UPC Unfiltered, by Willem Hoyng – UPC decisions week 52, 2025

Dear readers,

Last week the UPC did not publish any decision. This week we therefore publish a decision of last week which we missed (apologies) and an order of the Local Division of Mannheim of 22 December.

This is the last edition of UPC Unfiltered for this year. I provided 866 decisions with 866 comments and will continue to do so next year. I wish you all an excellent 2026. 

19 December 2025 (late published)
Local Division Düsseldorf, Ecovacs v Roborock

UPC_CFI_834/2025

Revocation of Inspection / seizure order

1. Facts
2. Ecovacs obtains an ex parte inspection order for an exhibition in Berlin, stating that this is the only possibility to gather evidence of infringement.
3. Roborock asks for a revocation of the order.
4. Roborock argues that Ecovacs has incorrectly and not completely informed the Court. There was no urgency and no necessity for the order.
5. Roborock states that Evocacs could have easily bought the products via Amazon.

The Court

1. According to the court, Roborock is right. The application for an ex parte order was not in conformity with R. 192.3 RoP because the Court has not been given the correct and complete information.
2. If the Court would have had the correct information, it would have not granted the order.
3. It is irrelevant if the Court would have partly granted the order if it would have had the right information.
4. The Court revokes the order with the exception that all the persons who carried out the order remain bound to the security obligation.  

Comment

1. An excellent decision! I hope it puts an end to unnecessary, invasive and disturbing ex parte inspection and seizure orders, especially during exhibitions.
2. In this case Ecovacs simply lied about the necessity to obtain evidence. The product could easily be obtained via Amazon.
3. Of course the representatives of Ecovacs did know that because they even mentioned this in the Statement of Claim in the main proceedings which they served at the exhibition booth of Ecovacs.

4. I do not understand why the Local Division, when confronted with these misleading statements, did not take action against the representatives on the basis of R. 291 RoP.

    

22 December 2025 (late published)

Local Division Mannheim, InterDigital v Amazon

UPC_CFI_935/2025

Antisuit injunction

Facts

1. Amazon starts proceedings in the UK requesting the UK Court to set the RAND (reasonable and non-discriminating) license rate to be paid by Amazon for a license under InterDigital’s patents. It further mentioned the right to, but did not request a so called “interim license”.
2. Amazon bases its request on a RAND declaration by InterDigital governed by Swiss law under which InterDigital has the obligation to license implementers (among which Amazon) under certain patents.
3. InterDigital asks the Court in Mannheim for an ex parte injunction basically forbidding Amazon to ask/enforce for an interim license in the UK arguing that such decision would violate its right to pursue patent infringement proceedings in the UPC (“anti interim license injunction”).
4. The Mannheim court grants the requested ex parte measures by order of 30 September 2025.
5. Amazon asks for review of the PI order.

The Court

1. The relief requested in the UK is in fact an anti-suit injunction according to the Court because it hinders InterDigital to enforce their patents in a foreign jurisdiction including in the UPC, as Amazon can raise a license defense in such proceedings. At the same time, the Court states that it would regard such interim license “null and void”.
2. According to the Court, this would violate the “ordre public” of the European Union and it violates the fundamental right of the patentee to enforce its patents.
3. The order of 30 September is confirmed and also relates to a final decision in sitting proceedings by the UK Court as that also amounts to an anti-suit injunction.
4. The Court has noticed the modified order of 2 December of the UK court which limits the effects of the original order of 20 October but it is silent on the Final Relief and it remains open whether it still violates the Court’s order of 30 September 2025.
5. The order of 30 September is confirmed with respect to the adjustable interim license as respondents argued before the UK court that they will rely on it in foreign jurisdictions.
6. The interim license would not only relate to SEP patents but also to non essential patents.
7. As to the Final Order: as it is not clear that it will be restricted to UK patents Interdigital may be in breach of the agreement and of the UK court order which orders specific performance with severe consequences.
8. Preventing Interdigital to enforce its patents in the EU is in violation of the “ordre public” of the EU and TRIPS.
9. The Local Division stipulates the amount of fines in case of a violation to up to € 50 million, which can be increased with € 500.000 per day.
    

Comment

1. InterDigital (two US companies and two French entities) requested the Local Division Mannheim to issue an ex parte order against Amazon (two US companies, a UK company and two Luxembourg entities). InterDigital used the German language in their application and the Local Division Mannheim granted the ex parte order in German.
2. I notice that (I assume) the international jurisdiction of the UPC is based on Art. 7(2) of the Brussels Ibis Regulation (an unlawful act by Amazon because it was allegedly preventing InterDigital to enforce their UPC patents) and that there is internal competence for all Local Divisions, including the Local Division (as Luxembourg has no Local Division and also because some defendants were established outside the UPC). However, InterDigital (a non-German company) chose the Local Division Mannheim and the German language.
3. As soon as Amazon became aware of the ex parte order it asked and obtained a change of language and filed an application for review.
4. The application for a PI by InterDigital was aimed to prevent Amazon to benefit from a so-called interim license of the UK courts. InterDigital argued that the interim license would prevent infringement proceedings in the UPC.
5. The UK court set the date for the Trial (Final determination of the license conditions) for September 2026. It revised its original order in the sense that it seemed that the interim license did not prevent Interdigital to start proceedings in foreign courts and argue invalidity of the interim license in foreign proceedings.
6. In the above decision in the review proceedings (called Final Order – a term unknown in the RoP and somewhat misleading because the order is not final in that an appeal is possible), the Division states that their ex parte order was also applicable to the main rate-setting proceedings in the UK.
7. You have to read the original order which is in German to judge if that is correct. I just notice that there is no mentioning of the rate-setting main proceedings. The order mentions anti-suit injunctions or similar (“gleichwertige”) proceedings such as a “Temporary Restraining Order”, which is a term used in the US which is as the word says a “temporary measure” and certainly not final rate-setting proceedings. The Division cites then as example the interim license proceedings but not at all the main (rate-setting) proceedings.
8. I have also serious doubts about the “ordre public” and TRIPS arguments of the Mannheim Division.
9. It becomes clear from the decision that InterDigital and Amazon are in a contractual relationship due to InterDigital’s RAND declaration which is governed by Swiss law under which InterDigital has agreed to license Amazon worldwide under its essential patents.
10. Apparently parties do not agree on the rate, which according to the agreement should be RAND.
11. I also understand that there is no jurisdiction clause in the RAND declaration nor in the ITU-T RAND policy.
12. Amazon started proceedings and went to the UK courts to ask for performance under the agreement, in other words to rule on what rates Interdigital has to license.
13. UK international private law determines apparently that the UK courts are competent. As the agreement has also be performed in the UK (because of UK patents) it is not so strange if the UK law would consider the UK court competent. The same would be true for the UPC (and EU national courts) under Art. 7 of the Brussels I bis Regulation. I understand that InterDigital in the UK challenges the jurisdiction of the UK Court but lost that challenge in first instance.
14. The UK Court was the first court which was asked to adjudicate and has to apply Swiss law in interpreting the RAND declarations by Interdigital which also relates to the question whether also non essential patents are concerned.
15. Both the EU and TRIPS accept that a license under a patent means that a patentee may raise a license defense as long as the licensee performs under the license.
16. So it seems difficult to see that as such a determination of the RAND license rate would in a case where the patentee has agreed to license on RAND conditions be against the “ordre public” or TRIPS.
17. This may of course be different if the outcome of such rate-setting would not be the result of proceedings in accordance with the fundamental rights (Art. 6 ECHR) or the result would be manifestly erroneous and indeed violate the “ordre public” because of the violation of the fundamental right to property (Art. 17(2) of the EU Charter).
18. As parties are in a contractual relationship based on the RAND declaration I do not think that, as long as it does not violate the EU competition law, the decision of the Court of Justice in Huawei v ZTE is important or relevant.
19. That decision would have been governing the situation in the EU if InterDigital would not have agreed to license and their patents would still read on a standard.
20. The Parties are in a worldwide contractual relationship without jurisdiction clause. The Mannheim court issued drastic penalty payments if a party asks a foreign court in civilized proceedings to interpret and enforce this worldwide agreement (as it is the first competent court having been asked to enforce the agreement) on the one hand but issues injunctions covering the UK because infringement of the UK patents on the other hand.
21. There seems to be somewhat of a contradiction. On the one hand the Mannheim Division (the UPC in first instance) does not like that a worldwide agreement interpreted by a competent UK court affects the rights under UPC patents while on the other hand it interprets UK patents and grants injunctions under such patents.
22. Moreover I find it also questionable that a court (here the Mannheim Division of the UPC) makes it impossible for a party to use its right to litigate in a foreign court. In the case at hand, Amazon could be punished with draconic fines by just taking the normal procedural steps in the main proceedings in the UK.
23. I cannot see any urgency or necessity for the UPC taking such drastic steps, which are also from the point of comity not desirable, in my opinion.
24. Not urgent and not necessary follows from the following: nothing prevents InterDigital to start (and apparently in the meantime they have done so) infringement proceedings under their UPC patents. If Amazon would raise as a defence the fact that they operate under a(n intermediate) license, Interdigital can argue that the grant (and the invoking) of such license respectively the license itself should not have any effect as far as the UPC patents is concerned because of a violation of the “ordre public” of the EU. I read nothing in the UK decision which would want to interfere with a decision of the UPC about the “ordre public” in the EU.  
     

Note: this case is handled for one of the parties by colleagues of my firm. I remind the reader, as with all Unfiltereds, that the above is my personal opinion and that opinion may not be shared by my firm or my colleagues. 
 

– 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”.