25 June 2026 (late published)
CentralDivision Paris, X v Swarco
Validity after central limitation procedure
Facts
- X requests the revocation of Swarco’s EP 2 643 717.
- X argues that the patent is not novel, not inventive and invalid due to extension of subject matter and, finally, insufficient disclosure.
- Swarco files auxiliary requests.
- Swarco limits its patent using the central limitation procedure before the EPO.
The Court
- The Court agrees with the patentee that it should assess whether or not the patent resulting from the central limitation procedure is valid or not.
- The Court accepts that the auxiliary requests are adapted to the text of the claims resulting from the central limitation procedure.
- The Court states that the burden of proof is on the claimant and that it must make its decision on the basis of the arguments and evidence submitted by the parties.
- The Court defines the skilled person and, after discussing the patent, formulates the objective technical problem the patent allegedly solves.
- The Court interprets the elements of the claim after citing the principles laid down by the Court of Appeal.
- The Court concludes that the claimant’s arguments with respect to novelty, extension of subject matter, and insufficient disclosure have to be dismissed.
- With respect to inventive step, the Court follows the steps set out by the Court of Appeal in Meril v Edwards.
- The Court discusses the various combinations proposed by claimants and, in general, concludes that the skilled person would have had no motivation or incentive to make those combinations, or that the documents proposed for combination belong to a different technical field and would therefore not have been taken into consideration by the skilled person.
- The Court dismisses the claim for revocation.
Comment
- It is logical that the Court considers the patent resulting from the limitation proceedings and not the originally granted patent.
- However, I wonder whether the fact that the patentee limits its patent after the revocation action has been started should not have consequences for costs. In my opinion, this amounts to a de facto admission that the original patent was invalid, or at least that the patentee did not wish to defend the validity of the original patent, which, in my opinion, could lead to a decision that each party bears its own costs.
- A further question arises when such limitation proceedings result in a decision by the EPO, for instance, just before the oral hearing. What happens if the Court of First Instance invalidates the patent, the patentee appeals, and, at that time, files a request for central limitation in order to avoid to have to file new auxiliary requests on appeal? Will the Court of Appeal then then consider the limited patent?
25 June 2026 (late published)
Local Division Paris, Keeex v Adobe/Open AI
Late-filed submissions
Facts
- Keeex sues Open AI for infringement of EP 2 949 070.
- Open AI asks the Court to rule that certain arguments and evidence submitted by Keeex in its rejoinder of Keeex were filed late and do not (only) constitute a response to the reply.
- At the defendants’ request, the Judge-Rapporteur (JR) organized a management conference to deal with this issue and Keeex’s request to file further auxiliary requests (R. 30.2 RoP).
The JR
- The JR examines in detail the extent to which Keeex’s rejoinder is limited to a response to the reply.
- The JR cites all the case law on R. 30.2 RoP (further auxiliary requests).
- The JR concludes that invoking R. 30.2 RoP in response to the defence against the already filed auxiliary requests is not a reason for allowing such requests and concludes that there is no reason why these requests could not have been made earlier.
- The JR also concludes also that the addition of new products to the infringement allegations was made late and is not justified.
Comment
- The JR does what a JR is supposed to do: making timely case management decisions.
- Once again, this is a lesson for representatives that the UPC is a front loaded procedure requiring more preparation and more brainstorming of what to file than many national proceedings, in which it is still possible to introduce “second thoughts”, improved arguments, or auxiliary requests, at a later stage.
26 June 2026 (late published)
Local Division Brussels, Est. Labs v Aesthetics
UPC_ CFI_629/2026 ; UPC_ CFI_1357/2025
Order to produce evidence (R. 190 RoP)
Facts
- Labs sued Aesthetics for infringement of EP 3 107 487.
- On 16 February 2026, Aesthetics filed its defence and counterclaim for revocation.
- On 20 March 2026, Aesthetics submitted a R. 190 RoP request, which was granted on 13 April 2026.
- The request essentially concerned the patentee's activities relating to the Motiva breast implants prior to the priority date.
- On 5 May 2026, Labs produced the evidence.
- On 16 June 2026, Aesthetics submitted a further R. 190 RoP request.
- In the meantime, parallel proceedings were started in the UK.
The Court
- The Court refers to the patent, cites the claims, and notes the defendant’s argument that the patent uses unusual parameters to define the claimed product (for instance, for measuring the macro and micro roughness of the soft tissue body implant) in order to conceal that such a product had already been sold before the priority date.
- The Court cites the four conditions for a R. 190 RoP request:
- presenting reasonable available evidence in support of its claims;
would the requested evidence enable the defendant to prove its assertions conclusively? - the requested evidence must be specified and in the control of the other party;
- confidential information should be protected;
- the request must be proportionate, equitable, and fair, also taking into consideration the stage of the proceedings.
- presenting reasonable available evidence in support of its claims;
- The Court discusses the different requests and, as far as possible, aligns them with the UK order for discovery.
- The Court wanted to maintain the date of the oral hearing but states that it may postpone the interim conference.
Comment
- The Court cites and uses the correct criteria for dealing with the requests and is right to make sure that the date for the oral hearing can be maintained (thereby ensuring a judgment within 12-14 months). It is clear from the criteria cited by the Court that a R. 190 RoP request made so late that it may interfere with the Court’s ability to deliver a judgment within 12-14 months, could be refused for reasons of proportionality and fairness.
- For reasons of efficiency, it also makes sense to align the order with the discovery order in the UK.
26 June 2026 (late published)
Local Division Düsseldorf, Valeo v SEG
Interveners
Facts
- On 23 March 2026, Valeo filed an infringement action based on EP 3 157 142.
- The defendants sent interveners, who had developed the allegedly infringing product for the defendants, a letter informing them of the lawsuit and reserving any rights “in connection with this matter”.
- Interveners requested permission from the Court to intervene at the side of the defendants.
The Court
- The Court allows the intervention.
- The Court orders the interveners to file their statement of intervention by 23 July 2026, the same date on which the statement of defence is due.
Comment
- The JR (knowing that the interveners know about the case and the Statement of Claim since 4 May 2026) ignored the fact that the application to intervene was only filed on 4 June 2026 and granted an extension only until 23 July 2026 in order to avoid delaying the proceedings. This was fully justified.
- Why did Valeo (a French company) insist to file the action before the busy Düsseldorf Division rather than before the Paris Local Division or the Central Division? The question is even more justified given that Valeo was (co-)represented by its own in-house patent attorneys.
29 June 2026
Court of Appeal, Suinno v Microsoft
Costs
Facts
- The Court of First Instance (Central Division Paris) awarded Microsoft € 300.000 in costs incurred in connection with the counterclaim for revocation.
- Suinno lodged an application for leave for appeal, seeking to have the decision amended and the recoverable costs reduced to € 3.000 or, at the very most, € 41.290.20.
- Suinno argues that the costs order is against Art. 69(1) and Art. 69(3) UPCA and to the “ordre public”, and further argues that Microsoft misled the Court.
The standing judge
- The standing judge concludes that, since the JR of the Court of First Instance had followed the proceedings step by step, he could only marginally review if the work was done correctly. The recoverable costs of € 300.000 were within the reasonable ceiling applicable in the light of the value of the action. The JR had also decided that several items should not be reimbursed.
- The standing judge refuses leave for appeal.
Comment
Is this the end of the Suinno saga? Any small company considering taking on a big company before the UPC should first read all decisions in Suinno v Microsoft. If Goliath decides not to pay you for your patent, think twice before starting a fight. The first step, although certainly not the last, is to make sure that your patent is rock solid and that there is clear infringement. But who can guarantee that your patent is truly rock solid? The EPO provides no such guarantee and sometimes does not find with its search the most relevant prior art!
29 June 2026
President of the Court of Appeal, Silimed (Applicant) v Polytech
Appeal decision of the Registrar
Facts
- On 25 November 2015, Polytech obtained EP 2 581 193.
- In 2017, the applicant Silimed commenced litigation in Germany seeking the transfer of the European patent for all designated countries.
- On 30 March 2023, Polytech files an opt-out.
- On 5 January 2026, the German court issued a final decision confirming the first-instance judgment ordering the transfer of the patent.
- On 9 January 2026, a company related to Polytech filed a revocation action in Germany.
- On 4 February 2026, the Applicant lodged an application to withdraw the opt-out filed on 30 March 2023.
- On 7 April 2026, the Applicant filed an application to withdraw the opt-out of 30 March 2023, arguing that Polytech was not entitled to the patent and therefore not entitled to do the opt-out.
- On 10 April 2026, the Registrar rejected the request for removal of the opt-out on the ground that, in 2023, the opt-out had been filed by the owner of the EP.
- The Applicant appealed.
The President of the Court of Appeal
- Referring to R. 5A RoP and R. 5.1 RoP, the President states that the person recorded as the proprietor in the relevant national register is entitled to do an opt-out unless it is proven that, at the time the opt-out was filed, another person was the proprietor of the patent.
- As the decisions of the German Courts ordering the transfer of the patent do not have retroactive effect, the opt-out filed in 2023 was validly filed by the person who was, at that time, the proprietor of the patent.
- The appeal is dismissed.
Comment
- A German Court ordered Polytech to transfer all national designations of an EP patent to the Applicant. The President of the Court of Appeal decides, in my opinion correctly, that the implementation of such court order does not have retroactive effect.
- If retroactive effect is desired, entitlement proceedings would have to be commenced in each country. Even then, most national patent laws mitigate the retroactive effects (for example, with respect to licenses, security rights, etc.)
- The logical consequence of this conclusion (the absence of retroactive effect) is that the opt-out filed before the transfer order remains valid. The new owner (the real inventor?) would have to w opt-in in order to use the UPC.
- However, as can be seen from the facts, in the meantime the old owner Polytech (using a related company) has started invalidity proceedings in Germany. As a result, the Applicant (and the true inventor) could not opt-in anymore.
- The applicant tried to repair this and obtained a preliminary injunction (PI) from the national Munich court ordering Polytech not to interfere with Applicant’s patent rights. However, even assuming that Polytech’s associate company had withdrawn the invalidity action, this would not have helped because Art. 83(4) UPCA is sufficiently clear: once, following an opt-out, an action has been brought before a national court, it is no longer possible to withdraw the opt-out.
- In my view, the Applicant should have withdrawn the opt-out the hour following the transfer (assuming, as I believe, that in all UPC countries the ownership of the patent changes the moment of the written transfer).
- Apparently, the applicant Silimed did not know about Art. 83(4) UPCA. That is not unusual. Two years ago, at a pharma conference in the US, I asked who had opted-out. All pharma companies present had, at the advice of their European counsel, opted-out because they feared central revocation of their patents and wanted to “wait and see” (or, as we say in Dutch: “looking the cat out of the tree” which, if you have ever seen a dog barking at the cat in the tree, can be a long time). When I said that it would be very easy for a generic company to make sure that they could never use the UPC (by filing a national revocation case, even if it were quickly withdrawn) nobody had been advised of this by their European counsel!
- In this case as well, this proved fatal for the Applicant who should not have spent money on the request (and appeal) and on the PI proceedings in Munich, but should simply have filed the request to withdraw the opt-out an hour after the transfer.
29 June 2026
Court of Appeal, Huawei v Quinn Emanuel
Request for inspection
Facts
- Quinn Emanuel filed a R. 262.1(b) RoP request for access certain pleadings in a case between Huawei and MediaTek that had ended without a decision.
- The Judge-Rapporteur (JR) granted access to the pleadings, except for certain f blacked out passages because they contained certain confidential information.
- Huawei requested a review of that order. In response, the JR changed its order so that access would be granted only after the revision procedure.
- The Local Division Munich decided that the request for review was not admissible and unfounded. It also refused leave for appeal.
- Huawei filed a request for discretionary review.
- The standing judge of the Court of Appeal granted the request and invited the parties to comment on the question of what the review/appeal possibilities are with respect to a decision on a request for access to documents.
The Court of Appeal
- The Local Division held that a review by the panel of the JR decision o was not possible because R. 262.1(b) specifically assigns the decision on access to the JR and not to the panel. It further held that Huawei should instead have directly appealed to the Court of Appeal under R. 220.1(b) RoP, considering the JR order to be “a decision terminating the proceedings as regards to one of the parties”.
- The Court of Appeal does not agree and decides that review by the panel is possible and that any appeal should is governed by R. 220.2-4 RoP.
- The Court of Appeal acknowledges that it is not clear what should happen if a party does not agree with a decision of the JR concerning access to the file.
- After several considerations the Court comes to the conclusion that the review proceedings should also apply in this case in order to avoid unnecessary appeals and that a discretionary appeal is possible.
Comment
Observers and Divisions have been invited by the Presidium to submit (a limited number!) of proposals for amendments to the Rules of Procedure. So although I cannot make any proposals, I would suggest the following:
- After three years, it is apparent that the number of successful applications for reviews is very very small. Often a JR, before taking a(n important) decision, will consult the panel or at least the Presiding Judge, making a successful review very unlikely. In view of this, I would remove the whole review ex R. 333 RoP. The same is true with respect to discretionary appeals against orders: their success rate is close to zero. Appeals against procedural orders should instead be brought only together with the appeal against the decision on the merits. These two measures would save the Court considerable time. An exception could be made where a novel point of law which has not been clarified is at issue. In such case, one could appeal with the consent of the panel for leave for appeal by the panel (without requiring a review procedure).
- A further time saving measure would be to provide that, once a confidentiality request has been granted during the proceedings, only the redacted version is available for inspection. After the end of the case (at first instance, after appeal, or following settlement), the redacted versions of the pleadings and evidence should automatically become available for public access without any further intervention by the Court. In other words, if a party wishes to keep parts of the pleadings or evidence confidential even after the proceedings have ended, it should request this during the proceedings, which will often coincide with its application under R. 262A RoP. Of course, the possibility for a member of the public to challenge the confidentiality should remain.
29 June 2026
Court of Appeal, Polytech v Dall
Order to produce evidence
Facts
- Dall alleges that the Polyheld furnace marketed by Polytech infringes its method patent.
- The defendant Polytech denies infringement, arguing that features F7 and F7.1 are not present.
- To establish infringement of these features, the claimant Dall relies on a brochure of the defendant.
- The defendant states that its brochure is technically incorrect.
- At Dall’s request, the JR of the Copenhagen Local Division issued an order on 10 April 2026 to produce the following evidence:
- complete construction drawings of the furnace at the Obenpullerdorf site;
- complete construction drawings of Polyheld furnace supplied to other sites;
- operation and maintenance manual provided to its customers relating to the Polyheld furnace.
- Polytech appealed.
The Court of Appeal
- The Court of Appeal starts with general remarks on the legal framework.
After referring to R. 190 RoP, Art. 56 UPCA and Art. 6 of the Enforcement Directive, the Court states:
“The function of taking evidence under Rule 190 RoP is to ensure the effectiveness of judicial protection by enabling the party bearing the burden of proof to discharge that burden where relevant evidence lies outside its sphere of control.“
- The Court states that R. 190 RoP does not alter the burden of proof but facilitates its discharge.
- The power to grant a request to produce evidence is not unlimited:
- such measures may only be granted on the basis of specific and substantiated allegations and cannot be a fishing expedition. The UPC does not provide for general discovery;
- the requested evidence must be strictly necessary for deciding the dispute;
- the requested measures must be proportionate
- the evidence cannot reasonably be obtained in another way;
- the burden imposed on the responding party must be justified in the light of the interests at stake;
- there must be a fair balance between competing rights such as the right to protect confidential information.
- The decision to grant must be reasoned in terms of specificity and substantiation of the litigation, as well as its necessity and proportionality.
- The Court discusses each ground of appeal in detail:
- production of complete technical documentation.
The Court agrees that the order was justified in view of the allegations based on the defendant’s marketing material and expert reports. However, it held that this order did not satisfy the requirements of strict necessity and proportionality for proving the specific contested facts. The burden of proving infringement remains with the claimant. Art. 59 UPCA may assist a party discharging that burden where specific evidence lies in the control of the opposing party, but it cannot justify an unduly broad of undifferentiated disclosure of technical information. - evidentiary necessity for process features
The Court states that, even if the documentation cannot establish a certain feature, it may still be ordered if it can assist in proving the relevant fact. - fishing expedition
The Court agrees that the order cannot be used to obtain, as long as infringement is not established, information to the quantification of the infringement or other matters beyond what is necessary for the case. - self-incrimination
in light of the relevant case law, the Court holds that Art. 59 UPCA cannot be seen as violating the principle against self-incrimination. - Insufficient confidentiality
The Court does not agree. Representatives are bound to secrecy and should therefore have access. R. 262A RoP provides for confidentiality obligations imposed by the Court that aref appropriate, proportionate and tailored to specific circumstances of the case.
- production of complete technical documentation.
- The Court amends the order by limiting the requested disclosure to a single production site.
Comment
- A must read for all representatives (and judges), as it not only explains the underlying rationale of the provision but, more importantly, sets out exactly what a request for the production of evidence should contain.
- In my opinion, all the requirements identified by the Court for a successful request for the production of evidence should equally apply where a party asks for an evidentiary seizure and/or inspection order. In particular, the requirements of necessity and proportionality should be applied: is the seizure (for example, during an exhibition) really necessary, or can the relevant information be obtained by other, less intrusive means.
2 July 2026
Local Division Lisbon, Ericsson v Asustek
Enforcement
Facts
- On 15 June 2026, the claimant notified the Court of its intention to enforce the decision of 6 May 2026 (R. 118.8 RoP).
- Defendant did not raise any objections.
The JR
- The Judge-Rapporteur (JR) states that a certified translation is not necessary and that the orders contained in the decision of 6 May 2026 are enforceable from the date on which the claimant notified the Court.
- The JR then issues an order “acknowledging that claimant has complied with R.118.8 RoP”.
- Furthermore, the JR mentions that any party may ask for a review of the order.
Comment
- I agree with the JR that no translation is necessary. but I do not agree that the orders of the 6 May 2026 decision are enforceable from the date of the claimant's notification to the Court. I think that the notice has to be served on the defendants, and only then the orders become enforceable.
- I wonder whether the defendant (who “did not raise objections”) must be informed and, if so, whether it can raise objections. I do not think so. I think that the whole order is unnecessary and out of place , let alone the possibility for the parties to request a review. R. 118.8 RoP seems to me written in order to tell the Registry what has to be served. I also do not understand the last paragraph of R. 118.8 RoP. In my view, it should have been drafted as a separate subparagraph.
2 June 2026
Court of Appeal, Sophia v Guardant
No urgency
Facts
- The Paris Local Division refused to grant a preliminary injunction (PI) sought by Guardan against Sophia on the basis of EP 073, EP 066 and EP 986, because it held that it was more likely than not that the patent at issue on appeal (EP 066) was invalid due to added matter.
- Guardant was ordered to pay interim costs € 400.000.
- Guardant appealed only with respect to EP 066. Sophia filed a cross-appeal.
The Court of Appeal
- International jurisdiction: Sophia contests the Court’s jurisdiction with respect to the infringements in Spain and Switzerland.
- The Court refers to Solvay v Honeywell and accepts jurisdiction on the basis of Art. 8 sub 1 of the Brussels Regulation, holding that both the anchor defendant and Sophia Switzerland are jointly responsible for the alleged infringements in Spain and Switzerland.
- The Court describes the invention and formulates as object “to provide as improved method for using cfDNA to detect and monitor cancer”.
- The Court defines the skilled person, interprets the claim, and disagrees with Sophia’s argument that the claim requires the identification of the cancers.
- The Court also states that it is sufficient for the claimed method to be used for the detection of only one of the four cancers mentioned in the claim.
- With respect to feature 1.6, the Court accepts Sophias interpretation.
- New legal arguments can be raised on appeal. Claim interpretation is a matter of law.
- The Court agrees with Guardant that the Paris Local Division was wrong in holding that the patent was more likely than not to be invalid because of added matter. Implicitly disclosed matter shall also be considered as part of the content of a patent application.
- Also here the Court states that added matter is a question of law and the Court is entitled to consider the entire document. Accordingly, Guardant was allowed for the first time to rely on example 2 during the oral hearing at first instance.
- Urgency: the Court finds that the facts alleged and the evidence submitted by Guardant are insufficient to conclude that Guardant acted without undue delay.
- If a patentee owns several patents but already has all the evidence of infringement of one of them and nevertheless fails to act, this may constitute unreasonable delay.
- A patentee does not have to start proceedings before having sufficient evidence. Hence, it is for the patentee who files for a PI to explain, in a substantiated manner, what further analysis was required, why this was necessary, how long it took, and why that period was reasonable.
- The Court concludes that Guardant failed to establish urgency.
- A cross-appeal is inadmissible where it challenges only the reasoning of the decision and not its operative part.
- The same applies costs. The Court of Appeal decides on its own about the costs of both the appeal and the first instance. Therefore, if the Court in first instance did not make a decision on costs, the Court of Appeal may do so itself and therefor a cross appeal is not admissible.
Comment
- The requirement of urgency for a PI should be taken seriously. With respect to knowledge of the infringement, a patentee cannot rely on formalistic arguments (“the patent was not mentioned in the warning letter”, etc.). Although it is not required to actively monitor the market, it should be considered to have knowledge if, in view of the circumstances, a reasonable person would have become aware of the alleged infringement.
- A patentee does not have to start proceedings before it has its case fully prepared, but it should be able to show, in reasonable and convincing manner, that it acted diligently, with a sense of urgency. The problem is that in big companies the decision-making is often slow and that internal labs responsible for testing are slow too. Many people nowadays work only 4 days a week, and take 5 weeks’ vacation (indeed, in this case the delay appears to have occurred during the vacation period). So this is a wake up call: urgent is really urgent. If a matter is truly urgent, it cannot wait. So if a patentee waits too long the matter is not urgent! I think in the UPC context where you can get a decision in around 12 to 14 months, such a rather strict approach to urgency is justified.
- We know that claim interpretation, added matter (and, of course, inventive step) are questions of law. A party may therefore have a different interpretation of a claim on appeal (or even during in the oral hearing at first instance), provided that the reasoning is based on the same facts. However, how does that work in practice? In this case, the Court did not make a problem (because added matter is a legal question) that the patentee for the first time referred to example 2 during the oral hearing to argue that there was no added matter. But is that not, in reality, a new argument, or perhaps even a new fact? Anyway, I do not find this entirely satisfactory. The other party can be taken by surprise when, after the whole discussion between the parties has concentrated on completely different arguments, that party all of a sudden relies on example 2, which has never been discussed in the context of added matter. I accept that, where an issue is one of law, the Court may, even if parties have not referred to it, conclude for its own reasons that there is added matter by relying for instance on example 2. However, would that not qualify as a surprise decision? If so, should the parties not be given an opportunity to comment on it?
– All comments above are Prof. Hoyng‘s personal opinions –