Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC.
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7 October 2025 (published late)
Local Division Milan, Hypertherm Inc. v Tec.Mo.
Settlement
Facts
- Hypertherm filed an infringement suit against Tec.Mo.
- Parties asked a stay for three months because of settlement discussions.
- On 25 September 2025, the parties filed a joint request under R. 360 RoP to dispose of the action because due to the settlement there is no longer a need to adjudicate on it.
The Court
The Court allowed the request and ordered a 60% reimbursement of the court fees to Hypertherm. As parties did not request a cost order, the Court did not issue one.
Comment
This is a somewhat strange way of settling a case because it ends with a decision that can be appealed. However, one may presume that parties agreed not to appeal. In that case, the decision becomes final and parties cannot litigate in the future about the same infringement. The settlement does not get the status of a decision of the Court and will not be put in the Register, but that is probably what the parties wanted.
10 October 2025 (not published yet)
Local Division The Hague, HL Display v Black Sheep
UPC_CFI_386/2024; UPC_CFI_610/2024
Long arm jurisdiction; counterclaim for declaration of non-infringement
Facts
- HL Display filed an infringement action for the UPC, non-UPC but EU countries (like Poland) and non-EU but Lugano countries (like Switzerland, Liechtenstein and Norway) and non-EU countries (like the UK).
- Black Sheep denied infringement, counterclaimed for revocation of the patent and a declaration of non-infringement regarding a modified product which – compared to the attacked product – allegedly contains a further non-infringing element.
The Court
- The defendant is a Dutch company.
- The Court has long arm jurisdiction for all the countries for which the patent has been validated. The defendant declared to have not instituted revocation actions in any of the non-UPC countries and that the invalidity arguments for such countries are raised as defence. The Court therefore decided that for EU and Lugano countries, it would evaluate whether a serious non-negligible chance exists that the patent would be invalidated. Regarding non-EU (and non-Lugano) member states the Court may make an inter partes decision on validity.
- Competence with respect to the counterclaim was not disputed.
- The counterclaim is not admissible because of R. 61.1(a) and (b) RoP, which requires that the defendant has first tried in vain to obtain a written acknowledgement from the patentee out of court. According to the Court the institution of the counterclaim for a declaration of non-infringement for a different product than for which infringement is alleged, cannot be considered as fulfilling the requirement of R. 61.1(a) RoP.
- The Court decides who is the skilled person.
- The Court interprets the claim features referring to the Court of Appeal’s decision in Nanostring (UPC_CoA_335_2023), adding that “generally the description and drawings do not limit the subject matter of the claimed invention” referring to the Local Division Düsseldorf’s decision in Fujifilm v Kodak (UPC_CFI_355/2023) and that “[i]t is also noted that as has been considered by the UPC a claim need not to be limited to preferred embodiments. Nevertheless in special circumstances it can be clear to the skilled person that the description and drawings are in fact intended to limit the claim e.g. to specific embodiments”.
- The Court does not accept the very limited claim construction of Black Sheep (reading features from the description in the claim while they are not mentioned in the claim).
- The patent is inventive. The Local Division The Hague sticks to the problem-solution-approach because both parties used it (using one realistic starting point).
- The patent is infringed, and as Black Sheep did not sufficiently dispute that it committed infringing acts until the change to product 2, no further proof is necessary.
- The fact that Black Sheep ceased its sales of product 1 (the infringing product) is insufficient for not imposing an injunction and/or require a bond for enforcement.
Comment
- The case shows that when the defendant is an Art. 4 Brussels I bis Regulation (“BR”) company (i.e. a company sued in his home court), there can be no discussion that the decision of the Court of Justice of the European Union (“CJEU”) in BSH v Electrolux is applicable. In this case, that was straightforward because the Dutch company was sued in the Local Division in The Hague. But what if the Dutch company would have been sued before the Local Division in Brussels (which on the basis of the internal competence rules of the UPCA would also be competent to hear the case because the Dutch company also infringed in Belgium)? Is the Brussels Local Division also the home court of the Dutch company? One could argue that it is, because there is only one court concerning the whole of the UPC territory. On the other hand, first instance Divisions of the UPC often talk about having international jurisdiction, when talking about decisions covering the other UPC countries. So should Art. 4 BR be interpreted such that only the Local Division of the country where the defendant is domiciled is the “home court” (and if there is no Local Division, the Central Division)?
- During the last Venice Conference, BSH v Electrolux was discussed and the question was raised if the decision also applies with respect to Art. 8 (1) or 7 (2) BR defendants (i.e. jurisdiction based on “multiple defendants” or “location of the infringement” respectively), or that that should be clarified by another referral to the CJEU. One realizes that this is irrelevant for UPC-established companies if you accept that in the UPC they are always an Art. 4 BR defendant (i.e. a defendant sued in his home court), irrespective the internal rule on the basis of which they are sued.
- However, if the Dutch company would have sold to the UK, to its UK distributor in the UK (which could be a UK subsidiary company), it is certainly different in such a case if you also sue the UK company. Because of Art. 71b (2), even though the UK defendant is not domiciled in an EU Member State, Art. 8 (1) BR may be applicable.
- I say may be applicable, because a decision of the UPC with respect to the UK can be different from a decision of a UK Court with respect to the UK (with respect to the same UK entity). However, can these decisions be considered as ‘conflicting decisions’, as these decisions cannot be executed in the other country? Surely, in practice they will probably be considered as conflicting, because if the UK entity continues to sell in the UK, it will forfeit penalty sums imposed by the UPC Court, and if it has any assets in the EU, they may be at risk. Moreover, different material decisions about the same European patent can be seen as “conflicting”, but not automatically for the CJEU under its decision in Roche v Primus, in which it distinguished between the different national parts of a European patent.
- If we reach the conclusion that Art. 8 (1) BR cannot give jurisdiction against non-EU/Lugano defendants, then Art. 71b (3) BR suddenly becomes relevant as a basis for jurisdiction over a defendant not domiciled in an EU member state. Or could you say that, even if you would in principle accept jurisdiction under Art. 8 (1) BR, this would not be applicable to infringement in non-EU countries because of the lex specialis of Art. 71.b (3) BR?
- At least the above suggestions could somewhat silence the criticism of our European UK friends, who branded the application of what is now article 8(1) BR (then Art. 6(1) Brussels Convention) as “cowboy justice” in the late 1980s/beginning of the 1990s. Yet, there has never been a so-called cross-border decision including the UK in which a Dutch court came to a different conclusion with respect to validity or infringement than a UK court.
- Anyway, if we see what the UK courts do in SEP cases nowadays, you could say “the pot calls the kettle back”.
- As the defendant sensibly did not dispute the competence of the Dutch court and stated that it simply raised the invalidity as a defence for the countries outside the UPC without stating that the validity would be differently judged under the national law of these countries, this was a rather straightforward case under BSH v Electrolux.
- If you already have replaced the infringing product by an (allegedly) non-infringing product, then this case seemed the perfect case for mediation in the PMAC after the written statements, if PMAC had been already in existence.
13 October 2025
Local Division Düsseldorf, Ona v Google
UPC_CFI_100/2024; UPC_CFI_411/2024
Request for an interim conference
Facts
- On 28 August 2025, the JR ordered the parties to the oral hearing on 29 October 2025, and indicated that the JR had no intention to hold an interim conference.
- The claimant requested a review of this order, stating it wanted an interim conference to discuss related proceedings against other defendants and referred to a letter of 1 September filed outside CMS and outside the time periods set by the Rules of Procedure.
- The defendants stated that such interim conference is not necessary.
The Court
- The Court dismissed the request, stating that the President acting for the JR (assuming there was a final decision not to hold an interim conference) did not misuse its discretionary powers, which was also not alleged. The claimant just wants a different decision.
- The other proceedings are independent from the present proceedings, meaning that only the statements with respect to certain prior art documents in these proceedings are relevant.
Comment
- Although in general an interim conference can be useful, in this case it is the claimant who apparently tried to get new facts and arguments in the proceedings by letter of 1 September outside the proceedings (not filed in the CMS and not provided for in the Rules).
- If you file multiple proceedings against different defendants about the same infringement, and you want to improve your position after the closure of the written proceedings with information or lessons learned in other proceedings, then that is not possible because of the front loaded character of UPC proceedings. This should be a lesson for representatives!
14 October 2025
Local Division Düsseldorf, Ona v Google
UPC_CFI_100/2024; UPC_CFI_411/2024
We are in the UPC!
Facts
See above with respect to the decision of 13 October about the attempt of the claimant’s representative to make further arguments in UPC proceedings, ignoring the CMS system and the time periods in the Rules, and then trying to get an interim conference for this purpose. The Court refused such interim conference.
The JR
The JR deals with the unsolicited letter of 1 September 2025 which was not filed in the CMS system and after the closure of the written proceedings! However, the JR only allows the letter in as far as it corrected the work of the representative (the JR: “The claimant could have worked more carefully”), because it did not change the content of the proceedings. The JR did not allow the attempt to amend the case with the allegation of indirect infringement (ignoring CMS and the Rules), which could (and should) have been made much earlier.
Comment
Surprise, surprise! Instead of throwing this 57-pages letter in the bin, the JR reads it and even deals with it. The representative clearly does not like the new Rules and the new way of communicating with the Court, and should perhaps confine himself to national proceedings. The JR should buy a bin and forget about the old times of getting letters until the day of the hearing.
14 October 2025
Local Division Düsseldorf, Wonderland v Cybex
UCP_CFI_807/2024; UPC_CFI_334/2025
Review of case management orders
Facts
- The claimant filed infringement proceedings, asserting equivalent infringement but not literal infringement.
- The claimant stated that features 1.4 and 1.6 were infringed by equivalence and all other claim features by literal infringement.
- The defendant argues that features 1.9 and 1.10 are not infringed.
- In its reply, the claimant argued that also these claims are literally infringed, but if the Court thinks differently, that also features 1.9 and 1.10 are infringed by equivalence. The claimant requested leave to amend its case.
- The JR dismissed the request, as in her opinion R. 263 RoP was not applicable to the new equivalence arguments in the case at hand, basically because such amendment was not necessary as all the components of the alleged infringement were already in the Statement of Claim.
- The defendants asked for a review. They want a confirmation of the refusal by the JR but on different grounds: that the request should be refused because the amendment of case is not justified.
The Court
- The request for review is admissible. Admissibility is not precluded because defendants want a different reason for dismissal of the claimant’s request. A party asking for review does not have to be “adversely affected by the order” (like for an appeal).
- The Court denies the request for review, as the equivalence arguments are allowed in response to the defence and all the elements on which it is based were already present in the Statement of Claim.
Comment
- The Court gives a very (too?) broad criterion for admissibility. I hope for the Court that this does not lead to even more requests for review. Before asking for review, representatives should look at the statistics: less than 1 percent is successful. So, clients, if your case is not truly exceptional, do not waste your money on such requests. In the future, by a revision of the Rules (I suggest that there should be such revision undertaken next year), I think the possibility of review will be deleted. The possibility for review on appeal (after leave) remains open for exceptional cases.
- The Court of Appeal has indeed – as the Court states – allowed invoking equivalence in response to a defence against literal infringement. However, if (because of an exchange of letters before the proceedings, or because the argument is obvious from the beginning) you know or should know that such defence will be raised, it is wise to deal with such defence already in the Statement of Claim (while maintaining the allegation of literal infringement), because I do not think that under all circumstances you can just wait for the defence. That would in my opinion not be in conformity with the front-loaded character of the UPC proceedings. The typical thought that arguing (alternatively) the doctrine of equivalence in the statement of claim weakens your literal infringement argument, is incorrect. Although I have not been a judge, judges always tell me that they not think that way. So we have to believe them!
14 October 2025
Local Division Düsseldorf, Dolby v Beko and Arçelik
UPC_CFI_135/2024; UPC_CFI_477/2024
Postponement oral hearing
Decision of the JR
Due to the fact that the lead attorney cannot be present during the oral hearing of 16 October 2025 because of personal reasons, the hearing is postponed until 4 February 2026.
Comment
It is always possible that serious last minute personal circumstances warrant a postponement. These can be unfortunate, but also happy circumstances. I was once called by opposing counsel early in the morning before an oral hearing, saying that he was in the hospital because his wife was giving birth. I called the judge, who postponed the hearing.
14 October 2025
Court of Appeal, Kodak v FUJIFILM
Penalty sums; enforcement
Facts
- FUJIFILM started infringement proceedings in which it asked for:
- an injunction (A);
- an order for information to be provided within 21 days from service of the judgment (B2);
- an order for destruction (B3);
- a recall with exhaustive list of recipients (B4); and
- a removal of the infringing products from the channels of commerce (B5).
- FUJIFILM asked for a penalty sum in case of non-compliance with A and B2 but not for the other demands.
- The Local Division Mannheim issued an injunction (A1) together with a penalty for non-compliance (A2) and granted the other requests B2, B3, B4 and B5 without penalty fee for non-compliance.
- The Local Division Mannheim stated that the information should be given as soon as possible, but that (i) verification by an accountant of the accuracy of the information was not necessary and (ii) verification of B3 (destruction) by a bailiff is not foreseen in the UPCA or the Rules of Procedure. The Court also considered the list of recipients (B4) and evidence of destruction (B3) to be unnecessary. The threat of penalty proceedings would be considered sufficient for making sure that Kodak would comply.
- FUJIFILM asked the Court to issue a warning that Kodak would forfeit penalties if it did not comply within a certain time period with the orders A2 – B5, which was rejected by the JR. The rejection was confirmed by the panel.
- Kodak subsequently stated that FUJIFILM’s enforcement notice was not valid because it did not contain a translation (R. 118.8 RoP) and the period to comply with B2 was not validly set.
- Kodak filed a request for a confidentiality order with regard to B2 (providing of information), which was rejected.
- The Local Division rejected Fujifilm’s request for a warning and rejected all Kodak’s arguments.
- The Local Division ordered Kodak to pay € 100.000 for failure to comply with B2 – B5 and € 2.500 per day for non-compliance, which after 18 August 2025 was increased to € 10.000.
- Kodak appealed.
The Court of Appeal
- The appeal can only relate to facts and circumstances existing at the time of the order.
- In general, a party cannot argue on appeal a point of view which is the opposite of what they argued in first instance, and cannot attack a part of the decision that they did not appeal. However, the Court of Appeal will have to apply the Rules of Procedure according to its proper interpretation, which does not depend on what parties have said about it.
- The Court of Appeal proceeds with “the system of penalties under the Rules of Procedure”:
- A decision may include a penalty order. Although exceptionally a later penalty order may also be attached to an earlier order that did not contain a penalty order, it enhances legal certainty if the decision already includes the penalty order.
- A penalty order can also be requested after a first refusal or after not having been asked in the Statement of Claim, because the circumstances can change.
- The amount to be forfeited shall be set by the Court; it should be deterrent and proportionate.
- The Court should specify when which penalty sum may be forfeited. The Court may indicate a maximum which it can later increase.
- The Court should also generally state the period (in case something has to be done) after which non-compliance triggers the penalty sum.
- The claimant has to include all the above in his Statement of Claim or (if asked later) in his request.
- The defendant should comment if he does not agree.
- If no time period for compliance is specified (which is rare) then the claimant has to set one. When the order is for provisional measures, the claimant must do so together with or immediately after service of the order. When the order follows proceedings on the merits, this must be done when notifying the defendant of its intention to enforce (R. 118.8 RoP). If the defendant does not agree with the set time period, it should immediately complain and the Court will have to decide, but the reasonable time period starts to run retroactively from the moment the time period is set by the claimant.
- If the claimant wants to enforce the forfeited penalties, he has to ask the Court for an order. Said order will normally be for the forfeited penalties but the Court may deviate and award a lower amount for reasons of proportionality.
- In general, the defendant has to prove that he has fully complied with the order.
- The claimant can specify the evidence that is required (confirmation by accountant, bailiff etc.). Although this helps to avoid disputes, it is up to the discretion of the Court to award this. A legal basis in the UPCA for such (evidentiary) orders is not necessary.
- The defendant should ask for a confidentiality order in the proceedings on the merits in which such information is requested. If only requested thereafter, dealing with such a request does not stop the time for complying with the order.
- The time period for complying starts running after service of the order for provisional measures or after service of the notification of R. 118.8 RoP first sentence, if all other requirements for enforcement are met (including posting – if ordered – the bank guarantee).
- Orders that are only enforced by means of the possible forfeiture of penalty sums do not require translation (R. 118.8 RoP). The notice of enforcement does not have to be served like a Statement of Claim but is effected by uploading the enforcement notice in the CMS, which is then made available to the representative of the defendant by the Registry.
- The appeal is party successful as the order to pay € 100,000 was not based on a prior order that threatened with a penalty sum in case of non-compliance.
Comment
- An absolute must read for representatives. In this case, the LD may not have gotten it completely right and/or was unpractical, causing problems with an unwilling defendant.
- This decision makes clear what a claimant, defendant and an LD should do to avoid the problems that came up in this case.
- The Court of Appeal is nice (and correct, as these practices are not forbidden under the Rules of Procedure) with respect to certain less practical habits in some national systems such as not setting a time period for carrying out orders (e.g. an order for destruction) or a precise penalty sum for non-compliance etc. These orders are indeed allowed, but the Court of Appeal makes abundantly clear that they are not preferred, also because they do not enhance legal certainly. They moreover lead to frequent conflicts, may I add, which cost precious time from judges and money from clients to resolve.
- So I would recommend representatives, defendants and Local Divisions to adapt to the preferred way indicated by the Court of Appeal.
- The Court of Appeal is also practical with respect to the translation requirements of R. 118 RoP. Indeed, the Drafting Committee had in mind that a local enforcer of a judgment of the UPC should be informed – in his own language – what has to be done. If we do not require from representatives to master the three official languages, it goes a bit far to demand this from bailiffs across the Contracting States. However, the Court of Appeal is completely right that if it is about information that the local enforcer does not need to know, then translation is not necessary.
- Finally, the Court of Appeal is also correct in clearly following the Enforcement Directive in the sense that penalty sums should make sure that the orders are complied with, on the one hand, but should be reasonable and proportionate on the other hand. This (in the end) gives the Court the possibility (in exceptional cases) to moderate the total of forfeited penalties.
- Finally, defendants that are playing for time by requesting confidentiality measures will not succeed!
15 October 2025
Local Division Düsseldorf, Leap Tool Inc. v Wizart Inc. (USA)
Service
Facts and order
The claimant showed that two attempts were made to serve the Statement of Claim on the second defendant in the United States in accordance with The Hague Convention, and asked to allow alternative service on the CEO of the second defendant at his address in Poland.
The JR allowed the request.
Comment
I fully agree with the decision. Defendants who try to make service impossible should not succeed. However, I wonder if this unilateral service Rule in the Rules of Procedure is in accordance with (allowed by) The Hague Convention, which has in my opinion a specific article dealing with this situation in Art. 15 (2).
15 October 2025
Local Division Düsseldorf, Hartman v Omni-Pac
UPC_CFI_115/2024; UPC_CFI_377/2024
Patent upheld in amended form, no infringement
Facts
- This concerns an infringement case with respect to a eggs packaging.
- The defendant files a counterclaim for revocation.
- The claimant files two conditional auxiliary requests.
The Court
- The Local Division Munich follows the now usual way of dealing with infringement. First of all, determine who is the skilled person. Thereafter, the Local Division discusses and decides the meaning of certain claim features.
- With respect to the question whether or not there is entitlement to priority, the Local Division applies the gold standard.
- With respect to inventive step, the Local Division uses the method which the Central Division Munich applied in its decision of 16 July 2024 in Sanofi v Amgen (see no. 151-158 of the decision – for those that read German! -).
- The patent is considered partly invalid. The Court gives a reasonable reading to the second auxiliary request and does not require the strict formalities of the EPO, but understands the wish of the claimant not to have declared invalid more than necessary.
- The Court finds no infringement.
- The claimant’s arguments with respect to equivalence had been made too late (only in the rejoinder of the revocation case) and had not been allowed in the proceedings. The Court states that this would not have changed the outcome.
Comment
- A well-reasoned decision, which contains with respect to inventive step the following general statement: “The skilled person is used to choose a material which he knows can be used for a certain purpose. If there is a limited choice of such materials, then choosing one as such does not require in general special (inventive) skills” (my translation from German). I think that indeed – absent special circumstances – this is correct.
- The Court has been very nice to deal with the equivalence reasoning anyway, which saves the claimant’s representative a call to his insurance company. Clearly, the equivalence reasoning had to be made earlier. Users of the system should select representatives who realize they are not litigating in their national courts.
- Users of the system (this time a disappointed Danish company which had filed and obtained its patent in English) should also have their representatives file their case in English if they are a non-German company, and (which also happened in this case) there is no reason to file such case in a very busy Local Division!
- Users should also not believe that German Local Divisions are more patent friendly than other Divisions, or that it is better to litigate in a German Local Division in German. The statistics show clearly that this is not the case. German Divisions are very busy. In all Divisions you can litigate in English and, if you are e.g. a small German SME, you can even litigate in German in Brussels and Vienna. For your information: Brussels has Europe’s best restaurants, and Vienna is one of Europe’s most beautiful cities. It would only be good for the supra-national Unified Patent Court if cases are more spread over Europe (and if Spain, the UK and Switzerland and other countries member to the European Patent Convention would join the UPC).
16 October 2025
Local Division Düsseldorf, Hewlett Packard (“HP”) v Zhuhai and Andreas Rentmeister
Service PI proceedings
Facts
- On 28 May 2025, HP filed proceedings for a preliminary injunction against Zhuhai and Andreas Rentmeister, a German company.
- Service was initiated via the official online portal of the Chinese Central Authority on 4 June 2025.
- After inquiry, the Court got the message from the Central Authority on 23 September 2025 that service had not taken place because the defendant did not reside at the address provided.
- The applicant requests the Court to declare, pursuant to R. 275.2 RoP, that the service shall be deemed effective and that the order shall be published on the website of the Court.
The Court
- The Court cites all the evidence given by the applicant that the address – contrary to what the Chinese authorities stated – is the correct address.
- The Court further cites Art. 15(2) and 15(3) of The Hague Convention.
- The Court states that there are no other alternatives of service under R. 275.1 RoP and allows the request.
Comment
- The Court states that it applies R. 275 RoP under 2 (which states that the Court may order that an alternative method is good service) also with respect to an application for a preliminary injunction, despite the fact that the Rules of Procedure only mention a ‘Statement of Claim’. That in my opinion makes sense.
- However, as already stated before, I find it difficult to understand why the Court has waited four months and required considerable efforts from the claimant. More specifically, it is unclear why the claimant did not make clear in his application that the Chinese defendant was or should have been aware of the application for a preliminary injunction or why reference was not made to Art. 15.3 of The Hague Convention (allowing provisional measures in case of urgency).
- It had never been the intention of the The Hague Convention that in urgent cases you would not be able to act immediately, especially if you make sure that the defendant knows or should know about the application.
– All comments above are Prof. Hoyng‘s personal opinions –
For all decisions of the UPC’s Court of Appeal from the start in 2023 until 1 January 2025, Willem Hoyng’s more comprehensive summaries and comments are bundled in the book “Case law – Court of Appeal of the UPC 2023-2024”.