UPC Unfiltered, by Willem Hoyng – UPC decisions week 51, 2025

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5 December 2025 (late published)

Nordic-Baltic Regional Division, Edwards v Meril c.s.

UPC_CFI_775/2025; UPC_CFI_776/2025; UPC_CFI_777/2025

Stay

Facts

1. On 21 July 2025, the Court issued its decision, which includes a decision on the obligation to pay costs.
2. On 21 August 2025, the parties applied for costs and confidentiality pursuant to R. 262.2 RoP.
3. On 30 September 2025, the parties asked for a stay in the cost proceedings pending the outcome of the decision of the Board of Appeal of the European Patent Office.

The JR

1. The parties agreed on requesting a stay and on confidentiality obligations specified in the order.
2. The Court orders the stay and that pending the stay, the content of the requests in the cost proceedings will be treated as confidential.
3. The final decision with respect to R. 262.2 RoP will be made after the stay.

Comment

1. It is difficult to know what parties have agreed but it may be that they have reached an agreement about costs that depends on the outcome of the opposition proceedings with respect to the patent at issue.
2. You know I advocate for agreeing on costs. It tends to be easier to reach such an agreement before the decision is published. An added advantage of a cost agreement is that you generally do not have to (publicly) specify such costs. That is, of course, assuming that the Court does order that the costs be published in the general interest of the Court’s users.

9 December 2025

Local Division The Hague, Amycell v X

UPC_CFI_499/2024

Default

Facts

1. X loses PI proceedings.
2. X appeals which resulted in a default judgment.
3. X’s revocation case in Milan also ended in a default judgment.
4. In the proceedings on the merits, X was served via an alternative service method as he (a Polish national) refused service.
5. A patent attorney filed an appearance as representative after the alternative service.
6. The defence of X was filed late.
7. A default judgment was passed against X.
8. X filed an application to set aside the judgment by default.

The Court

The Court referred to R. 356.3 RoP, which stipulates that an application to set aside a default judgment shall be allowed “unless a party has been put on notice in an earlier decision that a further decision by default shall be final”. 
On two earlier occasions, the Court referred to the fact that “a decision by default would be taken”.

The Court’s default decision did not state it was a “final” decision. The Court decided that R. 356.3 RoP is nevertheless applicable, correcting the omission of the word “final” in the default decision, and pointing out to X that he can appeal the order to refuse the application together with the default decision. 

Comment

1. I fully understand that the Court is fed up with X and his representative, but it will be interesting to see whether the Court’s interpretation of R. 356.3 RoP is correct.
2. I have always read that Rule as avoiding multiple requests to set default judgements aside. The Court reads “further” as “subsequent”, and refers to the French text “une decision ultérieure”. But what about the German text “eine neuerliche Versäumnisentscheidung”? That seems to indicate that there must have been an earlier default decision that (moreover) states that a further decision by default is final.
3. There is no earlier default decision here. In addition, the decisions referred to by the Court do not even say that a subsequent default decision will be final.
4. I think the Court thinks (or hopes) that X will not appeal anyway! 

12 December 2025 (late published)

Local Division Munich, Sanofi v Stadapharm

UPC_CFI_146/2024; UPC_CFI_496/2024; UPC_CFI_147/2024; UPC_CFI_374/2024; UPC_CFI_148/2024; UPC_CFI_503/2024

Inventive step / second medical use

Facts

1. Sanofi companies started infringement proceedings against Stadapharm, Reddy Pharma and Zentiva.
2. The patent in suit (EP 2 493 466) is a second medical use patent for treating prostate cancer in a specific patient group.
3. The defendants filed a counterclaim for revocation.
4. The Paris Court invalidated the French EP patent in first instance.
5. The Opposition Division (“OD”) and the Board of Appeal of the European Patent Office (“EPO”) rejected the opposition.

The Court

1. One case was settled. The Court decided to hear the remaining three revocation cases together.
2. The experts of the generic companies were asked the question “What information would a Phase III study and the time which had passed since the start of that study (Hoyng: at the priority date) haven given to the skilled person and what was the reasonable expectation of a positive outcome?”
3. On the second day, the Court announced that they were inclined to declare the patent invalid, and then closed the hearing.
4. The defendants argue the disclosure of the protocol of a phase III clinical trial (corroborated by various clinical and preclinical data) creates a reasonable expectation of success for the skilled person.
5. In addition to the protocol for the Phase III study, a NHSC document showed promising results.
6. Based on the description, the Court formulated the technical problem to be solved as (finding) a therapeutical option for treating patients suffering from castration-resistant metastatic prostate cancer who were previously treated with a docetaxel-based regime and have prostate cancer that progressed during or after treatment. This included both increased survival and palliative treatment only.
7. The solution introduced the use of cabazitaxel in accordance with claim 1.
8. The Court interpreted the different claim features applying the Nanostring criteria as formulated by the Court of Appeal (UPC_CoA_335/2023).

9. With respect to inventive step, the court stated:

   “The elements of the prior art are destructive of an inventive step only if taken in isolation or placed together in a combination reasonably accessible to the person skilled in the art, they clearly enabled the latter to provide the same solution to the problem solved by the invention as the latter.”

    

10. The Court also stated that the EPO and certain national jurisdictions applied the problem-solution-approach.
11. The Court then cites the considerations of the Court of Appeal in Amgen v Sanofi of 25 November 2025 with respect to inventive step.
12. The Court did not find it necessary to reopen the oral argument, as the approach of the national Paris Court (which revoked the patent) was similar to the approach of the Court of Appeal. During the oral argument the different parties had already presented extensive arguments for and against this approach.
13. The Court discussed the testimony of the experts about phase I, II and III trials in oncology. The experts agreed that the failure rate in phase III trials is 40-50% and that that percentage goes down with the progress of the trial.
14. The Court discussed the different prior art documents and makes the observation: “Again reasonable expectation of success is not the certainly or even near certainty of success.”
15. The Court continues: “As a result […] the encouraging results […] could give him (Hoyng: the skilled person) expectation of a favorable effect in survival […].”
16. The fact that the Phase III study had already been underway for three years at least shows that the sponsor of the study did not consider the study disappointing at any time up to the priority date.
17. Having considered all the prior art, the Court concluded the patent should be revoked.
     

*The decision date of 26 February 2023 mentioned by the Court should be 26 February 2024 in conjunction with the decision of 11 March 2024.

Comment

1. The patent was upheld by the OD and the Board of Appeal of the EPO and is now invalidated by the Munich Division of the UPC applying the criteria of the Court of Appeal? That seems strange. Of course, I have not studied all prior art or the exchanged submissions, and I do not know what was said during the oral hearing.
2. However, reading the judgment and comparing this with the decision of the Court of Appeal in Amgen v Sanofi, I have serious doubts about this decision. In another decision, this same Division stated that applying the same test as the EPO would be good for legal certainty (although the Division accepted that the EPO test can easily be tainted by hindsight in that decision).
3. I fully agree that it is better for legal certainly if the Board of Appeal outcome is the same as the UPC outcome (of course, this will not always be possible when the facts underlying the decision are different). You therefore would have expected a convincing step-by-step application of the decision of the Court of Appeal and a solid reasoning why the Board of Appeal is wrong. That is, however, missing.
4. Instead, the Division’s decision seems to use their own approach (see above under 9). I get serious doubts about the decision when reading “could give him expectation of a favorable effect”. A 40%-50% (and I would say even 60%) is, in my opinion, certainly not “a reasonable expectation of success”, but a hope to succeed.
5. I therefore look forward to the decision of the Court of Appeal in this case.
6. I conclude with the observation that if for second medical use patents it is required to have evidence in the application that indeed the product/therapy has the claimed effect but on the other hand we say that quite early before you have all the evidence there is already a reasonable expectation of success, then something goes wrong with the stimulation of innovation, certainly in the important field of human health. A three months more survival rate may, if you are healthy, not seem impressive or important, but may make a big difference for many people if confronted with a terminal situation. 

12 December 2025 (late published)

Local Division Milan, Cardo v Shenzhen Asmax Infinite

UPC_CFI_766/2024

Service in China

Facts

1. Cardo Systems filed an infringement suit against defendants on 16 December 2024.
2. The Chinese Central Authority rejected the service.

The JR

1. The The Hague Service Convention is applicable, as the defendant is registered in China.
2. The Chinese Central Authority rejected service for the reason that the Statement of Claim mentioned Hong Kong, instead of Hong Kong, China. That is not a valid reason to refuse service: the Statement of Claim is only an attachment and not the service document.
3. The JR applied Art. 15(2) of the The Hague Convention as service has proven to be impossible which allows the Court to give judgment if the conditions of that provision are fulfilled.

Comment

1. Excellent decision in my opinion! The JR does not refer to Service by alternative method (R. 275 RoP) as some decisions do. That provision is indeed irrelevant in this situation (and does not provide for a valid service in conformity with the The Hague Convention in my opinion).
2. For PI proceedings the 6-months waiting period (which applied in this case) is not necessary: see Art. 15 (3) of the The Hague Convention.
3. Advice for representatives: if your Statement of Claim refers to Hong Kong, always refer to Hong Kong, China!

12 December 2025 (late published)

Local Division Munich, Asus v Oppo

UPC_CFI_525_2025

Security costs in Taiwan

Facts

1. Asus, a Taiwanese Company, sues Oppo et al. (9 defendants).
2. The defendants lodge an application for security for costs.

The JR

1. The JR refers to the Court of Appeal (“The fact that defendant is located outside the EEA weighs against the possibility that without undue burden costs decisions can be executed particularly if there is no guarantee that the decision will be recognized.”).
2. The JR concludes that the statement of the Taiwanese professor (submitted by claimant) seems to confirm that a costs decision cannot be executed without undue burden.
3. The JR orders security for € 200.000.

Comment

1. This is the first case that I have seen in which the non-German judge in the panel of a German Local Division is acting as JR.
2. I consider this as an excellent development for several reasons. First of all, it means that the heavy workload of the German Divisions is better divided over the panel.
3. You immediately see the result in this case, because the decision of the JR is the result of very thorough procedural steps and the decision itself is very elaborately motivated.
4. The second reason is that it emphasizes that the Division (and the UPC) is an international Court.

5. This does not mean that this is an invitation to file in the already busy German Divisions. To the contrary: it is preferred that cases are (better) spread over all UPC Divisions for reasons of UPC acceptance (also in other UPC countries), the credibility of the UPC as a truly international Court, the quality of the UPC proceedings, and also for the users of the system. 

    

17 December 2025

Court of Appeal, Huawei v TP Link 

UPC_CoA_926/2025; UPC_CoA_927/2025

Access to file, suspensive effect

Facts

1. In first instance at the Local Division Munich, TP Link asked access to the written pleadings in the Huawei v Netgear case, after removal of personal data and redaction of potential confidential information.
2. TP Link wanted this information as they were sued by Huawei under the same patent.
3. Netgear and Huawei both objected. Alternatively, Netgear wanted the Court to restrict access to certain documents, arguing that the request was too vague and did not outweigh the general “confidential interest” of parties to proceedings.
4. The Munich Division granted the request in accordance with the confidentiality regime that had already been ordered between the parties.
5. Huawei appealed and asked for suspensive effect.

The Court of Appeal

1. A reason for suspensive effect is that the Court of First Instance grants access to certain documents without ordering suspensive effect.
2. Such a decision can be made without hearing the other party. That party can then make its objection known within the period for answering the appeal. The Court of Appeal may subsequently decide to lift the suspensive effect.
3. The Court of Appeal grants suspensive effect.

Comment

1. In my view, this is the way these situations should be handled. It is clear that without suspensive effect an appeal does not make any sense, because the documents have already been made available to the other party.
2. It is also practical – and indeed necessary – that an order to grant suspensive effect can be granted immediately. In this case, it was all not super urgent because the CFI gave 20 days to make the requested documents available. But if the CFI would not give such a period to comply then an immediate suspensive effect may be necessary.
3. The rights of the other party are respected because it can basically immediately react and argue that such suspensive effect should not be granted.
4. I remind representatives that you can only ask suspensive effect if you have filed your appeal. Although I expressed my disagreement with that requirement that is what the Court of Appeal has decided and it just means that you have as a representative to work fast and hard!

18 December 2025

Local Division Mannheim, Polidoros v Bekaert

UPC_CFI_716/2024; UPC_CFI_205/2025

Infringement case

Facts

1. This concerns an infringement case with counterclaim for revocation with respect to a patent for a premixed burner.
2. The Board of Appeal upheld the patent in amended form.
3. The patentee filed 7 auxiliary requests in a conditional application to amend the patent.

The Court

1. The Court discusses the contents of the patent.
2. The Court interprets certain claim features while agreeing with the interpretation of the Board of Appeal.
3. The Court dismisses the revocation case.
4. With respect to “added subject matter” the Court refers to Amgen v Sanofi (Court of Appeal of 14 February 2025 UPC_CoA_528/2024).
5. With respect to “sufficiency of disclosure” the Court remarks “Consequently, any non-availability of some embodiments of a functionally defined claim is immaterial to sufficiency, as long as the skilled person through the disclosure is able to obtain suitable embodiments within the scope of the claim.” The Court again refers to Amgen v Sanofi.
6. With respect to the novelty attacks the Court cites the “gold standard” and rejects the novelty arguments (based on 5 prior art publications).
7. The Court considers the number of inventive step attacks in this case reasonable. The Court therefore holds that it does not have to make a decision about the number of inventive step attacks allowed and what the consequences are if that number is not reasonable.
8. The Court cites lack of a (direct) pointer and/or motivation with respect to most suggested combinations and/or comes to the same conclusion as the Board of Appeal. With respect to other suggested combinations it states: “It is not straightforward that the skilled person would have applied the relevant features thereof in the embodiment of fig. 24.”.
9. With respect to infringement: only embodiment B is infringing.
10. The Court issues an injunction with respect to embodiment B.

Comment

1. In my opinion, this decision is well motivated and convincing. It shows again that many infringements are in fact already decided after claim interpretation (even though the Court does not follow a step-by-step infringement criteria as set by the Court of Appeal). It also shows that a pointer and/or motivation are crucial elements for a successful inventive step attack: simply having all patented claim elements in the prior art and/or common general knowledge alone is not enough.
2. Can the Court restrict the number of novelty/inventive step attacks? As for auxiliary requests, the UPC should keep cases manageable and not become a second EPO under the influence of patent attorneys who want to use their EPO experience in the UPC. It is up to the representative to make choices and present his best case. The court should not allow numerous novelty attacks and inventive step combinations. Litigants should use experienced representatives who make a selection of the best arguments. This is fully in line with the goals of the UPC. The judges should organize and have discretion to organize proceedings in the most efficient and cost-effective manner. It is not efficient or cost-effective to have to deal with numerous auxiliary requests and invalidity attacks just because representatives are able to list all possible (and impossible) attacks but are unable to make a selection. 

19 December 2025 
Local Division Munich, GXD-Bio v Myriad

UPC_CFI_681/2024

Counterclaim for revocation

Facts

1. The claimant sued the defendants for direct and indirect infringement of patent EP 3 346 403.
2. The defendants filed a Counterclaim for revocation

The Court

1. The Court discussed the patent (a method for quantifying expression level of a target gene in a FFPE tissue sample of human breast cancer tissues).
2. The Court, applying Nanostring v 10x Genomics (UPC_CoA_335/2023), interpreted the claim elements, resulting in a more restricted scope than that defended by the claimant.
3. With respect to the Counterclaim for revocation, the Court decided that the claims both in the main requests as in the auxiliary requests contain added matter.
4. The Court applied the gold standard, making reference to the decision of the court of appeal of 20 October 2025 (expert klein v. Seoul, UPC_CoA_764/2024) among others.
5. The Court decided that the skilled person does not read in the original application that the claimed method refers to a target gene “in a FFPE tissue sample of human breast cancer tissues”.
6. The Court did not discuss the other grounds of revocation.
7. The Court revoked the patent. 

Comment

1. In my opinion, this decision is a rather rigid application of the gold standard. In the original application, several different types of cancer tissues were used and the Court stated that there was no pointer to (the selection of) breast cancer tissue. However, in my opinion, one could also hold that the skilled person would clearly understand it to also mean the use of breast cancer tissue, and that the disclosure of other tissues would not change this. Breast cancer tissue is individually disclosed.
2. Dealing with only one of the grounds of revocation is efficient and understandable for a very busy division. However, the disadvantage is that, if the Court of Appeal thinks differently about that one ground on appeal, the other grounds then have to be judged for the first time by the Court of Appeal. So, certainly if a revocation decision is not clear cut, it may be advisable to also deal with other grounds for revocation raised by the defendants, in case such ground also leads to revocation. It may even avoid an appeal. 

19 December 2025

Local Division Düsseldorf, LiNA v Tonglu

UPC_CFI_1600/2025

Inspection order/evidentiary seizure

Facts

1. An inspection/seizure order was carried out during an exhibition.
2. The expert delivered its report.
3. During the seizure, the defendant was informed of the procedure to be followed. Among other things, it was told that it would be able to state which information should be treated as confidential before the report was released to the other party.
4. No representative for the defendant was appointed. 

The Court

The Court decided that, if no representative is appointed, the expert report will be released to the other party. 

Comment

1. I agree with the Court’s order, assuming that, during the seizure/inspection, the defendant is clearly informed about the fact that, if it does not nominate a representative, all the information/documents etc. would be accessible to the claimant. I have not seen (clear) evidence that this has been the case.
2. It would be good if the Court, when allowing an inspection/seizure, orders that, at the start of the seizure, a standard form is provided in simple, understandable language explaining the different steps in the procedure and the fact that a representative is needed if the defendant wants to undertake certain steps. If the seizure takes place during an international exhibition, an English translation should also be provided. 

19 December 2025

Court of Appeal, UERAN v Xiaomi

UPC_CoA_903/2025 

Change of language of proceedings

Facts

1. The President of the Court of First instance had ordered the change of language from German to English at the request of the defendants.
2. The claimant is a US company. The defendants are Chinese companies and different European subsidiaries.
3. The claimant appealed and argued that
   1. the defendant is an international company used to litigation in foreign languages;
   2. the pleadings are more important than internal communication which can easily be done by machine translations;
   3. pleadings are to be read by German-speaking judges. 

The Court of Appeal 

The Court of Appeal rejected the request in 15 considerations.

Comment

1. The Court of Appeal consisting of non-German judges (of whom at least two speak German!) has been very considerate and thorough in rejecting this appeal.
2. I fully agree with the Court of Appeal rejecting this request, bearing in mind that the UPC is an international court, and that it would be unusual to litigate in German in that court about a patent granted in the English language with prior art that is almost entirely in English, between two parties that are not German.
3. The appeal referring to “German-speaking judges” is also not very polite to judges who, firstly, are not all German (half of them may not be) and, secondly, are appointed to the UPC because they master the English language.
4. The only true reason for appealing in this case is that the representative (of a US client!) does not master the English language sufficiently to draft precise and convincing pleadings.
5. Again a lesson for non-German litigants: appoint a representative who is fully fluent and comfortable in English. 

19 December 2025

Local Division Düsseldorf, Hewlett-Packard v Rentmeister 

UPC_CFI_515/2025

Application for PI 

Facts

1. This concerns an application for a preliminary injunction (“PI”) against Rentmeister and Shenzhen Moan, a Chinese company, with respect to printer cartridges which are rebuilds of Hewlett-Packard (“HP”) cartridges.
2. The PI was requested on 13 June 2025.
3. The case was settled with respect to defendant 1, Rentmeister, which indicated that it would accept a judgment against it after HP withdrew certain motions, such as a motion to take back infringing products.
4. Service in China proved impossible and the Court ruled “good service” on the basis of R. 275.2 RoP (alternative service).
5. The division received no objection to the PI application from Shenzhen Moan. 

The Court

The Court granted the PI after having dealt with the case in detail based upon the application. 

Comment

1. As I have noted earlier, this PI case could have been handled much earlier if HP’s representative would have referred the Court to Article 15 (3) of The Hague Service Convention.
2. The Chinese defendant sells via Amazon. If it does not have any assets in the EU, how effective is such a PI? 

– 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”.