UPC Unfiltered, by Willem Hoyng – UPC decisions week 49, 2025

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19 November 2025 (late published)

Local Division Milan, Morello v Gastroteam

UPC_CFI_802/2024 

Default judgment re pizzas

Facts

1. The two defendants (from Sweden and Italy) have been properly served for infringement of claimant’s patent for a method and machine for making pizza bases.
2. The defendants do not appear in Court.

The Court

1. The Court cites all the applicable “default” provisions on the Statute of the Unified Patent Court (Art. 37) and the Rules of Procedure (R. 277 RoP and R. 355 RoP), and follows these Rules.
2. It states first of all that the Statement of Claim has been properly served. It concludes that no Statement of Defence has been filed within the required period. It discusses the patent and (as required by the Rules) motivates why indeed based on the facts presented in the Statement of Claim there is an infringement and grants the injunction with the usual further claims, including the order to place a message (in English) on their homepage that their machine is infringing and will not be marketed  anymore.

Comment  

1. A must read for everybody who loves the Italian language and true pizza’s (and who does not?). You will be disappointed to learn that also in Italy, some pizza bases are made by a machine. So, when in Italy, make sure that you see the pizza maker prepare the pizza bases by hand!
2. You also see how versatile the UPC is. There is no problem to find a third non-Italian judge who speaks Italian, and moreover has for many of my (and other) generations a famous Italian name which brings back pleasant memories!

20 November 2025 (late published)

Local Division Düsseldorf, Canon v Katun

UPC_CFI_351/2024; UPC_CFI_595/2024

Exchange of further pleadings (R. 36 RoP)

Facts

1. The claimant wants to submit the preliminary opinion of the opposition division (“OD”) of the European Patent Office (“EPO”) in the proceedings with further submissions.
2. The claimant also wants to submit the result of a new test purchase in the proceedings.

The Judge-Rapporteur (“JR”)

1. The JR accepts the OD’s opinion together with the part of the submissions which is a summary of the opinion (“The content of the submission could have been deduced from the preliminary opinion itself”).
2. The JR does not accept the additional evidence related to recent test purchases, because this could have been filed earlier. If the products are identical to the products already in the proceedings, as the claimant argued (albeit having different references), they will be added to the operative part of the decision.

Comment

1. A good decision except for allowing this summary. No reason to allow this. Can the defendant also file his summary? Did they agree to that summary (apparently not)?
2. A lesson: be vigilant. If you come across something useful during the proceedings, do not waste time with internal discussions but file it!

21 November 2025 (late published)

Central Division Munich, UPM v International N&H

UPC_CFI_829/2024

Interim conference

Facts

1. The revocation proceedings were started on 20 December 2024.
2. The interim conference (“IC”) took place on 21 November 2025.

Orders made at the IC:

1. The value of the case is set at €1 million.
2. The defendant is allowed to clarify and order its requests as discussed during the interim conference.
3. The oral argument is set for 15 January 2026.

Comment

This is exactly the goal of an IC. Apparently the defendant had not submitted clear requests in a logical order. Whether they did this on purpose (“to keep options open”) or not, does not matter in the end. The JR sorted it out during the interim conference so that during the oral argument everybody knows what they are talking about!

24 November 2025 (late published)

Court of Appeal, Suinno v Microsoft

UPC_CoA_000911/2025

Appeal suspensive effect

Facts

1. On 9 April 2024, Suinno started an infringement action against Microsoft in the Central Division of Paris.
2. On 12 July 2025, the Court of Appeal dismissed the infringement case in a default decision, ordering Suinno to pay the costs of first instance and appeal. Suinno lodged an application for rehearing.
3. On 6 November 2025, the Paris Central Division issued a cost order against Suinno for €350,000 to be paid within three weeks.
4. On 19 November 2025, Suinno appealed and asked for suspensive effect.

The JR at the Court of Appeal (“CoA”)

1. Suinno argued unreasonableness if Microsoft could enforce “this erroneous and grossly exaggerated” amount while it had been appealed.
2. That is no reason for suspensive effect, as there substantiation of a “manifest error” or “an appeal become devoid of purpose”.
3. The JR rejects the request.

Comment

1. Once again, a useless request for suspensive effect.
2. We see so many of these requests for suspensive effect: after 2 years, the position of the Court of Appeal on this exception is pretty clear and you wonder why appeal judges still have to waste their precious time on this.
3. In a law firm, or even in certain national courts when it comes to administrative or other mundane tasks, a decision in a case like this can easily be prepared by an assistant. However, in the UPC that is not the case. It is even worse: judges have no assistance whatsoever. They have to do everything themselves, from the most mundane administrative tasks to case law research. The Administrative Committee and the Budget Committee should realize that this is a waste of talent and money. It is frustrating to see these hard-working judges who give the UPC such an excellent reputation (no doubt about it), spend time and time again on this kind of bound-to-fail applications. Why not do what is customary in for instance the US, and allow each judge to choose a young graduate for an internship of a year as his/her assistant, and enable the court to pay them a compensation? I have said it before and will keep saying it: it is an absolute win-win situation both for the Court and the intern (“clerk”). 

25/26 November 2025 (late published)

Local Division Düsseldorf, Topsoe v Sypox

UPC_CFI_1696/2025

Order for inspection / evidentiary seizure

Facts

1. On 21 November 2025, Topsoe applied for an order for inspection / seizure of evidence at two plants of the two defendants.
2. Topsoe had already tried to obtain information in a different way but that proved not possible.
3. The patent is a method patent.

The JR

1. The applicant has stated in a credible way that the patent is possibly infringed and that inspection and seizure are necessary to prove infringement.
2. No validity check is necessary unless there would be clear evidence to doubt that the patent is valid.
3. The application is urgent and necessary as there is no other way to obtain the evidence.
4. Ex parte proceedings are necessary because of the risk for technical drawings to disappear.
5. Taking away computers and stopping the production process is only authorized in case of necessity for getting the evidence.
6. The JR grants the ex parte request which is corrected on 26 November.

Comment

1. This is a textbook application and order for obtaining evidence with respect to infringement of method claims in a situation where there is running production process at the place of inspection.
2. See for a similar decision, but at an exhibition, the late-published decision of the same Division of 17 November 2025 in Komax v Jiangsu (UPC_CFI_1589/2025[LB1]).

27 November 2025 (late published)
Local Division Paris, Keeex v Adobe et al.

UPC_CFI_530/2025

Internal competence and international jurisdiction

Facts

1. On 17 June 2025, Keeex started infringement proceedings against Adobe et al.
2. The defendants filed a preliminary objection contesting the international jurisdiction of the Local Division with respect to the Swiss, Spanish, UK, Irish, Norwegian and Polish national parts of the EP (i.e. non-UPC Member States).
3. One of the defendants also contests the internal competence of the Paris Local Division based on internal French procedural rules according to which a bailiff report supposed to show infringement in France would have no probative value.

The JR

1. The (formalistic) French rules do not apply because we are in the UPC. For establishing jurisdiction, the proof that the infringing site is accessible in France is certainly good enough.
2. All the defendants are non-UPC residents. The international jurisdiction is based on Art. 7(2) Brussels I bis Regulation (“BR”) because the only criterion is if the site is accessible in France, where one can obtain the digital tool that is alleged to infringe. The same is true for the other defendants.
3. With respect to countries outside the UPC, the JR refers to the decision of the Local Division in Mannheim of 2 October 2025 in HUROM v NUC.
4. With respect to the internal competence, the JR refers to Art. 33.1(a) UPCA.

Comment

1. The (French) JR is completely right to reject the nonsensical argument that French internal law would be applicable for the standard of proof. She also bravely uses the word formalistic. (I remember a case in which an intern bought an article in a shop in France which allegedly infringed a trademark but the Court rejected the evidence because the intern, hired by the law firm representing the claimant, was considered to lack independence from the applicant and this cast doubt on the probative value of the test purchase – but this case law has since fortunately been overturned by the French Supreme Court).
2. The JR is also correct to rule that if the Statement of Claim asserts that there is infringement in France and that statement is not prima facie incorrect, the UPC has jurisdiction on the basis of Art. 7.2 Brussels I bis Regulation (BR) (Art. 71b sub 2 BR).
3. The JR is also correct that, as the alleged infringement takes place in France, it also has internal competence (Art. 33.1.a UPCA).
4. However, I disagree with the JR that the Paris Local Division would have international jurisdiction on the basis of Art. 7(2) BR for the non-UPC countries. The JR refers to the Mannheim Local Division decision in Hurom v Nuc (CFI 162/2024, 2 October 2025), but that based its decision on the Wintersteiger case of the Court of Justice of the European Union (“CJEU”) (of 19 April 2012, C-523/10). According to this decision, you can also sue in the state where an act takes place that causes infringement elsewhere (Handlingsort). That is not the case here. You cannot say that making the website accessible in France causes infringement in the UK and the other non-UPC countries. So in my opinion that is incorrect.
5. With a very creative and liberal interpretation, you could think about Art. 71b (3) BR but, even adopting such an approach, I cannot see that the dispute in the non-UPC countries has a sufficient connection with France!

27 November 2025 (late published)

Central Division Milan, Pari v Philips

UPC_CFI_613/2024

Revocation action

Facts

1. The revocation action was started on 23 October 2024 against a Unitary Patent for “Air-flow in a nebulizer head”.
2. The claimant argued:
   1. lack of novelty;
   2. lack of inventive step;
   3. of independent as well as of dependent claims.
3. The patentee filed two auxiliary requests.
4. As per the first auxiliary request “the patent shall be partially upheld by maintaining the claims that the Court believes to be valid while only revoking the claim the Court believes to be invalid”.

The Court

1. The claimant can rectify its name.
2. The claimant has standing: “concerned by the patent” (within the meaning of R. 47(6) RoP) does not require the claimant to show a specific legal or economic interest in the patent. Everybody potentially operating in the field of the patent can bring a revocation action – this criterion mainly excludes strawmen.
3. The Court breaks down the claim as agreed by the parties and start with interpreting the claim in accordance with the Court of Appeal’s decision in Nanostring v 10x Genomics (UPC_CoA_335/2023).
4. With respect to novelty, the Court remarks: when it comes to “purpose” characteristics, if the prior art discloses a device with physical characteristics as disclosed in the patent, it is novelty-destroying irrespective of the intended use, except where the disclosed device is not suitable or needs to be amended to be suitable for the intended use as claimed by the patent.
5. D1 (constituting prior art under Art. 54(3) EPC) takes away novelty.
6. Auxiliary request 1 is inadmissible.
7. Auxiliary request 2 is admissible.
8. Inventive step analysis: the Court refers to Art. 56 EPC and to the decisions of the Court of Appeal of 25 November 2025 (in Meril v Edwards, UPC_CoA 457/2024, and in Amgen v Sanofi, UPC_CoA 528/2024, 529/2024).
9. The Court takes a product which was put on the market before the priority date as a realistic starting point and finds, on an hypothetical basis, that some elements of the claim are present in the prior art product, but the Court eventually sees no incentive to arrive at the product claimed in the patent.

Comment

1. The novelty-destroying Art. 54 (3) EPC prior art could not be invoked to argue the lack of inventive step of the new auxiliary request 2. The Court in my opinion correctly applies the criterion of the Court of Appeal with respect to inventive step.
2. It is somewhat strange that the applicant did not establish common general knowledge (as pointed out by the court). One would expect that this could have provided some good lack of inventive step arguments against this type of generally known products. 

27 November 2025 (late published)

Local Division Mannheim, InterDigital v Amazon

UPC_CFI_936/2025

Access to recording of the hearing

Facts

The defendants wanted the recording of the hearing to be made available to the respondents or their representatives at the premises of the Court at the Local Division Düsseldorf, so that they could take notes with the help of a professional transcriber.

The JR

The representatives are only allowed to listen to the recording.

Comment

1. The JR first considers that a full transcript is not necessary, as US counsel could also listen by video and there were sufficient representatives present who could make notes during the hearing. But, in preparing an appeal, you want to be sure you know exactly what was said. I am not convinced by the argument that a party had enough representatives in the court room who did not speak and could take notes. If I hire and bring an associate to the hearing only for their stenographic capacity, what is the difference then with the request of the defendants?
2. The JR also fears that such transcript could be used in a so-called “beauty contest” to advertise the capabilities of the representatives to prospective clients. I do not think this should be a concern. In my 53 years of practice, I have never used my pleading notes (basically the same as a verbatim report of an oral argument in Dutch proceedings) to win a beauty contest. Transcripts of oral hearings are generally full of verbal tics, wrongly pronounced words, etc., which you certainly do not want to use for self-promotion. Moreover, it could simply be ruled that the transcript cannot be made public but can only be used for the purpose of the proceedings.
3. A confidentiality regime should be no reason either to deny the possibility of making a transcript out of the audio recording. Of course, the parts of the hearing which were ruled confidential shall remain subject to the confidentiality regime.
4. The Rules drafting history points in a different direction. Reporter Tillmann (from Germany) suggested after the public consultation that one could only listen to the recording. However, the rest of the Drafting Committee during its meetings of 14, 16 and 17 December 2013 had a different view. This is understandable, as the UK members were used to full transcripts, which then could still be made from the recording at the Registry. The text remained unchanged, the audio recording being “made available” without any restriction. The text was also accepted by the legal group of the Preparatory Committee (which consisted of representatives of the different countries).
5. There has never been any discussion in the Drafting Committee indicating that R. 115 RoP should be interpreted in accordance with the customs of the Court of Justice of the European Union, which is a court of a different nature than a first-instance court where facts are important and where minutes are produced.
6. I do not think it is plausible that a representative would make a false transcript and present this as a court manuscript. That should lead to severe consequences for the representatives and would also be easy to show. On the contrary, a person who makes just cursory notes may draw wrong conclusions, even in good faith.

28 November 2025 (late published)

Local Division The Hague, GlaxoSmithKline (GSK) v Moderna

UPC_CFI_619/2025; UPC_CFI_1526/2025

Separating revocation action

Facts

GSK asserts two patents in an infringement action against Moderna. Moderna filed a defence and a counterclaim for revocation against both patents.

The Court

1. Orders to separate the counterclaim in two different actions.
2. Reasons given:
   1. it is a complicated case;
   2. different stages of opposition proceedings pending for each patent at the EPO;
   3. paying only the (very low) flat fee once for two counterclaim actions is not justified.

Comment

1. I fully agree that Moderna should pay extra €20,000 in court fees for having launched two revocation actions. In fact, such fees for these type of very valuable cases are far too low and the Court should have discretion in exceptional cases to increase the fees (for instance to a percentage of the recoverable costs).
2. What I do not understand is why apparently the infringement case is not split as well. It would seem more logical as the revocation actions are a reaction to the infringement actions. The current approach results in the strange situation that the Local Division is going to deal with one standalone revocation action for which in fact it is not competent.
3. The Drafting Committee did not envisage such use of R. 302.1 RoP. The counterclaim may be considered as separate proceedings due to CMS-related considerations but I think these remain the same proceedings between the same parties, consisting of a claim and a counterclaim.

28 November 2025 (late published)

Local Division Düsseldorf, Hewlett-Packard v Zhuhai ouguan

UPC_CFI_449/2025

Preliminary injunction / service

Facts

1. HP filed an application for a preliminary injunction (PI) on 30 May 2025 on the basis of two patents against a Chinese defendant and the German company Rentmeister.
2. Rentmeister was served and injuncted.
3. The service documents for the Chinese defendant were sent to the Chinese Central Authority and further actions were undertaken by the claimant and the Registry. In the end, the Court relied on R. 275.2 RoP (service by alternative method) to accept that service had been performed.
4. The defendant was invited to file its objections but did not do so.

The Court

After thorough discussion of HP’s arguments, the Court considers the application justified and grants the PI on the basis of both patents.

Comment

1. I have already discussed several times the situation of Chinese defendants in PI proceedings. Applying for a PI in May and getting a decision in November merely because the defendant is based in China is not satisfactory. This can all be solved applying Art. 15 (3) of The Hague Convention. I assume that in any event the Local Division in The Hague would apply that provision in such a case. All the efforts made by the claimant, the Registry and the Local Division Düsseldorf in this case, ending up with the court resorting to R. 275.2 RoP, which in my opinion is not in conformity with The Hague Convention, should not be necessary.
2. Note that the Court does not grant an order by default but a normal order which therefore cannot be set aside (R. 356 RoP).
3. Note also how important it is to lodge a convincing Statement of Claim, as even without a defendant the court will check in a thorough way if the PI is justified. The court does not limit itself (as in certain national systems) to looking superficially whether based on the facts as stated by the claimant the injunction is justified. The UPC gives you value for your money (the court fee)!

28 November 2025 (late published)

Local Division Munich, JingAo v Chint

UPC_CFI_425/2024; UPC_CFI_751/2024

Infringement action / competition law

Facts

1. The claimant alleges infringement.
2. The defendant objects on the grounds of:
   1. lack of standing
   2. incomplete infringement allegations
   3. lack of infringement
   4. invalidity
   5. antitrust violation.
3. The patent was upheld by the Opposition Division (OD) which decision is under appeal. The Board of Appeal of the EPO has issued preliminary opinion.
4. The defendant requests an order to produce evidence (to prove the claimant’s market abuse). 

The Court

1. On the standing to sue: all transfers are valid and the court dismisses the defence.
2. On the insufficient infringement allegation: if all the products for which an order is sought have the same construction, it is sufficient to show (with tests) the infringement by one of them.
3. The court defines the skilled person and interprets the claim elements. In doing so, the court uses the defendant’s expert declaration to confirm its broad interpretation of a claim element and agrees with the OD with respect to another claim element.
4. With respect to extension of subject matter (123(2) EPC) the Court applies the gold standard, referring to the principles set out by the Court of Appeal in its decisions in  Abbott v Sibio and Amgen v Sanofi. The Court finds (as the Board of Appeal in its preliminary opinion) that Figure 8 shows all the elements of claim 1.
5. The patent is sufficiently disclosed and novel.
6. The court applies the test formulated by the Court of Appeal in Sanofi v Amgen (UPC_CoA 528/2024, 25 November 2025) for the assessment of inventive step, and points out that the defendant raised “numerous combinations from the prior art which [were] not consistently pursued in the further course of the proceedings”.
7. The Court justifies, claim element by claim element, why it considers that there is infringement.
8. If indeed two companies jointly have such a technological advantage in the market that they can behave independently towards other market participants, then they may collectively hold a dominant market position. However, this cannot be based on a forecast of how the market will develop.

Comment

1. It was already clear from the case law that you do not have to discuss all the allegedly infringing products in detail if the patent is used in the same way in all these products.
2. We see that consideration of the OD and the Boards of Appeal of the EPO are taken into consideration by the court. We further see (not for the first time) that drawings can also provide basis for a claim and that the gold standard should also be applied in a realistic and not formalistically driven way.
3. The Local Division Munich which, in earlier decisions, stated that it applied the same problem-solution-approach as the EPO for the inventive step test for harmonization purposes, now rather seems to apply the standard set in Amgen v Sanofi.
4. The Court listed 46 different combinations “non consistently argued” by the defendant in its inventive step attack. This “the more the better” strategy is ill-advised! It reinforces the impression that there was indeed an inventive step. You cannot be lazy as a representative and throw everything possible attack in, in the hope that the court picks one. You have to make a choice yourself: what are the two or three best combinations?
5. You cannot, as the defendant in this case, argue defences such as competition law and proportionality without very solid, factually established,  convincing arguments.

1 December 2025

Central Division Munich, TCL Europe SAS v Corning

UPC_CFI_337/2025

Interim conference

Facts

1. The claimant filed a revocation action on 22 April 2025.
2. The interim conference was held on 28 November 2025.
   Order of the JR following the interim conference (in addition to other housekeeping matters):
   1. The value of the case was set at €6,250,000 .
   2. The parties were allowed to both submit a further brief in order to supplement their case with respect to inventive step and sufficiency in the light of the recent decisions of the Court of Appeal in Meril v Edwards and Amgen v Sanofi.
3. The oral hearing will take place on 3 February 2026.

Comment

1. Without causing any delay, the JR intelligently gave parties the possibility to take in consideration the recent decisions of the Court of Appeal so that the oral hearing can be much more efficient.

2. The UPC is supposed to hand down quick decisions. The CD Munich gives a perfect example. An oral hearing set 9,5 months after the start of the proceedings!

    

1 December 2025
Court of Appeal, Innovative Sonic v Oppo et al.

UPC_CoA_838/2025

Change of language

Facts

1. Oppo asked for a change of language from German to English and was successful.
2. Innovation Sonic, a Taiwanese company, appealed that decision.
3. The argument being: drafting pleadings in English is expensive. That is not so much the case with the production of working translations. Both representatives are German.

Decision

The appeal is dismissed.

Comment

1. I feel sorry for this Taiwanese client who hired a representative who does not seem aware of the case law with respect to applicable languages and who charges extra fees because he apparently would rather send his clients (probably rough) translations for the work he prefers to do in German!
2. There are sufficient representatives who couple first-class quality work with a very good level of English. Why would you then file your case in a very busy German Division with a German representative who apparently has difficulty with the English language?

2 December 2025

Court of Appeal, Windhager v Bellissa Haas

UPC_CFI_0000894/2025

Suspensive effect

Facts

1. Bellisa obtained an infringement decision against Windhager. The revocation action was dismissed.
2. Windhager appealed and asked for suspensive effect.
3. Windhager argues that the decision of the Local Division shows obvious mistakes.
4. Windhager also argues that a new revocation action has been brought in the Central Division of Milan (by a different entity) and asks for suspension until the Central Division has decided.

The JR

After repeating the requirements for a suspensive effect (“manifest error”; “appeal without object”), dismissed the application.

Comment

1. As I have said many times before, do not waste your clients’ money on suspensive effect if you are not able to clearly and convincingly show a manifest error in two paragraphs in the application for suspensive effect.
2. In this case, the Statement of Appeal first  did not fulfil the required formalities (R. 229 RoP). Then, in their request for suspensive effect, the representative only referred to the grounds of appeal and did not indicate the grounds for suspensive effect directly in the application (R. 223.2 RoP). They did not refer to any manifest error and even invoked an irrelevant ground: the new revocation case in the Central Division. If you are unwilling to study the Rules and follow the case law, then you’d better continue practicing in your familiar national system. 

3. Instead of useless requests for suspensive effect, it is wiser to warn and prepare the client for the worst-case scenario: what do you do if you lose the case in first instance?

    

4 December 2025

Local Division Brussels, Barco v Yealink

UPC_CFI_806/2025

Preliminary objection withdrawal

Facts

1. In the action on the merits, Yealink had raised a preliminary objection that the Brussels Local Division had no territorial competence under Art. 33(1)(a) UPCA.
2. The same issue was raised in preliminary injunction (PI) proceedings between the same parties: in these proceedings, in which the facts were also identical as far as jurisdiction was concerned, the Court of Appeal decided that Yealink’s objections were unfounded.
3. Yealink therefore decided to withdraw its preliminary objection pending in the action on the merits.

Order

The Court closes the preliminary objection proceedings and dismisses all of Yealink’s requests in its application of 17 November 2025.

Comment

1. How can you dismiss requests which have been withdrawn?
2. It is not clear if the reason for the dismissal is that the JR thinks that you have to use the R. 265 RoP route - which only refers to “actions” - to withdraw your application.

4 December 2025

Local Division Düsseldorf, Aesculap v Shanghai Bojin Medical Instrument

UPC_CFI_307/2025

Housekeeping

The JR

1. The JR fixes the oral argument for 17 June 2026.
2. The JR adds another Shanghai-based company to the proceedings.
3. With respect to the request of the claimant to add “Bojin Rosenfräsers” to the proceedings, the JR wonders whether this does not already fall under the claims as formulated in the Statement of Claim or whether the defendants will have to reckon with a request for an amendment of claim in the present proceedings. The JR suggests to the defendants 1 and 3 to drop their opposition to the request.
4. The JR suggests that the claimant accept the Rejoinder (apparently late filed, which triggered a request by the claimant to ask for a reinstatement in the previous position).
5. If the parties agree, they will be allowed to exchange further submissions.

Comment

1. Why was the case filed in the busy Düsseldorf Local Division?
2. It is strange that three companies of the same group cannot agree on the same strategy. The JR tries to bring some order in the chaos!
3. The fact that the Düsseldorf Local Division is very busy also shows in the fact that the JR states that he will decide about the necessity of an interim conference later. 

5 December 2025

Local Division Mannheim, Centripetal v Keysight

UPC_CFI_414/2024

No infringement

Facts

1. Claimant sues defendant for direct infringement of claim 16 and indirect infringement of claim 1 of EP 3821580.
2. The patent was granted on 29 May 2024.

The Court

1. It is not disputed that Threat Insights and Threat Amor have been discontinued before the day of the grant of the patent.
2. Defendant did not sufficiently substantiate that the attacked embodiments make use of feature 1.4. The further substantial non-infringement arguments do not have to be addressed.
3. The Court comes to this decision after having further explained certain claim features and in view of a clear denial by the defendant that in the source code of the attacked embodiments certain functionalities are incorporated.
4. The claimant should have substantiated why that is not true, and if still denied by defendant, offered adequate proof.
5. A counterclaim for revocation can be raised conditionally.
6. The infringement action is dismissed.

Comment

1. It is very clear that defendant, noticing that the patent would issue, took the necessary measures to avoid infringement. It is also apparent that the claimant, in light of this, if he believed that there was still infringement, he did not prepare his case properly in view of his burden of proof.
2. I agree with the Court that you could bring a revocation defence conditionally. However, such conditional revocation action is caused by the claimant in the revocation action denying infringement. So I do not see why a claimant in the infringement action, if he loses, should not also pay the costs of the conditional revocation action. 
    

5 December 2025

Local Division Mannheim, Centripetal v Keysight

UPC_CFI_414/2024 

Evidence

Facts

1. Claimant requested after the closure of the oral hearing to reopen the oral hearing and
   1. to nominate an expert to review the source code of the attacked embodiment and
   2. to order defendants to provide that source code.
2. Claimant states that it learned from an expert who had already allegedly access to the source code in US proceedings that defendants UPC representative had made demonstrably false statements with respect to the lack of certain functionalities in the source code.

The Court

1. R. 114 RoP is not applicable which becomes even more apparent in the context with R. 245 RoP (an application for a rehearing can only be made after a final decision on appeal and must be brought to the Court of Appeal and only on very limited grounds).
2. The Court adds to this that the defendant could have clarified open points far earlier already during the written proceedings. Moreover defendant under pinned its denial of the accusation by setting out in detail that before the patent was granted certain functionalities were considered as a different version but never implemented and put on the market.
3. Claimant, however, did not even describe in an abstract way why it believes to be able to show that the factual allegations made in the oral hearing are not true.
4. What claimants representative has done accusing out of the blue a representative of a criminal offense under the German criminal code runs counter to Sections 2.2 and 2.4.2 of the Code of Conduct for Representatives.

Comment

1. If you allege infringement you have the burden of proof. It is very clear that – as the Court states – claimant simply did not do a good job.
2. Moreover, you have to prove infringement during the time that the patent was in force. I see not even an allegation that that was the case.
3. Understandably the Court takes the wild accusation of the claimant not lightly and concluded that the representative of claimant acted against the Rules of Conduct. The representative risks therewith (see R. 290 RoP) to be removed from the proceedings.
4. A good lesson for all representatives of which I notice that many have never bothered to read the Rules of Conduct for representatives (to be found on the website of the UPC). Moreover they should realize that they are also bound to their national Rules of Conduct.

– 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”.