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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Below are decisions of between 30 June 2025 and 2 July 2025. The website of the UPC is down from 3 July 2025 until 8 July 2025. The decisions of 3 July 2025 onwards will be covered in next week’s UPC Unfiltered.
30 June 2025
Local Division Düsseldorf, Roche v Tandem
UPC_CFI_504/2023
Return of fees
Background
Infringement and revocation case in which the oral hearing took place on 9 April 2025.
The date for the decision was set for 22 May 2025, but was rescheduled to 5 June 2025.
In the meantime, on 23 May 2025, the claimant and defendants 1 and 2 informed the Court they had reached a settlement. In the end, all parties (6 defendants) reached a settlement and all parties asked to get 20% of the court fees back based on R. 370.9(c) RoP.
Decision
The Court refused the request for fee reimbursement. The Court held that the oral procedure is considered closed after the oral hearing, which means there is no entitlement to a 20% fee reimbursement. Even if one were to interpret this differently, the exception in R. 370.9(e) RoP would apply, allowing the Court to refuse reimbursement due to exceptional circumstances.
Comment
- This decision is absolutely correct. The Court had, in fact, done more work then in a normal case. It had prepared the judgment: this would have concluded their work, but now the Court was confronted with requests in order to effectuate several settlements!
- I have previously noted that in such situations, it would be advisable for clients not to request a reimbursement of fees (assuming clients are aware that such reimbursement rights exist).
- It is hoped that the practice of fee reimbursements (which the Drafting Committee of the Rules of Procedure never recommended) will be abolished quickly. If a party chooses to initiate litigation, they have committed to paying the court fees. These court fees are generally a small percentage of the total representation costs. The same applies to a defendant filing a counterclaim for revocation. If a party genuinely cannot afford the fees, there is always the option to request the Court for a fee waiver.
- The fact that after the oral hearing the oral procedure is closed reinforces the rule that a party cannot file any submission or document after the oral hearing. The Court should always refuse such submission or document. The only exception is if the Court would specifically ask for it (and of course give the other party the opportunity to comment). This falls under the category of parties contacting a judge by phone without participation of the other party. Also judges should never call a party without the other party participating to the call and a party who is nevertheless called by the judge should make sure he asks the judge to have the other party participating. We are in the UPC and it is irrelevant if such practices are allowed in national systems.
1 July 2025
Court of Appeal, Easee v Visibly
UPC_CoA_542/2025; UPC_CoA_526/2025
Stay of proceedings
Background
Visibly filed an infringement action. Easee filed a counterclaim for revocation. Visibly requested security for costs. The Local Division (LD) Hamburg ordered Easee to provide security for €75,000, but only for the revocation action. Both parties appealed. The LD Hamburg stayed the proceedings due to Easee’s bankruptcy.
The Court of Appeal
- The Court referred to the possibility of a stay when the proper administration of justice so requires (R. 295 (m) RoP).
- When proceedings are stayed, the „clock“ for procedural deadlines stops running.
- There is therefore no obligation to provide security, and the appeal is thus moot.
- This justifies stay of the appeal proceedings.
Comment
- A lesson for all representatives: a stay stops the clock for all periods and all obligations in that particular case.
- It is not entirely clear to me whether Easee had already provided the security. I assume not, because otherwise, I do not understand the Court of Appeal’s decision that no security has to be given. This is because if the clock stops after security is provided, the security remains in place.
- The LD Hamburg ordered Easee to provide security for the counterclaim, as it is the claimant in the counterclaim. Security can only be requested from the claimant. However, the Court of Appeal has ruled that a defendant who raises a counterclaim for revocation should be considered a defendant, so the order seems to be incorrect.
2 July 2025
Local Division Munich, Swarco v Yunex and Shenzhen Dianming
Security for costs
Background
Swarco requested security for costs from Shenzhen Dianming.
The judge-rapporteur („JR“)
The JR referred to UPC_CoA_393/2025 (Aortic v Emboline) in which the Court of Appeal decided that a claimant cannot ask for security.
Comment
This representative did not read these weekly summaries. This representative also did not pick up that the CoA had already decided that a claimant cannot ask for security, confirming what is already stated in the UPCA.
2 July 2025
Local Division Düsseldorf, Quantificare v Canfield
UPC_CFI_ 559/2024
No bifurcation
The Court
Even before the end of the written proceedings, the Court decided not to bifurcate and to ask for a Technically Qualified Judge.
Comment
Although in the Rules formulated as an exception, it is indeed recommended to make a decision as soon as possible and have the TQJ participating in the proceedings as quickly as possible.
2 July 2025
Local Division Mannheim, Corning v Hisense
UPC_CFI_819/2024
Extension of time
Background
The claimant requested a two-week extension for their Reply to the Statement of Defence and Defence to the Counterclaim. This was because it took almost three weeks to establish a confidentiality regime, and only thereafter did the claimant receive the unredacted version of the Defence and Counterclaim.
The JR
The JR granted the request, stating this was standard practice in Mannheim.
Comment
- This is reasonable and fair. If, as is the case here, a defendant wants a confidentiality regime, it should realize this leads to an extension of time for the claimant, because only when the claimant receives the complete text of the submission does the term for the next submission of the claimant start.
- It would be good if this could be made standard policy in all Divisions and the CoA, and that this is taken up if and when the Rules are revised.
– 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”.