedure did not require proof of the certainty of loss or destruction of evidence, but merely an existence of a risk of loss of evidence (even partial). While the Court agreed with Maguin that the mere digital format of the data alone was insufficient to demonstrate the existence of a risk of destruction or loss, the parallel request against Valinea Energie could not be ignored. The allegedly infringing incineration furnace had not yet been commissioned and Tiru had argued that its imminent commissioning would have made the preservation of evidence (i.e. describing the interior of the furnace) at Valinea Energie's premises extremely difficult. The need for concurrent execution of the preservation measures to preserve the effectiveness of the measures justified the ex-parte measure against Maguin.
On the lack of urgency, Maguin argued that Tiru should have been aware of the YouTube video at the time it was posted in August 2024. However, the Court indicated that the low number of views (77) on the YouTube video pointed to it not being widely disseminated. Further, a period of two months between becoming aware of the YouTube video and Tiru filing its preservation of evidence application was a reasonable time-frame for the preparation of such an application. Maguin further argued that there was no urgency since the allegedly infringing incineration furnace was not on Maguin's premises and the preservation of evidence measures could therefore have been carried out at any time. Again, the Court pointed to the effectiveness of the measures ordered against both respondents being dependent on them being carried out simultaneously.
Finally, in support of its argument that Tiru concealed information from the Court during its ex-parte application, Maguin alleged that Tiru was aware that the original furnace at Valinea Energie's site, designed in 1987, anticipated the invention in the patent. However, the Court held that it did not have to decide the question of Tiru's actual knowledge on this point, since the patent holder could not be expected, at the stage of requesting preservation of evidence, to respond in advance to possible attacks on the validity of the patent. Furthermore, no opposition proceedings were pending before the EPO, nor were there any other courts seized of a dispute on the validity of the patent. Therefore, Tiru was found not to have breached Rule 192.3 RoP in submitting its ex-parte request.
Accordingly, Maguin's request for retraction of the preservation of evidence measures was rejected.
OTEC v Steros [UPC_CFI_260/2025]
March 2025Parties
Case and decision number
UPC_CFI_260/2025
Judges
Ronny Thomas
Jule Schumacher
Walter Schober
On 26 March 2025, the Düsseldorf Local Division gave its decision in respect of Steros GPA Innovative’s (Steros) application under r. 192 and 199 RoP for inspection and preservation of evidence in respect of its electrolytic polishing machines which were being exhibited at a trade fair in Cologne from 25 March to 29 March 2025. Steros sought an order for a bailiff and expert (a nominated patent attorney) to inspect two products, the DLyte 1D and DLyte 100D. Steros argued that it needed the inspection order as it was otherwise not possible to be obtain the products to examine them to substantiate an infringement claim before the UPC - they are expensive machines (€30k-50k) which are only sold via specific distribution channels by resellers who have a close relationship with the manufacturers and an anonymous purchase would not be possible.
Steros had previously tested a different product, the DLyte 10D, which it had purchased from a mutual customer and had also examined a DLyte 100D in Turkey. Steros submitted the results of those tests to the Court to demonstrate why it considered they fell within the scope of the claimed invention. Steros argued that publicly available information suggested that the DLyte 1D and DLyte 100D (in respect of which the order was sought) were identical to the tested DLyte 10D in so far as relevant to the claimed invention.
The Court considered that Steros had credibly demonstrated possible infringement by the products in question and that sufficient substantiation for an infringement claim could only be obtained by inspecting the products, including carrying out measurements during operation corresponding to the features of the claim. In respect of the DLyte 100D, the Court noted there was a need to test this product to provide certainty as to whether it corresponds to the version examined in Turkey so as to be able to prove infringement within the UPC contracting member states. The Court therefore granted, on an ex parte basis, the order for inspection (which included performing measurements) and in the event that the inspection and measurements as specified were not possible, an order for physical seizure together with all technical, promotional and commercial documents relating to the products.
IMC Creations v Mul-T-Lock [UPC_CFI_702/2024]
March 2025Parties
Case and decision number
UPC_CFI_702/2024, ORD_11997/2025, ACT_61422/2024
Judges
Rute Lopes
Camille Lignieres
Carine Gillet
IMC Créations brought infringement proceedings at the Paris Local Division against Mul-T-Lock France and Mul-T-Lock Switzerland. The defendants lodged a preliminary objection arguing that the UPC does not have jurisdiction in respect of the Spanish, British and Swiss designations of the patent.
The decision follows the CJEU’s ruling in BSH v Electrolux (C-339/22) in which the CJEU clarified that the Brussels I Regulation did allow for EU courts to retain jurisdiction over infringement claims concerning foreign patents, even in cases where validity had been raised as a defence.
Mul-T-Lock argued that the CJEU’s decision creates a significant imbalance between the parties to the patentee’s benefit. The defendant is left having to bring many individual invalidity actions in various national courts of the jurisdictions in respect of which the single infringement case is brought. It added that the decision undermines the right to a fair trial, legal certainty and the minimisation of the risk of divergent decisions being issued. It further argued the decision undermines the sovereignty of non-EU countries.
The Paris Local Division held that, as a Court of a Member State of the EU, the UPC is bound to apply the law of the EU as interpreted by the CJEU. Therefore, there was no reason to not follow the CJEU’s judgment in BSH v Electrolux.
It found that the CJEU’s reasoning, based on the Brussels I Regulation, was transposable to the wording of the Lugano Convention. Therefore, it concluded that, because one of the defendants was domiciled in France, it had jurisdiction to hear the infringement actions in respect of these non-UPC territories. In relation to the Spanish and Swiss designations, it could suspend the proceedings pending the validity decisions of the national courts if there is a reasonable risk of invalidation. In relation to the UK designation, it was able to rule on the validity of that right but the ruling would only have an inter partes effect.
Chint New Energy v JingAo Solar [UPC_CFI_425/2024]
March 2025Parties
Case and decision number
UPC_CFI_425/2024, App_54919/2024, ACT_42211/2024
Judges
Tobias Pichlmaier
On 19 March 2025, the Munich Local Division ordered the claimant to provide security for costs to the defendants due to concerns about the enforceability of a costs decision in China.
The defendants relied upon the claimant having its registered office in China to argue that it was not sufficiently certain that a costs decision would be accepted and enforceable in China. It argued that this is the case in relation to German judgments and argued that it would be no easier in relation to UPC decisions.
Meanwhile, the claimant argued that the defendants had not provided any substantive arguments and that judgments from countries like Germany, Canada, the UK and several others have been recognised and enforced in China. It added that if the mere fact that a company has its registered office in a non-EU/non-EEA country was relevant, it would amount to discrimination.
The Judge Rapporteur agreed with this latter point but still ordered security for costs to be paid based on Court of Appeal case law (UPC_CoA_217/2024) which provides that the court should consider whether the financial position of the claimant gives rise to a legitimate and real concern that a possible order for costs may not be recoverable and/or the likelihood that a possible order for costs by the UPC may not, or in an unduly burdensome way, be enforceable.
The Court acknowledged the difficulties European courts (both national courts and those of the UPC) have faced in serving documents in China, despite its ratification of the Hague Service Convention, with many requests not being forwarded or being returned following an objection. The Judge Rapporteur reasoned, by way of analogy to this failure to fulfil its Hague Convention obligations, it had to be assumed that a UPC costs order would not be enforceable in China or, if it was, only in an unduly burdensome way.
Barco v Yealink [UPC_CFI_582/2024]
March 2025Parties
Case and decision number
UPC_CFI_582/2024, ORD_68979/2024, ACT_54438/2024
Judges
Mélanie Bessaud
Samuel Granata
Petri Rinkinen
The Brussels Local Division has held that it was the competent territorial jurisdiction to hear Barco NV’s (Barco) application for provisional measures against Yealink China and Yealink Europe (together Yealink).
In a preliminary objection, Yealink challenged the territorial competence of the Brussels Local Division, arguing that Barco had not, in accordance with Art. 33(1)(a) UPCA, sufficiently explained why the actual or threatened infringement has occurred or is likely to occur specifically in Belgium and not in another contracting state. Instead, Yealink argued that proceedings should have been brought in the Hague Local Division (where Yealink Europe is domiciled) or in a Local Division where it is shown that Yealink itself commits infringing acts.
Art. 33(1) UPCA states that, amongst other things, applications for provisional measures should be brought before: “(a) the local division hosted by the Contracting Member State where the actual or threatened infringement has occurred or may occur…or (b) the local division hosted by the Contracting Member State where the defendant or, in the case of multiple defendants, one of the defendants has its residence, or principal place of business…”
The Court noted that Art. 33(1) UPCA allows an action to either be brought in the Local Division where the actual or threatened infringement has occurred or the Local Division where the defendant has its residence or principal place of business. In this way, Art. 33(1) UPCA establishes the possibility of parallel competence of Local Divisions and in the words of the court: "it is correct to state that Art. 33(1) UPCA makes forum shopping possible". There was therefore no requirement for Barco to bring its claim before the Hague Local Division where Yealink Europe was domiciled.
When considering “where the actual or threatened infringement has occurred or may occur” under Art. 33(1)(a) UPCA, the Court referred to the Court of Appeal in Aylo v Dish (UPC_CoA_188/2024) where it was held that Art. 33(1)(a) must be interpreted in accordance with Art. 7(2) Brussels I Recast Regulation to mean “the place where the harmful event occurred or may occur”. In this instance, the Court was satisfied that the harm complained of by Barco had occurred in Belgium.
The Court therefore held it was a competent Local Division. However, the Court ultimately refused to grant the application for provisional measures as it held Barco had not satisfied the urgency requirement.
SPT v Roku [UPC_CFI_339/2024]
March 2025Parties
Case and decision number
UPC_CFI_339/2024, ORD_69037/2024, ACT_36560/2024
Judges
Daniel Voß
The Munich Local Division rejected two objections of Roku Inc. and Roku International B.V. (Roku) regarding the incompatibility of the Agreement on a Unified Patent Court (UPCA) with European primary law. It also rejected Roku’s objection that the Sun Patent Trust (SPT) lacked authority to bring a claim in the UPC, and that the Munich Local Division, as the division of the UPC indicated by SPT to hear the claim, lacked jurisdiction.
The Court determined that the question of UPC compatibility with primary law of the European Union is not included in the list of grounds for an objection and is not directly relevant to the question of the UPC's jurisdiction. An objection pursuant to r. 19(1) RoP is not designed as a "general" review procedure of the UPCA, and does not serve the purpose of reviewing the UPCA for conformity with Union law. A referral to the CJEU, as requested by Roku in the alternative was also not appropriate as there is no need for an indirect examination of the alleged illegality of the UPCA under Union law.
The Court also ruled that an objection pursuant to r. 19(1) RoP cannot be successfully based on an alleged violation of the right to a lawful judge, pursuant to art. 47(2) of the Charter of Fundamental Rights of the European Union (EU CFR) or art. 6(1) sentence 1 of the European Convention on Human Rights (ECHR). Insofar as Roku’s objection was to be understood as meaning that statutory judges have been "withdrawn" from the parties by the improper establishment of the UPC, the validity and applicability of the UPCA is not admissible subject matter of this oppositions. If Roku was alleging violation of the statutory judge by the claim being brought before a Local Division, rather than the Central Division, the court did not agree, as the prerequisites for the jurisdiction of the central chamber were not apparent. The appointment of individual panels of a (permanent and previously established by law) court does not in itself affect the right to a statutory Judge - only if the Judge specifically appointed to make a decision is not independent and/or not impartial can this be a violation of these provisions.
The Court found the "legitimacy of the plaintiff" ground to be unfounded, with SPT having successfully withdrawn its “opt-out”. The Court found that if a plaintiff’s representative has declared withdrawal from the "opt-out", it is not necessary to prove in, or with, the statement of claim the authorisation of the representative. Proof of a power of attorney must only be submitted if the authorisation is disputed. Here, it had not been necessary for proof of authorisation for SPT’s representative filing the withdrawal of the opt-out to be enclosed with the statement of claim or application for withdrawal.
Finally, insofar as Roku’s final ground of objection was based on r. 19(1)(b) RoP (lack of jurisdiction of the division of the UPC indicated by the applicant), the court found it has jurisdiction over action for patent infringement pursuant to art. 33 para 1 UPCA. Such actions can be brought before the division of a Contracting Member State in whose territory the actual or threatened infringement has occurred. The unlawful use of the patent alleged by SPT is said to have taken place in the Germany and so within the jurisdiction of the Munich Local Court. Further, for jurisdiction to be assumed, it is not necessary for an infringement to have actually occurred or threatened to occur. Rather, the assertion that an act of infringement justifying jurisdiction has taken place, and that this cannot be ruled out from the outset, is sufficient. Whether a harmful event has actually occurred or threatens to occur is a question of the merits of the action.
The fact that the alleged infringing act of the second defendant predated the entry into force of the UPC is also irrelevant to the question of jurisdiction. The jurisdiction of the UPC also covers infringement actions to the extent that they are based on acts of use which are alleged to have taken place before the UPCA entered into force.
Hurom v NUC Electronics [UPC_CFI_162/2024]
March 2025Parties
Case and decision number
UPC_CFI_162/2024, ORD_68864/2024, ACT_17365/2024
Judges
Peter Tochtermann
Dirk Böttcher
Pierluigi Perrotti
The Mannheim Local Division handed down its decision finding infringement of Hurom’s European Patent No EP 2 028 981 (EP 981) for a juice extractor by NUC Electronics. The judgment concerned the national EP patents designated in Germany, France, Denmark, Italy and The Netherlands. Allegations of infringement regarding a number of non-UPC designations of EP 981 were not considered during the hearing
In considering infringement, the Court confirmed that the UPC has jurisdiction over acts committed before the UPCA entered into force on 1 June 2023. However, when determining the applicable substantive law, it was noted that this should be distinguished from the Court’s jurisdiction to hear the case. For acts committed after 1 June 2023, the Court interpreted the relevant articles of the UPCA to mean that it was the law of the UPCA, not the law of the national patents, that should be applied when assessing the infringement of either European bundle patents or European patents with unitary effect. Such an interpretation aligns with the aim of the UPC to harmonise European patent law.
For acts committed before 1 June 2023, the Court held that the relevant national law shall apply. This interpretation was key to ensuring legal certainty and the protection of the legitimate expectations of all parties. However, the Court did hold that it was acceptable to apply the UPCA to situations where an infringing act started before and continued after the UPCA entered into force. When evaluating whether an act is “ongoing” the decisive issue will be whether “the alleged infringer could have stopped its ongoing production in the light of the entry into force of the UPCA but still made the decision to continue”.
When considering remedies, the Court noted that in the case of traditional European bundle patents, a finding of infringing acts in in one member state does not have the effect of extending the remedies sought to other UPCA member states. In reaching this conclusion, the Court rejected the claimant’s interpretation of Art. 34 UPCA (territorial scope of decisions) commenting that Art. 34 is not substantive law and does not create a unitary right that would extend the scope of remedies for traditional European bundle patents.
On the facts of the case, the remedies were extended because the claimant had a good reason to allege that infringement may take place in Denmark, Italy and The Netherlands and the defendant had failed to provide an effective denial, merely criticising the claimant for lack of substantiation and evidence.
The Court granted the claimant a permanent injunction with regard to the “acts of offering, placing on the market and using and the acts of storing and importing for those purposes”. However, the Court refused to grant an injunction for importation without purpose. The Court ordered that the amount of damages and time periods to be taken into account be determined in subsequent proceedings but rejected the claimant’s application for damages in compensation for moral prejudice under Art. 68(3)(a). The claimant had failed to highlight any special circumstances which would warrant this additional award. Further, the Court granted an order for “definite removal” of infringing products but did not specify the mode of such removal. The Court rejected the defendant’s arguments that destruction of unfaulty infringing products was environmentally unsustainable and did not allow for the modification of the infringing products as the defendant had not specified how this could be done. The Court refused the defendant’s request for enforcement security as the defendant failed to justify such an order and, in the Court’s view, damage recovery would be facilitated by the fact that both parties were domiciled in the same country.
GSK v Pfizer [UPC_CFI_468/2024 & UPC_CFI_687/2024]
March 2025Parties
Case and decision number
UPC_CFI_468/2024, UPC_CFI_687/2024, App_4496/2025, ACT_45141/2024
Judges
Andrea Postiglione
Ronny Thomas
Jule Schumacher
On 4 March 2025, a procedural order was issued by the Düsseldorf Local Division relating to an infringement action filed by GlaxoSmithKline Biologicals SA against multiple Pfizer entities and related claims and counterclaims for revocation. The Court decided to refer the counterclaims for revocation to the Milan Central Division while proceeding with the infringement action.
On 5 August 2024, the Claimant had filed a patent infringement action against the Defendants in respect of EP 4 183 412. The mention of the publication of the grant of the patent in suit was published on 14 August 2024 and on the same day, six of the Defendants and two other Pfizer entities filed a revocation action with the Milan Central Division. The remaining Defendants filed counterclaims for revocation on 14 November 2024.
By Preliminary Order of 14 February 2025, the Judge-Rapporteur informed the Parties that the Panel intended to take an earlier decision under r. 37.2 RoP as to how to proceed with the counterclaims for revocation under Art. 33(3) UPCA. The Parties were invited to submit observations.
The Claimant and the Defendants agreed that the counterclaim(s) for revocation should be referred to the Central Division. However, they disagreed on whether to proceed with the infringement proceedings in the event of a referral. The Claimant sought to proceed and requested the Court to set a timely date for the oral hearing, even if the oral hearing would then place before the oral hearing on the Counterclaim for revocation in Milan. The Defendants request a stay of the proceedings pending a final decision in the revocation action. They based their request primarily on the alleged high likelihood of invalidity of the patent in suit but regardless argued that the issue of validity should be addressed first anyway.
The Local Division exercised its discretion to refer the counterclaim for revocation to the Central Division and decided to proceed with the infringement action, rather than stay.
On the issue of bifurcation, the Local Division acknowledged that in general there are advantages in having the infringement action and the counterclaim for revocation being heard together by the same panel but found that the circumstances of this case call for a different decision. In particular, the Local Division found that a referral of the Counterclaim for revocation was appropriate for reasons of efficiency. This was because the Revocation action and the Counterclaim for revocation were essentially based on the same prior art documents and other grounds for invalidity such as added matter, lack of technical contribution and lack of sufficiency. The Defendants themselves had stated that the Counterclaim for revocation (only) updated and amended the grounds in the Statement for revocation because since the filing of the Revocation action the B-specification of the patent in suit has been published and the English Patents Court handed down a judgement by which two further related patents were held to be invalid and not infringed. The Local Division therefore considered that the Central Division would already be familiar with the subject matter of the counterclaim for revocation.
On the issue of whether to stay the infringement action in light of the referral, the Court reiterated that it may stay the infringement proceedings pending a final decision in the revocation proceedings and shall stay the infringement proceedings where there is a high likelihood that the relevant claims of the patent will be held to be invalid (r. 37.4 RoP, emphasis added). However, in this case, the Court considered that a stay of the proceedings would not be appropriate at this stage. The Local Division found that the question of whether there is a high likelihood of invalidity would require a detailed examination, taking into account the entire content of the file and for this reason, given the stage of the proceedings, it did not appear effective to deal with the issue of invalidity at this point in time.
However, the Panel did reserve the right to reconsider the possibility of staying the infringement proceedings at a later stage, perhaps if it becomes more apparent during the course of the proceedings that invalidity of the patent is highly likely.
SWARCO V Yunex [UPC_CFI_156/2024]
February 2025Parties
Case and decision number
UPC_CFI_156/2024, ORD_24915/2024, App_16855/2024
Judges
Mojca Mlakar
Matthias Zigann
Tobias Pichlmaier
This application for the preservation of evidence related to SWARCO’s allegation that Yunex has infringed its patent by an optical system in LED panels used for outdoor displays and in particular certain panels that had been installed in Germany. SWARCO’s allegation was that the LED panels in use were identical to a sample device. However, to further substantiate its claim SWARCO sought an evidence preservation order under Art. 60(1) UPCA to allow their expert to remove and dismantle a display module of one of Yunex’s LED panels.
SWARCO accepted in an earlier oral hearing that the evidence preservation order would be unnecessary if Yunex admitted that the products in use in Germany were identical to the analysed sample. Although Yunex did not make this admission, the Court held that Yunex’s statement of objection did not make a substantiated denial, and that, pursuant to r. 191.1.a.ii and 171.2 RoP, SWARCO’s assertion that Yunex’s product was identical to the sample was deemed to be undisputed between the parties. The Court held that this would continue to be the consequence in the main proceedings and it would be an abuse for Yunex to subsequently make a denial.
Under r. 360 RoP, the application for preservation of evidence was therefore deemed to be redundant and was rejected. Addressing a regulatory gap in r. 198.2 RoP, the Court ordered that the decision on costs remains reserved for the main proceedings, which SWARCO must initiate within a period of 31 calendar days or 20 working days.
Lionra v Cisco [UPC_CFI_58/2024]
February 2025Parties
Case and decision number
UPC_CFI_58/2024, ACT 7940/2024
Judges
Peter Agergaard
Sabine Klepsch
Stefan Schilling
On 19 February 2025, the Hamburg Local Division rejected an infringement claim brought by Lionra Technology against Cisco Systems, but upheld the patent’s validity in its main action decision. Lionra asserted its European patent EP 2 201 740 B1, which relates to fast packet switching in wireless networks that seeks to reduce latency time during packet transmission.
Lionra alleged that the defendant Cisco companies infringed its patent in Germany in particular in relation to Cisco’s network switches in the “Catalyst 9000” product family which contain at least one “Cisco Unified Access Data Plane” (UADP) chip. Switches are devices that distribute data streams. They allow connected devices in a network to share information and communicate, thus simplifying shared use of network resources by packaging information in data packets. Lionra argued that the network switches of Cisco’s Catalyst 9000 series directly infringed its product claim and indirectly infringed its method claim.
The US Cisco entity manufactures the allegedly infringing articles. The German Cisco entity displays them on the German homepage it operates. Lionra alleged that the US Cisco entity meanwhile distributed the products in Germany.
There was a dispute about Lionra’s ownership of the patent in suit. Cisco disputed the alleged transfer of ownership from the original applicant company to Lionra. The Court noted the rebuttable presumption that Lionra is entitled to be registered as the patent proprietor in view of the fact that it is listed as such on the register. Cisco relied on inter alia that the purchase agreement for one of the transfers was only submitted to the patent office in redacted form and the fact that Lionra did not attach a written witness statement to the statement of claim relating to the certificate for payment of purchase price it relied upon. However, the Court considered that Cisco’s arguments seeking to cast doubt on the presumption of correctness were not sufficient to overcome the presumption.
In resolving a dispute on claim interpretation, the Court applied the principles of construction from A69 of the EPC and the Protocol on its Interpretation as confirmed by the Court of Appeal in Nanostring v 10x Genomics.
On infringement, the Court held certain features of the claims to be missing from the attacked embodiment. The Court took into account Lionra’s expert report on which it relied for infringement in reaching its conclusions.
In its revocation counterclaim, Cisco argued lack of novelty and obviousness. The Court rejected all of Cisco’s lack of novelty allegations. It found that none of the cited prior art disclosed a direct memory access (DMA) device with programmable channels which executes the write operations in parallel without switching on the main processor (the CPU), which was a feature of the claims. On inventive step, the Court rejected Cisco’s arguments based on various combinations of prior art, noting that the documents are based on different technical approaches and therefore the skilled reader has no reason to combine the separate self-contained solutions . It went further that even if the skilled person had been so motivated, the claims were still inventive over the combined documents as several features of the claims were not rendered obvious.
Given this outcome, the Court ordered payment of the costs of the proceedings be split in a 40:60 ratio between Lionra and Cisco.
Daedalus Prime LLC v Xiaomi and MediaTek [UPC_CoA_621/2024]
February 2025Parties
Case and decision number
UPC_CoA_621/2024, APL_58177/2024
Judges
Klaus Grabinski
Peter Blok
Emanuela Germano
The Court of Appeal has ruled that where a party makes an application to restrict access to confidential information under r. 262A RoP, the rules of procedure do not require that the information be restricted to the parties’ employees or their UPC representatives within the meaning of Art. 48 UPCA.
This decision comes in the case of Daedalus Prime LLC v Xiaomi and MediaTek. At the same time as filing its defence to Daedalus’ infringement claim, Xiaomi also filed a r. 262A RoP application requesting that access to certain parts of its defence be restricted. The Hamburg LD provisionally granted protection of the confidential information and restricted access to it to Daedalus’ authorised UPC representatives. In response, Daedalus requested that its managing director and two US attorneys be granted access. The Hamburg LD subsequently extended access to Daedalus’ managing director, but denied access to the two US attorneys. Daedalus requested a review of the subsequent procedural order by the panel. The panel rejected the application for review but granted leave to appeal.
The Court of Appeal did not consider that the wording of r. 262A.6 RoP required that confidential information be restricted only to parties’ employees or UPC representatives. R. 262A.6 RoP requires that access to confidential information only be granted to a total number of persons no greater than necessary in order to ensure compliance with the rights of the parties to an effective remedy and to a fair trial. Whether a particular person may be granted full access must be determined on the basis of the relevant circumstances of the case, including the role of that person in the UPC proceedings, the relevance of the confidential information to the performance of that role and the “trustworthiness” of the person in keeping the information confidential.
The Court of Appeal held in this instance that granting access to the two US attorneys would not be at odds with r. 262A.6 RoP, as the number of persons to whom access was restricted was not greater than necessary, and the US attorneys’ role in the UPC proceedings was sufficient for them to be granted access. The fact that US attorneys are bound by strict ethical rules of legal professional conduct was a relevant consideration.
AIM v Supponor [UPC_CFI_214/2023]
February 2025Parties
Case and decision number
UPC_CFI_214/2023, App_1205/2025, ACT_545571/2023
Judges
Mélanie Bessaud
Samuel Granata
Petri Rinkinen
On 8 January 2025, AIM Sport (AIM) filed an application based on r. 203 RoP to amend its case against a number of Supponor companies (Supponor) in relation to its patent EP’ 663, and to add a further defendant under r. 305 RoP. Due to Supponor’s preliminary objection to AIM’s original infringement action, which had originally been allowed at first instance but dismissed on appeal, Supponor is yet to submit its defence. After considering the issue, the Helsinki Local Division held that AIM was entitled to amend its claims to extend the infringement case to Spain and Germany and to add an additional UK-based defendant (TGI Sport Virtual UK Limited, previously Supponor UK Ltd) as a new defendant. Other amendments were also allowed but are not covered in this update.
AIM requested that its case should be extended to Spain on the basis that in previous pleadings it had sought a preliminary injunction (but not a separate permanent injunction) for the alleged infringement of the Spanish designation of EP’ 663 and the fact that the Supponor defendant companies (including the Spanish company) were jointly committing the alleged infringing acts. AIM argued that, although a protective letter had been filed in Spain, this did not amount to ongoing proceedings in Spain which would prevent the company from being included in the case. Further, AIM stated that the “Court has jurisdiction and competence to decide upon the infringement claims in Spain”. AIM also requested that its case should be expanded to include TGI Sports Virtual Limited UK as AIM had become aware, after the lodging of the original Statement of Claim, of a draft agreement which showed that the new UK-based defendant was involved in infringing acts in Germany jointly with the other defendants.
In both cases, Supponor argued that AIM had not justified the reasons for its late applications to amend. Supponor explained that information relating to both the UK defendant and the Spanish designation of EP’ 663 were already available to AIM prior to filing its original infringement claim.
In assessing the issues, the Court noted that the key points to consider when assessing an application to amend are the “presumption of r. 23 RoP that three months are sufficient for defendants to present their defence” and also that “the frontloaded procedure in the UPC must be protected”. As no defence had yet been submitted in the proceedings, AIM agreed that the defendants should have the full three months to lodge their defence should its amendments be accepted. As such, these requirements were not at risk and it was up to the Court to examine the circumstances of the amendments.
In relation to AIM’s request to include Spain in the scope of the infringement claim, the Court allowed the amendment to allow AIM to seek a permanent injunction in relation to the Spanish designation explaining that there was a high likelihood that if the amendments were not allowed AIM would initiate additional proceedings concerning the Spanish designation against Supponor “in the UPC or other courts” which would lead to a risk of “irreconcilable and inconsistent decisions”. Although the Court acknowledged that the amendment could have been made at an earlier stage, it was willing to allow the amendment due to the “unconventional situation” in which the case was re-starting which meant that there was no threat to the frontloaded nature of the proceedings. In making its decision, the Court also referred to AIM’s original Statement of Claim which included the Spanish subsidiary as a defendant and noted that “AIM already sought damages in relation to Supponor Limited’s infringement of the Spanish designation”. (Supponor Limited was one of the original defendants).
The Court also held that, on the basis of procedural economy, the new UK defendant should be included. The Court again noted that, if it did not allow the new defendant to be added to the case, AIM may choose to initiate new proceedings which would result in the risk of irreconcilable and inconsistent decisions. As a result, the scope of the case was also expanded to include claims of infringement by the new UK defendant in Germany.
Of interest in the judgment was the Court’s lack of discussion regarding the UPC’s jurisdiction over the Spanish designation of EP’ 663 in proceedings on the merits. While the Court noted that AIM had previously claimed damages for infringement of the Spanish designation, it is not clear how this was formulated in the original Statement of Claim nor how the UPC would have decided that it had jurisdiction to determine infringement of a national designation of an EP in a non-UPC territory in the absence of this additional factor. Additionally, the Court did not explain how a final decision on infringement in the existing unamended claim concerning national ‘UPC’ designations of EP’ 663 under ‘UPC’ law would be irreconcilable or inconsistent with a final decision on infringement of the Spanish designation under Spanish law, which it is assumed the UPC will have to apply in relation to the Spanish designation. The different national designations are, after all, parallel rights.
The Court did grant permission to appeal its order, accepting that there was only limited guidance so far from the Court of Appeal on the various issues.
Nanoval v ALD Vaccum [UPC_CFI_63/2025]
February 2025Parties
Case and decision number
UPC_CFI_63/2025
Judges
Matthias Zigann
Tobias Pichlmaier
On 3 February 2025, the Munich Local Division handed down an Order in a dispute between Nanoval GmbH & Co. KG (Nanoval) and ALD Vacuum Technologies GmbH (ALD). Nanoval had made an application requesting measures to preserve evidence and an inspection pursuant to r. 192 RoP, in order to support its infringement claim against ALD.
Nanoval’s patent relates to a device and method for crucible-free melting of a material and for atomising the molten material for the production of powder, in particular metal or ceramic powder. From the parameters of the metal powder described in ALD’s product brochure, Nanoval submitted that this new system must implement the features of claim 1 of the patent in suit. The systems at issue are relatively large and only manufactured to order and therefore not available for purchase and/or inspection by everyone.
The Munich Local Division granted the Order, which was immediately enforceable, and included securing evidence and inspecting premises, photographing or filming for documentation purposes, and retrieving copies of relevant files and documents. In making its decision, the Court considered that the validity of the patent was sufficiently secured. In considering possible infringement, the Court reviewed technical information from both parties (ALD had provided such information in protective documents and the EPO opposition proceedings) and considered there was a sufficient indication of infringement.
Account was also taken of the fact that ALD had challenged the patent in opposition proceedings at the EPO and, following the Board of Appeal’s decision to uphold the patent, requested a cross-licence. This gave rise to considerable suspicion. The Court dealt with the application on pursuant to Art. 60(5) UPCA. Nanoval had convinced the Court of the risk that the evidence to be secured would no longer be fully available in the event of a prior hearing. Further, ALD’s conduct prior to the application had not been cooperative and it had not provided sufficiently concrete information on the design of the product in its protective letters or responses to Nanoval’s requests.
The Court concluded that Nanoval would suffer irreparable damage if it were not possible fully to secure the evidence. The Munich Local Division ordered Nanoval to provide security in the amount of €30,000, with the decision on costs to be made at a later date.
Ericsson v Motorola [UPC_CFI_740/2024]
February 2025Parties
Case and decision number
UPC_CFI_740/2024, ACT_63258/2024
Judges
Tobias Pichlmaier
The Munich Local Division has upheld a preliminary objection raised by the patentee under r. 19 RoP against a second counterclaim for revocation of European patent EP 3 780 758, which was already the subject of earlier pending proceedings between the same parties in the same Local Division.
The second counterclaim was filed after the patentee sought to amend their initial infringement action (UPC_CFI_41/2024) to include additional requests for injunctive relief, recall, and destruction. A first counterclaim for revocation was filed in this action. When the Court rejected this amendment request, the patentee filed a second infringement action seeking the additional remedies. In response, the defendant submitted the second counterclaim for revocation, challenging the patent’s validity once again.
The patentee argued that the Court lacked jurisdiction for the second counterclaim due to the principle of lis pendens (pending litigation on the same issue), as the patent’s validity had already been challenged in the earlier action between the same parties. The Court agreed, interpreting Art. 33(2) UPCA to apply not only when the same case is brought before different divisions, but also when the same case is filed twice within the same division. The Court ruled that this second challenge was inadmissible, as the validity of the patent was already being addressed in the earlier proceedings. In doing so, the Court also held that the jurisdiction for preliminary objections under r. 19 RoP extends to counterclaims for revocation, not just infringement actions.
The Court also clarified that no separate decision would be made on costs at this stage. Costs incurred in relation to the preliminary objection would instead be addressed at the conclusion of the ongoing second infringement proceedings.
Fujifilm v Kodak [UPC_CFI_355/2023]
January 2025Parties
Case and decision number
UPC_CFI_355/2023, ACT_578607/2023
Judges
Ronny Thomas
In a decision handed down on 28 January 2025, the Düsseldorf Local Division had to determine whether it had jurisdiction over infringement of the EP(UK) patent. The UPC decided that it does.
This decision marks an important development in of cross-border jurisdiction within the UPC system. It remains to be seen, however, whether the court’s conclusion would change if a UK revocation action had been filed, as the UPC suggested this may have impacted the assessment.
In this action, Fujifilm had filed an infringement action against Kodak concerning a European patent that was designated in both Germany (the only Contracting Member State in which the EP was in force) and the UK. Kodak counterclaimed for revocation, challenging the validity of the EP(DE) but not the EP(UK).
Since the revocation action sought only the revocation of the EP(DE), the issue of the UPC's jurisdiction over revocation claims concerning patents in non-Member States did not arise. On this basis the court held that it did not therefore need to await the outcome of C-339/22 BSH Hausgeräte, in contrast to the contemporaneous Order in the parallel Mannheim Local Division proceedings (see below).
However, the Court decided that it had jurisdiction over the infringement claim regarding the EP(UK). It based this decision predominantly on the application of the Brussels Recast Regulation rather than the UPCA. The Court emphasised that the exclusive jurisdiction provision in Art. 24(4) does not apply to infringement. The Court went on to find that the Brussels Regulation applies even in disputes between Member and non-Member States citing the CJEU’s ruling in Owusu (C-281/02). Additionally, the Court referred to Art. 71b(1) of the Brussels Recast Regulation, which ensures that the UPC, as a common court for Contracting Member States, has jurisdiction equivalent to that of national courts under the same regulation.
The Court rejected Kodak's argument that the UPC’s jurisdiction should be limited to Contracting Member States. Since Germany as a Member State had jurisdiction over patent infringement actions involving third states, there was no jurisdictional barrier to the UPC deciding the claim for infringement of the EP(UK). The Court also considered Art. 34 UPCA, which governs the territorial scope of UPC decisions and found that it does not prevent the Court from hearing cases related to patents in non-Member States.
The Court nevertheless dismissed the infringement claim regarding EP(UK) due to its finding that the EP in force in Germany was invalid. Despite deciding that the validity of the EP(UK) was not in issue and that the UPC had no jurisdiction to decide the validity of the EP(UK), the Court determined that the validity of the patent was a prerequisite for granting injunctions or other remedies based on infringement. The defendants argued that the EP(UK) was invalid for the same reasons as the EP(DE), and the Court found that the claimant failed to distinguish any differences in the validity assessments between the UK and Germany. Consequently, the infringement action could not succeed, as the patent was invalid under EPC law.
Jozef Frans Nelissen v OrthoApnea [UPC_CFI_376/2023]
January 2025Parties
Case and decision number
UPC_CFI_376/2023, ORD_598478/2023, ACT_581538/2023
Judges
András Kupecz
Samuel Granata
Margot Kokke
This case concerns devices used to prevent a patient’s tongue slipping back and blocking the airway whilst the patient is asleep. These devices work by bringing the patient’s lower jaw forward, which tenses the neck muscles and forces the tongue forward, opening up the airway.
These devices have an upper and lower section that fit over the teeth, and are joined by a coupling element. The patent claims such a device where the closing of the jaw is prevented by a "contact surface" and a "stop" within the coupling element.
The patentee claimant, a Belgian orthodontist, sued OrthoApnea and Vivisol in the Brussels Local Division, asserting infringement on both a literal and equivalents basis.
The Court found that the OrthoApnea product did not prevent the closure of the mouth using parts within the coupling element, but instead by the meeting of the upper and lower sections which fit over the teeth. On this basis there was no literal infringement.
The claimant asserted infringement by equivalents under two tests – "function-way-result" and "insubstantial differences". The Court found that a necessary element for both tests is the existence of technical functional equivalence. The technical function of the "stop" and "contact surface" within the coupling element was to prevent the upper and lower sections from making contact. As these sections do make contact in the OrthoApnea device, the functional effect sought in the patent is not present in the OrthoApnea device, and therefore there was no infringement by equivalents.
ItCiCo v BMW [UPC_CFI _412/2023]
January 2025Parties
Case and decision number
UPC_CFI _412/2023, ORD_58414/2024, App 56176/2024, ACT_585518/2023
Judges
Paolo Catallozzi
Tatyana Zhilova
In the revocation proceedings between ItCiCo v BMW, the Paris Central Division had previously given a decision by default in respect of the applicant’s defence to counterclaim which had not been filed within the required timeframe. The applicant (ItCiCo) had filed a request for an extension on the day the defence fell due, but that extension request was subsequently refused. ItCiCo made an application pursuant to r. 356 RoP to set aside that decision in default and sought to justify this request by providing an explanation for the default; namely, it was unclear whether service of the statement of claim had been properly effected and the applicant’s long-standing European Patent Attorney, who was expected to provide technical input to the defence, was unavailable due to illness.
In its decision of 9 January 2025, the Paris Central Division held that the applicant’s explanation was not sufficient to meet the test for setting aside the decision by default.
In considering the relevant provisions, the Court found that it was inherent that r. 356 RoP required more than a mere explanation of the default but rather the applicant must demonstrate that the default was due to reasons beyond its control (i.e. unforeseeable circumstances or force majeur). Interpreting to rules in the manner proposed by the applicant, that any explanation would suffice, would have deprived the rule of any significant value and would allow parties to obtain an unwarranted extension of procedural deadline (there were justifications for the extensions, the justifications were just not good enough in the Court’s eyes). Such an outcome would have been contrary to the principles of efficiency, fairness and equity and endanger the goal of having the first instance final oral hearing within one year.
Further, the applicant’s reasons did not meet the required standard. The Court considered the statement of claim as served contained all of the information essential to enable the applicant to understand the claim against it and as such the date of its delivery was the date from which time started running for the deadline for the defence. Additionally, the applicant should have addressed the issue of the unavailability of its preferred patent attorney in a more timely manner, by consulting with another professional or at least seeking an extension from the Court as soon as it learnt of his health issues.
The Court therefore considered the non-compliance with the deadline for filing the defence was attributable to the application and dismissed the application. As such the Central Division’s prior order revoking the patent still stands.
Fives v Reel [UPC_CoA_30/2024]
January 2025Parties
Case and decision number
UPC_CoA_30/2024, APL_4000/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 16 January 2024, the Court of Appeal overturned the Hamburg Local Division, deciding that the UPC does have jurisdiction to determine damages following a finding of infringement by a Court of a Contracting Member State, and to decide on acts of infringement conducted before the UPC started on 1 June 2023.
In August 2022, a German national court decided that the defendant (REEL) should compensate the claimant (Fives ECL) for patent infringement. In August 2023, Fives ECL requested determination of damages in the Hamburg Local Division. REEL lodged a preliminary objection that the UPC did not have jurisdiction under Art. 32(1) UPCA. The Hamburg Local Division agreed with REEL, finding that the UPC had jurisdiction to determine damages only after the UPC itself has ruled on infringement. Fives ECL appealed.
The Court of Appeal noted that Art. 32(1)(a) is ambiguous: it does not exclude separate actions for damages, but nor does it prescribe such jurisdiction explicitly. In resolving this ambiguity the Court of Appeal analysed a number of issues.
First, Art. 32(1)(f), which gives the UPC jurisdiction to determine damages for infringement of a published European patent application, points in favour of the UPC assuming jurisdiction for damages only in respect of a granted patent. Second, the Brussels Regulation could not assist on this issue. Third, the UPC assuming jurisdiction for a pure damages action was not contrary to the object and purpose of the UPCA. In particular, Art. 68 sets out substantive law on damages and, as a result, there is an advantage to the UPC assuming jurisdiction, as it allows for the application of a complete set of substantive rules across the Contracting Member States. Finally, an analysis of the RoP in light of the UPCA, revealed that r. 126-144 RoP requiring determination of damages to be an application could be ignored, and instead damages could be a separate action.
The Court also rejected two of REEL’s additional arguments; that assuming jurisdiction would enable forum shopping, and that the UPC could not assess infringements from before the start of the UPC in June 2023. On forum shopping, as Art. 68 UPCA had been drafted in conformity with Art. 13 of the Enforcement Directive, which allows for variation between Member States as to statutory limitation periods or the calculation of damages, the possibility of different outcomes was specifically envisaged within the UPCA. On the temporal issue, the Court of Appeal found that as the UPC would be obliged to accept jurisdiction of an action concerning infringing acts partly before and partly after June 2023, it therefore has jurisdiction for claims relating to infringing acts which all occurred prior to June 2023.
The determination of damages was remitted back to the Hamburg Local Division.
Edwards Lifesciences v Meril [UPC_CFI_249/2023]
January 2025Parties
Case and decision number
UPC_CFI_249/2023, ORD_4627/2024
Judges
Matthias Zigann
On 10 January 2025, the Munich Local Division issued its decision on costs arising out of proceedings between Edwards Lifesciences Corporation (Edwards Lifesciences), and Meril GmbH and Meril Life Sciences Pvt Ltd. (together Meril).
The parties had agreed out of court that Meril would pay Edwards Lifesciences an amount of EUR 195,000 concerning the costs of representation and EUR 11,000 concerning court fees arising out of the first instance proceedings between the parties, and a payment of EUR 38,000 in relation to the costs of the subsequent appeal. Edwards Lifesciences applied pursuant to r. 150 and 151 RoP for an order for reimbursement of these amounts plus interest at 5% above the respective base rate in line with s. 247 of the German Civil Code from the date of receipt of the respective application. Meril requested that the application be rejected insofar as it requested an award of interest, arguing that there is no legal basis for such a claim either in the UPCA or RoP.
The Munich Local Division agreed with Meril’s submission. Neither the UPCA nor the RoP provide for interest on fixed costs in cost assessment proceedings. The Court contrasted that position with r. 131.2.a RoP, which expressly includes a provision for claiming interest in the context of an application for determination of damages. The Division, therefore, ordered that Meril pay Edwards Lifesciences a total of EUR 244,000, as agreed between the parties, and rejecting the remainder of Edwards Lifesciences’ request concerning interest.
10x Genomics v NanoString [UPC_CFI_298/2023]
January 2025Parties
Case and decision number
UPC_CFI_298/2023
Judges
András Kupecz
Matthias Zigann
Tobias Pichlmaier
On 13 January 2025, the Munich Local Division considered a request by the Defendant (Nanostring) to dismiss an application filed by the Claimants (10x Genomics and President and Fellows of Harvard College) to amend a patent application, or alternatively to limit the number of auxiliary requests on file and order that the requests pursued should also be on file in the EPO proceedings.
An oral hearing in the parallel opposition proceeding before the EPO is scheduled for 18-20 March 2025. The panel confirmed that it was appropriate that the UPC proceedings be stayed pending the outcome of the EPO hearing (as agreed by the parties and ordered by the Judge Rapporteur). That being the case, the panel ordered that the Claimants submit auxiliary requests within 20 days of the Opposition Division decision, so that the UPC proceedings to take account of that decision.
The Defendant argued that 55 auxiliary requests were excessive. The second claimant argued that this should not be considered in the abstract and it was relevant that 42 validity attacks had been raised in the revocation action. The Judge Rapporteur’s order to limit the number of auxiliary requests to a single digit was not maintained, and the panel left the question of the number of requests open for the time being. The panel considered that the reasonableness of the number of auxiliary requests depends on the scope of the counterclaim for revocation, the principle of fairness and the possibility to defend oneself against all counterclaims, and the decision of the Opposition Division. The number allowed will also affect the time period for the Defendants’ response.
Insulet v Menarini [UPC_CFI_380/2024]
December 2024Parties
Case and decision number
UPC_CFI_380/2024, ORD_59988/2024
Judges
Andrea Postiglione
On 23 December 2024, the Milan Central Division handed down a costs decision relating to an application by Menarini Diagnostics s.r.l (Menarini) to intervene in the ongoing dispute over insulin pumps between Insulet and EOFlow (to whom Menarini is the exclusive European distributor). That application was rejected by the Milan Central Division in an order of 1 October. Insulet subsequently filed an order seeking legal cost compensation against Menarini.
The Judge-Rapporteur rejected Menarini’s objections that (i) it should not have to pay legal costs as it was not a party to the proceedings following the failure of its intervention and (ii) that costs consequences should only follow decisions on the merits. The intervention application had given rise to “sub-proceedings” to which Menarini was a party – and as the unsuccessful party, it should generally bear the costs of those sub-proceedings under Art. 69 UPCA, which states that “Reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party”. Further, the intervention application did entail a decision on the merits on the intervener’s legal interest and the nature of its support for one of the parties, as evidenced by the substantive reasons set out in the decision on that application.
Menarini’s argument that Insulet’s costs were incurred voluntarily also failed – there is no distinction between “necessary” and “voluntary” defence under Art. 69 UPCA. Finally, the Judge-Rapporteur rejected Menarini’s contention that it should not have to pay Insulet’s costs because the amount of the costs was “not proven”. The Judge-Rapporteur noted that Insulet’s request for €1,764 seemed “reasonable and proportionate” as required for costs to be awarded under r. 152 RoP and that there was no need under r. 151.1 RoP for a full invoice for legal costs to be presented as part for a costs application.
The Court therefore awarded Insulet its costs as requested.
10x Genomics v Vizgen [UPC_CFI_22/2023]
December 2024Parties
Case and decision number
UPC_CFI_22/2023, ORD_62955/2024 / 62866/2024 , ACT_460565/2023
Judges
Sabine Klepsch
Stefan Schilling
Margot Kokke
On 20 December 2024 the Hamburg Local Division handed down a decision in the ongoing action between 10x Genomics, the President and Fellows of Harvard College (Harvard, the proprietors of the patent-in-suit), and Vizgen, relating to requests by Harvard to amend the patent under r. 30.2 RoP, which notes “Any subsequent request to amend the patent may only be admitted into the proceedings with the permission of the Court”.
Harvard had previously made two requests to amend, submitting 53 sets of auxiliary requests. Following the issuance of the preliminary opinion of the EPO Opposition Division in August 2024, Harvard submitted a third request for amendment with a further two sets of auxiliary requests in October 2024. This third request was rejected by the rapporteur on the grounds that the new version of the amendment could have been made earlier in the proceedings and was inadmissible. Harvard requested that the panel review and overturn the rapporteur’s decision.
The panel rejected the request, holding that contrary to Harvard’s submissions, the assessment of whether a request under r. 30.2 RoP is in time does not depend on the expectations of the patent proprietor as to whether the proprietor could reasonably expect that the filing of the request might cause a delay in proceedings. By the time it submits a response to a revocation claim (or counterclaim), the patent proprietor is already aware of the arguments in that revocation claim – in that respect, the proprietor is already in a position to submit corresponding amendments to the patent, and should generally do so at that stage. Only in exceptional circumstances should the court admit later requests for amendment of the patent under r. 30.2 RoP.
The panel explicitly granted permission to appeal, noting the need for harmonised jurisprudence regarding the admissibility of subsequent requests for amendment under r. 30.2 RoP.
Huawei v. Netgear [UPC_CFI_9/2023]
December 2024Parties
Case and decision number
UPC_CFI_9/2023, ORD_598538/2023, ACT_459771/2023
Judges
Matthias Zigann
Tobias Pichlmaier
Edger Brinkman
On 18 December 2024, the Munich Local Division gave a Decision in an action between Huawei v. Netgear relating to the infringement of Huawei’s patent relates to a method and device for transmitting information in a wireless local area network. The Court found that Netgear's Wi-Fi 6 products infringed the patent and ordered Netgear to cease the infringing activities, recall and destroy the infringing products and provide compensation to Huawei.
The key findings of the Decision are summarised below:
CJEU in Huawei v ZTE: The CJEU judgment in Huawei v ZTE is not solely concerned with the determination of a FRAND licence. However, this may be one component of the overall decision.
Willingness of the Implementer: The willingness of the implementer must be assessed by considering both the initial and subsequent conduct of the implementer. This means that the implementer's behaviour throughout the negotiation process is crucial.
FRAND Offers by SEP Owner: If the Standard Essential Patent (SEP) owner has made several offers, at least one of these offers must be FRAND.
Offer Readiness: The offer from the SEP owner does not have to be ready to sign. It is sufficient if the offer provides a constructive starting point for further negotiations towards a FRAND licence agreement.
Security Provision by Implementer: Even if the SEP owner's offer is not FRAND, the implementer must provide security. This security acts as a safeguard for the SEP owner while negotiations continue.
Examination of SEP Holder's Offer: If no security is provided by the implementer, the examination of the SEP holder's offer may be completely omitted or, at best, cursory.
Amount of Security: The security must be provided at least in the amount of the counteroffer made by the implementer. Whether the security should be higher is left open.
Heraeus Electronics v Vibrantz [UPC_CFI_114/2024 / UPC_CFI_448/2024]
December 2024Parties
Case and decision number
UPC_CFI_114/2024 / UPC_CFI_448/2024
Judges
Matthias Zigann
Tobias Pichlmaier
Edger Brinkman
On 2 December 2024, the Munich Local Division gave an Order allowing Heraeus Electronics to amend its infringement action against Vibrantz Technologies Inc. relating to EP 3 215 288. The patent concerns metal sintering preparation.
The permitted amendments allow the addition of Romania (which became a UPC member state on 1 September 2024) to the territorial scope of the action under r. 263 of the Rules of Procedure (RoP). Indirect infringement arguments based on method claims from the patent-in-suit (r. 263 and r. 333 RoP) were also permitted.
The extension of the action to cover Romania was permitted by the Court as both parties had requested the same territorial expansion – with Vibrantz Technologies Inc. having applied for an extension of its respective counterclaim to cover Romania.
Turning to the amendment to introduce a method claim, following a recent UPC Court of Appeal decision, the Court found this did not constitute an amendment to the action within the meaning of r. 263 RoP This is because, following the example given by the Court of Appeal, no further patent was being asserted and instead the allegation of infringement relating to the same product was merely being supported by a further patent claim. The Court therefore found in this instance that the method claim amendment did not require a party to apply for leave or permission under r. 263 RoP, and Heraeus Electronics’ extension of the action was consequently not objected to by the court.
Dexcom v Abbott [UPC_CFI_395/2023]
December 2024Parties
Case and decision number
UPC_CFI_395/2023, ORD_63909/2024, ACT_583778/2023
Judges
Rute Lopes
Camille Lignieres
Carine Gillet
On 11 December 2024, the Paris Local Division issued its decision in Dexcom v Abbott, revoking EP 3 831 282 for lack of inventive step. The patent in issue relates to remote monitoring of glucose levels in people with diabetes, in particular a system that allows information to be shared with one or more remote monitor (allowing friends, family members or caregivers to receive information on the patient).
Abbott sought to introduce added matter as a ground for revocation of the granted claims, following Dexcom having advanced arguments on the interpretation of certain claim features in its Reply to the Defence to Counterclaim. However, the Court found that there was no legitimate reason for Abbott to raise the new ground at a late stage, when it had already set out its own claim interpretation in earlier pleadings.
In relation to claim construction, interestingly the Court rejected Dexcom’s construction in relation to several features despite the Court finding that the proposed constructions was consistent with the description. According to the Court, adopting Dexcom’s construction would lead to incompatibility between several claim features, and the Court found that it would therefore go beyond using the description and drawings as explanatory aids.
The Court’s finding that the patent lacked inventive step was based on a combination of two prior art documents referred to as Valdes and Goodnow. Valdes proposed to relay or share data with remote users but provided no concrete way of doing this. In particular, the presence of a server between the host and remote devices and the “invitation scheme” of the patent were not obvious based on Valdes alone. The court found that it was well-known in the field of healthcare applications at the priority date to resort to an architecture with servers for relaying health-related data between mobile phones, and this was adopted by Goodnow. Goodnow also proposed a scheme similar to the invitations scheme of the patent, to ensure that that data is shared only as authorized by the original user and is accepted by a sharing health care professional. Taken together, Valdes and Goodnow therefore rendered the patent obvious.
Dyson v SharkNinja [UPC_CoA_297/2024]
December 2024Parties
Case and decision number
APL_32012/2024 / UPC_CoA_297/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 3 December 2024, the Court of Appeal issued its decision finding, contrary to the lower court, that on the balance of probabilities the patent in suit was more likely not to be infringed. The PI was therefore set aside.
Dyson is the registered holder of European patent EP 2 043 492 (EP 492) for “A hand-held cleaning appliance”. The Munich Local Division had granted a preliminary injunction against SharkNinja restraining it from selling certain models of handheld vacuum cleaners. This is because the Local Division viewed that EP 492 was infringed and that none of the prior art called into question the validity of the patent. Such assessments of validity and infringement are standard in PI proceedings.
Interestingly, the Court of Appeal conducted a re-review of the evidence in the case, which included expert evidence from both parties and videos of SharkNinja’s allegedly infringing products. In terms of construction, the Court of Appeal, utilising the expert evidence adduced, viewed that the skilled person would understand the claim in a certain way, and there was nothing contained in the patent claim itself, or the description or drawings to contradict this interpretation.
Given this construction and the videos showing the operation of SharkNinja’s products, the Court of Appeal ruled that it was more likely than not that SharkNinja’s products would not satisfy all of the integers of the claim. Thus, on the balance of probabilities, it was deemed more likely that the patent was not infringed. The injunction against SharkNinja was therefore lifted.
Although the Local Division had ordered that the parties should each provisionally bear their own costs of the proceedings, the Court of Appeal ruled that this part of the order should be reversed and Dyson should be ordered to bear SharkNinja’s costs in the Court of First Instance and in the appeal proceedings.
air up v Guangzhou [UPC_CFI_508/2023]
December 2024Parties
Case and decision number
UPC_CFI_508/2023, App_64018/2024, ACT_597609/2023
Judges
Tobias Pichlmaier
On 9 December 2024, the Munich Local Division granted an order that steps taken to bring preliminary injunction proceedings to the attention of the Defendant in the proceedings constituted good service pursuant to r. 275.2 RoP.
The proceedings in air up v Guangzhou concerned an inter partes application for preliminary measures filed by air up in December 2023. Guangzhou is domiciled in China and therefore service of the proceedings had to be effected under the Hague Service Convention (HSC). After a previous contact at Guangzhou did not respond to a request for Guangzhou to accept informal service via email, in May 2024, the Court Registry undertook formal service by posting the necessary translated documents to the competent Chinese Authority. Following several unfruitful enquiries by the Court Registry to the competent Chinese authority on the status of service between July and November 2024, air up sought an order that the steps taken to bring the proceedings to the attention of Guangzhou constitute good service pursuant to r. 275.2 RoP.
The Court noted that, in the present case, neither informal nor formal service in accordance with r. 274.1 (a)(ii) RoP and Art. 5 HSC could be effected. Citing Art. 15 HSC, the Court also noted that more than six months had elapsed since the date of transmission of the documents to the competent Chinese authority and all reasonable efforts had been made to obtain proof of delivery via the competent Chinese authorities. The Court therefore considered it adequate to give a judgment in the present case because: (i) the subject matter of the proceedings is a request for preliminary measures which is an urgent matter; and (ii) from previous requests for service by the competent Chinese authority, it is not to be expected that the request for service will be successful in the future.
Under r. 275.2 RoP, the Court may order that steps already taken to bring a statement of claim to the attention of the defendant by an alternative method or at an alternative place constitute good service. However, the Court highlighted that, according to this wording, only an (unsuccessful) attempt to serve a document by an alternative method or at an alternative place may be approved as good service. By contrast, the wording of r. 275.2 RoP indicates that an unsuccessful attempt to serve documents by means of r. 274.1(a)(ii) is not acceptable as good service.
The Court assessed that r. 275.2 RoP contains an unintended gap and held that, if an attempt of service under r. 274 RoP has failed and service by an alternative method or at an alternative place is neither possible nor reasonable, the Court may order that an unsuccessful attempt of service under r. 274 RoP shall also constitute good service. Therefore, service was deemed effective as of the date of the order.
10x Genomics v Curio Bioscience [UPC_CFI_140/2024]
December 2024Parties
Case and decision number
UPC_CFI_140/2024, ACT_15774/2024, App_ 48598/2024
Judges
András Kupecz
Ronny Thomas
Bérénice Thom
On 3 December 2024, the Düsseldorf Local Division granted an Order to compel Curio Bioscience to provide security for legal costs in an infringement dispute against 10x Genomics relating to EP 2 697 391 B1.
10x Genomics argued that Curio’s financial instability, evidenced by its reliance on a single product line and statements made in earlier preliminary injunction proceedings, raised legitimate concerns about its ability to meet potential cost awards. The Claimant also highlighted the challenges of enforcing UPC cost decisions in the U.S., where Curio is based, due to the lack of a treaty ensuring recognition of such orders. Curio opposed the application, contending that Art. 69(4) UPCA only permits security orders against claimants, not defendants, and that r. 158.1 RoP should be construed narrowly to align with the UPCA. The Defendant also contended that its status as a U.S. company was irrelevant without specific evidence of enforcement difficulties and that the Court lacked sufficient grounds to determine the value of the case.
The Court held that r. 158.1 RoP applies to both Claimants and Defendants and that Art. 69(4) UPCA does not preclude such orders against Defendants. Nonetheless, the Court recognised that, in exercising its discretion, it must consider the claimant’s voluntary decision to litigate and carefully protect the defendant’s procedural rights, ensuring that the defendant retains a fair opportunity to present its case at trial.
After reviewing the evidence and arguments, the Court concluded that 10x Genomics’ concerns were well-founded and that imposing a security order would not unduly prejudice Curio’s procedural rights. It ordered Curio to provide EUR 200,000 in security for legal costs, payable within four weeks, either as a deposit or a bank guarantee. The Court set the value based on the scale of reimbursable costs, whilst acknowledging that the actual value of the dispute has not yet been set and that cost ceilings represent maximum recoverable amounts which could ultimately be further reduced based on the additional safeguards under Art. 69 UPCA including reasonableness and equity.
Although the Court granted Curio leave to appeal, it denied Curio’s request to delay the security provision until after appellate review, finding that such a delay would unjustifiably interfere with the Claimant’s interests.
NJOY v VMR [UPC_CFI_307/2023]
November 2024Parties
Case and decision number
UPC_CFI_307/2023, ACT_571537/2023, ORD_598496/2023
Judges
Paolo Catallozzi
Tatyana Zhilova
In its decision of 27 November 2024, the Paris Central Division has revoked VMR’s patent for a vaporizer (e-cigarette) for lack of inventive step over the cited prior art and common general knowledge. Interestingly, the court allowed late-filed documents from NJOY when considering the case demonstrating that the UPC may sometimes deviate from the “front-loaded” nature of proceedings suggested by the Rules of Procedure (RoP).
The claimant NJOY filed a revocation action against VMR. VMR filed a defence and NJOY submitted new evidentiary documents with its reply to VMR’s defence. VMR objected to this on the basis that NJOY could have filed the documents at the time of its original claim. Further, VMR argued that NJOY, if it wished to rely on the additional documents, should have applied to amend its case under r. 263 RoP; NJOY had not done so. Following the principles set out in r. 13 and 44 RoP, the Court noted that its proceedings are intended to be “front-loaded” so that the defendant is aware of the factual elements and legal grounds of the claim made against it, and so that matters proceed expeditiously. However, the Court emphasised that these rules are subject to the principle of proportionality set out in the Preamble of the RoP. The Court also considered it would act counter to the principle of procedural efficiency if excessively detailed statements of fact and additional documents were provided with the initial claim. A third factor, in favour of admitting NJOY’s additional documents, was that it would be unfair to prevent a party introducing a document during proceedings that only became available to that party at a later stage. Taking these points into account, the Court admitted NJOY’s documents.
In relation to the substantive decision, the key integer of claim 1 of the patent referred to a “window” in the shell of the vaporizer. Notably the claim did not specify where the window should be located or its size or shape. The Court was therefore unconvinced by VMR’s argument that the window was to allow a user to see if the removable “cartomizer” was positioned correctly. The Court considered that this would only be true if the claim required the window to be located so as to show the connection of the cartomizer to the rest of the vape and the claim was broader than this. In fact the Court decided that all that was needed was “a window of any shape and size … that in some way allows some portion of the chamber to be visible from outside the shell”. It was agreed that the starting point prior art “Pan” did not disclose the window feature but, faced with the technical problem of how “to allow a portion of a chamber to be visible from the outside”, the answer was obvious: “providing a non-transparent wall of a chamber with a window … is the most basic approach known to [the skilled person] when confronted with [that] problem”.
Insulet v Menarini [UPC CFI NO. 400/2024]
November 2024Parties
Case and decision number
UPC CFI NO. 400/2024, ORD_56587/2024
Judges
Anna-Lena Klein
Pierluigi Perrotti
Alima Zana
On 22 November 2024, the Milan Local Division dismissed Insulet’s application for a preliminary injunction against Menarini. The application for provisional measures concerned the alleged infringement of EP 4 201 327 (EP 327), which relates to a fluid delivery device, by a patch-insulin pump distributed in the EU by Menarini. Finding that the patent is likely invalid, the Court dismissed the application and confirmed that claim amendments are not permitted in proceedings for provisional measures.
The Court set out that for a preliminary injunction to be granted, pursuant to Art. 62.4 and r. 211.2 RoP, the applicant must establish the validity of its patent with “sufficient certainty”, i.e. it must show that the patent is more likely valid than invalid. The Court found that EP 327 appeared to lack novelty over the prior art and was therefore more likely than not invalid.
As part of its reply to Menarini’s validity attacks, Insulet filed auxiliary requests to amend the claims of its patent. The Court dismissed these requests, rejecting Insulet’s argument that they only represented an expression of legal caution and were therefore admissible at any point in the proceedings. Instead, the Court followed previous case law in holding that auxiliary requests are not admissible prior to the main proceedings, as r. 30 RoP and r. 50 RoP only permit claim amendments to be sought in a defence to a claim or counterclaim for revocation.
Further to its auxiliary requests, Insulet also applied under r. 263.3 RoP to unconditionally limit its claim for infringement to the claim scope defined in its previously submitted auxiliary requests. Citing an interpretation of r. 263 RoP established by the Paris Central Division, the Court held that this was not an application to limit a claim within the meaning of r. 263.3 RoP and was instead an attempt to introduce claim amendments outside of r. 30 RoP and r. 50 RoP. The Court held that the application under r. 263.3 RoP was therefore inadmissible.
The Court’s findings in this case reinforce the principle that claim amendments are not permitted in preliminary injunction proceedings at the UPC. This position is consistent with the required urgency with which an application for a preliminary injunction must be brought, and the right of defence, particularly the principles enshrined in r. 263 RoP, which in part establish the front-loading of UPC claims.
Though not an argument advanced by Insulet, Menarini acknowledged that it is possible that claim amendments could be permitted in proceedings for provisional measures in extraordinary circumstances. As the Court in this case did not have to consider such an argument, it remains to be seen under what, if any, extraordinary circumstances claim amendments in proceedings for provisional measures may be allowed.
Menarini also sought security for its costs in the event it is successful in the main proceedings. It argued that there is a significant risk that it would be unable to enforce a costs order were it to be granted one as Insulet is a company incorporated in the US, which is not a party to any international treaty which would allow for enforcement. The Court rejected the application on the grounds that difficulty of enforcement is not sufficient for the granting of security, and further noted that Menarini had failed to make out a positive case that Insulet would avoid paying its costs or that its financial situation would prevent it from doing so.
Plant-e v Arkyne [UPC_CFI_239/2023]
November 2024Parties
Case and decision number
UPC_CFI_239/2023, App_549536/2023, ACT_549536/2023
Judges
Samuel Granata
Edger Brinkman
Margot Kokke
On 22 November 2024, the Hague Local Division of the UPC handed down its decision in Plant-e v Arkyne. The decision concerned Plant-e’s patent EP 2 137 782, which relates to a device and method for converting light energy into electrical energy using living plants. The Court found the patent to be valid and infringed by equivalents by Arkyne, who were offering for sale and selling biofuel cells.
The Court set out that, when considering infringement, it would assess the scope of the patent’s protection in two steps, applying Art. 69 EPC and the Protocol on its interpretation. The first step is an assessment of “literal” infringement of the relevant features of the patent in view of the claim construction. If the patent is not found to have been literally infringed, then the Court moves onto the second step, which is an assessment of equivalents. In this case, the Court held that the patent was not literally infringed, as Arkyne’s product was missing the features of the claim relating to the location of the living plant and its roots.
When going on to consider infringement by equivalents, the Court noted that the UPCA makes no provision on the doctrine of equivalents. In the absence of such guidance, the Court will apply a test based on case law in various national jurisdictions, in line with what was proposed by both parties. Having taken this into account, the Court set out that a variation would be “equivalent” to the element specified in a claim if these four questions are answered in the affirmative:
- Technical equivalents: Does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
- Fair protection for patentee: Is extending the protection of the claim to the variation proportionate to a fair protection for the patentee in view of their contribution to the art, and is it obvious to the skilled person from the patent publication how to apply the variation (at the time of infringement)?
- Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
- Is the allegedly infringing product novel and inventive over the prior art? (i.e. there is no successful Gillette or Formstein defence).
In this case, the Court held that the answer to all of these questions was yes, and therefore the patent was infringed by equivalents. The Court granted an injunction for the UPC territory where the patent is valid (Benelux, France, Germany and Italy) and ordered Arkyne to recall and destroy the infringing products, with the Court specifying wording which Arkyne should use in letters, emails and on its website to effect that recall. Arkyne was also ordered to pay Plant-e damages and costs.
Panasonic v Oppo [UPC_CFI_ 210/2023]
November 2024Parties
Case and decision number
UPC_CFI_ 210/2023
Judges
Peter Tochtermann
Dirk Böttcher
On 22 November 2024, the Mannheim Local Division gave its first substantive decision on FRAND (Fair, Reasonable, and Non-Discriminatory) licensing, offering important insights into how it will approach these cases going forwards. The Court found Panasonic’s 4G patent valid and infringed by OPPO. A central issue was OPPO’s FRAND defence, which was ultimately rejected, resulting in an injunction in Panasonic’s favour. This decision provides guidance on procedural and substantive aspects of FRAND negotiations, including conduct during negotiations and disclosure requirements.
The Court confirmed that SEP holders like Panasonic must notify implementers of alleged infringement and justify their licensing offers as FRAND-compliant. Panasonic met its obligations by providing a patent list and claim charts which referred to the patent in suit and sufficiently explaining the basis for its offers. OPPO’s criticisms of the adequacy of the information provided by Panasonic, raised for the first time at the oral hearing, were dismissed as procedurally late and unconvincing. SEP holders are not required to disclose sensitive details about third-party licences at every stage of the negotiations. The Court also clarified that a fully drafted licence agreement is not required during initial negotiations unless specifically requested by the implementer.
Implementers, on the other hand, must provide transparency about their use of the patented technology. OPPO failed to meet this requirement, relying on IDC market data instead of actual sales figures, which hindered Panasonic’s ability to assess appropriate licensing terms. The Court emphasised that implementers must disclose usage details and provide adequate security after making a counteroffer. OPPO’s bank guarantee was deemed inadequate because it lacked safeguards against insolvency.
The Court affirmed the concept of a FRAND “corridor” of acceptable terms, giving SEP holders flexibility within this range. Panasonic’s offer was found to sit within this corridor based on its comparable licences and established court benchmarks, and subsequent adjustments made during negotiations did not undermine its FRAND compliance. Additionally, the Court confirmed its jurisdiction under Art. 32(1)(a) UPCA to resolve OPPO’s FRAND rate setting counterclaim but declined to set the rate, due to OPPO’s reliance on IDC data rather than its actual usage figures. OPPO’s proposal that the UPC determine the FRAND rate only for EPC countries, the USA and Japan attracted considerable criticism from the Court as lacking good faith.
While the decision provides a clear framework for assessing FRAND disputes, it leaves some questions unanswered, such as how the UPC would determine a FRAND rate if both parties’ offers fell within the FRAND corridor or resolve disputes on non-rate terms. Recent reports of a settlement between Panasonic and OPPO raise further uncertainty about the decision’s potential appeal. Nevertheless, this ruling highlights the UPC’s commitment to balancing the rights of SEP holders and implementers while ensuring procedural efficiency.
Edwards v Meril [UPC_CFI_15/2023]
November 2024Parties
Case and decision number
UPC_CFI_15/2023, ORD_598479/2023, ACT_459987/2023
Judges
Matthias Zigann
Tobias Pichlmaier
Margot Kokke
On 15 November 2024, the Munich Local Division of the UPC handed down its decision in Edwards v Meril, a dispute relating to Edwards’ patent EP 3 646 825 which was upheld by the Paris Central Division in amended form in a decision of 19 July 2024. The patent claims a prosthetic heart valve comprising struts arranged into hexagonal cells, and was allegedly infringed by Meril’s Myval extra-large heart valve.
In finding the patent infringed the panel adopted a purposive interpretation of the term “parallel” in the patent, noting that it “must not be understood in a strictly mathematical sense” on the basis of evidence in the figures of the patent and Edwards’ expert evidence.
The panel dismissed Meril’s request for a re-scheduling or stay of the infringement hearing pending the appeal of the validity decision. Meril submitted that certain of their invalidity arguments had not been addressed by the Paris Central Division – the Court disagreed, and found there were no substantive or formalistic grounds for the requested re-scheduling or stay.
Although Meril contested that their product’s struts were arranged in overlapping octagons rather than hexagons, the panel held, based on experimental evidence submitted by Edwards, that the cells in the Meril valve behaved more like hexagons when the valve was being deployed. The patent was therefore infringed.
The panel rejected Meril’s claim to a compulsory licence, noting that the BGH had previously found Meril to be an unwilling licensee. Meril had also not made sufficient efforts to engage in licensing discussions with Edwards following the BGH decision, leading to a strong presumption against Meril’s entitlement to a compulsory licence.
The panel also were unconvinced by Meril’s argument that there was public interest in having its product available on the market – it was not sufficient that it would be advantageous for a physician to have a variety of treatment methods at their disposal and that Meril’s product had some superior features to the Edwards product. Any public need was therefore held to be sufficiently met by Edwards’ product. Either Meril would have had to demonstrate that their product was the only available treatment method, or that it resulted in a notable enhancement in patient care.
The panel did not find it appropriate to allow a grace period for Meril to adapt its infringing products, and granted an immediate injunction, damages (final quantum to be determined), and costs against Meril.
Astellas v Helios [UPC 75/2023]
November 2024Parties
Case and decision number
UPC 75/2023
Judges
Ulrike Voß
András Kupecz
On 4 November 2024, the Munich Central Division handed down a decision granting a third party applicant access to unredacted pleadings and evidence. The applicant, UK patent attorney firm Mathys & Squire LLP, had made an earlier application for these documents but, following submissions from the Claimant, had only been provided with redacted copies. The applicant therefore made an application under r. 262.3 RoP for unredacted copies. Reasons cited by the applicant in support of its application included that the redacted information had been made public elsewhere, that there is a public interest in having full access to pleadings and evidence, and that the applicant had specific professional reasons for requesting access, including to better understand how the concept of a “value of an action” might operate in proceedings before the UPC.
The Court not only found that the formal requirements for an application under r. 262.3 RoP had been met but that the claimant, in failing to respond to the application by way of any further submissions, had failed to give legitimate reasons as to why the previously redacted information should remain confidential. The court therefore concluded that the interests of the applicant in having access to the information outweighed the interests of the Claimant in keeping it confidential and allowed the application.
NJOY v Juul Labs [UPC CFI 315 /2023]
November 2024Parties
Case and decision number
UPC CFI 309 /2023, ORD_598482/2023, ACT_571669/2023
Judges
Maximilian Haedicke
François Thomas
On 5 November 2024, the Paris Central Division handed down two decisions, one in a revocation action concerning Juul Labs’ patent EP 3504991 (EP 991), and the other in a revocation action concerning Juul Lab’s patent EP 3498115 (EP 115). Both revocation actions were brought by NJOY and both decisions involve overlapping aspects in relation to admissibility of late filed submissions and evidence. The two patents are both entitled “Vaporisation Device Systems”. EP 115 was found invalid for added matter, whereas EP 991 was found to be valid, being both novel and having inventive step over the cited prior art.
Admissibility of late filed documents
In respect of admissibility of submissions and evidence, in each case there were questions as to whether the numerous new documents which were filed as part of the Claimant’s reply to the Statement of Defence were admissible. The Court explained that they were admissible only in so far as they were a reaction to the arguments in the Statement of Defence. Similarly, in respect of the Defendant’s Rejoinder to the Reply to the Defence to revocation, including an additional expert report, there was provision for such documents in r. 52 RoP which required it to be limited to a response to the matters in Reply. The Court considered each of the topics covered in the relevant documents, noting that it is not always possible to draw a clear distinction between newly introduced arguments and arguments raised as a mere reaction to previously filed arguments and that “a generous standard is to be applied” to safeguard the fundamental right to be heard. Accordingly both sets of documents were admitted.
However, the Court also emphasised the front-loaded procedure of the UPC and as such, arguments in the Claimant’s Reply to the Rejoinder and Reply to the Defendant’s Application to amend the Patent that were not limited “to matters raised in the Reply” (in accordance with r. 32.3 RoP) were held to be inadmissible on the basis that the Claimant had already had an opportunity to present its case. Similarly, there was no good reason to admit later submissions filed by the Defendant which had no basis in the RoP.
EP 991 – novelty and inventive step
NJOY argued that EP 991 should be revoked based on (i) lack of novelty, in light of a Chinese patent application (Chen) and a US patent application (Thompson), and (ii) lack of inventive step over different cited prior art – a US patent application (Cohen) in combination with the common general knowledge and/or Cohen combined with another US patent application (Cross). The Court conducted a detailed analysis of interpretation of the claims from the skilled persons’ perspective, following the legal framework set out by the Court of Appeal of the UPC in Nanostring/10x Genomics.
In relation to novelty, the Court found the invention claimed in EP 991 to be new, with certain features not disclosed in the cited prior art. In its assessment of inventive step, the Court emphasised that an objective approach must be established and applied, notably considering that limiting the evaluation of inventive step to certain elements of the prior art, for example a document perceived to be “the closest prior art” generally bears the risk of introducing subjective elements into the evaluation. The Court did note, however, that in some cases it may be justified to focus the debate for reasons of procedural efficiency. The Court first determined the problem solved by the invention by reference to the patent, which was to optimise the parameters of the inhalable aerosol that is inhaled by the user, by virtue of the heater chamber being at the first end of the cartridge and therefore further from the mouthpiece, allowing distance for condensation to occur. The Court analysed Cohen as a starting point, noting that the claimed invention differs from Cohen in that the heater is affixed to a first end of the cartridge. There was no suggestion in the cited prior art to affix a heater to a first end of the cartridge and a mouthpiece to the second end of the cartridge and this could not be established from the common general knowledge. Thus, the invention did not follow from the prior art in such a way that the skilled person would have found it in an attempt to solve the underlying problem.
The Court considered it would have been feasible to further evaluate inventive step having regard to Chen or Thompson. However, as the scope of evaluation of a revocation action is defined by the claimant, who did not cite Chen or Thompson as a starting point for inventive step, this issue was left undecided. The Court’s preferred approach would therefore seem not to be the predictable problem-solution approach starting from the “closest prior art”, but rather a more objective approach of determining the problem solved by the invention by reference to the patent, and then considering the prior art as a whole.
NJOY v Juul Labs [UPC CFI 309 /2023]
November 2024Parties
Case and decision number
UPC CFI 309 /2023, ORD_598482/2023, ACT_571669/2023
Judges
Maximilian Haedicke
François Thomas
On 5 November 2024, the Paris Central Division handed down two decisions, one in a revocation action concerning Juul Labs’ patent EP 3504991 (EP 991), and the other in a revocation action concerning Juul Lab’s patent EP 3498115 (EP 115). Both revocation actions were brought by NJOY and both decisions involve overlapping aspects in relation to admissibility of late filed submissions and evidence. The two patents are both entitled “Vaporisation Device Systems”. EP 115 was found invalid for added matter, whereas EP 991 was found to be valid, being both novel and having inventive step over the cited prior art.
Admissibility of late filed documents
In respect of admissibility of submissions and evidence, in each case there were questions as to whether the numerous new documents which were filed as part of the Claimant’s reply to the Statement of Defence were admissible. The Court explained that they were admissible only in so far as they were a reaction to the arguments in the Statement of Defence. Similarly, in respect of the Defendant’s Rejoinder to the Reply to the Defence to revocation, including an additional expert report, there was provision for such documents in r. 52 RoP which required it to be limited to a response to the matters in Reply. The Court considered each of the topics covered in the relevant documents, noting that it is not always possible to draw a clear distinction between newly introduced arguments and arguments raised as a mere reaction to previously filed arguments and that “a generous standard is to be applied” to safeguard the fundamental right to be heard. Accordingly both sets of documents were admitted.
However, the Court also emphasised the front-loaded procedure of the UPC and as such, arguments in the Claimant’s Reply to the Rejoinder and Reply to the Defendant’s Application to amend the Patent that were not limited “to matters raised in the Reply” (in accordance with r. 32.3 RoP) were held to be inadmissible on the basis that the Claimant had already had an opportunity to present its case. Similarly, there was no good reason to admit later submissions filed by the Defendant which had no basis in the RoP.
EP 115 – added matter
EP 115 is a second generation divisional application, having both a parent application and a grandparent application. The Court followed the decision of the Hague LD in UPC_CFI_131/2024 in stating that an amendment can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing (or priority date, where appropriate) for the whole of the document as filed. Subject matter introduced is unallowable if the overall change in the content of the application results in the skilled person being presented with information not directly and unambiguously derivable from that previously presented, even taking into account matter implicit to the skilled person. The Court concluded that Claim 1 was invalid as it extended beyond the scope of all of the earlier applications, and EP 115 as granted could therefore not be maintained in its entirety.
Auxiliary requests and Art. 65 (3)
The defendant had submitted a conditional application to amend the patent, containing a set of 57 auxiliary requests, and the Court considered whether EP 115 could be limited and revoked only in part pursuant to Art. 65(3) UPCA. According to the dispositive principle (procedural maxim), a dispute before the Court is generally controlled by the parties (Art. 76(1) UPCA), and in this case the defendant had requested the court to consider its application(s) to amend the patent. Pursuant to r. 30 (1) (c) RoP, proposed conditional amendments must be reasonable in number in the circumstances of the case. The Court considered the conditional amendments proposed by auxiliary requests 1 to 12, as narrowed by the defendant, to be reasonable. The claimant had argued that auxiliary requests 1-12 should also be dismissed as the requests were narrowed down two days too late following an Order from the Court. However, the Court used its discretion under r. 9.2 RoP to admit auxiliary requests 1-12 given that the defendant had acted to streamline the hearing to the benefit of both parties and in any case, the two day delay was over a weekend and did not cause substantial harm to the claimant. However, auxiliary requests 1-10 were found to also claim subject matter that extended beyond the scope of the application as filed, and auxiliary requests 11 and 12 were unclear and therefore unallowable.
Notwithstanding these findings on the auxiliary requests, the Court was then required to consider the patent as granted and, pursuant to Art. 65 (3) UPCA, evaluate whether the grounds for revocation affected the patent only in part. The Court found that the grounds for revocation affected EP 115 as granted in its entirety, with all of Claims 2-7 in combination with Claim 1 extending beyond the scope of the earlier applications as filed. Finally, the defendant had submitted a further request in the alternative, to maintain the patent in accordance with Claims 2 to 7 in combination with Claim 1 of the auxiliary requests 1-12. First, the Court noted it was not obliged to consider this request, as Art. 65 (3) pertains only to the granted patent, and therefore each combination covered by this additional request must be viewed as a further auxiliary request. Second, the Court considered this request unclear and unallowable, as the specific combinations of claims were undefined and therefore ambiguous, with the number of proposed amendments being unreasonable in number.
AIM v Supponor [UPC_CoA_489/2023 / UPC_CoA_500/2023]
November 2024Parties
Case and decision number
APL_596007/2023, APL_596892/2023, UPC_CoA_489/2023, UPC_CoA_500/2023, ACT_545571/2023 & ACT_551054/2023
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 12 November 2024, the Court of Appeal handed down a decision in the AIM v Supponor case relating to the extent to which a patent proprietor can withdraw an opt-out following national litigation concerning a ‘classical’ European patent (EP).
Art. 83 UPCA provides for a transitional regime lasting at least 7 years. During this period, the “exclusive” jurisdiction of the UPC to hear disputes concerning EPs is shared with the national courts. Art. 83 UPCA was introduced in part in response to concerns of EP holders that their potentially valuable and pre-existing patent rights were to be transferred to a litigation system that they had not signed up to, nor with which they had any previous experience. The transitional regime provides that actions concerning EPs (specifically actions for infringement or revocation) may continue to be brought before the national courts, notwithstanding that the UPC has exclusive competence to determine such actions under Art. 32 UPCA. The transitional regime also contains a provision whereby patentees can opt their patents out of the jurisdiction of the UPC (Art. 83(3)), although only if an action concerning that EP has not already been brought before the UPC. Further, the patentee can also then choose to withdraw said opt-out in the future unless an action has already been brought before a national court (Art. 83(4)).
In this case, AIM had registered an opt-out of the patent in suit on 12 May 2023 during the sunrise period for opting out EPs prior to commencement of the UPC on 1 June 2023. The patentee applied to withdraw this opt-out on 5 July 2023, and on the same day filed an infringement action against Supponor. Supponor contested the effectiveness of the withdrawal of the opt-out, based on proceedings before the German national courts that had been commenced in 2020 and which were still pending before the Bundespatentgericht and Munich Higher Regional Court on the date of withdrawal of the opt-out. At first instance, the Helsinki Local Division of the UPC ruled that the withdrawal of the opt-out was ineffective in light of these earlier national German proceedings and therefore that the UPC did not have competence to hear the action. It was this decision that AIM appealed.
The Court of Appeal ruled in favour of AIM. The Court interpreted the provisions of Art. 83 UPC according to the rules of interpretation laid down in the Vienna Convention (the UPC Agreement being an international agreement entered into outside the EU legal framework). This required the relevant provisions to be read in the context of Art. 83 UPCA as a whole. In the Court’s view, withdrawals of opt-outs under Art. 83(4) are only blocked where the earlier national action was filed on or after 1 June 2023, i.e. from the date on which litigation could have been started in either the national courts or the UPC during the transitional regime. Historic actions started before the commencement of the transitional regime, even if still pending, were not considered to be “actions” for the purposes of Art. 83(4).
In coming to this conclusion, the Court of Appeal also held that the reference to “actions” in Art. 83 UPCA applied to all actions listed in Art. 32 UPCA, not just infringement and revocation actions concerning EPs (and SPCs based on those EPs), notwithstanding the clear limited wording of Art. 83(1). As a result the shared jurisdiction during the transitional regime applies more broadly than expressly provided for in Art. 83(1). This makes sense in relation to e.g. actions for declarations of non-infringement or provisional measures and injunctions relating to EPs. However, the actions in Art. 32 UPCA are broader in scope and include actions in relation to granted unitary patents including some actions that can only be brought in relation to unitary patents. Although it does not seem that it was the intention of the signatories to the UPCA that actions concerning unitary patents would be shared between the UPC and the national courts during the transitional regime, that is one reading of the Court of Appeal’s decision in tying the definition of “action” in Art. 83 UPCA to that in Art. 32.
One additional point of interest is that the judgment of the Court of Appeal, and presumably the submissions of the parties (although these are not public), proceeds on the assumption that the shared parallel jurisdiction under Art. 83 UPCA operates so as to allow actions concerning EPs to be brought before either the UPC or the national courts unless an opt-out has been filed, but following the registration of an opt-out an action can only be brought before the national courts (unless the opt-out is subsequently successfully withdrawn). This coincides with what appears to be the majority view on interpretation of Art. 83. However, the language of Art. 83 UPCA as well as much commentary at the time actually suggests that the UPC would have exclusive jurisdiction during the transitional period for EPs unless an opt-out was filed (this being the language of Art. 83(1)), with the registration of an opt-out having the effect of extending the jurisdiction to national courts without excluding that of the UPC. The Court of Appeal has now implicitly adopted the former interpretation of the provisions, even if the latter position may not have been argued by the parties.
Valeo Electrification v Magna [UPC_CFI_368/2024]
October 2024Parties
Case and decision number
UPC_CFI_368/2024, ACT_39183/2024
Judges
Mélanie Bessaud
Ronny Thomas
Bérénice Thom
On 31 October 2024, the Düsseldorf Local Division granted a preliminary injunction against Magna which permitted the continued supply of allegedly infringing products to one customer.
The dispute between Valeo Electrification and the Magna Group relating to the alleged infringement of Valeo’s patent EP 3 620 604 (the Patent), which concerns an electric rotary machine for a motor vehicle. Magna manufactures and supplies gearboxes to a number of customers, including BMW. Valeo alleged these gearboxes infringed the Patent and sought a PI.
The Court found the application for provisional measures was admissible and the Patent was more likely than not to be valid and infringed. This was sufficient basis for the PI proceedings.
In deciding whether to grant the PI, the Court used its discretion under Art. 62(2) UPCA to weigh the interests of the parties against each other, and found the interests generally lay in favour of granting the PI to Valeo. However, Magna submitted evidence that granting the PI would cause extensive damage to itself and its customer BMW, which would far exceed the damage suffered by Valeo as a result of infringement of the Patent. The evidence included that the challenged embodiments used in BMW vehicles could not be easily replaced by Valeo’s system, switching these components would be a violation of the homologation/type approval of the BMW vehicles, and BMW did not hold the necessary approvals to place vehicles equipped with a Valeo machine on the EU market. There were further concerns that due to the high levels of CO2 emissions resulting from Valeo’s products, BMW would not accept a switch back to Valeo products.
In light of Magna’s submissions, the Court held it was necessary to provide a “very special exemption” and limit the scope of the PI as far as supplies to BMW are concerned, to ensure Magna could fulfil its existing obligations to BMW. This narrowly defined exception took into account the particularities of the automotive industry supply market generally, and the specific harm identified in the present case. Magna was ordered to provide security in return.
Philips v Belkin [APL_51838/2024 / UPC_CoA_549/2024]
October 2024Parties
Case and decision number
APL_51838/2024 / UPC_CoA_549/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 29 October 2024, the Court of Appeal stayed the preliminary injunction that had previously been granted to Philips against Belkin insofar as it related to certain Belkin managing directors. In September 2024, the Munich Local Division (LD) had granted Philips’ application for an injunction against the defendant Belkin companies and certain defendant Belkin directors regarding its patent to wireless inductive power transmission. Belkin appealed and applied inter alia for the appeal to have suspensive effect.
The Court of Appeal accepted Belkin’s application in relation to the injunction against the managing directors. The court held that there had been a manifest error in law. There is no reasonable doubt that company managing directors cannot be held liable as intermediaries (as the LD had done) solely on the basis of being managing directors. A managing director cannot be liable as an intermediary within the meaning of Art. 63 UPCA as, instead, they represent the company. As such, the company cannot be a third party vis-a-vis the managing director.
As to the suspension of the rest of the underlying decision, the Court of Appeal was not convinced that Belkin had been prevented from making statements at the hearing on novelty and inventive step and as such that its fundamental procedural rights to be heard and to a fair trial had been violated. The application for suspension on these points was therefore rejected.
Winnow Solutions v Orbisk [UPC_CFI_327/2024]
October 2024Parties
Case and decision number
UPC_CFI_327/2024, ORD_44108/2024, ACT_36388/2024
Judges
Edger Brinkman
On 14 October 2024, the Hague Local Division granted Winnow's request for Orbisk to provide evidence, ordering Orbisk to provide specific technical documents related to features of the Orbi System that allegedly infringes Winnow's patent (EP 3 198 245 B1, “A system and Method for Monitoring Food Waste”).
The r. 190 RoP request had been filed by Winnow at the outset of the claim. A previous order from the Hague Local Division had rejected Orbisk’s request to extend the term to respond to the r. 190 RoP request to align with its statement of defence (three months after the service of the claim). The Court agreed with Winnow that the r. 190 RoP request must be handled with speed, as it was necessary for any information obtained to be used in its reply to Orbisk’s statement of defence, particularly as the Court would require further time to actually decide on the r. 190 RoP request and, if granted, for confidentiality issues to be addressed. This is in line with the front-loaded nature of the UPC.
In the most recent order, the Court summarised the requirements that must be satisfied for granting requests to produce evidence. These were:
- the requesting party must have presented evidence “reasonably available” to it in support of its claims (including entitlement to the patent and infringement);
- the evidence to which access is requested must be “specified” and lie in control of the other party;
- the other party’s confidential information must be protected; and
- based on the general rules of Art. 41(3) and 42 UPCA, as well as Art. 33 of the Enforcement Directive, any order to produce evidence must satisfy the requirements of proportionality, equity, and fairness.
In this case, the Court considered that a prima facie case of infringement exists based on Winnow’s claim as filed and that a presumption of validity also exists, as the patent was examined and granted by the EPO.
In relation to infringement, the Court noted that Winnow could not be expected to be entirely conclusive in its argumentation and evidence on infringement without the requested evidence, as the requested evidence was pertinent to the infringement of certain claim features, and so necessary for the claim.
The Court also considered that Winnow had supported its claim with publicly available evidence, and that it was credible that the requested evidence lies in the control of Orbisk.
Regarding validity, at this stage of proceedings it was considered inappropriate for the Court to assess validity in depth (as this is a matter for the main proceedings) unless there was a clear cut case of invalidity, which was not the case here.
The Court only partially granted the request in that a subset of documents from the original request were ordered to be produced. However, the decision left open the possibility for Winnow to submit a further r. 190 RoP request if, having reviewed the ordered evidence, it can show that it still reasonably needs more evidence for the infringement claim.
This is an important decision in that it highlights the usefulness of r. 190 RoP requests where publicly available evidence as to infringement has been exhausted. That is, of course, not an unusual circumstance in the field of computer implemented inventions, where evidence for infringement from publicly available sources is limited and the internal operation of devices or software cannot be reverse engineered. Had the request been refused outright it would have suggested that the only appropriate approach for claimants to take to obtain the necessary evidence would have been to request a saisie or “order to preserve evidence”, under Art. 60 UPCA) before filing the action which would clearly be more onerous and arguably expensive for both parties.
10x Genomics v President and Fellows of Harvard College and Vizgen [UPC_CFI_22/2023]
October 2024Parties
Case and decision number
UPC_CFI_22/2023, ORD_No. 49363/2024, ACT_460565/2023
Judges
Sabine Klepsch
On 24 October 2024, the Hamburg Local Division granted an order restricting access to confidential documents in 10x Genomics v President and Fellows of Harvard College and Vizgen, Inc (UPC_CFI_22/2023). The document concerned was a licence agreement entered into by the claimant and the claimant’s application was to restrict access such that it was available only to the defendants’ outside attorneys. The licence had originally been disclosed in US proceedings between the parties and was subject to a protective order. Vizgen sought permission to share the document with one named individual within its organisation.
Protection of confidential documents is provided for under Art. 58 of the UPCA and r. 262A RoP. Furthermore, the Local Division of the Hague has held (in UPC_CFI_239/2023, App. 589842/2023) that the parties can agree on restricted confidentiality clubs in proceedings before the UPC. The claimant argued that such agreement had been entered into, since the parties had agreed before the court in the US that the licence would be open for use in the UPC proceedings on the condition that it would be subject to the same protections as in the US proceedings.
The Judge-Rapporteur, Sabine Klepsch, granted the claimant’s application. They noted that the court does not have to be satisfied that the document does indeed contain trade secrets, there need only be evidence that the existence of a trade secret is predominantly probable. The Judge-Rapporteur also found that the parties had agreed to enter into the restricted confidentiality regime and that this was not undermined by Vizgen’s argument that its application for access to the licence concerned had been filed prior to that agreement. The Judge-Rapporteur also did not consider that the confidentiality of the agreement should be overruled by Vizgen’s “equality of arms” arguments, which were that an individual within the claimant had access to its licence agreement and disclosure of the claimant’s licence should be on the same terms. The Court did not consider that restricting the disclosure of the licence agreement lead to any undue prejudice to Vizgen.
Nanostring v President and Fellows of Harvard College [UPC_CFI_252/2023]
October 2024Parties
Case and decision number
UPC_CFI_252/2023
Judges
Ulrike Voß
András Kupecz
In July 2023, NanoString Technologies Europe Limited (the Claimant) brought an action against the President and Fellows of Harvard College (the Defendant) in the Munich Central Division of the UPC, seeking the revocation of EP 2 794 928 (EP 928) (the UPC Action). In a decision dated 17 October 2024, the Central Division confirmed that it had jurisdiction to hear the revocation action and revoked EP 928 in its entirety with effect in the jurisdictions of Germany, France and the Netherlands.
A request for provisional measures in relation to EP 928 against two NanoString Technologies entities was rejected by the Munich Local Division in October 2023.
Jurisdiction
In July 2022, NanoString Technologies Germany GmbH brought a revocation action against the German national part of EP 928 in the German Federal Patent Court (BPatG). The BPatG revoked the German part of EP 928 in its entirety in May 2024. An appeal to the Bundesgerichtshof is ongoing.
In view of the ongoing German action, the Defendant lodged a Preliminary Objection (PO) challenging the jurisdiction of the UPC and seeking a dismissal or stay of the UPC Action in so far as it concerned the German national part of EP 928 (under Art. 29 and 30 of the Brussels I recast Regulation). The Defendant unconditionally withdrew the PO at the oral hearing and both parties asked the Central Division to accept jurisdiction. Nevertheless, under Union Law the Central Division was required to examine its jurisdiction under Art. 29-32 Brussels I recast Regulation of its own motion.
The Central Division held that Art. 29 (and, by extension, Art. 31) of the Brussels I recast Regulation do not apply in this case because the claimant in the German action, NanoString Technologies Germany GmbH, is not the same legal entity as the Claimant. The fact that both entities belong to the same group of companies and have the same parent company is insufficient to conclude that their interests are identical and indissociable. No evidence was submitted to suggest that a judgment delivered against one of the entities would have the force of res judicata against the other. This decision is consistent with the approach of the CJEU and the UPC Court of Appeal in Mala Technologies/Nokia Technologies.
The Central Division decided not to exercise is discretion under Art. 30 of the Brussels Regulation to stay proceedings where a ‘related action’ is pending before a national court (as was the case here). The Central Division concluded that in light of the specific circumstances of this case (which deviated from the circumstances before the UPC Court of Appeal in Mala Technologies/Nokia Technologies) the interests of the parties and procedural economy outweighed the risk that the Court of Appeal of the UPC and the Bundesgerichtshof proceedings may become pending in parallel. Those circumstances included:
- The parties had unanimously requested the Central Division to issue a decision to obtain legal certainty as soon as possible.
- The UPC Action was already at an advanced stage and therefore the procedural and economical benefits of a stay were limited.
- Proceedings before the Bundesgerichtshof are still at an early stage and no decision can be expected within the next year.
Staying the UPC Action would risk preventing the parties from obtaining a decision with respect to French and Dutch national parts of EP 928.
There is no risk of contradictory or conflicting decisions with respect to at least the BPatG decision since the Central Division reached the same finding on validity (see below).
The Central Division held that it would come to the same conclusion if it were to exercise its discretionary power to stay proceedings under r. 295(m) RoP.
Validity
The Central Division found that claim 1 as granted lacked novelty over a prior art citation called “Göransson”. In reaching its decision the Central Division applied the principles of construction established by the UPC Court of Appeal in NanoString/10x Genomics and VusionGroup/Hanshow (which apply equally to the assessment of validity), relying heavily on the description to interpret a number of claim features.
The Central Division went on to find auxiliary requests 1-8 to be invalid for lack of inventive step. The Central Division considered Göransson to be a ‘realistic’ starting point for the assessment of inventive step since it disclosed all the features of claim 1 as granted and had the same underlying problem as EP 928.
- When addressing obvious next steps from Göransson the Central Division referred to the considerations outlined by the UPC Court of Appeal in NanoString/10x Genomics, in particular:
- whether the skilled person would be motivated (i.e. would have an incentive) to consider and implement the claimed solution as a next step.
- whether the skilled person would have expected any particular difficulties in taking any next steps.
a technical effect or advantage achieved by the claimed subject matter compared to the prior art may be an indication for inventive step, but a feature that is selected arbitrarily from several possibilities cannot generally contribute to inventive step.
The Central Division noted that it had come to the same conclusion as the BPatG on essentially similar grounds. Its decision was also substantially in line with the findings of the UPC Court of Appeal in NanoString/10x Genomics where many similar issues were addressed.
Late filed auxiliary request
Shortly (1.5 months) before the original oral hearing date the Defendant filed a second application to amend seeking a new auxiliary request 2. The Central Division refused to admit this request into the proceedings on the basis that the request could and should have been filed earlier. Citing preamble r. 7 RoP, the Central Division noted that the UPC is a front loaded system and that parties are obliged to set out their full case as early as possible. The Defendant argued that it had filed the request in response to a point of construction in the UPC Court of Appeal decision in NanoString/10x Genomics, and therefore it could not have set out its full case earlier. However, the Central Division found that the Defendant was aware of this issue of construction since at least November 2023 when the Claimant filed its Reply to Defence to Revocation.
Dish v Aylo [UPC_CFI_471/2023]
October 2024Parties
Case and decision number
UPC_CFI_471/2023, ORD_47055/2024, ACT_594191/2023
Judges
Dirk Böttcher
On 20 October 2024, the Mannheim LD refused an Order for information by DISH. DISH had issued proceedings against Aylo for patent infringement relating to internet streaming services.
DISH requested an Order for information on the content delivery networks (CDNs) used to deliver the video files, where the servers were located, whether the files were stored on the CDNs, and how the files were encoded. It argued this information was reasonably required for the legal action. The Court refused to grant the Order, noting that it was not the Courts job to reduce applications to their core. It is therefore important for parties not to make their r. 191 requests too broad in the hope the Court will narrow it to what is reasonably required.
In relation to Art. 67 UPCA, r. 191 RoP, the Court found that an applicant cannot rely on this during ongoing legal proceedings where patent infringement has not been decided, unless there are special circumstances. The purpose of this provision is to identify further infringers in a distribution or supply chain following a finding of infringement. The Court offered no guidance on what could constitute a special circumstance.
R. 191 RoP relates to requests for specified information where it is required for prosecution. It is not for information that a party might need to substantiate a claim or objection.
Assessing disputed facts is a matter for the Court. The Court said that it was not clear at this stage how Aylo will respond to DISH’s allegations so it was not apparent why the information was needed. The requests were also held to be too vague, and DISH had not exhausted all sources of information reasonably available to them.
Seoul Semiconductor v expert e-commerce and expert klein [UPC_CFI_363/2023]
October 2024Parties
Case and decision number
UPC_CFI_363/2023, ACT_579244/2023
Judges
Ronny Thomas
Bérénice Thom
Mojca Mlakar
On 10 October 2024, the Düsseldorf Local Division of the UPC issued a permanent injunction in Seoul Semiconductor v expert e-commerce and expert klein (UPC_CFI_363/2023). The dispute related to patent EP 2926698 “Light Emitting Diode” and alleged infringement by LED lights on smartphones that were marketed by the defendants.
The reasoning in this decision starts with the Local Division confirming the admissibility of both the infringement action and the counterclaim for invalidity. The fact that the counterclaim was brought only by the second defendant did not preclude its admissibility. However, as a result, the first defendant could not raise invalidity arguments. The Local Division explained that defendants must each be dealt with independently, conducting their own proceedings formally and substantively independently of the others, without the respective actions of one defendant causing advantages or disadvantages for the other defendant. However, as an aside, this does not preclude the joint filing of a revocation counterclaim by more than one defendant. As the Court did not separate the proceedings in this case, this had little impact on the outcome, but defendants should be aware of these possible implications of waiving their right to file a counterclaim for invalidity.
In relation to the counterclaim for revocation, the court considered the issues of added matter and inventive step after setting out claim interpretation following the approach outlined in 10x Genomics v. NanoString and confirmed in later cases. The description was used extensively to interpret a number of specific claim features such as “mesa-etched areas”, with the court stating for each of these features that “the skilled person will search in vain in claim 1 for further specifications”.
On the issues of added matter and inventive step, the Court rejected the defendant’s arguments, finding the patent to be valid. In relation to inventive step, the Court referred to a decision from the Munich Local Division (Sanofi v Amgen, UPC_CFI_1/2023) and stated that the assessment of inventive step requires an objective, case-by-case assessment that considers realistic starting points and whether the claimed solution would be an obvious next step for a skilled person.
On the topic of determining realistic starting points, the Court stated that reasons must be given as to why the skilled person would regard a particular part of the prior art as a realistic starting point.
They further stated, again with reference to 10x Genomics v. NanoString, that a starting point is realistic if its teaching would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop a similar product or process to that disclosed in the prior art, i.e. which has a similar basic problem to the claimed invention. The Court reiterated that there could be several realistic starting points and that it was not limited to the most promising one.
On the topic of obvious next steps, the Local Division referred to considerations outlined by the Court of Appeal in 10x Genomics v Nanostring, re-iterating the following factors:
- In general, something is obvious if, the skilled person would be motivated (i.e. would have an incentive) to consider and implement the claimed solution as the next step.
- It may be relevant whether the skilled person would have anticipated particular difficulties in carrying out the next step.
- A technical effect or advantage achieved by the claimed subject-matter compared to the prior art may be an indication of inventive step but a feature arbitrarily selected from several possibilities cannot generally contribute to inventive step.
Factor a) above, relating to motivations, was particularly relevant on the facts, with the Court finding that in relation to a first prior art document that “the skilled person has no reason to look for a solution to reduce possible tension between the two layers and possibly to provide a further (stress-relieving) layer for this purpose. For the design of the metal barrier layer with palladium, he already has a material at his disposal in which such tensions do not occur in the first place” (emphasis added) and in relation to a second, that “… the person skilled in the art has no reason to replace the transparent diode arranged under the reflective cathode contact (150) with a reflective diode” (emphasis added).
On infringement, the Local Division concluded that the marketed products directly infringe the patent in suit. Regarding acts of infringement, with reference to a previous decision from the same division (UPC_CFI_7/2024), the offering and marketing of the LEDs creates a rebuttable presumption that the defendants are using, importing or possessing the products for directly infringing acts. In addition to granting a permanent injunction to prevent these acts, the court also ordered the defendants to provide information and to recall, permanently remove and destroy the infringing products from their distribution channels.
A final point of note relates to costs, the value of the case was €500,000 and the €56,000 ceiling on recoverable costs calculated based on this was applied separately to the infringement action and the counterclaim for revocation. Whilst the upper limit of recoverable costs would therefore have been €112,000, the parties had agreed to a value of €100,000 for recoverable costs at the hearing. Absent any suggestion otherwise from the parties, the Local Division divided this equally at €50,000 between the two actions. Each defendant therefore had to pay half (€25,000) of the infringement action costs, with the second defendant being liable for the €50,000 costs of the rejected counterclaim for invalidity.
The Court also discussed whether it was appropriate to the provision of security. Whether this is necessary if there is a justified and real concern that a claim for damages might not be realised should the decision be reversed. This must be assessed on a case by case basis, considering factors such as the financial situation of the plaintiff. The defendant must justify the need for security and, if it is raised, the plaintiff must justify its financial situation and explain why enforcing its right without security outweighs the defendant’s interests. Here no security was not justified and it was noted it would have been necessary to specifically demonstrate the potential damages if a party is seeking a security payment equal to 10 times the amount in dispute.
Ericsson v ASUS [UPC_CFI_317/2024]
October 2024Parties
Case and decision number
UPC_CFI_317/2024, ACT_35572/2024
Judges
Samuel Granata
Petri Rinkinen
Rute Lopes
On 15 October 2024, the Lisbon Local Division (LD) handed down its decision in proceedings concerning Telefonaktiebolaget LM Ericsson’s (Ericsson) EP 2 819 131 B1 (EP 131), which relates to voltage controlled oscillators used in laptops and notebook computers. Ericsson applied for provisional measures, including a preliminary injunction, against AsusTek Computer Inc (AsusTek), Digital River Ireland Ltd (Digital River) and Arvato Netherlands B.V. (Arvarto) (together, the Defendants), alleging infringement of EP 131 by sales of laptops and notebooks containing either the Intel Wi-Fi 6E AX211 Module or the Intel Wi-Fi 6 AX011 Module.
The Defendants objected to the application, arguing that the LD lacked competence to hear the claim, non-infringement of EP 131, invalidity of EP 131, and unreasonable delay and lack of urgency on behalf of Ericsson in bringing the proceedings.
Jurisdiction and Competence
The Defendants alleged that the LD had no competence to hear the case on 2 grounds. First, regarding AsusTek and Digital River, it was argued that there was no competence because the claim to infringement of EP 131 was not made out, The Defendants did not challenge the territorial connection element. The LD disagreed with this approach, noting that the allegation that no acts of infringement were committed is a question for the defence based on the merits and is irrelevant to the question of territorial competence.
Secondly, regarding Arvarto, it was postulated that Art. 33(1)(a) UPCA does not relate to intermediaries. The LD also rejected this argument and stated that Art. 33(1)(a) UPCA applies regardless of whether the defendant is an infringer or an intermediary. The provision requires an objective link to the place of actual or threatened infringement and the quality of the accused entity is irrelevant. Further, a solution whereby an action against an intermediary is required to be lodged in a different Local Division would be contrary to the UPC’s principles of efficiency, economy of means, legal certainty, avoidance of the risk of irreconcilable decisions and dispersal of proceedings.
Preliminary Measures
Regarding the application for preliminary measures, the LD noted that the applicant is required to provide reasonable evidence to satisfy the Court with a sufficient degree of certainty (i.e. that it is at least more likely than not) that the applicant is entitled to initiate proceedings, that the patent is valid, and that its rights are being infringed (or will be imminently infringed). The application must also show that the urgency requirement is met. If the preliminary injunction proceedings are inter partes, the burden of proving that the patent is invalid lies with the defendant.
The requirement for urgency is derived from the specific and exceptional nature of provisional measures. The Court must be convinced of the urgency, balancing it against the impact on the rights of the defence. The requirement for urgency is related to the need for early and prompt protection to avoid further damage resulting from delays. In order to fulfil the urgency requirement, the applicant is expected to be diligent in seeking a remedy against the alleged infringer, having gathered all necessary evidence, from the moment the infringement began or from the time the applicant became aware of said infringement. Where an applicant is negligent in seeking timely protection, the Court can take this lack of diligence into account and conclude that there was no genuine interest in promptly enforcing its right. In such cases, provision legal protection would be inappropriate.
In this case, Ericsson failed to provide evidence to refute the Defendants’ claim that it would have been aware of the allegedly infringing components much earlier than the date of its test purchase in May 2024. In particular, the Defendants relied on: (i) the fact that the alleged infringement began in 2019 in respect of AX201 and 2021 in respect of AX211; (ii) that Ericsson initiated ITC proceedings against Lenovo in the US in respect of the same components in October 2023; and (iii) Ericsson and AsusTek had been actively engaged in SEP licensing negotiations since 2018 so it was reasonable to expect it to be paying special attention to the Defendants’ products on the European market. As Ericsson proffered no evidence on the exact date it had become aware of the alleged infringement, the burden of proving urgency and due diligence in initiating proceedings was not satisfied and the request for provisional measures must be dismissed.
Although the criteria for assessing a request for preliminary measures are cumulative (meaning the finding on urgency was sufficient to dismiss the request), the LD decided to further address the issues of validity and infringement. The LD concluded that EP 131 was prima facie more likely to be valid than not in the face of arguments of added subject matter, lack of novelty and lack of inventive step. The Court did note that had it concluded that the patent was invalid, the exemplary auxiliary request would have been inadmissible at this stage in the proceedings where it is incompatible with the nature of provisional measures. Further, EP 131 was more likely than not to be infringed on the basis of the cited evidence put forward by the parties. The Court noted that the inclusion of images from the product of a competitor of the Defendant without explanation was misleading and could potentially be considered a misrepresentation under Art. 48(6) UPCA and r. 284 RoP. However, it did not do so in this case as there were no material differences.
NEC Corporation v TCL [UPC_CFI_153/2024]
October 2024Parties
Case and decision number
UPC_CFI_153/2024, ORD_46842/2024, ACT_595922/2023
Judges
Daniel Voß
On 2 October 2024, the Munich Local Division ruled on an application made by Access Advance LLC (AA) pursuant to r. 313 of RoP to intervene in infringement and invalidity proceedings in support of NEC Corporation, the patent proprietor and Claimant (UPC_CFI_153/2024). NEC has contributed the patent in suit to a pool of HEVC standard essential patents. AA is the administrator of that pool. As administrator, AA is entitled to conduct licence negotiations with implementers of the HEVC standard, to enter into licence agreements for the patents included in the pool, to collect royalties, and to distribute the royalty income to the pool members.
The Defendants, TCL, objected to the application to intervene on the basis, inter alia, that (i) AA has no legal interest in the proceedings, and (ii) allowing the intervention would not prevent a violation of Art. 101 TFEU since AA and the Claimant could exchange confidential information about their respective licence negotiations with the Defendants.
The Court explained that a legal interest within the meaning of r. 313(1) RoP means a direct and present interest in the grant by the Court of the Order or Decision as sought by the party whom the prospective intervener wishes to support, and not a mere interest in relation to the pleas in law put forward, e.g. by reason of being in a similar situation to one of the parties. The Court considered that such a direct legal interest had been established in this case by AA because if the Court finds the patent to be valid and infringed, AA could assert this against the Defendants, demand a licence agreement and collect royalties Moreover, without intervention, AA’s legal position could be compromised with respect to NEC and the other pool members as to whether it decides to retain the patent in the pool (which NEC would advocate) or remove it as being invalid (which would benefit the other members of the pool).
The Court also rejected the Defendants’ arguments relating to Art. 101 TFEU, finding that allowing the intervention does not increase the risk of anti-competitive conduct. The Court considered that it was unobjectionable if AA or the Claimant obtained information about the other party’s licence negotiations with the Defendants, since the mere receipt of information does not constitute a concerted practice and could happen whether or not the intervention was permitted, nor does it affect trade between member states. The Court also considered that there were serious doubts as to whether AA and the Claimant are competitors in the market of patent licensing because AA derives its legal status solely from the Claimant.
Finally, the Court held that as a party to the proceedings AA must be treated in accordance with r. 315(4) RoP and be allowed to access the court file. However, as the Court had already classified certain information as confidential and established a restricted confidentiality club on the Claimant’s side, AA could not be granted unlimited access to the information. To promote the progress of proceedings the Court decided not to grant access to information relating to the bilateral licence discussions between the Claimant and the Defendants. The Court granted access to the other categories of confidential information on a restricted basis pursuant to r. 262a ROP.
Insulet v EOFLOW [UPC_CFI_380/2024]
October 2024Parties
Case and decision number
UPC_CFI_380/2024, ORD_52068/2024
Judges
Andrea Postiglione
Anna-Lena Klein
Insulet commenced parallel applications for provisional measures for patent infringement against EOFLOW in the Milan Central Division, and against its exclusive distributor Menarini in the Milan Local Division. Menarini filed an application to intervene in the Central Division case between Insulet and EOFLOW on the basis that the decision would affect its contractual relationship with EOFLOW as well as its customers. Having already denied a request for a Connection Joinder, the Central Division denied this request on the basis that Menarini's legal interest was already protected by way of defence in the parallel proceedings before the UPC Milan Local Division.
In its 1 October decision, the Court noted that intervention in interim injunction proceedings is only available in exceptional cases and that Menarini should not be given the opportunity to present its case to two different UPC Courts. On a separate procedural point, the Court held that an application to intervene may be filed in hard copy (rather than electronically, as required by Art. 44 UPCA, r. 4.1 RoP) as it is not possible for an intervener to open a workflow in the CMS.
Ortovox v Mammut [UPC_CoA_182/2024]
October 2024Parties
Case and decision number
APL_21143/2024, UPC_CoA_182/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 25 September 2024, the Court of Appeal upheld the Düsseldorf Local Division’s decision to grant a preliminary injunction (PI) in Ortovox v Mammut (UPC_CoA_182/2024). The dispute relates to an Ortovox patent protecting a transceiver device for avalanche search and rescue and began as a PI granted against Mammut ex parte, was upheld by the Düsseldorf Local Division in an inter partes review, and has now once again been upheld by the Court of Appeal.
This marks the first occasion that a granted PI has been upheld by the UPC Court of Appeal.
The main action (infringement and revocation) proceedings continue at the Düsseldorf Local division, with a hearing scheduled for 26 November 2024 (case ID: ACT_2379/2024 UPC_CFI_16/2024).
The main substance of the decision relates to claim interpretation, the Court of Appeal once again emphasising their own test, first set out in 10x Genomics v Nanostring and later reaffirmed in VusionGroup v Hanshaw, that the claims are the decisive basis for determining the scope of protection but the description and drawings must also be used to interpret the claims. At first instance, the Düsseldorf Local Division had stated that the file wrapper should generally not be used in claim interpretation. Ortovox had maintained arguments relating to the file wrapper in the appeal proceedings, thereby giving the Court of Appeal an opportunity finally to settle this question. However, the Court of Appeal avoided it: “It is therefore not necessary to clarify the question of whether statements made in the grant procedure are to be used for the interpretation of the patent claims.” Practitioners will therefore have to continue to wait for clarity on this issue from the Court of Appeal, with existing conflicting case law from Local Divisions on the matter.
On novelty, the Court of Appeal considered four prior art documents and found that the independent claims were likely to be novel over each of them. In their reasoning, we continue to see language reminiscent of the EPO’s approach to novelty, with statements regarding a lack of “direct and unambiguous disclosure” of features in the prior art.
On inventive step, there was no mention of the EPO’s problem and solution approach, similar to the 10x Genomics decision from the Court of Appeal and various Local Division main action decisions handed down have seen over the last couple of months. The Court of Appeal did not set out any formulaic test for inventive step, instead taking a more holistic approach, and in so doing, found the patent inventive over all prior art cited.
On the issue of the weighing of interests of the parties (a consideration specific to PIs), the Court of Appeal considered a number of factors. Regarding the assessment of undue delay, they stopped short of settling another conflict present in the UPC Local Divisions of whether there should be a set period of time for a patent proprietor to start a PI action, and, if so, how long (the Munich Local Division has proposed two months whereas the Düsseldorf Local Division has proposed one month). Rather, the Court of Appeal simply stated that any period of delay is “to be measured from the day on which the applicant has or should have had such knowledge of the infringement that he is in a position to make a promising application for interim measures” (i.e. when there is enough evidence of infringement). As the Court considered that this period started on 28 November and the PI application was filed on 1 December, there was no finding of undue delay.
On the topic of irreparable harm, The Court found that irreparable harm is not a necessary condition for the ordering of a PI. The Court stated that Rule 211.3 merely refers to possible damage in the sense that it must be taken into account when weighing up interests if it would occur. The Court added that even ex parte PIs do not necessarily require irreparable damage – the Court can order a PI according to r. 212.1 RoP without first hearing the defendant "in particular" if a delay would probably cause irreparable damage to the applicant.
Edwards v Meril [UPC_CFI_189/2024]
September 2024Parties
Case and decision number
UPC_CFI_8/2023, ORD_36092/2024, ACT_22275/2024
Judges
Paolo Catallozzi
On 23 September 2024, the Paris Central Division reached a decision on a request for access to written evidence and pleadings in parallel proceedings between Meril v Edwards (UPC_CFI_189/2024), this time made jointly by Erik Krahbichler and SWAT Medical AB. Both the Claimants and Defendant again objected to the documents being provided. The Central Division held that the mere fact of operating in the same field as the patent in dispute is not sufficient to establish a specific interest in the case documents, nor was a general interest in investigating the matter. The Central Division therefore found that the protection of the integrity of the ongoing proceedings meant that the access to documents should be refused.
Edwards v Meril [UPC_CFI_8/2023]
September 2024Parties
Case and decision number
UPC_CFI_8/2023, ORD_36465/2024, ACT_459769/2023
Judges
Kai Härmand
On 18 September 2024, the UPC’s Nordic-Baltic Regional Division rejected an application made on behalf of Erik Krahbichler for access to written pleadings and evidence in the Edwards v Meril proceedings (UPC_CFI_8/2023). Mr Krahbichler requested access to all pleadings and evidence as a member of the public, in particular being a board member and investor in a medical device company within the field of cardiac implant technology, SWAT Medical. He submitted he had a direct interest and concern as a competitor regarding the validity of the patent in dispute with regard to a third-party product under development potentially similar to the allegedly infringing products of the defendants. Both the Claimants and Defendant objected to the documents being provided.
The Nordic-Baltic Regional Division held that r. 262 RoP, Art. 45 and Art. 52 UPCA have to be interpreted widely in light of the general principle of openness under EU law. The Regional Division acknowledged that the public generally has an interest in written submissions and evidence being made available, but that this needs to be balanced against the interests of the parties or other affected parties or the general interest of justice or public order.
In this instance, the Regional Division considered that the description of the allegedly infringing patent is already in the public domain and must be sufficiently precise to enable third parties to consider whether said patent is infringed. Therefore the pleadings and the evidence would not assist Mr Krahbichler in this respect. Further, the Regional Division considered that the specific medical field that Mr Krahbichler operates in was not very relevant as the company may change its lines of activity over time. In contrast, the Regional Division held that civil litigation in essence was a private dispute and the integrity of the proceedings was best ensured by allowing the parties to make their arguments, and the Court to consider them, without unnecessary interference from third parties. The Regional Division noted that such an interest in the integrity of the proceedings will usually last until the end of the proceedings where the balance of interests may change. The Regional Division therefore rejected the application at this point in time. However, leave to appeal the decision was granted as the Regional Division considered there to be a general interest in clarifying the correct interpretation of the law.
Philips v Belkin [UPC_CFI_390/2023]
September 2024Parties
Case and decision number
UPC_CFI_390/2023, ACT_583273/2023
Judges
Matthias Zigann
Tobias Pichlmaier
Edger Brinkman
On 13 September 2024, the UPC’s Munich Local Division (Munich LD) handed down its decision issuing an injunction against, among others, certain company directors of an infringing party in litigation between Philips and Belkin (UPC_CFI_390/2023).
The patent in suit, EP 2 867 997 (EP 997), titled “Wireless inductive power transmission”, concerns technology for the wireless charging of electronic devices. In an earlier action, the Düsseldorf Regional Court dismissed an action relating to the same patent holding it to not be infringed by Belkin’s product (a subsequent appeal to the Düsseldorf Higher Regional Court was dismissed on procedural grounds). A separate action to revoke EP 997 was dismissed by the Federal Patent Court in July 2024 although this decision is not final.
On 14 June 2023, Philips brought a parallel UPC action alleging that Belkin’s devices designed for inductive power transmission infringe EP 997. Belkin sought to argue that the UPC proceedings were not admissible due to the parallel nullity action pending in Germany. By the time of the Munich LD’s decision, the first instance decision of the Federal Patent Court had been handed down. The Munich LD recognised that a reason for a stay on proceedings existed, in theory, if the judgment of the Federal Patent Court were to be appealed to the Federal Court of Justice. However, the Munich LD, in denying the stay, pointed towards the requirements of r. 295(a) UPCA which states that a court may stay proceedings before a national authority where a decision in such proceedings (including subsequent appeal proceedings) may be expected to be given ‘rapidly’. The Munich LD noted that a decision of the appellate Court was not to be expected in the short term; therefore the application for stay was refused. The Munich LD further noted that the German proceedings only concerned the German designation of the EP 997. The Munich LD emphasised that UPC decisions on the legal status of a European patent apply to the territory of all contracting Member States for which the patent has effect.
Following the substantive hearing, the Munich LD held that EP 997 was valid and infringed, dismissing the revocation counterclaims by Belkin. The Court then moved to consider the appropriate remedy, in this instance, an injunction.
The Court held that an infringer is anyone who uses a patent contrary to Art. 25 and 26 UPCA without the consent of the patent proprietor. The Munich LD in adhering to the primacy of EU law referred to, and relied on, European trade mark case law to support its definition of ‘use’. In this action, of the six defendants; three were Belkin legal entities but there were also three natural persons named as Defendants: the managing director of the German subsidiary and two directors of the British subsidiary. The Court referred to the decision by the CJEU in the trade mark case of Christian Louboutin/Amazon Europe Core Sàrl et al (C-148/21, C-184/21). In this case, the Grand Chamber stated that the expression ‘using’ involves active behaviour and direct or indirect control of the act constituting the use. The CJEU identified the offering of infringing goods and their placing on the market as the type of behaviours characterising active use. Accordingly, in the view of the Munich LD, an ‘infringer’, within the meaning of Art. 25 and 36 UPCA, is anyone who actively carries out the acts of use in question (this includes any legal persons).
With regard to the three natural person defendants (i.e. the three directors), the Court held that they could also be held liable for participation in the infringement, despite no evidence being before the Court on how the directors participated in the patent infringing acts. Instead, the Court referred to Art. 63(1) UPCA, and the concept of ‘intermediary’, to support its conclusion. The Court cited the CJEU decision in Tommy Hilfiger Licensing LLC and Others v Delta Center a. s., (C-494/15) which held that an infringer “…offers a service which is likely to be used by another person to infringe one or more intellectual property rights, without it being necessary for him to have a special relationship with that person or those persons.". The Court held that it is not necessary for the intermediary to be the infringer. It is enough that the intermediary merely offers a service that is used for infringement and thereby creates a precondition for the infringer to be able to carry out their infringing act. A natural person who acts as managing director (or director) of a company that commits acts of use that infringe a patent can be considered an intermediary within the meaning of Art. 63 UPCA.
The Court held that the three legal entities were responsible for the disputed acts of use and the three natural persons were also liable for infringement by way of acting as intermediaries. An injunction was awarded against all six defendants.
Nokia v Mala [UPC_CoA_227/2024][APL_26889/2024]
September 2024Parties
Case and decision number
UPC_CoA_227/2024, APL_26889/2024
Judges
Klaus Grabinski
Peter Blok
Emanuela Germano
On 17 September 2024, the Court of Appeal of the UPC granted a stay pending conclusion of parallel German nullity proceedings in a dispute between Nokia and Mala. In April 2021, Nokia Solutions filed a revocation action in Germany against Mala’s patent, EP 2 044 709 (the Patent). Notably, at present the Patent only has effect in Germany, but previously was in force in other UPC jurisdictions. The German Federal Patent Court dismissed the German revocation action on 18 July 2023, upholding the patent in its entirety. Nokia Solutions filed an appeal against this decision on 15 January 2024 and the appeal is still pending. In the meantime, Nokia Technology (another company within the Nokia group) filed an action for revocation of the patent on 15 December 2023 at the Paris Central Division of the UPC. In light of the ongoing German appeal proceedings, Mala lodged a preliminary objection in the revocation action in the UPC asking the court to declare itself not competent and requested a stay until a final decision had been issued in the German proceedings. The Paris Central Division rejected the preliminary objection and Mala’s requests.
The Court of Appeal considered the correction interpretation of Art. 71c(2) of the Brussels I recast Regulation in this case, and therefore the applicability of Art. 29 to 32 of the Brussels I recast Regulation. Art. 71c(2) states that “Articles 29 to 32 of the regulation shall apply where, during the transitional period referred to in Article 83 of the UPC Agreement, proceedings are brought in the Unified Patent Court and in a court of a Member State party to the UPC Agreement.”. Mala argued that Art. 29 to 32 are applicable pursuant to Art. 71c(2); the express intention of the regulation is to avoid parallel decisions of a national court and the UPC. There is no reason why national proceedings that were initiated before the transitional period should be dealt with differently to national proceedings brought after 1 June 2023. Conversely, Nokia contended that the provision only applies to proceedings actually initiated during the transitional period. At first instance, the Paris Central Division had agreed with Nokia. In contrast, the Court of Appeal noted that the aim of Art. 29 to 32 is to minimise the possibility of parallel proceedings and avoiding conflicting decisions and therefore govern cases of lis pendens (confirmed by the wording of the heading of s. 9 of the Regulation). Therefore, the terms “during” and “are brought” used in Art. 71c(2) must be interpreted as covering a case in which proceedings have been brought before a national court and are still pending during the transitional period, even if the proceedings were initiated prior to the transitional period. Art. 29 to 32 were therefore applicable in this case.
Art. 29 of the Brussels I recast Regulation applies where proceedings involving the same cause of action and between the same parties are brought before different courts, in order to prevent parallel proceedings and conflicting decisions. In this case, the requirements of Art. 29 were not met, as the parties in the parallel proceedings were not identical (i.e. Nokia Solutions is not the same legal entity as Nokia Technology and their interests are not indissociable). Similarly, Art. 31 did not apply in this case, and the UPC did not need to decline jurisdiction. In regard to Mala’s request for a stay of the proceedings pursuant to Art. 30, the Court of Appeal first confirmed that such request for a stay is to be regarded as a preliminary objection within the meaning of r. 19 RoP. Under Art. 30, the UPC may stay proceedings where a related action is pending in a national court. In this regard, the Court of Appeal considered that (i) the cause of action in the sets of proceedings was almost identical, (ii) the parties two both sets of proceedings were closely related (with Nokia Technology and Nokia Solutions being part of the same group, and (iii) the German revocation action is at a more advanced stage than the UPC proceedings. In relation to Nokia Technology’s submission that the patent had been in force in a number of UPC jurisdictions previously did not change the assessment, although the Court of Appeal did not comment on whether the UPC has competence in respect of those lapsed parts of the patent at issue in light of Art. 3(c) UPCA. In this case, Nokia had not presented any interest in a rapid decision on validity in regard to these parts of the patent, and so this did not outweigh the interests of procedural efficiency and coordination within the EU. Finally, the Court of Appeal noted that there was no need to refer either the question on the interpretation of the regulations discussed to the CJEU in this case.
The Court of Appeal therefore partially overturned the first instance judgment. The Paris Central Division was correct to declare itself competent and reject Mala’s request to decline jurisdiction, however; Mala’s request to stay the UPC proceedings pending the German revocation action must be granted.
SodaStream v Aarke [UPC_CFI_373/2023]
September 2024Parties
Case and decision number
UPC_CFI_373/2023, App_47922/2024, ACT_580849/2023
Judges
András Kupecz
Ronny Thomas
Bérénice Thom
In a recent decision published on 6 September 2024, the Düsseldorf Local Division gave guidance on factors to be considered when ordering a security for costs order.
The decision was in relation to the proceedings brought by SodaStream against Aarke AB (Aarke). In its Statement of Defence, Aarke requested the Court to order that SodaStream provide adequate security for the costs. It suggested an amount of EUR 400,000 based on the decision of the Administrative Committee on the ceiling for recoverable costs here.
In August 2024, the Judge-Rapporteur held that an order for security of costs was not necessary as SodaStream, as a member of the PepsiCo group, would have no financial issues in meeting any costs order and there was no likelihood of unenforceability.
Following an application for review, Aarke raised concerns with enforcing a UPC decision against SodaStream, which is based in Israel, arguing it could take many years and was not something that had been done before. However, the order of the Judge-Rapporteur was upheld. The Court held that the factors to be considered when awarding an order for security for costs include the financial position of a party “that may give rise to a legitimate and real concern that a possible cost order might not be recoverable” and the likelihood that a UPC decision may not (or, if so, in an unduly burdensome way) be enforceable. The Court noted that the fact that it may take a long time to enforce a UPC judgment in Israel was not sufficient grounds to order security.
Aarke were granted leave to appeal the decision.
Novartis v Genentech [UPC_CFI_166/2024]
September 2024Parties
Case and decision number
UPC_CFI_166/2024, ORD_50564/2024, ACT_18551/2024
Judges
Ronny Thomas
Bérénice Thom
Alima Zana
On 6 September 2024, the Düsseldorf Local Division handed down its decision in two linked actions where a preliminary injunction had been requested (ORD_50564/2024 and ORD_50565/2024 - Novartis & Genentech v Celltrion Inc & oths). The Court held that Celltrion's conduct did not yet constitute an imminent infringement. As a result, the applications were rejected.
Novartis v Genentech [UPC_CFI_165/2024]
September 2024Parties
Case and decision number
UPC_CFI_165/2024, ORD_50564/2024, ACT_18492/2024
Judges
Ronny Thomas
Bérénice Thom
Alima Zana
On 6 September 2024, the Düsseldorf Local Division handed down its decision in two linked actions where a preliminary injunction had been requested (ORD_50564/2024 and ORD_50565/2024 - Novartis & Genentech v Celltrion Inc & oths). The Court held that Celltrion's conduct did not yet constitute an imminent infringement. As a result, the applications were rejected.
Dish & Sling v Aylo [UPC_CoA_188/2024][APL_21943/2024]
September 2024Parties
Case and decision number
UPC_CoA_188/2024, APL_21943/2024
Judges
Klaus Grabinski
Peter Blok
On 3 September 2024, the Court of Appeal (Klaus Grabinski Presiding) issued its decision (UPC_CoA_188/2024) in DISH & SLING v Aylo relating to DISH’s patent EP 2 479 680, which relates to a method for presenting rate-adaptive streaming media via the internet.
DISH and its exclusive licensee SLING (together, DISH) brought an infringement action against Aylo in the Mannheim Local Division of the UPC. Aylo launched a preliminary objection, on the grounds that: (i) the UPC lacked jurisdiction; (ii) the Mannheim Local Division was not the competent court; and (iii) the action should be dismissed as it was manifestly bound to fail.
At first instance, the Local Division rejected Aylo’s objection, holding that the UPC has international jurisdiction pursuant to Art. 31 UPCA and Art. 71b(1) of the Brussels I Recast Regulation. The alleged indirect infringement concerned the offer and supply of video files and/or media players required for streaming to customers in Germany. The Local Division also held that Aylo’s arguments that the action was manifestly unfounded were not grounds for a preliminary objection under r. 19.1 RoP, and that they should instead be assessed in the final decision on the merits. Aylo appealed the decision.
In its decision, the Court of Appeal held that the Brussels I Recast Regulation must be interpreted to mean that the UPC has international jurisdiction in an infringement action where: (i) the European patent in suit is in force in at least one Contracting Member State; and (ii) the alleged damage may occur in that particular Contracting Member State. For alleged damage caused via the internet, the likelihood of such damage may arise from the possibility of obtaining products and/or using services from an internet site accessible from that Contracting Member State.
The fact that Aylo offered and supplied video files and media players to internet users in Germany was therefore sufficient to establish the jurisdiction of the UPC. This would be the case even if the alleged infringer’s servers were located outside the territory of any Contracting Member State where the patent in suit was in force. The Court of Appeal therefore rejected Aylo’s appeal, finding that the UPC did have jurisdiction.
The fact that actual or threatened infringement may occur in Germany also led the Court to conclude that the Mannheim Local Division was a competent Court. Finally, the Court of Appeal upheld the local division’s conclusion that the list of preliminary objections under r. 19.1 RoP was to be regarded as exhaustive, and concluded that application of r. 19 to 21 RoP therefore cannot be extended to other defences, such as abusive procedural conduct and manifest lack of foundation.
Avago v Tesla [UPC_CFI_52/2023]
August 2024Parties
Case and decision number
UPC_CFI_52/2023
Judges
Tatyana Zhilova
Matthias Zigann
Tobias Pichlmaier
On 30 June 2024, the Munich Local Division (Dr Matthias Zigann presiding) handed down its decision in Avago v Tesla. The dispute related to Avago’s patent EP 1 838 002, which related to a “hybrid” radio frequency transmitter that aimed to combine the advantages of “Cartesian-based” and “polar-based” transmitters known in the art. At the time of judgment, the patent was only in force in Germany.
Avago claimed that the patent was infringed by the interior radar installed in Tesla’s vehicles. The Court referred to the standard set out by the Court of Appeal in 10x Genomics & Harvard v Nanostring (UPC_CoA_335/2023) in determining the claim scope of the patent in suit, noting that:
i. In accordance withArticle 69 of the EPC, the patent claim is not only the starting point, but also the decisive basis for determining the scope of protection of the European patent;
ii. The description and the drawings must always betaken into account as explanatory aids for the interpretation of the patent claim;
iii. The patent claim is to be interpreted from the perspective of the person skilled in the art;
iv. Appropriate protection for the patent proprietor should be combined with sufficient legal certainty for third parties; and
v. The principles for interpretation apply equally to the assessment of infringement and validity of a European Patent.
The Court found the patent to be anticipated by a single piece of prior art, the figures in which were found to comprise a unitary disclosure. Avago’s auxiliary request was also held to be anticipated by the same piece of prior art. Since the patent was found to be invalid, the Court declined to make any findings on infringement.
Hand Held Products v Scandit [UPC_CFI_74/2024]
August 2024Parties
Case and decision number
UPC_CFI_74/2024, ORD_46277/2024, ACT_9216/2024
Judges
András Kupecz
Matthias Zigann
Tobias Pichlmaier
On 27 August 2024, the Munich Local Division awarded a preliminary injunction (PI) in an action brought by Hand Held Products against Scandit for patent infringement of EP3866051 (“Mobile computer configured to read multiple decodable indicia”) in relation to Scandit’s 'Data Capture SDK' software (UPC_CFI_74/2024). The Court held that Scandit's software development kit (SDK) more likely than not indirectly infringes Hand Held Products' patent, as it enables customers to create software that utilizes the patented technology. This is the first PI awarded by a UPC Local Division on the basis of indirect infringement. The Court also ordered Hand Held Products to provide a security deposit of €500,000 to cover potential damages to Scandit if the injunction is later revoked at final determination.
Direct or Indirect Infringement
In making this finding, the Court addressed the distinction between direct and indirect patent infringement, stating that direct infringement requires a more concrete and certain expectation of patent infringement by end users.
The patent in question contains both apparatus and method claims; however, the accused product is a software development kit. In practice, the SDK has to be incorporated into the operating software of a device with scanning capabilities in order to form an infringing apparatus, or for the claimed method to be formed. To many patent practitioners, this would appear to be a standard case of indirect, or contributory infringement, rather than a direct infringement on the patent. However, Hand Held Products argued, with reference to national case law, that in certain situations direct patent infringement can be found in instances such as this, where the infringer utilises the actions of its customer in the sense of an “extended workbench” and so it would be inequitable to hold the infringer liable only for an indirect patent infringement.
The Court considered this and first noted that the danger must be taken into account that this could blur the boundaries between the legal consequences of direct and indirect patent infringement. The Court found that liability for direct patent infringement can only be assumed in such cases if a specifically outlined completion of the patented device is to be expected with certainty. This is unproblematic, for example, if a kit for assembly into a complete device is supplied by the customer including assembly instructions and the complete device does not function if it is assembled differently. However, in this case, such a situation did not arise because of the large number of different programming options and possibilities for assembling the hardware components available to the customer. Due to these possibilities, the formation of an infringing device (and performing of an infringing method) was not sufficiently certain for a finding of likely direct infringement.
In relation to likely indirect infringement, the Court summarised the legal test with reference to Art. 26 (1) EPC (which is mirrored in Art. 26 UPCA):
“A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from supplying or offering to supply, within the territory of the Contracting Member States in which that patent has effect, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect.” (emphasis added)
The Court considered that the SDK is a means which relates to an essential element of the invention because through its use, customers are able to create a software program which makes literal use of the technical teaching of the claimed invention. The fact that the Scandit does not provide any product images, databases with product images or reference tables with the SDK did not contradict this, as these are not essential for the invention. Rather, what is essential is the ability of the software to juxtapose certain decoded characters with certain product images in a certain way. By means of the SDK, the customer is able to write such software.
In finding that Scandit also had the necessary knowledge for indirect infringement, the Court referenced videos and documentation published by the Scandit showing that the SDK is offered to customers for use in the claimed invention. This is because it must be assumed that the supplied party will regularly use the means in the manner suggested to them in advertising messages, instructions for use and other documents of the supplier. Scandit had not argued that the situation in the present case was any different.
The question of the double territorial requirement for indirect infringement ((i) supply of means in country A and (ii) putting invention into effect in country A) was not addressed by the Court. Presumably because the position appears to be clear on the facts, as Scandit offers the SDK in member states including Germany and France and the invention is also put into effect in those territories.
Injunction: Relative or Absolute Prohibition
Following the finding of likely indirect infringement, and an analysis of validity which found the patent more likely to be valid than not, the Court then considered what the nature of the preliminary injunction should be. In particular, the Court noted that in the case of an injunction to prevent indirect/contributory patent infringement, it must always be considered whether a relative prohibition or an absolute prohibition should be issued in view of the possibilities remaining for the patent infringer to offer or supply the essential means for other, non-infringing purposes. An injunction in the form of an absolute prohibition prevents the sale of the means essential in any form that is suitable for use in the invention, whereas a relative prohibition allows the sale of the means essential (despite still being suitable for use in the invention) provided other conditions are satisfied (e.g. a warning/instruction to the customer not to use the means essential to implement the invention). In doing so the Court stated that it must be considered whether the risk of direct patent infringement by the customers of the indirect patent infringer can be sufficiently averted by a relative prohibition, for example on the basis of warnings placed on the essential means as they are sold, and conversely, whether and with what effort it appears possible to redesign the means in such a way that it is no longer suitable for use in accordance with the patent (and so could then continue to be sold in a non-infringing manner, in keeping with the absolute prohibition on infringement).
In this case, it was undisputed that it is possible for Scandit to remove the disputed function from the program library it distributes and from the corresponding advertising statements by means of an update. This would not render the SDK unusable, and it would continue to provide a large number of non-infringing functionalities. Furthermore, the Court noted that it is much more difficult to control the behaviour of a large number of customers, especially since the software developed with the SDK will mostly be used within the customers' internal operations. Taking these circumstances into account, the Court considered an absolute injunction to be justified in the present case as the amendment of the SDK is possible and, in view of the problems described above, also justified to control the lawful conduct of the customers.
Security for costs
Under r. 211(5) RoP, the Court may order the provision of adequate security to cover potential damages to a Defendant if the preliminary injunction is later revoked at final determination. This was first considered by the same Local Division in 10x Genomics v Nanostring (UPC_CFI 2/2023) and it was found that security is unnecessary where if no particular difficulties are to be expected in connection with the enforcement of any title for damages, both in view of the applicant's economic situation and in view of the enforcement law in the applicant's home state.
In this case, Scandit argued that (unlike the 10x Genomics case) proceedings for the recognition and enforcement in the United States of America of a foreign damages award would result in considerable legal costs which, even if successful, would not have to be reimbursed by the debtor. Hand Held Products did not comment on this and so this submission was taken to be undisputed. The Court found that since full compensation must be ensured, such non-refundable legal costs must be taken into account if they are significant. This led to the Court exercising its discretion to order the provision of security, set at €500,000.
Ericsson v ASUS [UPC_CFI_317/2024]
August 2024Parties
Case and decision number
UPC_CFI_317/2024
Judges
Samuel Granata
Petri Rinkinen
Rute Lopes
On 16 August 2024, the Lisbon Local Division in preliminary injunction proceedings issued an Order in respect of an application by Telefonaktiebolaget LM Ericsson (Applicant) against (1) ASUSTek Computer Inc.; (2) Arvarato Netherlands B.V.; and (3) Digital River Ireland Ltd. (Defendants) for compliance with r. 13.1(h) of the Rules of Procedure (RoP)(UPC_CFI_317/2024).
R. 13.1(h)RoP requires that parties provide, in their Statement of Claim, information (where applicable) regarding prior or pending proceedings before the UPC, the EPO and any other court or authority relating to the patent at issue.
The Applicant had originally stated in its application for a preliminary injunction that there were no such parallel proceedings, but then a month later applied to update this with information relating to proceedings concerning the same patent in certain European countries. The Defendants responded, requesting an order that the Applicant comply with r. 13.1(h) RoP within 14 days and provide copies of: (i) all prior art relied upon in all proceedings referenced, together with (ii) pleadings; (iii) statements of case; and (iv) expert reports from these proceedings. The Defendants argued that such an order was necessary as non-compliance could harm the Defendants’ defence in the current proceedings, e.g. if prior invalidity proceedings referred to an anticipating prior disclosure.
Dismissing the Defendant’s requests, the panel explained that the purpose of r.13 is to enable the Registry to check certain details of the claim. The specific purpose of r. 13.1(h) RoP is to limit the risk of contradictory decisions and lis pendens situations by allowing the Registry to understand the existence and relevance of prior or pending proceedings relating to the patent before the case is attributed to a panel. In the case of ex parte proceedings, the more onerous requirements of r. 206.4 RoP apply, which require the provision of information in respect any pending proceedings and/or any unsuccessful attempts in the past to obtain provisional measures in respect of the patent. In accordance with r. 16.2 RoP, the Registry is required to check whether the requirements of r. 13 have been complied with, but is under no obligation to verify that the information provided is correct.
The panel held that compliance with r. 13.1(h) RoP had been rightly checked by the Registry and that the Applicant had acted reasonably in supplying the missing information, even if later during the written phase and on its own initiative. The panel noted that the Defendants had provided no legal basis for their request for the provision of the additional documents and therefore the application should be dismissed. Unlike r. 13.1(f) and (j) RoP, r. 13.1(h) does not provide any legal grounds for requesting additional documents such as evidence or annexes. Further, compliance with such a request would have been very burdensome, especially in the context of urgent preliminary injunction proceedings.
Leave to appeal was granted.
Abbott v Sibio [UPC_CoA_388/2024][APL_39884/2024]
August 2024Parties
Case and decision number
UPC_CoA_388/2024, APL_39884/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 19 June 2024, the Local Division of the Hague handed down two preliminary injunction decisions in parallel cases concerning the same parties, Abbott Diabetes Care Inc. (Abbott) and Sibio Technology Limited (Sibio).
In the proceedings with case no. UPC_CFI_130/2024 the Hague Local Division considered that Abbott’s request for a preliminary injunction (PI) extended to Ireland. This was on the basis of the statement in Abbott’s application that “the Patent is valid and in force in the Contracting Member States of Germany, France, The Netherlands and also Ireland”. The Hague Local Division noted that Ireland had signed the Agreement on a Unified Patent Court (UPCA), and despite not yet ratifying the UPCA, was therefore a Contracting Member State. Sibio did not challenge this point, leading the Court to decide that it did have competence to grant a PI extending to Ireland.
This was in contrast to the proceedings with case no. UPC_CFI_131/2024 (between the same parties), in which Sibio did challenge the Court’s competence to grant a PI extending to Ireland and Abbott responded stating that it did not intend to include Ireland in its request.
Sibio filed an appeal against the order in UPC_CFI_130/2024, requesting that the impugned order be set aside and that Abbott’s request for provisional measures be rejected. This was accompanied by an application for suspensive effect of the PI pursuant to r. 223 RoP.
Applying Art. 74(1) of the UPCA, the Court of Appeal noted that an appeal has no suspensive effect unless it decides otherwise at the motivated request of one of the parties. Such a request may only be granted if the circumstances justify an exception to this rule, for example in circumstances where the order is manifestly erroneous or if the enforcement of the order would make the appeal devoid of purpose.
The Court of Appeal agreed that, insofar as the impugned PI order extends to the territory of Ireland, this would be manifestly erroneous. A country will only become a Contracting Member State once it has signed and ratified the UPCA, meaning that Ireland could not be considered to be covered by the text of Abbott’s request for a preliminary injunction. The Hague Local Division therefore awarded more than was requested, contrary to Art. 76 UPCA. The fact that Sibio did not contest the competence of the Court does not alter this interpretation, as Sibio was not expected to anticipate the Court’s erroneous interpretation. The Court of Appeal did not therefore adjudicate on the question of whether the UPC could grant provisional measures covering Ireland (or any other EU Member State that has not signed and ratified the UPCA) if such relief has been expressly requested by the applicant.
The Court of Appeal ordered the grant of suspensive effect insofar as the impugned order extends to the territory of Ireland but refused to grant suspensive effect insofar as the impugned order does not extend to the territory of Ireland.
Swarco v Strabag [UPC_CFI_33/2024]
August 2024Parties
Case and decision number
UPC_CFI_33/2024, APP_36807/2024
Judges
Walter Schober
On 12 August 2024, the Vienna Local Division denied a third party’s request for access to documents in UPC_CFI_33/2024, prioritising the protection of ongoing proceedings and personal data under Art. 45 UPCA over transparency. The applicant was a competitor of the claimant, and its products were alleged to infringe the Slovenian part of the claimant’s European Patent. Due to a similarity between the applicant’s products and the defendant in these UPC proceedings, it argued it had a direct interest in access to information relating to the validity of the patent in suit.
The Court held that, unlike decisions and orders, written pleadings and evidence are protected by GDPR and can only be viewed upon a reasoned request. The Court deemed there to be a higher threshold for access to documents prior to a decision being reached in proceedings. In this situation, the applicant must have a legal interest in the information that requires access in order to protect their interests. However, the request for access may fail due to the balancing of interests under data protection law and also due to the protection of the integrity of the proceedings if the protected confidentiality interests are to be considered more important than such research by the applicant. In this case, the Court held that the applicant did not need to access the statement of claim to assess whether its product fulfilled the features of the patent in suit, and that the applicant did not assert a legal interest in the access to documents. Therefore, its application was denied.
This decision can be seen as a further instance of the Local Divisions of the UPC being influenced by their national traditions.
10x Genomics v NanoString [UPC_CoA_335/2024]
August 2024Parties
Case and decision number
UPC_CoA_335/2024, App_22399/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 6 August 2024, the Court of Appeal issued its judgment in relation to 10x Genomics’ application for a retrial of proceedings in 10x Genomics v NanoString (UPC_CoA_335/2024). 10x Genomics contested the Order of the Court of Appeal on 26 February 2024 on the basis of serious procedural errors, based on an alleged fundamental violation of the right to be heard in the proceedings. The Court of First Instance issued an Order in the preliminary injunction proceedings that Nanostring must refrain from any infringement of EP 4108782 (EP 782). Nanostring appealed against this and the Court of Appeal set aside the Order on 26 February 2024. On 24 April 2024, 10x Genomics filed a motion to reopen the proceedings.
10x Genomics argued that there had been a violation of the principle of a fair trial because the Court of Appeal had ignored the basic procedural requirements regarding the burden of presentation and proof. It argued that although the Court of Appeal relied on its own expertise and a party expert opinion, the expertise of individual members of the panel is not evidence provided for by the RoP. In doing so, 10x Genomics contended that the Court of Appeal had based its decision on facts which were neither submitted by the parties nor introduced into the proceedings by order of the court. 10x Genomics contended that this constituted a fundamental violation of Art. 76(2) UPCA. Further, it argued that the Court of Appeal had deviated from the basic requirements of the RoP for the provision and collection of evidence in its decision-making and disregarded the mandatory rules on the burden of presentation and proof. They submitted that this also constituted a violation of the principle of a fair trial (Art. 6 of ECHR). 10x Genomics further submitted that the Court of Appeal had inappropriately made an assessment of costs as neither the UPCA nor the RoP contain a legal basis for making a ruling on costs in summary proceedings. As the question of costs in summary proceedings had never been addressed by the Court of Appeal, nor had it been discussed by the parties in the written pleadings, there was a violation of Art. 6 ECHR. Nanostring argued that there was no violation of any regulations on the burden of proof and the gathering of evidence. Further, the costs award made by the Court of Appeal was not objectionable and was in accordance with r.242.1 RoP.
In reacting its decision, the Court of Appeal examined whether the requirements laid down in Art. 81(1) UPCA and r. 245 - r. 249 RoP were met. It ruled that the application was not admissible as the contested order did not suffer from a fundamental procedural error. The essence of 10x Genomics' request for a retrial was that the phrase "In the judgement of the court with technical expertise" in the Court of Appeal's Order should be understood to mean that the Court of Appeal used the personal opinion of one (or more) of its judges as evidence of Nanostring's submission, for which Nanostring did not provide sufficient supporting evidence. The Court of Appeal disagreed with 10x Genomics’ position for the following reasons: (i) the opinion was based on an incorrect understanding of the phrase "In the judgement of the court with technical expertise". The Court had expressed that it was particularly equipped and qualified to assess the arguments and evidence presented in a technically complex matter; (ii) the Court of Appeal based its assessment of inventive step not only on the submissions of 10x Genomics and Nanostring, but also on the description of EP 782 and the evidence adduced by Nanostring; and (iii) the Court of Appeal did not base its reasoning on the personal opinion of one or more of its judges.
In relation to costs, it noted that r. 118.5 RoP does not preclude the Court of Appeal from deciding on the apportionment of costs in summary proceedings. Therefore, there was a legal basis for the costs award. The fact that 10x Genomics refrained from using the opportunity provided to make submissions on a costs order in its defence and at the hearing did not oblige the Court of Appeal to discuss the issue with the parties. Furthermore, the fact that it was not discussed in the absence of a response from 10x Genomics did not mean that 10x Genomics was not afforded a fair hearing.
10x Genomics v Curio [UPC_CFI_140/2024]
August 2024Parties
Case and decision number
UPC_CFI_140/2024, App_41690/2024, ACT_15774/2024
Judges
Ronny Thomas
On 8 August 2024, the Düsseldorf Local Division issued a confidentiality order in 10x Genomics v Curio (UPC_CFI_140/2024). The parties had already faced each other in summary proceedings in which the Court had issued orders on 11 March 2024 and 22 March 2024 to protect the Curio’s confidential information. Curio then filed a statement of defence in the main proceedings and also sought the protection of information that it considers to be confidential. According to Curio, the Court of Appeal had held that a r. 262A RoP order continues to apply after the proceedings unless the order states otherwise. Curio submitted that the same reasoning applies to the infringement action. In the alternative, it asked that if the Court considered that a new r. 262A RoP order is necessary, a confidentiality order access to the statement of defence and exhibits to the same conditions as in the Order of the Düsseldorf Local Division of 11 March 2024 should be granted.
10X Genomics argued that the legal framework does not require that the access of 10x Genomics’ legal representatives and their internal assistants to be limited to a certain number of named persons. It sought access to the Statement of Defence and exhibits to be extended to the following persons: (i) its legal representatives, insofar as they are authorised UPC representatives, and their internal support staff, if they are actively working on the proceedings; and (ii) three natural persons working for the Claimant. Alternatively, the circle of persons already granted access to the Statement of Defence and exhibits, should be extended to 5 additional individuals. Curio did not respond to 10x Genomics’ submissions.
The Court ruled that Art. 9(1) and (2)(a) of Directive (EU) 2016/943 provides that access to documents submitted by the parties or third parties containing trade secrets may be restricted to a limited number of persons. The protection of confidential information is provided for in Art. 58 UPCA and implemented in r. 262A RoP. Further, the confidentiality orders issued in the previous summary proceedings do not preclude an order under r. 262A RoP in the main proceedings. It also noted that the orders already made in the summary proceedings continue to have effect even after the conclusion of those proceedings. It considered that the group of persons granted access must be selected in such a way that the party affected by the preliminary order for the protection of confidential information is fully able to work and is in a position to comment on the merits of each point raised by the opposing party, taking into account the confidentiality interests of the opposing party. Therefore, in summary proceedings, it may be necessary to widen the circle of persons who have access to confidential information from the outset and even before the confidentiality order is issued.
The Court stated that it is important to strike a balance in summary proceedings between the applicant’s interest in expediting the proceedings, the right to be heard and the confidentiality interest of the party applying for the order. This may lead to a different confidentiality order from that which would have to be made in the main proceedings. It considered that the Mannheim Local Division rightly pointed out that there is normally no reason to limit the access of claimant’s representatives to a certain number, or even to UPC representatives, and their internal assistants, who must also be named. Where the Düsseldorf Local Division had ordered such a restriction in the past, this was due to the specific situation in the summary proceedings. However, the teachings of r. 262A.6 RoP cannot be ignored. Therefore, the number of representatives granted access to the confidential information should not be "unlimited" or "indeterminable" and effective protection of confidential information requires clear accountability.
The Court ruled that access to the statement of defence and exhibits should be restricted to (i) two legal representatives and their teams, actively involved in these proceedings, including other attorneys-at-law, patent attorneys and support staff, and (ii) a list of employees of 10x Genomics. The Order also outlines the obligations of members of the confidentiality club, including restrictions on use and disclosure, and the potential for penalties in case of breaches.
Amycel v Spyra Szymon Spyra [UPC_CFI_195/2024]
July 2024Parties
Case and decision number
UPC_CFI_195/2024, ACT_23163/2024
Judges
Rute Lopes
Edger Brinkman
Margot Kokke
On 31 July 2024, the Local Division of The Hague issued a preliminary injunction in the Netherlands, Germany, France and Italy in Amycel v Spyra Szymon Spyra (UPC_CFI_195/2024), a dispute concerning Amycel’s patent EP 1 993 350 (the Patent). The Patent protects a hybrid strain of Agaricus bisporus mushrooms, which is stated to have improved commercial characteristics. Amycel alleged the Defendant infringed the Patent with a mushroom strain sold under the name "Cayene".
The Court rejected the Defendant’s argument that the application for provisional measures should be dismissed for unreasonable delay under r. 211.4 RoP on the basis that Amycel had learnt of the allegedly infringing acts in late July 2023 but did not file its application until 3 May 2024. It held that unreasonable delay only exists if the applicant behaved in “such a negligent and hesitant manner” in requesting provisional measures after becoming aware of the infringement that “from an objective perspective, it must be concluded the Applicant is not interested in promptly enforcing its rights”. Amycel provided a timeline of the steps it took in the intervening period, including conducting genetic testing and analysis of the Cayene strain and preparing reports to file with its application, as well as entering into negotiations with the Defendant to reach an out-of-court settlement. The Court deemed this explanation plausible and found that Amycel acted diligently as a prudent patentee to anticipate the defences raised by the Defendant by performing experiments before starting proceedings.
The Court also dismissed the Defendant’s invalidity arguments. In particular, the Defendant argued the Patent contravened Art. 53(b) EPC, which excludes from patentability “plant or animal varieties”, on the grounds that a mushroom strain should be equated to a plant variety. However, the Court reiterated the exclusions under Art. 53(b) should be interpreted narrowly and therefore the exclusion does not encompass organisms other than plants and animals, such as mushrooms which belong to the fungi kingdom.
On infringement, the parties agreed the Patent should be interpreted in such a way that it is sufficient to establish that Cayene and the claimed strain, BR06, are “genetically identical”, however the parties disagreed as to the level of identity that must be established to meet this threshold. The Court held that the claim should not be interpreted as requiring 100% identity (as the Defendant had argued) supported by evidence from Amycel that even duplicates/replicates of the same strain do not show 100% identity due to inevitable sequencing errors in DNA analysis. A lower threshold of 99.88% was therefore applied. Based on the genetic analysis reports, the Court found on the balance of probabilities that the strains were genetically identical and the Patent was infringed by the sale or offering of Cayene spawn.
Abbott Diabetes v Dexcom [UPC_CFI_425/2023]
July 2024Parties
Case and decision number
UPC_CFI_425/2023, ORD_36398/2024, ACT_587074/2023
Judges
Camille Lignieres
On 31 July 2024, the Paris Local Division of the UPC rejected a request for information under r. 191 RoP in the case of Abbott v Dexcom (UPC_CFI_425/2023).
Abbott Diabetes Care (Abbott) commenced patent infringement proceedings against three Dexcom companies in November 2023. On 17 June 2024, Abbott filed a request for details of Dexcom’s entire product distribution chains, including those in a number of additional contracting member states. Dexcom requested that the Court reject the request or, in the alternative, delay the communication of information until any finding by the Paris Local Division that the patent is valid and infringed, limit the information to the specific Dexcom defendants and order that it should be provided under a confidentiality regime.
Consistent with a previous decision of the Düsseldorf Local Division (UPC_CFI_7/2023), the Court held that a request under r. 191 may be admissible either at the final stage of proceedings or in ongoing proceedings, even before a decision on infringement should this be necessary for the investigation of the case at that stage. Abbott’s request was therefore admissible. However, the Court stressed that a request for information will only be granted where it is reasonably necessary for the purpose of advancing the applicant’s case in accordance with Art. 67(1) UPCA and r. 191.
Dismissing Abbott’s request, the Court noted that Abbott chose to sue only certain Dexcom distributors despite being aware of the existence of distributors acting in other contracting member states where the patent is in force. Abbott’s request, covering distributors it had deliberately chosen not to sue, was therefore disproportionate and not sufficiently related to the present case.
VusionGroup SA v Hanshow Technology Co. Ltd. [UPC CoA 1/2024]
July 2024Parties
Case and decision number
UPC CoA 1/2024, App_36394/2024
Judges
Peter Blok
Following an appeal between VusionGroup SA and a group of Hanshow companies, the Court of Appeal of the UPC (UPC CoA 1/2024, App 36394/2024) ordered that an application by the respondent for costs of an unsuccessful appeal is to be submitted to the Court of First Instance, even if the application for costs relates to the costs of appeal proceedings. The RoP do not provide for a special procedure for the determination of costs following an order or decision of the Court of Appeal, and the general procedure under r. 150 RoP therefore applies according to the Court. The Court also held that Hanshow was required to make an application that specifically relates to the cost of the appeal proceedings, and cannot add this to its pending application for an order for costs in relation to the first instance proceedings. Given the uncertainty prior to issue of this decision, the Court referred the application made to it to the Judge-Rapporteur of the Court of First Instance with the instruction that the date of filing of the application for costs with the Court of Appeal can be considered to be the date of filing with the Court of First Instance, in light of the deadline for filing an application of costs in R. 151 RoP (i.e. one month from service of the decision for which a costs decision is requested).
CANÈ S.p.A. v France Développement Électronique [UPC_CFI_419/2023]
July 2024Parties
Case and decision number
UPC_CFI_419/2023
Judges
Carine Gillet
In CANÈ S.p.A. v France Développement Électronique before the Paris Local Division (UPC 419/2023), the UPC confirmed a settlement agreement between the parties under r. 365 RoP, accepting the parties’ proposal for a reduced value of the dispute compared to that initially declared, with corresponding cost consequences. As the claim was concluded under r. 365 RoP, the Court published a (redacted) copy of the settlement agreement.
10x Genomics v NanoString [UPC 75/2023] [UPC 80/2023]
July 2024Parties
Case and decision number
UPC 75/2023 and UPC 80/2023
Judges
Ulrike Voß
András Kupecz
In Astellas Institute for Regenerative Medicine v Healios K.K and others (UPC 75/2023; UPC 80/2023), the Munich Central Division of the Unified Patent Court (UPC) set out that a case can be disposed of in the following ways after settlement:
- if requested by the parties, the Court can confirm the settlement by decision under r. 365 Rules of Procedure (RoP) (requiring disclosure of the terms of the settlement to the Court);
- the Claimant can apply to withdraw the action (with the consent of the Defendant) in accordance with r. 265 RoP, at which point the Court can declare the proceedings closed; or
- as in this case, the parties can request that the Court dispose of the actions as they have become devoid of purpose under r. 360 RoP.
The Court held that the Claimant was entitled to partial reimbursement of the Court fees when disposing of a case under r. 360 RoP after settlement. The decision confirms that a mechanism exists to reclaim partial fees following settlement without having to disclose the terms of that settlement, notwithstanding the language of r. 370.9 RoP which appears literally to be limited to withdrawal of actions pursuant to r. 365 RoP.
Progress Maschinen & Automation v AWM [APL_20002/2024] [UPC_CoA_177/202]
July 2024Parties
Case and decision number
APL_20002/2024 / UPC_CoA_177/202
Judges
Klaus Grabinski
Peter Blok
Emanuela Germano
On 23 July 2024, the UPC Court of Appeal (with Klaus Grabinski, President of the Court of Appeal, presiding) handed down its order (UPC_CoA_177/2024) in Progress Maschinen & Automation v AWM and Schnell concerning preservation of evidence and inspection of premises.
Progress Maschinen (Progress) had its applications for preserving evidence and inspection of premises granted by the Milan Local Division in September 2023 (ORD_576298/2023 and ORD_576304/2023). In October 2023, the experts appointed by the Court carried out the orders and lodged their reports and the evidence gathered in sealed envelopes. In February 2024, Progress filed a request for access to the expert reports, which it then supplemented in March 2024. In April 2024, the Milan Local Division dismissed Progress’ application for disclosure of the expert reports on the grounds that it had not been made until February 2024, four months after the execution of the orders. The Local Division also ordered the revocation of the provisional measures on the basis that Progress had not brought proceedings within the time limit provided by Art. 60(8) UPCA. Progress appealed this decision.
The Court of Appeal held:
- That inherent in Progress’ application for preservation of evidence and inspection of premises was a request to access the evidence obtained from such measures, including the expert reports, which should have been decided by the Milan Local Division without requiring a further application by Progress. This is because the legitimate purpose of the interim measures is the use of the evidence in initiating or substantiating proceedings on the merits.
- The granting of an application for preservation of evidence and inspection of premises is not an unconditional order to disclose all evidence to the Applicant – the Respondent’s right to confidentiality must be taken into account, potentially by the Court granting access only to certain of the Applicant's UPC representatives under terms of non-disclosure. The Respondent should have an opportunity to make submissions to the Court on the confidentiality of the information collected.
- When granting the applications for preservation of evidence or inspection of premises, a Court should specify a time period that starts to run from the date of the disclosure of the evidence to the Applicant or the date of the Court’s final decision not to grant the Applicant access to the evidence.
The Court of Appeal therefore overturned the Milan Local Division’s order and remitted the case back to the lower court to decide on the scope of disclosure.
Sanofi v Amgen [UPC_1/2023]
July 2024Parties
Case and decision number
UPC_1/2023
Judges
Ulrike Voß
András Kupecz
On 16 July 2024, the Munich Central Division published its decision in an action for revocation by a Sanofi group of companies (Sanofi) of EP 3 666 797 B1 (EP 797), held by Amgen, Inc. (Amgen) (UPC_1/2023). Amgen had brought an infringement action against Sanofi and Regeneron Pharmaceuticals Inc. (Regeneron) relating to the same patent in the Munich Local Division of the UPC (UPC_14/2023). Regeneron counterclaimed for revocation, which was referred to the Central Division with the agreement of the parties. Following referral, the Central Division ordered that the revocation action and counterclaim be dealt with jointly.
EP 797 was granted on 17 May 2023. Alongside the UPC challenge, the patent has also been opposed at the EPO by Sanofi-Aventis Deutschland (on 10 November 2023) and Regeneron Pharmaceuticals Inc. (on 19 February 2024).
EP 797 relates to antibodies (or antibody fragments) that bind to proprotein convertase subtilisin kexin type 9 (PCKS9) and methods of using and making them.
Claim 1 of EP 797 as granted claimed “a monoclonal antibody or an antigen-binding fragment thereof for use in treating or preventing hypercholesterolemia or an atherosclerotic disease related to elevated serum cholesterol levels; or for use in reducing the risk of a recurrent cardiovascular event related to elevated serum cholesterol levels; wherein the monoclonal antibody or the antigen-binding fragment thereof binds to the catalytic domain of a PCSK9 protein of the amino acid sequence of SEQ ID NO: 1, and prevents or reduces the binding of PCSK9 to LDLR.”
Sanofi and Regeneron argued before the Central Division that EP 797 should be revoked for adding subject-matter beyond the content of the application as filed, lack of sufficiency, lack of novelty and/or lack of inventive step. Amgen put forward various defences, which included an application to amend EP 797.
Claim interpretation
The parties differed in their approach to claim construction and so the Central Division considered it necessary to interpret claim 1. Having set out the legal framework on interpretation of claims laid down in 10x Genomics and Harvard v Nanostring (UPC_CoA_335/2023) (10x Genomics v Nanostring), the Central Division accepted the position of Amgen that claim 1 is not limited to antibodies that bind exclusively (or even predominantly) to an epitope within the catalytic domain. Instead, the claim covers antibodies that bind to the catalytic domain and also to other domains of PCSK9, i.e. the pro or V-domains.
Novelty and Priority
The claimants’ challenge to the novelty of EP 797 relied on two documents that could only form part of the state of the art if EP 797 was not entitled to its claimed priority date. The Central Division rejected the claimants’ arguments on priority, applying the test set out in EPO EBA Case no. G 2/98, that a claimed invention will only be considered the “same invention” for the purpose of claiming priority if “the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole” (emphasis added). This reflects the EPO’s “gold standard” approach that we have seen applied in other areas of validity, including added matter by the Hague Local Division in Abbott v Sibio (UPC_CFI_131/2024) and novelty in DexCom, Inc. v Abbott Laboratories (UPC_CFI_230/2023).
As the priority challenge failed, it followed that the claimants’ novelty challenge also failed.
Inventive Step
Reflecting the approach taken in 10x Genomics v Nanostring, the Central Division took a more holistic approach to assessing inventive step than the strict EPO-style problem-solution approach. The Central Division identified the relevant test as follows:
(i) Identify a realistic starting point; and
(ii) Compare the claimed subject matter and prior art to determine whether it would be obvious for the skilled person to, starting from a realistic prior art disclosure, in view of the underlying problem, arrive at the claimed solution.
The Central Division considered that a starting point will be considered realistic if its teaching would have been of interest to a skilled person who, at the priority date of the patent in issue, was seeking to develop a similar product or method to that disclosed in the prior art and therefore had a similar underlying problem as the claimed invention.
Further, a claimed solution is obvious if, starting from the prior art, the skilled person would be motivated to consider the claimed solution and to implement it as a next step in developing the prior art. The Central Division set out the principle that a technical effect or advantage of a feature of the claimed subject matter may be indicative of inventive step, whereas a feature that results from an arbitrary selection from several possibilities will generally not be. The Central Division also emphasised that hindsight must be avoided.
The Central Division ultimately concluded that EP 797 was invalid for lack of inventive step over the prior art identified by the claimants as the starting point for the assessment, namely Lagace et al. 2006 (Lagace). Amgen sought to argue that a later citation, Graham 2007 was a closer and more realistic starting point. However, it was not disputed that Lagace was a realistic starting point, which the Central Division agreed with. Having concluded that Lagace was a realistic starting point, the Central Division did not consider it necessary to assess whether any other starting point would be “more promising”. The Central Division also noted that there “can be several realistic starting points… [it is] not necessary to identify the “most promising” starting point”.
Lagace included a statement suggesting that “the development of antibodies to block [PCSK9] interaction with the LDLR or inhibitors to block its action in plasma, can be explored for the treatment of hypercholesterolemia”. However, it did not disclose any antibodies that bind to the catalytic domain of PCSK9 and block the interaction between PCSK9 and LDLR which are actually used for the treatment of hypercholesterolemia. The Central Division indicated that these differences must be considered for the assessment of obviousness.
Applying the tests outlined above, the Central Division concluded that using Lagace as a starting point, the skilled person would pursue the route of developing antibodies as suggested in Lagace, thereby arriving at antibodies as defined in the claims of EP 797 without any inventive skill. In reaching its decision, the Central Division considered it relevant that, at the priority date, there was significant commercial interest in PCSK9 as a target for the treatment of hypercholesterolemia; a significant number of pharmaceutical companies were pursuing options to target PCSK9 at the time. Further, the Central Division disregarded the uncertainties Amgen sought to argue would have stood in the way of the skilled person’s arrival at the antibodies claimed in PCSK9, noting that none of these concerns were clearly expressed in the cited prior art. The same reasoning applied to Amgen’s auxiliary requests.
Decision
The Central Division therefore ordered that EP 797 be revoked for lack of inventive step in all of the UPC Contracting States in which it was in force (as per the claimants’ request). Amgen was ordered to pay €1.375 million for the claimants’ legal costs.
MED-EL v Advanced Bionics [UPC_CFI_410/2023]
July 2024Parties
Case and decision number
UPC_CFI_410/2023
Judges
András Kupecz
Peter Tochtermann
Following a string of decisions in the last year from UPC local divisions not to bifurcate infringement and validity proceedings, a decision issued on 10 July 2024 by the Mannheim Local division in MED-EL v Advanced Bionics (UPC_CFI_410/2023) breaks this trend.
The proceedings began when Advanced Bionics AG filed a revocation action at the Paris Central Division on 27 September 2023. In response, the patentee MED-EL filed an infringement action against three defendants (including Advanced Bionics AG) at the Mannheim Local Division on 7 November 2023. The claimant could have filed the infringement action at the Paris Central Division, but this was not obligatory. From the patentee’s perspective, it is easy to envisage the possible advantages of bifurcated proceedings; in particular, potentially different claim interpretations between the validity and infringement proceedings which might reduce the pressure of typical infringement/validity squeezes that patentees face.
Most likely in an effort to avoid this, the defendants filed an application requesting that the Mannheim Local Division refer the infringement proceedings to the Paris Central Division or, in the alternative, to stay the infringement proceedings pending the outcome of the revocation action. In February 2024, the Local Division issued its decision refusing these requests. This refusal is currently under appeal.
Following this, in March 2024, the defendants filed a counterclaim for revocation at the Mannheim Local Division. The counterclaim contained the same attacks as the revocation action filed at the Paris Central Division, with the addition of an insufficiency attack. The patentee filed a request to amend the patent in response to the counterclaim.
In relation to the revocation action at the Paris Central Division, written proceedings were concluded in May 2024 and an oral hearing is scheduled to take place in October 2024.
In accordance with Art. 33(3) of the UPC Agreement (UPCA), the filing of a revocation counterclaim at the Mannheim Local Division whilst the revocation action was pending at the Paris Central Division left the Mannheim Local Division with the following possibilities (after hearing the parties):
(a) proceed with both the action for infringement and the counterclaim for revocation;
(b) refer the counterclaim for revocation to the central division and suspend or proceed with the action for infringement; or
(c) with the agreement of the parties, refer the [whole] case for decision to the central division.
The Court heard the parties on the possibility of (b), referring the counterclaim to the Central Division. Upon receiving the parties’ submissions, the patentee did not object to the referral but the defendants did.
The Local Division acknowledged that, typically, the preference should be not to bifurcate in order to avoid the risk of inconsistent claim interpretation. However, owing to the facts of this case, they concluded that it would be best to refer the counterclaim for revocation and the proposed amendments to the patent to the Central Division. There is no mention of a stay in the Order issued by the Court and we therefore assume that the infringement action must be continuing at the Local Division. The particular facts considered were:
- the invalidity arguments raised in the counterclaim for revocation were almost identical to those in the central revocation action;
- the Central Division revocation action was much closer to completion (with written proceedings closed and an oral hearing scheduled) than the counterclaim for revocation in the Local Division; and
- the risk of inconsistent interpretation exists regardless of whether or not the revocation counterclaim is referred to the Central Division as the central revocation action will not be stayed.
The defendants had noted that referring the counterclaim to the Central Division would lead to a change in the language of proceedings, because the Central Division revocation action is in English and the Local Division proceedings are in German. The Local Division considered this and decided it did not go against the referral because, owing to the substantial overlap in issues between the divisions, translations covering the remaining issues would not require any significant effort or cost from the parties.
The defendants also argued that the central revocation action was “too far advanced“ and would “at least cut off the counterclaimants’ reply”. The Local Division also rejected this, and noted that rather than immediately join the two actions, the Central Division could join the two proceedings at a later date or refrain from joining them altogether to accommodate all rounds of the written procedure; it was noted that, even in this latter scenario there is procedural economy, as both invalidity actions are then (formally) conducted at the Central Division and this does not lead to any significant additional work for the court.
The key takeaway here is that if UPC proceedings start with a Central Division revocation action, a patentee facing a revocation action may be able to obtain bifurcation of corresponding infringement proceedings if they see benefit in this; for example, by delaying the start of an infringement claim in a Local Division until such time that the revocation action is nearer to completion. Defendants trying to avoid this would have to consider some creative approaches, such as raising new grounds of invalidity in the Local Division.
DexCom v Abbott [UPC_CFI_230/2023]
July 2024Parties
Case and decision number
UPC_CFI_230/2023, ACT_546446/2023
Judges
Rute Lopes
Camille Lignieres
Carine Gillet
The UPC handed down its second merits decision on 4 July 2024, with the Paris Local Division issuing a ruling in the matter of DexCom, Inc. v Abbott Laboratories (UPC_CFI_230/2023).
DexCom had brought an infringement action against Abbott Laboratories and nine other Abbott group companies in relation to its patent EP 3 435 866, which concerns technology for remotely monitoring blood glucose levels in diabetes patients. The defendants counterclaimed for revocation of the patent, based on added matter, lack of novelty and lack of inventive step.
DexCom argued that the UPC did not have jurisdiction to hear the defendants’ counterclaim for revocation of the German part of the patent as the scope of the counterclaim should be identical to the scope of the infringement action. In its infringement action, DexCom had requested the exclusion of infringing acts that are the subject of a pending action before the Mannheim Regional Court against defendants 1, 2 and 8 based on the German part of the patent. Defendant 8 has also filed a revocation action in relation to the German part before the German Federal Patent Court.
DexCom’s position was that a counterclaim for revocation from defendants 1, 2 and 8 was not possible under Art. 33(3) of the UPC Agreement (UPCA) and, in relation to defendant 8, the UPC did not have jurisdiction based on Art. 31 UPCA and Art. 71c(2) and Art. 29(3) of Regulation (EU) No 1215/2012 (Brussels Recast). For the remaining defendants, DexCom argued lack of jurisdiction under Art. 31 UPCA and Art. 71c(2) and Art. 30(2) Brussels Recast.
Jurisdiction
The court dealt with jurisdiction as a preliminary issue and found that it had jurisdiction to rule on the entirety of the patent, including the German part.
Concerning the scope of the revocation action, the court held that it should not be limited to the scope of the infringement claim (i.e. excluding the German part) for the following reasons:
- The application for revocation was supported by defendants other than defendants 1, 2 and 8, i.e. not only those defendants who were involved in the parallel national proceedings in Germany. It would be contrary to the principle of a fair trial for the other defendants to be blocked from defending themselves by means of a counterclaim for revocation of the entire European patent, given that they had been sued for infringement in all territories in which the European patent is in force; and
- There is no provision in the UPCA that limits a party bringing a counterclaim to the parts of the patent asserted against it by the claimant in the infringement action, or to limit a revocation action to what is asserted in the main infringement action. The fact that DexCom had excluded certain acts of infringement was therefore irrelevant.
- While there is a general principle that the parties are to define the subject matter of the dispute (reiterated in Art. 76(1) UPCA), thereby allowing the claimant to exclude certain acts of infringement in a UPC action in order to avoid the parallel jurisdiction between the UPC and national courts during the transitional period under Art. 83, this principle cannot restrict a defendant in its challenge to the validity of the European patent being asserted against it.
Concerning the argument that the UPC lacked jurisdiction due to the pending nullity action in Germany, the court held that this was not a case of lis pendens as the parties and subject-matter of the UPC action were not identical to the German proceedings. The revocation action in Germany only concerned the German part of the patent and only involved one of the defendants in the UPC action (defendant 8). As a result, the court did not consider that it was obliged to decline jurisdiction in favour of the German court under Art. 29 Brussels Recast. Instead, the UPC and German actions were “related actions” under Art. 30(2) Brussels Recast, allowing the court the discretion to decide whether to decline jurisdiction or not. Given that the German Federal Patent Court would not issue a final decision until after a decision in the present UPC proceedings (the German oral hearing is scheduled for 29 January 2025), the UPC held that it was neither efficient nor expeditious to decline jurisdiction or to stay proceedings pending the German decision.
The UPC therefore decided to maintain jurisdiction to rule on the validity of the entire patent, including its German part.
Validity
The court also resolved a preliminary issue on interpretation of the patent, confirming that Art. 69 of the European Patent Convention is the basis for claim interpretation and adopting the principles laid down by the Court of Appeal in 10x Genomics and Harvard v Nanostring (UPC_CoA_335/2023), namely that the patent claim is the decisive basis for determining the scope of protection while the description and drawings may be used as explanatory aids for interpretation.
Having construed the claims based on these principles, the court found the patent invalid for lack of inventive step (the patent having survived novelty and added matter attacks), a view which was in agreement with the Preliminary Opinion issued by the German Federal Patent Court on the German part of the patent. This was based on the selection of one of four data transmission protocols (to which the patent did not ascribe any particular or surprising effect) being deemed obvious over the prior art in combination with the CGK.
The court also found that DexCom’s auxiliary requests to amend the patent did not cure the validity issues (the first request was deemed to not involve an inventive step and the second request was found to add subject matter).
Consequently, the patent was revoked in its entirety in all contracting UPC member states, with DexCom’s claims of infringement dismissed given the finding of invalidity. DexCom was also ordered to bear the costs of the proceedings, to be determined in separate proceedings upon request of a party for a cost decision.
Kaldewei v Bette [UPC_CFI_7/2023]
July 2024Parties
Case and decision number
UPC_CFI_7/2023
Judges
András Kupecz
Ronny Thomas
Bérénice Thom
On 3 July 2024, the Düsseldorf Local Division comprising Presiding Judge Thomas, Judge Dr Thom as rapporteur and legally & technically qualified Judge Kupecz granted the first permanent injunction in the UPC in Kaldewei v Bette (UPC_CFI_7/2023). EP 3 375 337 B1 (EP 337) claims sanitary tub device (tub and support arrangement) with various features. Kaldewei alleged direct and indirect infringement of EP337 and in the alternative auxiliary requests by "Bette Floor", "BetteFloor Side" and "Bette Ultra" shower trays; and wished to prevent the distribution and offer of the minimum tub carrier called "Flex". Bette counterclaimed for invalidity, citing lack of novelty and inventive step.
As an initial matter, the Court refused a request for a retrospective extension not the deadline of submission of documents, as it was (1) served too late, after the substantive submission for which the party is requesting the extension; and (2) was so late as to jeopardise the proper preparation of the oral hearing by the international panel.
In reaching its ruling on validity, the Court construed the claim considering the skilled person’s understanding i.e. a qualified engineer with five years of experience in the development and manufacture of sanitary products. It applied a somewhat EPO style analysis, identifying the problem of the patent in suit as “specifying a sanitary tub device which can be easily formed in different sizes and has good functional properties”. It concluded that claim 1 was not inventive over DE 197 10 945 C1 (DE 945), because the difference between DE 945 and claim 1 is the use of rigid plastic foam for certain pieces, the use of which by the skilled person was considered to be routine further development. However, the Court concluded that the auxiliary request was new and inventive over DE 945 (as well as other combinations of citations, although it was not shown that the skilled person should combine those citations), as the solutions provided in the prior art differ in their approach to the patent in suit.
It was undisputed that the alleged infringements made use of the teaching of the patent in suit. However, Bette sought to rely on a prior use defence to the infringement allegations. The Court confirmed that a right of prior use was only relevant if acquired and sufficiently evidenced in each of the contracting member states at issue: there is no European right of prior use. There was insufficient evidence to support prior use in all relevant states in this case. As a result, the Court held that Bette directly and indirectly infringed. In determining that there was contributory infringement, the Court noted that a double territorial connection is required. This means that, on the one hand, the offer and/or delivery must take place in the territory and, on the other hand, the invention must also be used in the territory.
The Court ordered an injunction, including recall and a separate order to permanently remove the infringing products from distribution channels (in a more limited form than requested, to reflect that the infringer must have the actual and legal possibilities to do so), a penalty payment, provisional damages, costs and disclosure of information on the committed acts (volume, value, costs, profits, third party identities etc).
Tridonic v Cupower [UPC_CFI_459/2023]
June 2024Parties
Case and decision number
UPC_CFI_459/2023, ORD_36553/2024, ACT_590302/2023
Judges
Peter Agergaard
Ronny Thomas
Stefan Schilling
On 20 June 2024, the Local Division of the Unified Patent Court in Düsseldorf gave an order (UPC_CFI_459/2023) in the action between Tridonic and CUPOWER. Tridonic brought infringement proceedings against CUPOWER in relation to its patent EP 2011218 B1 which relates to a power factor correction circuit, and CUPOWER counterclaimed for revocation. The language of the proceedings is German.
The decision concerned Art. 33(3) UPCA, which governs the discretion of the local or regional division to bifurcate or hear together proceedings in circumstances where a counterclaim for revocation is brought in the case of an infringement action. R. 37(1) ROP requires the panel to make an order on how to proceed as soon as practicable after closure of the written procedure and having heard the parties, but, if appropriate, such a decision may be made earlier in accordance with r. 37(2) ROP.
Since neither party raised any objections, the issue of how to proceed with Art. 33(3) UPCA could be decided before conclusion of the written procedure. The panel deemed such an early decision to be justified and necessary. Further since some of the panel were only employed on a part-time or case-by-case basis, it was “appropriate for reasons of procedural economy” to obtain the assignment of the technical judge at an early stage in order to be able to take this into account in the scheduling and avoid the risk of delay that might arise if the technical judge were only appointed at a later stage, such as during the interim proceedings.
The Local Division exercised its discretion under Art. 33(3) UPCA to hear the infringement and revocation actions together for reasons of efficacy. The panel deemed it advantageous to hear the infringement and revocation issues based on a uniform interpretation of the claims by the same panel of judges. Such a uniform approach was further justified given the “moderate” complexity of the technology in issue. The panel also requested the assignment of a technically qualified judge to the panel.
This decision is consistent with the expected practice of the UPC to only bifurcate in a minority of cases.
Avago Technologies v Tesla [UPC_CFI_54/2023]
June 2024Parties
Case and decision number
UPC_CFI_54/2023, ORD_28831/2024 in App 27608/2024
Judges
Stefan Schilling
On 4 June 2024, the Hamburg Local Division gave its decision (UPC_CFI_54/2023) in relation to a disclosure application in the ongoing UPC action between Avago and Tesla.
Tesla applied for an order for Avago to provide certain documents relating to the transfer of the patent-in-suit into Avago’s ownership. Tesla argued that there were doubts as to whether the authorisations for the transfer of the patent were valid, and therefore whether Avago had standing to bring their claim. On the other hand, Avago argued that Tesla were concerned with the internal decision-making of Avago’s management, rather than the admissibility of the transaction.
Judge-Rapporteur Stefan Schilling noted that since Avago was registered as the proprietor in the European Patent Register, there was a rebuttable presumption that Avago was indeed the proprietor of the patent. However, Avago had explicitly referred to the requested documents in the annexes of one of their previous briefs. Further, Avago had admitted that certain of the requested documents were relevant to the question of whether there was appropriate authorisation for the transaction. On balance, the Judge held that this was sufficient grounds to order that the referenced documents should be disclosed.
The Judge therefore ordered Avago to submit of three of the four requested documents for inspection within one week of the order.
Abbott v Sibio Technology [UPC_CFI_130/2024]
June 2024Parties
Case and decision number
UPC_CFI_130/2024, ACT_14944/2024
Judges
Petri Rinkinen
Edger Brinkman
Margot Kokke
On 19 June 2024, the Local Division of the Hague handed down two preliminary injunction decisions in parallel cases concerning the same parties. Abbott Diabetes Care Inc. (Abbott) filed both applications for preliminary injunctions on 20 March 2024 against Sibio Technology Limited (Sibio), in relation to infringement of two of its patents: (i) EP 2 713 879 (EP 879), and (ii) EP 3 831 283 (EP 283). In relation to EP 879 (the EP 879 application), the Court granted a preliminary injunction, whereas in relation to EP 283 (the EP 283 application), the Court denied Abbott’s application. Abbott withdrew the opt-outs of both patents from the UPC on 14 March 2024. EP 879 and EP 283 protect a series of Abbott’s continuous glucose monitoring (CGM) devices. At the end of 2023, Sibio entered the European market with its own CGM device, GS1. A protective letter providing non-infringement arguments in relation to EP 879 and the GS1 device had been filed by a Chinese company in the same group as Sibio in September 2023.
In its submissions in the EP 879 application, Abbott stated that EP 879 was valid and in force in the Contracting Member States (CMS) of Germany, France, the Netherlands and also Ireland. Abbott further noted that EP 879 is also in force in the UK. The Court appears to have understood Abbott to have been requesting relief in Ireland, a CMS (albeit not ratified), but not the UK (not a CMS). Notably, Sibio did not challenge the competence of the Court with respect to Ireland (in contrast to the parallel case). The Court therefore concluded, according to Art. 31 UPCA and Art. 26, 35 and 71, 71a and 71b of Brussels Regulation Recast, that it was competent to hear the case. In the EP 283 application, Abbott contended that EP 283 is in force in the CMS states of Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Ireland, Italy, Latvia, Lithuania, Luxembourg, the Netherlands and Sweden. Conversely in this case, Sibio argued that the Court is not competent for Ireland. Abbott then indicated it did not mean to include Ireland, and the Court therefore did not need to decide on its competence with regard to Ireland in the EP 283 application.
Abbott v Sibio Technology [UPC_CFI_131/2024]
June 2024Parties
Case and decision number
UPC_CFI_131/2024, ACT_14945/2024
Judges
Petri Rinkinen
Edger Brinkman
Margot Kokke
On 19 June 2024, the Local Division of the Hague handed down two preliminary injunction decisions in parallel cases concerning the same parties. Abbott Diabetes Care Inc. (Abbott) filed both applications for preliminary injunctions on 20 March 2024 against Sibio Technology Limited (Sibio), in relation to infringement of two of its patents: (i) EP 2 713 879 (EP 879), and (ii) EP 3 831 283 (EP 283). In relation to EP 879 (the EP 879 application), the Court granted a preliminary injunction, whereas in relation to EP 283 (the EP 283 application), the Court denied Abbott’s application. Abbott withdrew the opt-outs of both patents from the UPC on 14 March 2024. EP 879 and EP 283 protect a series of Abbott’s continuous glucose monitoring (CGM) devices. At the end of 2023, Sibio entered the European market with its own CGM device, GS1. A protective letter providing non-infringement arguments in relation to EP 879 and the GS1 device had been filed by a Chinese company in the same group as Sibio in September 2023. In its Objection to the EP 283 application, Sibio disputed that EP 283 was infringed and asserted that EP 283 was invalid, citing added matter, lack of novelty and inventive step arguments.
Further, Sibio contended that the EP 283 application was brought with unreasonable delay and that Abbott lacked sufficient interest in the application. The Court noted that the sufficient degree of certainty that the applicant is entitled to initiate proceedings and that the patent is infringed will be lacking if the Court considers it on the balance of probabilities to be more likely than not that the patent is invalid. The Court conducted a detailed analysis of validity in relation to added matter, finding that, on the balance of probabilities, it is more likely than not that claim 1 (and further dependent claims) of EP 283 will be held to contain added matter relative to the original application as filed. Notably, the Court applied the long-standing case law of the EPO and therefore the “gold-standard” disclosure test, commenting that both parties had relied on this case law and did not indicate whether – and if so how – the Court should apply a different standard. Having come to this conclusion on added matter, the Court did not consider the other issues raised by Sibio. The application for preliminary measures was denied and Abbott was ordered to bear Sibio's reasonable and proportionate costs.
At first instance, the Paris Central Division held that the opt-out filed by Neo USA was invalid as not all proprietors of all national parts had lodged the opt-out application as required by r. 5.1(a) of the RoP/Art. 83(3) UPCA. Whilst acknowledging that the answer to the question of who must file an opt-out is unclear from the ordinary meaning of the wording of Art. 83(3) UPCA, ultimately the CoA agreed with the Paris Central Division and dismissed the appeal. The CoA held the default position in the legislature is that European patents are subject to the jurisdiction of the UPC. Therefore, in view of its meaning and purpose, Art. 83(3) UPCA should be interpreted as meaning that valid opt-out applications must be lodged by or on behalf of all proprietors of all national parts of the patent/patent application. Otherwise proprietors of other parts of the patent/patent application could be deprived from enforcing their rights in the UPC. R. 5.1(a) RoP is therefore in conformity with Art. 83(3) UPCA.
Neo Wireless v Toyota Motor [UPC_CoA_79/2024]
June 2024Parties
Case and decision number
UPC_CoA_79/2024, App_594688/2023, ACT_579176/2023
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 4 June 2024, the Court of Appeal (CoA), led by presiding Judge and Judge-Rapporteur Rian Kalden, handed down its decision in Neo Wireless v Toyota (UPC_CoA_79/2024) confirming that a valid opt-out application must be filed by or on behalf of all proprietors of all “national parts” of a European patent (as defined in the judgment).
Neo Wireless LLC (Neo US) was the owner of the European application EP 3 876 490 (EP 490) for all designated states. The German part of the then pending application was transferred in February 2023 to a different Neo entity; Neo Wireless GmBH & Co KG (Neo DE), the Defendant in these proceedings. In March 2023, Neo US filed an opt-out for EP 490 for “all EPC states”. However, the opt-out application was not filed on behalf of Neo DE, nor was the consent of Neo DE annexed or exhibited to the opt-out application. Further, Neo DE did not itself file an opt-out application with respect to the German part of the application. EP 490 was granted in May 2023.
Toyota brought a revocation action against the German part of EP 490 (held by Neo DE) before the Paris Central Division. Neo DE filed a preliminary objection on the basis that EP 490 had been validly opted-out of the jurisdiction of the UPC. Neo DE submitted that the wording of Art. 83(3) UPC Agreement (UPCA) permits the proprietor of one or more, but not all, national parts of a patent/patent application to lodge an opt-out application for all national parts of such patent/patent application, even those parts it did not own. Neo DE also argued that r. 5.1(a) the Rules of Procedure (RoP) should be ignored, since Art. 83(3) UPCA must take precedence in instances where there is a conflict between the UPCA and the RoP.
At first instance, the Paris Central Division held that the opt-out filed by Neo USA was invalid as not all proprietors of all national parts had lodged the opt-out application as required by r. 5.1(a) of the RoP/Art. 83(3) UPCA. Whilst acknowledging that the answer to the question of who must file an opt-out is unclear from the ordinary meaning of the wording of Art. 83(3) UPCA, ultimately the CoA agreed with the Paris Central Division and dismissed the appeal. The CoA held the default position in the legislature is that European patents are subject to the jurisdiction of the UPC. Therefore, in view of its meaning and purpose, Art. 83(3) UPCA should be interpreted as meaning that valid opt-out applications must be lodged by or on behalf of all proprietors of all national parts of the patent/patent application. Otherwise proprietors of other parts of the patent/patent application could be deprived from enforcing their rights in the UPC. R. 5.1(a) RoP is therefore in conformity with Art. 83(3) UPCA.
Carrier v BITZER Electronics [UPC_CoA_22/2024]
May 2024Parties
Case and decision number
UPC_CoA_22/2024, App_24693/2024, App_21545/2024
Judges
Klaus Grabinski
Peter Blok
On 28 May 2024, the UPC Court of Appeal upheld a decision of the Paris Central Division in Carrier v BITZER not to stay revocation proceedings before the UPC pending parallel opposition proceedings before the EPO concerning the same patent. In line with previous Court of Appeal decisions, this non-technical appeal was adjudicated by a panel of three legally qualified judges without technically qualified judges.
The Appellant, Carrier Corporation (Carrier), had lodged a request pursuant to r. 295(a) of the Rules of Procedure seeking a stay of the UPC revocation proceedings pending the outcome of opposition proceedings before the EPO. Shortly prior to their request to stay the UPC proceedings, Carrier requested acceleration of the EPO opposition proceedings.
R. 295(a) states that "[t]he Court may stay proceedings where it is seized of an action relating to a patent which is also the subject of opposition proceedings or limitation proceedings (including subsequent appeal proceedings) before the European Patent Office or a national authority where a decision in such proceedings may be expected to be given rapidly". When there are accelerated proceedings before the EPO, r. 298 states that "[t]he Court may stay its proceedings in accordance with Rule 295(a) pending the outcome of such request and any subsequent accelerated proceedings".
In their appeal, Carrier argued that "rapidly" in r. 295(a) should denote relatively quick proceedings compared to either the typical pace of opposition proceedings or the expected pace of the UPC proceedings, or both. However, the Court of Appeal determined that, as a general principle, the Court will not stay proceedings. The mere fact that revocation proceedings before the UPC relate to a patent which is also the subject of opposition proceedings before the EPO is not sufficient to allow an exception to this principle.
The Court also stated that decisions in which the UPC and EPO reach different conclusions on the revocation of a European patent are not irreconcilable. The latter decision will prevail, having taken the earlier decision into account, including whether an appeal against a revocation is still possible. The term "rapidly" in r. 295(a) is to be interpreted in light of this principle.
The term "may" in r. 295(a) means that the Court has a discretionary power to stay the proceedings when a rapid decision may be expected from the EPO, which will depend on the balancing of the interests of the parties. Acceleration is relevant to this assessment, but the mere fact that the EPO has granted a request to accelerate opposition proceedings is not sufficient to stay revocation proceedings before the UPC.
In this case, despite the acceleration of EPO opposition proceedings, the fact that the scheduled date for oral proceedings at the EPO was over four months after the scheduled date for the oral hearing in the UPC revocation proceedings led to the Court finding that no rapid decision from the EPO was expected, and no stay was granted.
NJOY v Juul Labs [UPC_CFI_316/2023]
April 2024Parties
Case and decision number
UPC_CFI_316/2023, ORD_587436/2023, ACT_571808/2023
Judges
Maximilian Haedicke
NJOY Netherlands B.V. brought a revocation action against Juul Labs International, Inc. in the Paris Central Division of the UPC, in relation to patent EP 3 430 921 (the Main Action).
Nicoventures Trading Limited (the Applicant) is a party to EPO opposition proceedings regarding the same patent. It submitted a request under r. 262.1 of the UPC Rules of Procedure (RoP), for access to documents, such as pleadings and evidence, lodged on the UPC’s case management system (CMS) and also for further documents submitted to the UPC not yet visible on the CMS.
The Applicant provided the following reasons in support of the request:
- The patent is subject to EPO opposition proceedings, and any argument and evidence at the UPC may influence these proceedings;
- The Claimant’s and the Defendant’s arguments may affect the Applicant’s position in the parallel proceedings, such as regarding claim interpretation or extent of prior art disclosure, and may impact the understanding of the issues being considered by the EPO;
- The Main Action may affect the outcome and the scheduling of the opposition proceedings, as no first instance decision has yet been reached by the EPO; and
- It would be contrary to the principles of natural justice and the harmonisation and effectiveness of the European patent system to deny parties to EPO opposition proceedings access to relevant material in parallel UPC revocation actions without a compelling reason.
It also submitted a supplementary request for documents visible on the CMS which were generated by the court, on the grounds that there is no justification in the RoP that court-generated documents which are not decisions and orders, as covered in r. 262.1(a), should be restricted from wider circulation. It felt either the phrase “lodged at the court” should be taken to include documents generated by the court itself, or the court should use its discretion to make such documents available.
The Defendant to the Main Action objected to the main request as it felt the Applicant had not provided a reasoned request, with r. 262.1(b) only relating to pleadings and evidence that had been lodged and recorded, not those which may be in future. It objected to the supplementary request on the basis it covered documents “generated” by the court, however, as only decisions and orders of the court are included in r. 262.1(a), this indicated an intention not to give public access to other documents. It also asserted that the patent, prosecution history and prior art are already known to the Applicant, and the Applicant could gather information from other sources rather than from documents filed in the case.
The Claimant to the Main Action objected only in relation to future materials not yet on file / known yet, as it felt these should not be made public “by default”, which would be excessively broad, contradicting r. 262.1(b).
Decision
For there to be distribution of materials, the Applicant must make a reasoned request under r. 262.1(b). Then, a balancing of interests is undertaken by the Court as per Art. 45 UPCA, to determine if the materials can be distributed.
The Court felt there had been a reasoned request as the Applicant had stated its position as a party to EPO opposition proceedings, and it was evident that UPC arguments and evidence could influence the outcome of EPO proceedings, especially because as of yet there is no first instance decision by the EPO, so the outcome and the scheduling of such proceedings could be affected.
Ballinno v UEFA & Kinexon [UPC_CFI_151/2024]
May 2024Parties
Case and decision number
UPC_CFI_151/2024, ORD_23557/2024 in APP 23209/2024, ORD_23558/2024 in APP 23216/2024, ORD_23559/2024 in APP 23217/2024
Judges
Samuel Granata
Sabine Klepsch
Stefan Schilling
On 15 May 2024, the Hamburg Local Division handed down its judgment awarding security for costs against the claimant to an infringement action and assessing the value of the action. The defendants (UEFA, Kinexon and Kinexon Sports & Media) applied for an order pursuant to Art. 69.4 UPCA and r. 158.1 of the Rules of Procedure (RoP), seeking security for costs from the claimant Ballinno. In deciding whether to award security, the Court noted the relevant factor to consider for a claimant domiciled within the EU is not the enforcement risk, since the UPC was deemed to be a court of member state for the purposes of the Brussels I regulation and therefore its decisions are enforceable in member states in accordance with Art 82 UPCA, but rather the insolvency risk of the claimant.
The evidence showed that Ballinno had no known assets except the patent in suit. The Court was also concerned that the patent was recently transferred to the claimant after the assignor entered into pre-trial correspondence with the Kinexon defendants about a possible infringement, raising the concern that the purpose of the transfer might be to facilitate litigation without financial risk to Ballinno.
Having determined that an award for security was appropriate, the Court then had to assess an appropriate sum. The Court valued the case at 500,000 EUR, based on the interests of Ballinno especially in a licence fee assessment. The ceiling for recoverable costs set by the Administrative Committee was up to 56,000 EUR. The Court noted that whilst there is no absolute rule that the amount of security awarded has to follow the ceiling for recoverable costs, with regards to the interest of Ballinno, the facts of the present dispute and the nature of the patent in suit, the Court considered 56,000 EUR to be adequate security for the expected costs of all three defendants.
The Court also rejected Ballinno’s contention that a technically qualified judge be allocated to the panel, stating whilst it is possible for technical judges to rule on provisional measures, it was not necessary in this instance.
SES-Imagotag v Hanshow Technology [APL_8/2024/UPC_CoA_1/2024]
May 2024Parties
Case and decision number
APL_8/2024 / UPC_CoA_1/2024, ACT_567009/2023
Judges
Klaus Grabinski
Peter Blok
On 13 May 2024, the UPC Court of Appeal handed down an Order upholding an earlier decision of the Munich Local Division that the preliminary injunction requested by SES-imagotag SA Electronics (recently renamed VusionGroup SA) (SES) against Hanshow Technology Co. and the Hanshow Group (Hanshow) should be refused. In doing so, the Court declined to address the question of whether the file wrapper should be consulted when construing patent claims, which will come as a disappointment to many readers as this aspect of the case was one of the most interesting parts of the first instance decision; the first instance court considered the file wrapper (the original version of the claim) when interpreting the granted claims. The Court of Appeal was chaired by President Klaus Grabinski and consisted of three legally qualified and two technically qualified judges.
SES claimed that Hanshow was infringing its patent EP 3883277 (EP 277) and applied to the UPC on 4 September 2023 for interim measures. EP 277 relates to an electronic labelling system used in retail spaces and the dispute focused on the positioning of a printed circuit board in relation to an antenna and electronic chip. According to the wording of the granted claims, the printed circuit board should be placed “on the back of the housing” and the antenna placed “on or in the housing on the side of the front of the electronic label”. The first instance court looked at the version of the claim originally filed which established a direct link between the chip arranged on the printed circuit board and the antenna such that they were required to be “at a distance” from each other. Hanshow’s allegedly infringing products had a substantial part of the antenna resting on the rear side of the housing. By interpreting the claim in the context of the amendments made during examination, the Court held that the antenna could not be arranged on the front and rear sides of the electronic label at the same time. Therefore, infringement could not be established and no interim measures were granted.
On appeal, SES argued that the Court had incorrectly interpreted the features of the patent claims. In its decision, the Court of Appeal cited the principles set out in 10x and Harvard v Nanostring (UPC_CoA_335/2023 App_576355/2023) for interpreting patent claims in accordance with Art.69 EPC, including the following:
- The patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent.
- The interpretation of a patent claim is not solely dependent on its exact wording in the linguistic sense. Rather, the description and the drawings of must always be consulted as explanatory aids for the interpretation of the patent claim and not only be used to resolve any ambiguities in the patent claim. However, this does not mean that the patent claim merely serves as a guideline.
- The patent claim is to be interpreted from the perspective of the person skilled in the art.
- When applying these principles, appropriate protection for the patent proprietor should be combined with sufficient legal certainty for third parties.
In light of the patent description and the general knowledge of the skilled person, the Court of Appeal came to the conclusion that the Court of First Instance had correctly construed the claims and agreed with its finding that infringement could not be established with a sufficient degree of certainty. The Court held that documents from the examination proceedings before the European Patent Office cited by the parties shed no new light on the interpretation of the patent claims. Therefore, it was not necessary for the Court of Appeal to address the question of whether the grant history should be taken into account when determining the scope of protection of a European patent.
The Court of Appeal found, following the standard for interim relief set out in 10x and Harvard v Nanostring, that there was not a sufficient degree of certainty that Hanshow’s products infringed the patent. As a consequence, SES’s appeal was dismissed and SES were ordered to pay the costs of the appeal proceedings.
10x Genomics v Curio Bioscience [UPC_CFI_463/2023]
April 2024Parties
Case and decision number
UPC_CFI_463/2023, ACT_590953/2023
Judges
András Kupecz
Ronny Thomas
Bérénice Thom
On 30 April 2024, the Düsseldorf Local Division granted a preliminary injunction in favour of 10x Genomics against Curio Bioscience. The decision relates to EP 2 697 391, covering technology for mapping the location of nucleic acids within tissue samples.
The Court's decision rested on several key findings. First, it found 10x Genomics to be the rightful owner of the patent, despite Curio's arguments to the contrary. Second, the Court performed an analysis of the patent's claims and determined that Curio's products likely infringed claim 14. Finally, despite some prior art presented by Curio, the Court found claim 14 likely to be both novel and inventive.
The Court considered the matter to be urgent, as 10x Genomics demonstrated a lack of prior knowledge among relevant “decision-makers” at 10x Genomics about the potentially infringing Curio products even though the application was made over 10 months after the launch of the products in Europe. The competitive nature of the market and the risk of long-term damage to 10x Genomics meant that a preliminary injunction was seen as necessary. Ultimately, the court ruled that the potential damage to 10x Genomics outweighed the potential risks to Curio.
The Court ordered Curio to stop infringing activities and to pay a penalty for any violations. 10x Genomics was required to provide a security deposit. This case is significant, being the third preliminary injunction granted by the Düsseldorf Local Division.
Daedalus Prime v Xiaomi [UPC_CFI_169/2024]
April 2024Parties
Case and decision number
UPC_CFI_169/2024, ORD_20986/2024/, ACT_19012/2024
Judges
Sabine Klepsch
Stefan Schilling
Petri Rinkinen
Daedalus Prime LLC (Daedalus) attempted to serve on two Xiaomi defendants (Defendants 1 and 2), each with registered addresses in China, through another Xiaomi defendant with its registered address in Germany (Defendant 4). Daedalus also attempted to serve a MediaTek defendant (Defendant 5) with a registered address in Taiwan through its German branch office.
R. 271.5(a) of the UPC Rules of Procedure (RoP) provides that service of a statement of claim on a company may occur at any place within the Contracting Member States where the company has a permanent or temporary place of business.
The Court noted that, as it was not argued (nor made out) that Defendants 1, 2 and 5 had established their own permanent or temporary business within the Contracting Member States, service must be effected out of jurisdiction under r. 273 and r. 274 RoP. The Court held that service by an alternate method or at an alternative place under r. 275 RoP was not available until service under r. 274.1(a)(ii) or (iii) had been attempted. Further, it is the Court which has the power to issue service pursuant to r. 275 RoP. The Court also confirmed that the RoP do not provide for the possibility of service being effected at an "establishment" inside the Contracting Member States.
As such, Daedalus’ requests for service on Defendants 1, 2 and 5 were dismissed by the Court of First Instance of the Hamburg Local Division.
Neo Wireless v Toyota Motor [APL_9578/2024/UPC_CoA_79/2024]
April 2024Parties
Case and decision number
APL_9578/2024/UPC_CoA_79/2024, App_17551/2024
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
In a decision handed down on 11 April 2024, in Neo Wireless GmbH & Co KG v Toyota Motor Europe NV/SA (UPC_CoA_79), the Court of Appeal of the Unified Patent Court (UPC) has interpreted the provisions in Rule 220 of the Rules of Procedure (RoP) on the time period for filing an appeal and provided clarity on this subject.
Background
This case involved a decision dated 9 February 2024, of Judge-Rapporteur Maximilian Haedicke of the Court of First Instance (CFI) Paris Division. Toyota had brought a revocation action against Neo’s patent EP 3 876 490 (EP 490). Neo objected to the UPC having jurisdiction, and requested the claim be dismissed for lack of competence, EP 490 having been opted-out of the UPC on 30 March 2023. The Judge-Rapporteur rejected the objection to jurisdiction by Neo, in an order dated 9 February 2024.
Neo requested permission to appeal on 22 February 2024 which was granted the next day. Neo’s Statement of Appeal was lodged on 8 March 2024. Toyota argued that this was out of time as it was not filed within 15 days of the order being appealed (dated 9 February 2024), and therefore Toyota requested a decision by default.
Decision
The Court of Appeal held that Toyota had misinterpreted the RoP provisions. R.220.2 deals with appeals other than those listed in R.220.1. The orders covered by R.220.2 are known as “procedural orders”, whereas R.220.1 covers appeals against decisions and certain specifically named orders.
Procedural orders under R.220.2 can be appealed either:
- together with the final decision in the proceedings in which the order is given – the time limit for lodging the appeal is then within 15 days of service of this decision; or
- with permission of the CFI – when appealing an order with leave, the deadline for filing an appeal is within 15 days of service of the Court’s decision to that effect.
The Court considered that the wording in R.224.1(b), which specifically states that a Statement of Appeal must be filed “within 15 days of a decision referred to in 220.2” and does not refer to the impugned order itself, was intentional. Had it been intended to relate to the original order being appealed, the RoP would have expressly stated so. In addition, the words “the Court’s decision to that effect” in R.220.2 clearly refer to permission itself being granted. An order that does not already contain permission to appeal therefore cannot be ”a decision to that effect”.
Conclusions
If an appeal is lodged under Rule 220.2 and permission to appeal is granted within the order which is to be challenged itself, the Statement of Appeal must be lodged within 15 days of service of that order.
However, decisions to grant leave to appeal can be contained in separate orders. If this is the case, the Statement of Appeal instead has to be lodged within 15 days from the date of service of this further and separate order.
As here Neo was granted permission to appeal on 23 February 2024, the 15 day period ran from this date. A Statement of Appeal lodged on 8 March 2024 was therefore within this time period. Toyota’s request was therefore rejected.
Miscellaneous
A minor point was also considered in relation to the correction of formal deficiencies under R.229.2, as Neo were requested to make corrections to their submission on 13 March 2024, which they did on 26 March 2024 (namely, changing details of their representative), but due to a CMS malfunction, the formality checks were only finalised on 9 April 2024. Toyota requested a decision by default on the grounds that Neo had not provided their correction after notification on 13 March 2024. However this was held to be incorrect and it was held that the corrections had been lodged on 26 March 2024 i.e. within the time period of 14 days of service of notification of the correction. Toyota therefore did not succeed on this ground either.
Ocado v Autostore [UPC_CoA_404/2023]
April 2024Parties
Case and decision number
UPC_CoA_404/2023, APL_584498/2023
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
The Court of Appeal has dismissed Ocado's appeal against the Nordic-Baltic division's decision to grant a member of the public access to documents in Ocado v AutoStore.
The Court of Appeal noted that when a request to make written pleadings and evidence available to a member of the public is made pursuant to r. 262.1(b) RoP, the interests of a member of the public of getting access to the written pleadings and evidence must be weighed against the interests mentioned in Art. 45 UPCA. These interests include, but are not limited to, the protection of confidential information and personal data. In this case, the balance of interest was in favour of allowing access.
Both parties agreed that a member of the public generally has an interest that written pleadings and evidence are made available and the Court of Appeal states that this “allows for a better understanding of the decision rendered, in view of the arguments brought forward by the parties and the evidence relied on. It also allows scrutiny of the Court, which is important for trust in the Court by the public at large.”
The Court also accepted that "scientific and/or educational interests" constitute a legitimate interest to request access, even if a case has been settled. An argument made by Ocado that access should not be given if proceedings have come to an end due to a settlement, as the settlement may have been made on confidential terms, did not hold.
NJOY v Juul Labs [UPC_CoA_433/2023, UPC_CoA_435/2023, UPC_CoA_436/2023, UPC_CoA_437/2023, UPC_CoA_438/2023]
April 2024Parties
Case and decision number
UPC_CoA_433/2023 UPC_CoA_435/2023, UPC_CoA_436/2023, UPC_CoA_437/2023, UPC_CoA_438/2023, APL_588420/2023, APL_588422/2023, APL_588423/2023, APL_588425/2023, APL_588426/2023
Judges
Klaus Grabinski
Peter Blok
The Court of Appeal issued a collection of five Orders in relation to the NJOY v Juul dispute relating to vaping products. NJOY had filed five revocation actions at the Paris Central Division, incorrectly naming “Juul Labs, Inc.” as the patent proprietor rather than the correct “Juul Labs International, Inc.” At first instance, NJOY argued that there was confusion and a clerical error and the Paris Central Division granted permission for the name change. Juul appealed.
On appeal, the Court of Appeal held that the request could be granted if the defendant is not unreasonably prejudiced by the incorrect statement of name and its rectification.
In this case, the Court of appeal stated: “Given that, despite the incorrect statement of name, it must have been clear to the appellant that the statements for revocation were directed against it, the appellant was not unreasonably prejudiced by the incorrect statement of name and by the rectification ordered by the Court of First Instance.” The Court of Appeal therefore rejected the appeal and allowed the name change.
This case demonstrates a pragmatic approach to dealing with errors at both first instance and appeal, which is welcome news for potential users of the UPC system.
Also of note from the decision are comments on how the court will approach the award of costs. In these appeals, the Court of Appeal commented “No decision on the reimbursement of legal costs will be made in this appeal, since this order of the Court of Appeal is not a final order or decision, i.e. not an order or decision concluding the revocation actions”. Therefore, there was no specific award of costs in relation to these appeal proceedings. However, the Court of Appeal did point out that these appeal proceedings should be considered in a final decision on costs (i.e. in the main action).
Fujifilm v Kodak [UPC_CFI_355/2023]
March 2024Parties
Case and decision number
UPC_CFI_355/2023, App_6761/2024, ACT_578607/2023
Judges
Ronny Thomas
Bérénice Thom
Rute Lopes
On 27 March 2024, the Düsseldorf Local Division released a decision in Fujifilm Corporation v Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH (UPC_CFI_355/2023), which reaffirmed its approach in 10x Genomics v Curio, concluding that r. 262A.6 RoP establishes “as a ground rule of paramount importance that at least one natural person from each party and the respective lawyers or other representatives are to be granted access in order to ensure a fair trial”.
Edwards Lifesciences v Meril Italy [UPC_CFI_255/2023]
February 2024Parties
Case and decision number
UPC_CFI_255/2023, App_7184/2024
Judges
Paolo Catallozzi
Tatyana Zhilova
On 27 February 2024, the Paris Central Division rejected Edwards Lifesciences Corporation’s (Edwards) request to make amendments to EP 3 646 825 (EP 825) in its case against Meril Italy srl (Meril). The proposed revisions aimed to align the amendments made in response to Meril’s counterclaim for revocation at the Munich Local Division with proceedings at the Paris Central Division.
Meril began a revocation action against Edwards in relation to EP 825 in the Paris Central Division. Edwards’ statement of defence included a conditional application to amend EP 825. Subsequently, in its rejoinder to Meril’s reply, Edwards requested the court’s permission to make ten further amendments to EP 825, after the deadline for filling an application had passed. A request for the same amendments had been filed by Edwards at the Munich Local Division to address validity attacks made by Meril in its counterclaim for revocation in the pending infringement proceedings between Edwards and Meril.
Edwards argued that, as the revocation counterclaim in the Munich Local Division was made after the deadline for submitting its defence in the Paris Central Division proceedings, it was unable to align its requested amendments in both proceedings early for consistency and procedural economy. Edwards also submitted that the late application in the Paris Central Division proceedings would not lead to prejudice as the amendments were identical to the requests made at the Munich Local Division. Furthermore, Edwards argued that r. 263(1) RoP (Leave to change claim or amend case) applied as Edwards sought to amend the previous claim amendments, as opposed to filling a new application.
On 8 February 2024, Meril submitted an application seeking that the court reject Edwards’ request to change its original application to amend EP 825.
The Court’s decision
The Court held that r. 263(1) RoP did not apply as Edwards’ request did not relate to a claim. Instead, it fell within the scope of r. 50(2) RoP (Contents of the defence to revocation and Counterclaim for infringement). R. 30(2) RoP therefore applied and granted the court discretionary powers to permit Edwards’ request for subsequent amendments to EP 825 after the deadline for such requests had passed. The Court considered the principles set out in the RoP and relevant opposing factors. On balance, the Court ruled that the subsequent amendments to EP 825 did not fulfil the purposes of consistency and procedural economy. The Court noted that the UPCA and RoP allow for a patent to be attacked by different subjects or jurisdictions and include various tools to prevent inconsistencies in decisions.
As a result, it is not required that a patentee’s defences are aligned in all proceedings. The principles of consistency are only relevant when the proceedings address the same subject matter, which did not apply here.
C-Kore Systems Ltd v Novawell [UPC_CFI_397/2023]
February 2024Parties
Case and decision number
UPC_CFI_397/2023, ORD_12088/2024
Judges
Camille Lignieres
In C-Kore v Novawell (UPC_CFI_397/2023) the Paris Local Division ordered that although r. 262A RoP provides for the inclusion of at least one natural person from each party, parties may forego the right to include employees in a confidentiality club by mutual agreement provided this does not impact on a fair trial.
10x Genomics v Curio [UPC_CFI_463/2023]
March 2024Parties
Case and decision number
UPC_CFI_463/2023, App_8500/2024, ACT_590953/2023
Judges
Ronny Thomas
On 11 March 2024, handed down its decision in relation to Curio Bioscience Inc’s application for the protection of confidential information in its case against 10x Genomics Inc. (10x Genomics v Curio (UPC_CFI_463/2023)). After considering Art. 9(1) and (2)(a) of Directive (EU) 2016/943 (the Trade Secrets Directive), Art. 58 of the UPC Agreement and r. 262A RoP, the court noted that the individuals granted access to confidential information must not exceed what is necessary for compliance with the right of the parties to an effective legal remedy and a fair trial. However, the court considered that a minimum of one natural person from each party must be granted access to confidential information to ensure a fair trial, which would appear to rule out “attorneys’ eyes only” confidentiality clubs.
Plant-e Knowledge. v Arkyne [UPC_CFI_239/2023]
March 2024Parties
Case and decision number
UPC_CFI_239/2023, App_589842/2023 , ACT_549536/2023
Judges
Samuel Granata
Edger Brinkman
Margot Kokke
On 4 March 2024, the Hague Local Division of the UPC issued an order relating to Plant-e’s application under UPC Rules of Procedure r. 262A for a confidentiality order covering financial information provided with their reply to an application by Arkyne Technologies (Bioo) under r. 158 for security for costs in the main proceedings.
In their reply to Bioo’s r. 158 application, Plant-e had provided redacted and unredacted versions of documents that contained commercial information to support their arguments contradicting Bioo’s contention that Plant-e’s financial position would not allow it to cover Bioo’s legal costs in the event that they were ordered to do so. The r. 262A application for confidentiality was filed alongside this.
The redacted information concerned the investments made in Plant-e by investors and the relevant amount of said investments, information on the sales funnel of Plant-e and projected sales in the near future and more information concerning the financial situation of Plant-e than is publicly available.
In their r. 262A application, Plant-e also requested:
that Bioo be ordered to pay recurring penalty payments for each breach of the confidentiality order;
a confidentiality regime in which the redacted information is only to be used by Bioo for the r. 158 application and no other purposes; and
that only one natural person in Bioo may be granted access to the redacted information and that said person may not be involved in sales, procurement of grants and discussions with existing or potential investors, or hold a financial position within Bioo.
Bioo’s r. 158 application was rejected prior to this order (without the Court considering the redacted information) and, on 26 January 2024, the Judge-Rapporteur issued a Preliminary Order giving the parties the opportunity to provide further comments and giving Plant-e the opportunity to withdraw its r. 262A application.
Plant-e maintained its r. 262A application, stating that the redacted information had already been submitted and shared with Bioo’s representatives and might become relevant if an appeal was filed against the rejection of the r. 158 application. Bioo maintained the primary position that the r. 262A application should be dismissed.
In relation to requests a) and c) above, the parties agreed that if the r. 262A application is granted no penalty for breach should be imposed, and to establish an “attorneys’ eyes only’’ confidentiality club such that only Bioo’s legal representatives would be allowed access to the redacted information. Plant-e amended its r. 262A application accordingly.
The parties did not agree on b), the use of the redacted information. Plant-e argued that the use of the redacted information should be limited to the context of the r. 158 application only. Bioo argued that the use of the redacted information should be permitted for the entirety of the proceedings pending between the parties, including both the main proceedings and the counterclaim.
Legal Framework
In the UPC, the protection of trade secrets, personal data or other confidential information is governed by Article 58 of the UPC Agreement (UPCA) which has been implemented in r. 262A. These state the following:
Art. 58 UPCA:
“Protection of confidential information
To protect the trade secrets, personal data or other confidential information of a party to the proceedings or of a third party, or to prevent an abuse of evidence, the Court may order that the collection and use of evidence in proceedings before it be restricted or prohibited or that access to such evidence be restricted to specific persons.”
r. 262A:
“1. Without prejudice to Article 60(1) of the Agreement and Rules 190.1, 194.5, 196.1, 197.4, 199.1, 207.7, 209.4, 315.2 and 365.2 a party may make an Application to the Court for an order that certain information contained in its pleadings or the collection and use of evidence in proceedings may be restricted or prohibited or that access to such information or evidence be restricted to specific persons.
[…]
6. The number of persons referred to in paragraph 1 shall be no greater than necessary in order to ensure compliance with the right of the parties to the legal proceedings to an effective remedy and to a fair trial, and shall include, at least, one natural person from each party and the respective lawyers or other representatives of those parties to the legal proceedings.”
Court Decision
The Court considered that the redacted information, being financial information that is not in the public domain, qualified as “confidential information” according to Art. 58 UPCA and r. 262A and Bioo’s response failed to provide convincing arguments to counter this assertion.
The Court considered that unprotected disclosure of this information to employees of Bioo would likely have a negative impact on Plant-e, as the proceedings involved competing small companies with limited staff. Taking into account the interests of both parties, The Court found that giving a natural person of Bioo access to the redacted information would be likely to distort competition, which should be prevented under Art. 42.2 UPCA. Withholding the redacted information from a natural person of Bioo would not affect Bioo’s position in the main proceedings (as it was not relevant) or in the r. 158 application, as sufficient information was available for the Court to take a decision on this without considering the redacted information.
The Court noted that it is not entirely clear whether denying access to at least one natural person of Bioo is in line with the legal framework of the UPC outlined above. The wording of r. 262A.6 is identical to the wording used in Art. 9(3) of Directive (EU) 2016/943, which has been implemented in different ways in member states.
For example, in Germany and Belgium, the provisions of the Directive have been extended to apply to all types of cases in which confidential information is concerned (even as just a side issue), including a strict rule that at least one natural person from each party should be granted access to the confidential information. However, in the Netherlands, the application of the Directive is limited to proceedings concerning the enforcement of trade secrets, and a different regime applies where confidential information is at issue in other proceedings (such as in patent cases), where access to such information can be limited to attorneys only where it is considered to be appropriate and in line with a fair trial.
The Court considered that the differing approaches of contracting member states gave room for flexibility to base access to confidential information in the UPC on both the circumstances of the case and type of confidential information concerned. They found justification for this approach in “the logic that the principle of fair trial is more likely to be impaired when the essence of the case is the trade secret and no natural person of a party would get access to the confidential information, as compared to a case wherein this information is a side issue (like in the case at hand)”.
In interpreting the legal framework of the UPC outlined above, the Court found that the wording of r. 262A.1 and Art. 58 UPCA allowed for a reading that, in addition to limiting access to specific persons, it is also possible in proceedings before the UPC to rule that access to confidential information be prohibited completely, as an alternative. This was specifically due to the use of the wording “restricted or prohibited or (…) restricted to specific persons”.
The Court also went further, and stated that even if a strict rule that at least one natural person from each party must be granted access to the confidential information was read to apply in the situation of this case (following a different interpretation of r. 262A.6) it would still be possible for the parties to exclude access by natural persons through mutual agreement, or by the party concerned forfeiting its right to access by a natural person, provided that this does not impact the prospect of a fair trial.
The Court therefore ordered that only Bioo’s legal representatives shall have access to the redacted information and that the redacted information may be used by Bioo for the r. 158 application and no other purposes.
NanoString Technologies v 10x Genomics [UPC_CoA_335/2023]
February 2024Parties
Case and decision number
UPC_CoA_335/2023, App_576355/2023
Judges
Klaus Grabinski
Peter Blok
On 26 February 2024, the UPC Court of Appeal handed a decision relating to the preliminary injunction (PI) granted to 10x Genomics in relation to its patent for a method of detecting analytes (such as RNA or proteins) in cell or tissue samples. The Court of Appeal’s decision hinged heavily on the specific technical knowledge and practices within the field of analyte detection and offers a contrasting analysis to that given by the Munich Local Division at first instance. It also marks the first occasion on which the UPC Court of Appeal has issued a detailed judgment on a PI application, and therefore will be of wide interest.
At first instance, on 19 September and 10 October 2023, the Munich Local Division issued preliminary injunction judgments in relation to alleged infringement by NanoString of two of 10x Genomics’ patents: EP 4 108 782 (EP 782) and its parent EP 2 794 928 (EP 928). The same panel of the Local Division ordered an injunction to be granted preventing infringement of EP 782, but denied an injunction in relation to EP 928.
In the EP 782 case subject to the current appeal, the Local Division began by finding that it had jurisdiction and that the application was admissible. It then considered in some detail questions of validity and infringement, finding with sufficient certainty that EP 782 was valid and infringed.
Following this finding, the Division went onto consider the necessity of ordering provisional measures. In terms of urgency, it was ruled, noting that EP 782 is a unitary patent, that enforcement measures before national courts are not equivalent to those before the UPC. Therefore, whether there had been unreasonable delay in this case should be evaluated from 1 June 2023, the day on which claims before the UPC could first be filed (and on which date the injunction request was made). Regarding harm, it was ruled that NanoString’s market entry would cause 10x Genomics significant, long-lasting harm.
Finally, the Local Division balanced the parties’ interests and found that 10x Genomics’ interests were more pertinent. An important factor in this assessment was the fact that there was a high likelihood of the patent being found valid and infringed at trial. A preliminary injunction was therefore granted to 10x Genomics without provision for security.
On appeal to the Court of Appeal in Luxembourg, Nanostring raised a number of grounds of appeal. The main ones were that: (i) the Local Division had incorrectly assumed jurisdiction; (ii) the narrow interpretation of the claims had been erroneous; (iii) the Local Division had erred in assuming that EP 782 was valid; (iv) the Local Division had misapplied both the facts and US and EU antitrust/competition law, and in fact the patentee had an obligation to grant Nanostring a licence; (v) the facts on irreparable harm, proportionality and urgency counted against the grant of a PI; and (vi) Nanostring should have been allowed to continue the acts complained of on provision of security, but in any event the PI applicants should have to provide security (in the amount of €20 million) to secure the PI if maintained.
On jurisdiction, the Court of Appeal held that the Munich Local Division did have jurisdiction on the basis that the attacked embodiments had been offered in Germany. However the Court of Appeal did not expressly deal with the argument that the UPC should decline jurisdiction (at least in respect of the German territory) given that 10x Genomics had already sought a PI under a parent patent in Germany.
On claim construction, the Court of Appeal departed from the conclusions of the Local Division on a number of issues. However, it did not deal with the question of infringement given its decision on validity (see below).
The most interesting part of the judgment is the treatment of validity. The Court of Appeal agreed with the Local Division that as an order for provisional measures is by way of summary proceedings, in which the opportunities for the parties to present facts and evidence are limited, the standard of proof for a PI must not be set too high. This is particularly if delays associated with proceedings on the merits would cause irreparable harm to the patentee (referring in part to the CJEU decision in Phoenix Contact C-44/21). However, the standard of proof should not be set too low in order to prevent the defendant being harmed by an order that is subsequentially revoked at a later date. There should therefore be a sufficient degree of certainty that the applicant is entitled to institute proceedings, that the patent is valid and is being infringed (or that such infringement is imminent). According to the Court of Appeal, such a degree of certainty requires the UPC to consider it at least more likely than not that the applicant is entitled to initiate proceedings (which includes that it is more likely than not that the patent is valid) and that the patent is infringed.
As to which party bears the burden, the Court of Appeal held that this lies with the applicant in relation to entitlement to initiate proceedings and infringement, as well as other circumstances supporting the applicant’s requests, whereas the burden regarding (lack of) validity and other circumstances supporting the respondent’s request lay with the respondent. The Court of Appeal noted that this is aligned with the position in merits proceedings. No special presumptions or criteria, such as the presumption of prima facie validity, or that the patent must have first survived third party challenge, were cited by the Court of Appeal.
Of further interest is that the Court of Appeal disagreed with the Munich Local Division on validity, holding that on the balance of probability, it was more likely than not that the subject matter of the claim 1 (as amended as per the patentee’s main request) will prove not to be patentable for obviousness.
The Court of Appeal conducted a detailed analysis of its own, sitting with two Technically Qualified Judges on the panel. At first instance, the Munich Local Division appeared to adopt the approach of the EPO to assessing inventive step, identifying the closest prior art, usually being a prior art document that discloses a subject matter developed for the same purpose or with the same aim as the claimed invention and sharing the main technical features, hence requiring the fewest structural changes. Applying this approach, the Local Division had taken the view that one of the prior art citations advanced by the respondents (D6) was not a realistic starting point, let alone as the closest prior art. In contrast, the Court of Appeal held that D6 would have been of interest to a person skilled in the art seeking to develop certain methods, rather than apply a formalistic closest prior art analysis, and thus appeared to give it greater weight than the Local Division.
The Court of Appeal’s decision put emphasis on the idea that a skilled person, motivated by the need for in situ analysis, would find it obvious to adapt the method in D6. D6 itself hinted at in situ applications, and similar publications demonstrated the concept's feasibility, even if using different probes. Issues like molecular crowding and autofluorescence were hurdles a skilled person would expect and be equipped to tackle. These problems did not make an in situ adaptation an unpredictable leap. The patent itself offered no unique solutions to in situ problems, which the Court of Appeal found would strengthen the argument that the adaptation would be within the routine skill of someone in the field.
The amendments proposed to the patent in an auxiliary request would not remedy the position. By limiting the patent to immunohistochemistry and fluorescence in situ hybridization, this would not address the core problem - these were obvious and established techniques for a skilled person seeking to do in situ analysis.
On this basis, the Court found it more likely than not that the patent would be revoked in the future, making the injunction inappropriate. The Court of Appeal did therefore deal with all the other issues raised in the appeal.
NanoString v 10x Genomics [UPC_CoA_335/2023]
February 2024Parties
Case and decision number
UPC_CoA_335/2023, APL_576355/2023
Judges
Klaus Grabinski
Peter Blok
Nanostring filed for Chapter 11 bankruptcy protection in the US and requested a stay of the proceedings, after the oral hearing for the main PI appeal took place in December 2023. 10x Genomics agreed to the stay, however the Court of Appeal held that a stay would not be granted. The Court concluded that the Rules of Procedure on stays were designed for situations where insolvency was declared before crucial legal proceedings were completed. In this case, all major procedural steps (including the oral hearing) had been completed before the bankruptcy filing. By suspending the case now, this would cause unnecessary delay and expense without impacting the bankruptcy proceedings themselves and therefore in the interest of efficiency and fairness, the Court of Appeal should deliver its PI decision as planned. The Court also commented that several other countries' legal systems have similar provisions, allowing ongoing court cases to reach a conclusion even if a party declares bankruptcy near the end.
Ocado Innovation Ltd v Autostore [UPC_CoA_404/2023]
February 2024Parties
Case and decision number
UPC_CoA_404/2023, App_584498/2023
Judges
Rian Kalden
Patricia Rombach
Ingeborg Simonsson
On 8 February 2024, the Unified Patent Court of Appeal established that members of the public seeking access to the Register under Rule 262.1(b) must be represented. This decision arose from an appeal by Ocado Innovation Limited against an Order of the Nordic Baltic Regional Court granting access to a statement of claim to a member of the public, after redacting personal data.
The court clarified that the requirement for representation applies broadly within the UPC’s procedural framework, except where explicitly waived by the Rules of Procedure. Despite submissions by the member of the public that this requirement would impose an undue burden on individuals seeking access to documents, the court maintained that representation would ensure proper conduct and legal safeguarding in proceedings. The member of the public was given a 14-day period to appoint a representative and submit a Statement of Response. The Court of Appeal is scheduled to hear the appeal of the order on 12 March 2024.
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