Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC.
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12 May 2025
Court of Appeal, Ballinno v UEFA
No urgent interest on appeal / devoid of purpose
Facts
Ballinno asked for a preliminary injunction (“PI”) at the Local Division of Hamburg.
UEFA asked for security for costs, which the Local Division in Hamburg ordered.
The request for a PI was dismissed because Ballinno had not acted with urgency and had not sufficiently proven infringement.
Ballinno appealed and asked to set aside the security order and to grant the PI and costs.
In its Statement of Grounds of Appeal, Ballinno withdrew its request for a PI as the event (EURO 2024) giving rise to an urgent interest had already taken place.
It still demanded to set aside the main order and the security order and to order UEFA to pay the costs in the first instance and on appeal.
The Court of Appeal
- Although R. 220.2 RoP states that orders (such as an order to provide security) other than those referred to in R. 220.1 RoP can be appealed with an appeal against the decision (and although the result of a PI case is not a decision but an order under R. 220.1 RoP), you can also appeal an order under R. 220.2 RoP together with the order which terminates a PI case.
- The Court does not agree with Ballinno that the fact that EURO 2024 had taken place necessarily meant that Ballinno had no urgent interest anymore, also because Ballinno’s PI was not restricted to EURO 2024, and Ballinno itself had argued a general urgent interest. The Court held that if indeed on appeal there would not be an urgent interest anymore, then that was the risk Ballinno took when it started the PI.
- If a party withdraws its request for a PI because it thinks that there is no urgent interest anymore, then the action becomes devoid of purpose.
- Disposal of the action pursuant to R. 360 RoP (action has become devoid of purpose) can include a decision on costs.
- Here, it is clear that the appeal would have been dismissed for lack of an urgent interest. Ballinno should bear the costs.
- An exception to this may apply if the order refusing the PI is based on manifest errors. In this case, there are no manifest errors.
- A cost decision may also be different if there is a withdrawal before the final order because the lack of urgent interest is caused by unforeseen circumstances.
- The Court of Appeal has already decided that it can decide about costs (when only costs are still at issue) without having to examine all the facts of the case (Meril v Edwards CoA 2/2024), which can be very complicated and costly.
- That approach is consistent with Art. 3 and 14 of the Enforcement Directive (proceedings in IP matters should not be unnecessarily costly).
Decision
- Appeal against the security for costs is admissible.
- After the decision with respect to point 1, the Court will dispose of the action in other parts and decide about costs in accordance with the principles set out in this order.
Comment
- In first instance and on appeal, Ballinno was ordered to provide a very modest amount as security for costs. Ballinno decided to fight the first instance cost order together with the appeal against the refusal of the Hamburg Division to grant a PI.
- You do not need leave to appeal for an order with which a request for a PI is decided because that is an order which is mentioned in Art. 62 of the UPCA. Together with orders mentioned in Articles 49(5), 59, 60, 61, and 67 UPCA, such an order is mentioned in R. 220.1(c) RoP, which lists the orders you can appeal without leave.
- For appeal against all other orders, you need leave for appeal, or you can appeal against it together with an appeal against the decision. Against decisions, appeal is possible without leave (R. 220.1(a) and (b) RoP).
- As the judgment in PI proceedings is an order and not a decision, Ballinno, in fact, should have asked for leave to appeal for the security order, as they could not appeal against that order together with the appeal against the PI order (as the latter is not a decision).
- The Court of Appeal has now decided that “decision” in R. 220.2 RoP includes an order in PI proceedings.
- This seems logical, as PI proceedings are in fact mini-proceedings which may end with a final result (such as refusal of the PI in this case).
- This means that you can appeal all orders issued during PI proceedings together with the appeal against the final order in such proceedings. Be careful: for a management order during PI proceedings, you will still have to first seek review by the panel.
- Ballinno was apparently very disappointed about the decision of the Local Division of Hamburg. However, instead of pursuing a full appeal, on appeal it withdrew its demand for a PI because it stated that the matter was not urgent anymore. So, in fact, what was left was a demand for costs in the first and second instance because the decision of the Local Division of Hamburg was allegedly wrong, and its appeal against the cost decision in the first instance.
- Maybe that was not the smartest move by Ballinno, as it had stated in the first instance that it had an urgent interest independent from the fact that EURO 2024 (also) gave them such interest.
- So they prevented the Court of Appeal from dealing with the whole case and did not ask for an injunction anymore.
- Ballinno hoped, apparently, that the Court of Appeal would still decide if the decision of the Local Division of Hamburg was wrong and, if so, would award costs to Ballinno. However, “costs” is not a “purpose” of proceedings but a consequence of proceedings. These tactics did not work, as the Court of Appeal applied R. 360 RoP.
- Ballinno, applying these tactics, apparently realized that they would lose the appeal proceedings because of a lack of urgent interest, which has to be present ex nunc (in other words, at the time of the judgment of the Court of Appeal) and tried to avoid this by withdrawing its claim for a PI, leaving only the claim for reversal of the cost decision in first instance.
- R. 360 RoP (no need to adjudicate) can include a decision about costs, as the Court of Appeal decided. R. 360 RoP itself is silent on that point, but that indeed does not exclude such a decision.
- As to such costs, the Court of Appeal is pragmatic.
a. The Court of Appeal is not going into a time-consuming and costly exercise about who is materially wrong or right just in order to decide about costs, and states that it is fully in conformity with the Enforcement Directive to avoid unreasonably costly PI proceedings.
b. So it depends very much on the circumstances of the case and thus the reasons why there is no need to adjudicate.
c. In the present case, it is pretty clear. According to Ballinno’s behavior itself, it would have lost the appeal. Then it is logical that it will also have to pay also the costs of the appeal.
d. If everybody without much study can see (and thus also the Court of Appeal) that a decision in the first instance was manifestly wrong, then that may be different, but that was not the case (and in general will be very rare). - What is the lesson, in my opinion, to be learned from this decision? If, as a patentee, you try to obtain a PI—perhaps for a trade fair or, for instance, to prevent an infringer from coming on the market—and you lose, then think twice: do you still have an urgent interest and necessity at the time of the judgment on appeal? If not, take your loss. The same principle applies if you try to obtain a PI just before the expiry of the patent and you lose. In that situation too, think twice before pursuing an appeal solely for the costs. Indeed, if the decision in the first instance is not manifestly wrong, it is very unlikely that you will recover costs after the Court has applied R. 360 RoP.
- It is (another) clear message that the Court of Appeal prefers the UPC not wasting its time on cost issues. In my opinion (at least compared to what is the situation in my country), far too much time in the UPC is spent on cost issues, which is a waste of the Court’s time and clients‘ money. A bit of a smart and cooperative attitude from the representatives could avoid this.
- The Ballinno case continues as to the security of costs issue. Would it not have been better, after the EURO 2024 defeat in Hamburg, to think: “We made a great effort but we lost; let us now look what our chances are in the main proceedings, but first await the invalidity proceedings”? Meanwhile, the Central Division revoked the patent (see my Unfiltered week 18 decision of 30 April 2025.
13 May 2025
Local Division Düsseldorf, Sanofi v Amgen
Second medical use
Background
Infringement proceedings with respect to EP 3 536 712.
In opposition proceedings, the Opposition Division has maintained the patent.
Amgen filed a counterclaim for revocation.
Decision
- The Court rejects the arguments that it was not proven that Sanofi was an exclusive licensee. It refers to R. 171.2 RoP, stating that claiming ignorance of a fact is not a denial.
- Claim interpretation: the Local Division applies the doctrine of the Court of Appeal in Nanostring and notes that “the features of a claim have to be read in combination as they must always be interpreted in the light of the claims as a whole. The same is true for dependent claims”.
- The Court repeats what every informed representative familiar with pharma cases should know about second medical use claims.
- The Court rejects the argument that the mere reduction of Lp(a) does not represent a therapeutic method and that therefore the claim for second medical use would not be novel. At the relevant time (the priority date of the patent), the skilled person understands the use in reducing Lp(a) levels as a specific use of a method of treatment of the human body by a therapeutic method.
- The Court held that the claim is limited to use in patients which exhibit an elevated Lp(a) level above 30 mg/dL (which means that that level has been objectively verified before treatment).
- The Court confirms the right of priority: “The Court notes that there is no information in P1 or P2 from which it follows for the skilled person that the claimed technical features should not be combined together in one embodiment”.
- The Court applies the appropriate test with respect to novelty: the patent is novel.
- Inventive step: the Local Division notes this is a question of law, since it comprises a legal evaluation of all relevant facts and circumstances. The subjective ideas of the inventor are irrelevant. It is also irrelevant if the invention is the result of serendipity or of (costly) systematic work. It is only relevant what the claimed invention actually contributes to the prior art. The patent is inventive.
- The Court decides that the patent is sufficiently disclosed and does not contain added matter after having repeated the principles to be applied.
- For infringement, the claimants have to prove that the allegedly infringing products fulfil the “(second medical) use features” of the claims.
- However, it is sufficient if the alleged infringer knows or reasonably should know that putting the product on the market will lead to use of the use features of the claim, for instance, by a prescription. Or, there must at least be circumstances showing that such a use may be expected to occur. The package insert and the SmPC can be important but are not always the only factor. Sanofi has failed to show that putting the product on the market leads to the claimed use. The Court therefore concludes that there is no infringement.
- Court dismisses claim and counterclaim.
Comment
- The Court follows with its claim interpretation and dealing with the revocation the established principles, and its decisions on all these points are, in my opinion, convincing.
- The only interesting point is the infringement of a second medical use claim. The Court dismisses the evidence of the second medical use as insufficient even for a likelihood of infringement. So, according to the Court, Sanofi did research and invested money and asked for and obtained a patent for a therapy which will never be used. That is, of course, theoretically possible but in practice not very likely. In general, in my opinion, we should either decide not to grant second medical use patents anymore (which, I would suggest, would be contrary to the general interest, as finding new treatments is of interest to us all), or make sure that they can actually be enforced.
I still do not understand why a generic which is selling products that can be used for such a second medical use cannot be obliged to put positively on the package or in an insert that for patent reasons this product should not be used for that second medical use. Moreover, why can’t they be obliged to warn pharmacists not to sell the product for the patented method? And when pharmacists are confronted (in cases where such use is very likely) with a prescription for such use, why are they not guided to deliver the product of the patentee? It is not acceptable to grant patents which in practice have no value and do not enable the patentee to recover investments and realize the deserved (extra) profit for taking the risk of investing in research without knowing if it leads to a result.
13 May 2025
Local Division Düsseldorf, Franz Kaldewei v Bette
High costs
Background
Kaldewei won infringement proceedings after it prevailed in the revocation counterclaim with an auxiliary request that limited its patent.
The Court ordered that claimant had to bear 15% and defendant 85% of the costs, and in the revocation case, both parties had to bear 50% of the costs.
Cost proceedings
Claimant states that it spent €112,000 for costs for the representative and (as this exceeded the ceiling of the recoverable costs) claimed the ceiling (85% of the ceiling for infringement and 50% of the ceiling for the revocation, total €84,950).
Defendant states that these costs are unreasonable, given the short duration of the case and the unimportance of the case (which unimportance had also been clear to claimant).
The Judge-Rapporteur (JR)
If you think that claimed costs are too high, you have to come up with substantiated reasons why the claimed costs cannot be relative to the importance of the case, the difficulty, and complexity of the case.
Decision of the JR: awards the costs demanded.
Comment
- In this case, the defendant did stop the sales and offered a settlement agreement, but according to the JR, that was not relevant because the continuation of the proceedings was “sachdienlich” (which I translate as relevant for the case of the claimant). Why that was so remains unclear!
- You wonder if this could not have been settled during an interim conference (trying to reach a settlement is a specific task of the JR according to R. 104(d) RoP) in order to save these companies a lot of money. This raises the question if judges would get some training in that area and the question of too busy divisions who may not have the time to spend in trying to get parties to settle. As I have said before, the problem should be solved by representatives using Divisions which are not busy and, if representatives are not willing to do so, by busy Divisions indicating to parties that their cases will take considerably longer, and finally, by a change of the UPCA giving e.g. the President of the CFI the possibility to refer a case to a different Division.
- I agree with the JR that without clear, substantiated, and convincing arguments which would warrant an exception, the cost ceiling should be considered as representing reasonable and fair costs for proceedings with a value to which the ceiling corresponds.
13 May 2025
Local Division Munich, Huawei v MediaTek
Confidentiality
Facts
In this infringement case, claimant has asked for confidentiality of parts of the Statement of Claim and certain exhibits on the basis of R. 262A and R. 262.2 RoP.
Judge-Rapporteur (JR)
The JR states that R. 262A RoP deals with restrictions for the other party. You can also ask for further protection via R. 262.2 RoP, which has as a result that pleadings and evidence which is in the register will not be disclosed to a member of the public who has been given access.
It is not relevant whether from an application of R. 262A RoP also follows that if no specific persons have been nominated who get access, the other party is bound not to disclose the information to third parties, or if such an obligation also follows from R. 262.2 RoP, as such an obligation follows from analogical application of these provisions.
Comment
- In this case, there were non-disclosure agreements in place between the parties. The claimant wanted that these would stay confidential. So the content was known to the other party, but claimant wanted to make sure that the content remained confidential.
- It is clear that as the parties already are contractually bound to secrecy, this in fact is a case of R. 262.2 RoP: you do not want that this information is made public by the Registrar if a third party asks for access.
- The JR says that R. 262.2 RoP also means (although that is not specifically mentioned in R. 262.2 RoP) that the other party (which means the (employees of that) party itself and all others who represent that party (the representatives and their employees, experts, etc.)) cannot disclose that information. That is a logical explanation of the meaning of R. 262.2 RoP.
- The same is true if a party invokes R. 262A RoP without mentioning restriction to certain persons. However, I add that that does not automatically mean that after a R. 262A RoP order the information in the Register is confidential. If a third party requests access to the Register, the Registrar will give parties 14 days to ask for application of R. 262.2 RoP.
- What does this all mean?
a. If you want certain information not to be disclosed to the other party, you have to invoke R. 262A RoP. The Court will then (assuming the information is indeed confidential) order that the information can only be seen by the representatives and by one or more employees of the other party. It does not necessarily have to be an employee. It can also be somebody in another capacity who works or supplies services to the other party. In exceptional cases (e.g., competition cases), it is possible to order “a representatives‘ eyes only regime”. The latter is also possible if parties agree on such a regime.
b. If you wish that after a request by a third party for pleadings and/or evidence from the Register R. 262.2 RoP is automatically applied, you should ask for the application of R. 262.2 RoP.
c. You have to realize that a third party who asks for access to the Register can challenge such an order, arguing that the information is not confidential (anymore).
d. If you do not care that the other party gets the confidential information but you do not want the info accessible for everybody, then a R. 262.2 RoP order is sufficient, as it also obliges the other party (and everybody involved in the proceedings) to keep the info secret.
14 May 2025
Local Division Mannheim, Centripetal v Keysight
Amendment of case
Facts
The claimant states that parts of its reply are further legal arguments or arguments which had already been raised in their Statement of Claim but asked (if the Court considered these arguments as an amendment of case) for leave to amend their case, stating that the (new?) statements were in response to a prior use defence which the claimant did not know of when they started the proceedings.
The defendant stated that this was an amendment of case which should be refused.
The Judge-Rapporteur (JR)
- The JR postponed the decision to the oral hearing and gave an extension for the rejoinder for reacting to the (allegedly) new arguments.
- The JR stated that the decision basically depended on whether the new attacked embodiments raised the same or similar infringement arguments as stated in the Statement of Claim, which should be resolved during the oral argument, which then could lead to a further hearing or written submissions.
Comment
- This case shows the dilemma between, on the one hand, the front-loaded character of UPC proceedings and, on the other hand, the desire to be efficient and doing justice. Assuming that indeed there was a “surprise” defence as to the “prior use” which prompted the new facts in the reply, then what to decide?
- However, the Rules of Procedure are very flexible, and you can grant a further extension or a new round of written submissions or resolve the dilemma during the interim conference while still meeting the date for the final oral hearing.
- I think a postponement until the oral hearing is not the preferred way of handling this. It is better (and the JR left that possibility open) to do this during the interim conference (maybe with the whole panel present).
- The problem is planning and being very busy (and maybe old national practice under which – in Germany at least – interim conferences are unknown).
- I think that the best way of dealing with a case is setting at the beginning of the proceedings the date for a potential interim conference about four to six weeks after the foreseen closure of the written proceedings (which allows for some flexibility), which should give enough time between the interim conference and the oral argument to allow for certain orders as a result of the interim conference. All judges should keep the date of the interim conference free so that if necessary the whole panel can participate.
- I realize that this may require that the judges study the whole case twice, and indeed in a busy division that is not possible. As I have said before, a better spread over all the different divisions is important for reaching the goals of the UPC as a truly international and efficient court.
14 May 2025
Local Division Mannheim, Total v Texas Instruments
Further exchange of pleadings
Facts
The claimant asks for a further exchange of pleadings in order to be able to react to defendant’s rejoinder. The claimant had already lodged such a request, which was refused by the JR. Review (by the panel) is pending.
The claimant lodges a new request.
The Judge-Rapporteur (JR)
Normally you cannot repeat a request, but the claimant explained why it did not elaborate in its first request, and the repeated (now elaborated) request is allowed. The final decision will be made during the oral argument, but on one point, pending that decision, the claimant is allowed to elaborate and the defendant to react.
Comment
- Quite frankly: a messy affair.
- The claimant does not raise an objection against the rejoinder ex R. 52 last sentence RoP; in other words, the rejoinder contains no more than a reaction to the reply of claimant.
- Claimant, knowing the content of the rejoinder, asks for a further written submission. This is refused.
Claimant again asks for further pleadings. That is indeed, as the JR notes, not a matter of res judicata but is clearly against the rule of due process and should have been refused. Claimant had full knowledge of the rejoinder of defendant at the time of its first request. If it did not use certain arguments in that request, then that is of course no reason to give it a second chance. - Finally, the JR says: go ahead with a further written submission on one point, which if allowed will be decided during the oral argument, and then says in its consideration that the plaintiff has two weeks to react. That should of course be the defendant, which is corrected in the order itself.
- It is also strange that the JR says that two weeks for the claimant is sufficient for a further written submission because it has already studied the rejoinder, but then gives the defendant, who has no knowledge of what claimant is going to say, also only two weeks. That does not look very balanced. Furthermore, the idea of an oral argument is that the case is ready to be discussed. Now the parties do not know until the oral argument what the Court is going to do with these further written pleadings.
- I wonder what is happening with the interim procedure and an interim conference. The JR states that the written procedure will close on 11 June 2025 and the oral hearing is for 22-23 July 2025. So is there no interim conference planned?
- If the JR does not want to make a decision during the written proceedings, it is the interim conference which should resolve the issue so that parties know what the status of the case is during oral argument, and after the oral argument the Court can give a decision.
15 May 2025
Central Division Milan, Maschio v Spiridonakis
Inspection (elsewhere) of a physical object (R. 170.2(b) RoP)
Background
The Court ordered that the claimant should bring the patented device and the attacked embodiment to the Court during the hearing of 4 June 2025. The claimant stated that the machine weighs 2000 kilos and suggested that the Court would come to its premises to see it.
Order
The Court orders inspection on the morning of the oral argument at the premises where they can inspect the machine and makes sure that the inspection is public. In the afternoon, the oral argument continues in the Court.
Comment
All very practical, especially as the claimant had offered to pay for all the costs! When I once offered the Dutch Court to fly to Chateauroux (in the middle of France) in order to show that my client could obtain its product without using the patented method, the Court declined because the President did not dare to fly in a small chartered plane. It appointed an expert to report about the demonstration. We all flew with the small plane to Chateauroux on the day before the demonstration. The French client organised such a fine dinner that the expert fell asleep during the demonstration in this very warm factory. The expert was still capable of producing his report. No such dinner in this case. Everything done in a day!
15 May 2025
Local Division Munich, Belparts v IMI
Setting of dates
Order
The Court sets dates taking into consideration an oral hearing of 27 November 2025 of the Board of Appeal and the date of the oral hearing in the pending revocation case in the Central Division of Paris no earlier than February 2026.
Both parties do not want bifurcation.
Date for interim conference: 24 March 2026.
Date for oral hearing: 18 June 2026.
Comment
- If a revocation procedure is pending before the Central Division between the same parties (it is not clear from the order if that is the case) and an infringement case is started with a counterclaim for revocation, the Local Division can refer the counterclaim to the Central Division (R. 33.5 RoP jo. R. 33.3(b) RoP) or proceed with the counterclaim itself or suspend.
- In this case, both parties want the Local Division to continue.
- The very busy Munich Division with this time schedule creates the possibility for itself that the case goes away. The Board of Appeal may revoke the patent (and if it maintains the patent in an amended form, then it is clear in the proceedings what the claims of the patent are). The next possibility is a decision of the Central Division in Paris. If they revoke the patent (and appeal would be lodged), the Division in all likelihood will suspend the case.
- For plaintiff to prevail (assuming there is infringement), it will have to survive three invalidity challenges!
– 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”.