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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28 July 2025
Local Division Düsseldorf, DDP v Greenchemicals
Withdrawal of PI proceedings
Facts
Claimant filed an application for provisional measures on 7 March 2025.
Parties settled.
Claimant requests withdrawal.
Defendant consents.
Parties do not ask for costs.
Claimant requests the return of 60% of the court fees.
The Court
- Permits withdrawal and orders 60% reimbursement of court fees.
- The hearing of 30 July 2025 is cancelled.
Comment
I do not understand why a party that withdraws an application for preliminary measures gets 60% of the court fee back. It seems clear to me that Rule 370.9 RoP is not written for such applications, but for actions with a written procedure, interim procedure, and oral procedure. 60% is not justified. Settlement took place shortly before the oral hearing. Thus, 20% would have been more than enough. As I have advocated earlier, the whole fee payback system should be abolished (except perhaps in exceptional cases), but it certainly should not be used in such a generous way as in this case.
28 July 2025
Local Division Lisbon, Ericsson v Asustek
No bifurcation
The Court
- No bifurcation.
- Asks the President of the Court of First Instance to appoint a Technical Judge.
- Sets the date for the interim conference on 22 January 2026.
- Sets the date for the oral hearing on 25 March 2026.
Comment
The panel is the same (except for the Technical Judge) panel that, in PI proceedings, held there was no urgency, but provided an obiter dictum that the patent was infringed. The panel’s expectation may have been that, after that obiter dictum, the parties would settle. That was not the case. It will be interesting to see what the decision of that same panel will be, but now with a Technical Judge in the proceedings on the merits.
28 July 2025
Local Division Munich, Papst v Roborock
Extension of term
Facts
In this case, there are three Roborock defendants: a German, a Dutch, and a Chinese entity. These defendants ask for an extension of about a month for R. 19 RoP objections and for the Statement of Defence/Counterclaim for Revocation. If the request is granted, the Chinese entity will agree to appear. Claimant agrees.
The Judge-Rapporteur (JR)
Rules accordingly.
Comment
- This extension does not cause delay and has the advantage that the problem of serving a company locally in China is resolved, and the time limits for all defendants are synchronized. This is all very efficient, and a scheme like this should – in my opinion – be included in the revised Rules.
- In this case, defendants approached the JR by email, who consented the same day. This is an unofficial but efficient way of communicating. However, I remind representatives that you must always copy the representative(s) of the other party (or parties) at the same time. The same is true for telephone conversations with a Judge. You cannot have such a conversation without the other representative present. I refer to R. 8.3 RoP. Judges are also advised not to phone a representative without the other party present. It will be clear that communication in writing (email) is to be preferred, as there cannot be any misunderstanding about the contents of the conversation. I write this because I note that old habits die hard. As in most national jurisdictions, this is a strict rule; the Drafting Committee concluded that such a rule should be written down in the Rules for representatives from jurisdictions that are not familiar with such a rule.
28 July 2025
Central Division Paris, X v Essetre
Claim interpretation
Facts
On 17 May 2024, X started a revocation action to revoke claims 1, 3, 4, 5, 6, 9, and 10 of the patent of Essetre, arguing that these claims lack novelty and are not inventive. On 8 August 2024, the defendant filed a request for amendment and filed an amended claim and five auxiliary requests. In its answer, X invokes lack of clarity (Art. 84 EPC) and non-compliance with Art. 123(2), 54 and 56 EPC.
The Court
- Claim interpretation: The Court applies the principles as stated by the Court of Appeal in UPC_CoA_335/2023 (Nanostring v 10x Genomics).
- The patent is its own lexicon.
- New claims do not lack clarity.
- There is no added matter.
- With respect to novelty, the Court remarks: “It must be borne in mind that for the purpose of the application of Art. 54(1) EPC an invention is considered part of state of the art when it is found clearly integrally, directly and unambiguously in one single piece of prior art and it is identical in its constitutive elements, in the same form, with the same arrangement and the same features.”
- This novelty issue is to be addressed from the vantage point of the notional skilled person, taking into account the skilled person’s common general knowledge at the publication date of the cited document.
- The patent is novel
- With respect to inventive step, the Court states: “In order to assess whether or not a claimed invention is obvious to a person skilled in the art, it is first necessary to determine one or more teachings in the prior art that would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop an invention or process similar to that disclosed in the prior art. Then, it must be assessed whether it would have been obvious for the skilled person to arrive at the claimed solution of the underlying technical problem on the basis of a realistic disclosure of the selected prior art (see, Munich CD, decision issued on 17 October 2024, UPC_CFI_252/2023; Dusseldorf LD, decision issued on 10 October 2024, UPC_CFI_363/2023).”
- The claims are inventive.
Conclusion
Revocation dismissed.
Comment
- The Court, in my opinion, stated the correct criteria. With respect to novelty I remark that, as with added matter, a claim element can be implicitly disclosed, and I can also imagine that if the document refers for an element of the invention to another document (e.g., with respect to certain materials to be used in a certain structure), that that can be novelty-destroying.
- The Court states that the prior art document should be judged at the date of its publication. I have always had my doubt about this case law. What if the teaching of that prior art document has changed between the publication date and the priority date? In my opinion the teaching at the priority date is decisive. That raises the interesting question if something that before the priority date was not novel/inventive can be novel/inventive at the priority date.
29 July 2025
Local Division Milan, Oerlikon v Bahgat
Rectification
Facts
- On 4 November 2024, the Court gave judgment in infringement proceedings in favor of Oerlikon. It ruled that Oerlikon had to bear 20% of the costs and Bahgat 80%.
- Oerlikon started costs proceedings. In a decision of 9 May 2025, the Court ordered Bahgat to pay € 80,000 as reimbursable costs.
- Oerlikon filed an application on 28 May under R. 353 RoP for correction of the judgment, arguing that the judgment, apart from the € 80,000, also added an additional amount of € 20,000 for the case on the merit and that the Court should have awarded € 100,000.
The Court
- Cites R. 353 RoP and case law.
- Refuses the application, stating that it is clear both from the motivational part of the decision and the decision itself that € 80,000 is the correct amount.
- The phrase “to this (the € 80,000 Euro) is added € 20,000 for the main proceedings” constitutes a mere typo.
- Moreover, according to the principles of R. 353 RoP, the remedy for what the applicants want (to challenge the decision of the Court) is not R. 353 RoP, but an appeal.
Comment
- The Court explains quite convincingly that a reasonable person would infer the Court indeed wanted to award €80.000,
- Oerlikon should therefore have understood that the “typo” – as the Court qualifies the error in “to this is added € 20,000 for the main proceedings” – did not make sense and could not lead to a change in judgment.
- If Oerlikon did not agree with the judgment (which awarded less than Oerlikon had asked), it should have appealed, instead of attempting to get a better result via a judgment correction as it was crystal clear that the Court had wanted to award € 80,000.
29 July 2025
Local Division Munich, Jinko v Longi
Scheduling
The JR
- States that proceedings against the fourth defendant will be dealt with later.
- Sets the dates for the interim conference and oral hearing.
- Although no formal decision is made yet, parties are told that they can assume that there will be no bifurcation.
Comment
It remains unclear what happened with the fourth defendant, a German company. It looks like the company is a reseller of the infringing products of the Longi companies and has decided not to appear in Court and not to incur any costs. This might be a good strategy if the Longi companies win the case: there will be no default judgment under those circumstances. However, it is much safer to make sure that the manufacturer defends your interests at their cost, assuming they hire a competent representative.
29 July 2025
Local Division Mannheim, Malikie v Discord
Action bound to fail
Facts
- Defendants filed a request under R. 361 RoP and R. 362 RoP.
- They argue that claimant cannot invoke the German part of the European Patent because they have not complied with Section 25(1) of the German Patent Act, which requires a domestic representative for the German part of the EP registered with the German Patent and Trademark Office if a claimant does not have residence or a principal place of business in Germany. Their conclusion is that the UPC cannot hear the case as this requirement has not been fulfilled and that therefore the case is manifestly bound to fail (R. 361 RoP).
The Court
- Section 25 of the German Patent Act is only a procedural provision, which in Germany would lead to the inadmissibility of an infringement claim but not to a judgment that the claim is unfounded.
- Being a German national provision, it does not apply to the UPC.
- The purpose of Section 25(1) is enabling somebody who is sued for infringement to immediately start a revocation action, as he can serve the writ on the representative of the patentee in Germany. This is necessary in a bifurcated system but not in the UPC, where you can counterclaim for revocation in the infringement proceedings.
- Even if Section 25(1) would be applicable, then R. 361 RoP and R. 362 RoP would not be applicable because you can remedy the failure to register a representative.
Comment
- This is a typical example of a case that should not have been brought before overloaded German Divisions, as none of the parties have anything to do with Germany.
- The defendants have spent a lot of time and money on an interesting legal point, of which the outcome was clear from the start. They get value for their money because the Court gives an elaborate, well-reasoned decision.
- It is a known private international law rule that if a court has jurisdiction with respect to an international dispute (which could most of the time also be brought in a different court), the court will have to decide which national law to apply, but that the procedural law is the law of the forum (the court). The only question that can sometimes arise is if a provision of procedural law is in fact material procedural law. If the law of a country, for instance, does not have the possibility of a recall, then a court should not order a recall if it is dealing with infringement in that (foreign) country.
29 July 2025
Local Division Düsseldorf, Maxeon v Aiko c.s.
Cost ceiling
Facts
There are 8 defendants. Defendants 1, 2, and 4, and defendants 3 and 5 to 8 are represented by different representatives.
Defendants 3 and 5 to 8 ask for security for legal costs.
They refer to the (reasons for the) order already in place for defendants 1, 2, and 4 (security order for € 100,000).
The Court
- 158.1 RoP clearly states that you can ask for security at any time during the proceedings. It is therefore irrelevant that defendants asked for security 9 months after the other defendants asked for it.
- The doubts about claimant’s solvency during the first order remain in view of the financial results for Maxeon group’s fourth quarter of 2024.
- As to the amount, the Court weighs the claimant’s right to an effective remedy against defendants’ interest in security.
- The ceiling for recoverable costs for all defendants in this case is € 200.000.
- Orders a security of € 100.000.
Comment
- A textbook decision on security for costs. Also because I did not see from the decision that Maxeon argued that they would not be able to pursue their claim for infringement.
- Moreover, if you have a good case as a claimant, you should be able (at a cost!) to find finance for starting proceedings.
30 July 2025
Local Division Düsseldorf, Headwater v Samsung
Added matter / late argumentation
Facts
- Infringement and revocation case.
- After the decision of the JR to refuse an amendment of claim relating to the infringement of subclaims 2, 3, 4, and 8, only claim 1 was at issue.
- Claimant filed 52 conditional auxiliary requests, of which 26 were still relevant.
Decision of the Court
- With respect to claim interpretation, the Court refers to UPC_CoA335/2023 (Nanostring v 10x Genomics). It adds a consideration in paragraph 77. Paragraph 77 only emphasizes one of the principles of the Protocol (“ 69 should not be taken to mean that the claims serve only as a guideline and that actual protection conferred may extend to what, from a consideration of the description and the drawings by a person skilled in the art, the patent proprietor has contemplated”). The Court states: “The Protocol in using the term “extend” clearly intends to prevent a claim interpretation which extends the subject matter beyond what is actually claimed, i.e. exceeds the bounders of the claim. The underlying principle is legal certainty.”
- With respect to added matter, the Court refers to Abbott v Sibio UPC_CoA_382/2024. However – and perhaps more importantly – the Court states that the criterion for assessing added subject matter is “beyond (reasonable) doubt”, referring to its own decision in Fuji v. Kodak.
- The Court concludes that claim 1 is invalid because of added subject matter, which means that there is no infringement and it is not necessary to deal with other defenses.
- An alternative reasoning why there is no added matter in claim 1, put forward for the first time during the oral hearing, is not allowed by the Court as it is late.
- As none of the 25 auxiliary requests addresses the added matter problem, they are not relevant.
- The Court invalidates claim 1 and dismisses the infringement claim.
Comment
- National habits seem to die hard. The representatives should:
-
- have invoked the dependent claims already in the Statement of Claim
- should have done more thinking after receipt of the counterclaim for revocation and presented their alternative reasoning why there was no added matter in claim 1 in their answer to the counterclaim.
- I do not understand that if you file 50 auxiliary requests (which may be normal in the EPO, but in my opinion, should not be allowed in a court of law), why in the end none of them addresses the added matter argument of the defendant with respect to claim 1
- Why do so many turn to the German Divisions? I often hear from companies and representatives that these Division are presumed to be patent-friendly. As I have previously written: the statistics do not evidence this, and I cannot find anything in this Düsseldorf judgment that supports that presumption either.
- In my opinion, paragraph 77 seems to opt for quite a literal interpretation of the claim and justifies that with the underlying legal principle of legal certainty. I think this addition to the cited decision of the Court of Appeal does not show the right attitude towards claim interpretation. It only cites one part of the Protocol and gives that part too much weight. It basically pleads for a (rather) literal approach to claims, which in my opinion is wrong. The Protocol is not only about legal certainty but about a balance between a just reward for the patentee and a reasonable (and NOT absolute) degree of certainty for third parties.
- Düsseldorf also has its own idea about added matter. There is only no added matter if it is beyond (reasonable) doubt that the added matter is disclosed to the skilled person. I see no reason why you have to apply such a strict test. I think if you can establish that it is more likely than not that the skilled person (with a mind willing to understand) also has the added matter disclosed, then that is more than enough as every reasonable advisor (patent attorney) will advise so. What good for innovation is it such a strict criterion invalidates (or revokes) valuable inventions? I have seen it happening.
30 July 2025
Local Division Düsseldorf, Aesculap AG v Shanghai
Penalty payment
Facts
- The Court had issued an injunction against Shanghai due to patent infringement, accompanied by the usual orders (including information about the number of infringing products, the source of those products, the name of the makers or suppliers, etcetera).
- Claimant, after service of the decision, informed defendant that it expected defendant to perform its obligation under the judgment within one month and that it would ask the Court to issue a threat with penalty payments in case defendant would not comply.
- Defendant did not comply with all orders, and claimant asks the Court to order a penalty payment of € 30,000 for each day after one month that defendant has not performed his duties.
The Court
Grants the request.
Comment
If claimant in his Statement of Claim would have requested the Court to order defendant within a month to give claimant the information about the source of the infringing products and a daily penalty if defendant does not obey the order, then claimant would not have lost a month and this whole extra exercise would not have been necessary.
30 July 2025
Local Division Düsseldorf, Nutricia v Nestlé
Value of the action
Facts
Infringement proceedings and counterclaim for revocation. The patent in suit is revoked by the EPO. In the infringement action, claimant:
- Requests to withdraw its claim and to declare the case closed.
- To give a cost decision.
- To decide that the revocation case is closed according to R. 360 RoP (no need to adjudicate).
The defendant requests the Court to issue a cost decision and put the value of the litigation at €1 million for the claim and €1.5 million for the counterclaim. In an earlier procedural order, the Court had suggested a value of €250,000 and €500,000.
Parties disagreed about the value.
The Court
- Refers to R. 22 RoP. For deciding the value of the litigation, the Court takes into account (for deciding the value of the litigation) the value assessed by the parties and its assessment of the value. The value shall reflect the objective interest pursued by the filing party at the time of the filing.
- In cases where parties reach a settlement, it is not necessary to conduct thorough examination of each and every aspect. An estimated assessment based on the known circumstances is sufficient.
- €250,000 for the infringement action and a 50% higher value for the revocation action because of the erga omnes effect is justified.
- The Court decides € 250,000 for the infringement and € 500,000 for the revocation.
- Nutricia has to pay the costs.
Comment
- Two large, sophisticated companies cannot agree. They let their lawyers fight and let the Court spend time on establishing litigation costs.
- I would not be surprised if Nutricia is going to ask for rectification because of an obvious error. The Court states that the costs for the revocation should be 50% higher than for the infringement, which is € 375,000; not the € 500,000 the Court awards. Free advice for Nutricia: do not spend your money trying this. It is clear the Court wanted to stick to their earlier provisional suggestion.
- We will probably now get a cost procedure, spending even more time and money. That all serves the representatives, but it should not be necessary. Just agree on costs.
- The Court is absolutely right that parties cannot expect that after a settlement the Court is going to dive into each and every argument about the value of the litigation. They have better things to do.
30 July 2025
Local Division Munich, Avago v Tesla (Request of Renault)
Access
Facts
Avago has started infringement proceedings against Tesla about a standard essential patent. Tesla has counterclaimed for invalidity. Avago wrote a letter to Renault, stating Renault is infringing the same patent. Renault asks for access to the pleadings.
The Judge-Rapporteur (JR)
Grants the request as far as they are not confidential.
Comment
This is a no-brainer: it is clear Renault has an interest. Renault can, on the basis of R. 262.3 RoP, ask the Court to make certain confidential information available. The JR spent 28 considerations in beautiful German on this – in my opinion – straightforward request. This is all very interesting for scholars. In that sense, it is to be regretted that this case involving three non-German (parent) companies is not in English and all this diligent work is not accessible for all scholars and users of the UPC, which in the end is an international court.
31 July 2025
Paris Central Division, Toyota v Neo Wireless
Settlement
Facts
After the interim conference, parties asked the Court to stay the proceedings. The Court allowed the stay on 10 October 2024. On 25 June 2025, claimant filed an application of withdrawal with a request for a return of fees of 40% and indicated that it did not need a cost decision. The defendant agreed on 9 July 2025.
The Court
- Reiterates the interim procedure is closed when the final dates have been set according to R. 103, 104 RoP (R. 110 RoP). This was 16 September 2024.
- Grants the closure request.
- States (see 1) that as the case was withdrawn after the interim procedure and before the oral hearing, claimant is only entitled to a 20% reimbursement.
Comment
- The Rule about the (automatic) closure of the interim procedure is, as becomes clear from the mistake claimant made, not very well known.
- Apparently, the interim conference (during which also the Technical Judge was present) was successful in the sense that it resulted in a settlement, which is one of the stated purposes of the interim conference.
31 July 2025
Local Division Munich, Taylor Wessing v NEC/TCL
Request for public access
The Court
The Court grants an extension of the deadline for submitting comments with respect to the request for public access to 12 August.
The reason for the extension of the deadline is the absence of the claimant’s representatives.
The Court remarks that certain requests for confidentiality according to R.262.2 RoP have been made when the written statement was submitted and have been granted and adds: “Protection of confidential information must be requested when the respective written submission and exhibits are filed. Subsequent correction or review of the written submissions and exhibits filed is not possible in the pending application”.
Comment
- As said before, unavailability of representatives (other than for exceptional circumstances) should not be a ground for extension (let alone as the result of a telephone call between the judge and the representative). In a law firm, not all representatives should be absent at the same time. Now in this case, this will not lead to delay of the main proceedings, and the Court cites also the vacation of the Court, and as the Court does not have 10 or 15 colleagues who can replace, I have more understanding for the vacation of the Court.
- I disagree with the Court that you have to ask for confidentiality under R. 262 RoP at the time of filing and if granted, cannot later make any requests. Indeed, that may be the most practical solution, certainly if there is already a request for application of R. 262A RoP. However, the system of R. 262 RoP is, in my opinion, different. In principle, a party does not have to ask during filing for confidentiality but will be able to do so after a request by a member of the public is made. He then gets (see R. 262.2 RoP) two weeks to make a request for confidentiality. Now if he has already asked for confidentiality during filing (e.g., together with a R. 262A RoP request) for certain paragraphs in a submission and that request is granted, I can understand a decision that he cannot again ask for further confidentiality with respect to the same document (although one can imagine that he wishes some further confidentiality when confronted with the identity of the requestor for information). However, I cannot see why he would be prevented from exercising his right under R. 262.2 RoP with respect to other documents which have not been already ruled to be confidential. This is also a Rule that should maybe be revised in the sense that you have to ask for confidentiality at the time of filing.
31 July 2025
The Nordic-Baltic Regional Division, Texport v Sioen
Infringement
Facts
1 June 2023: warning letter from Texport to Sioen.
September 2023: Sioen files in a Belgian national court a request for a declaration of non-infringement for all the countries for which the patent was granted.
January 2024: Texport starts infringement proceedings with the Nordic-Baltic Division.
February 2024: Sioen started in Belgium a revocation action.
29 October 2024: The JR dealt with the preliminary objections and refused to decline jurisdiction as Texport is not a party in the proceedings in Belgium. Texport is the exclusive licensee of the patentee.
The Court
- For acts in Portugal committed before the entry of the UPC, Portuguese law is applicable.
- Texport is an exclusive licensee and is entitled to sue for infringement.
- Claim construction: the Court refers to the Court of Appeal in Harvard v Nanostring (UPC_CoA_335/2023).
- The Court follows the claim construction of Texport and finds infringement.
- Taking part in a public tender in Portugal is an infringement in Portugal.
The Court grants the request for a permanent injunction and further measures.
Comment
- The Belgian filings were evidently of no assistance to Sioen.
- The Court also concluded, and rightly so, that the claim interpretation of Sioen had no merit.
- Sioen filed no counterclaim for invalidity.
- Should the representatives not have advised Sioen not to spend their money on useless national actions and defending a lost case?
- Contrary to the way some of the German courts formulate orders, the Nordic-Baltic Division formulates the order in such a way that you do not have to go through complicated exercises before the defendant is actually forced to comply with the orders. All representatives should read the orders and formulate orders accordingly in their Statement of Claim.
31 July 2025
Central Division Milan, Novartis v Zentiva
Costs
Facts
Zentiva had asked the Court to allow it to intervene in the proceedings between Accord and Novartis.
The Court dismissed the application.
The Court indicated in that decision that the winner in such (sub) proceedings is entitled to costs and had set the cost ceiling at €38,000.
Novartis started cost proceedings asking for €38,000.
The Judge-Rapporteur (JR)
- Novartis claimed the €38,000 without specification, claiming that four international law firms (Bristows, Trevisan & Cuonzo, Freshfields and Arnold & Porter) had been necessary to provide a defence against the request for intervention.
- The JR asked for a specification in writing so that Zentiva could comment on each cost item.
- Novartis produced in answer a witness statement of an in-house Novartis person stating that the invoices also contained work for the main case and these data should stay confidential but that the witness calculated that the firm had spent €68,000 on billable hours on the case.
- Zentiva remarked that the costs were neither proportionate nor reasonable (hiring four top-tier firms for such an item), that 150 billable hours for a 10-page defence was far-fetched, and that the Court refused the application on grounds not even mentioned in Novartis’s defence.
- After a rebuttal by Novartis, Zentiva stated two points which Novartis did not address:
- Is €38,000 reasonable and proportionate?
- Is a mere statement by claimant sufficient to justify a cost recovery request?
Decision of the JR
- Cost proceedings are adversarial proceedings; the applicant has to state all facts, arguments and evidence on which they rely. The defendant can challenge and bring counter-evidence.
- Cost proceedings are not a simple exercise of document checking but serve to apply the legal standard of proportionality and reasonableness (see Art. 14 Enforcement Directive).
- The JR refers to CJEU C-531/20, C-559/20 and C-57/15.
- “Reasonableness” refers to the necessity of such cost and “proportionality” refers to the appropriateness of the amount paid for the service.
- The cost ceiling is a general rule against undue cost recovery and refers only to costs which have already been deemed reasonable.
- The JR can ask for written evidence of any claimed costs but such request is discretionary. The JR can issue a cost decision without such evidence if the costs prima facie on the basis of the documents submitted are reasonable and proportionate.
- The witness statement of Novartis does not amount to the necessary evidence. For instance, it does not indicate which law firm had spent which number of billable hours and no invoice was attached.
- With respect to the invoked confidentiality:
- R. 262A RoP applies to third parties, not to the parties of the Court.
- Costs for representation do not fall per se under R. 262A RoP which is about know-how and business information. However, it can be granted if they, for instance, indicate the importance attached by a company to their patents.
- Proportionality and reasonableness can be assessed by a Judge on the basis of hourly rates and billable hours.
- Novartis has not complied with the request of the Court.
- As Zentiva did not dispute costs of €3,000, costs will be awarded for €3,000.
Comment
- I have urged parties over and over to agree on costs. The UPC seems slowly but gradually more a Court about costs and confidentiality than about patents.
- Although I have respect for the JR who came up with such a detailed decision, I wonder if that all is really necessary. As the JR himself remarks he has discretionary power.
- Everybody will understand that if Novartis chose to hire four law firms to defend itself for a defence against a request to intervene, that is a choice Novartis can make, but that such costs will not be considered reasonable and proportionate.
- So if the JR had stated that he does not think you need four law firms to defend this issue but on the other hand that there is not much case law on the point of intervention so that more than normal work is required, and that weighing all the circumstances he considers €19,000 as reasonable and proportionate, then I think this would have been an acceptable solution. Zentiva and Novartis should have come to the same conclusion. Both parties would have saved all the money spent on these cost proceedings if they would have agreed on 50 percent of the cost ceiling.
01 August 2025
Local Division Mannheim, Powermat v Anker
Stay
Facts
Defendants ask for a conditional stay of the proceedings because of the fact that they have filed a FRAND counterclaim in the Local Division in Munich.
Order of the Judge-Rapporteur (JR)
The request is understood as follows. Defendant wants a stay if the Court would hold that they are infringing a valid patent. That can only be decided after the oral hearing. So the decision on the request is postponed to after the oral hearing.
Comment
It seems to me that this order is not very helpful since parties do not know what is going to happen with the conditional FRAND counterclaim if the Court finds infringement, obliging them to argue the issue regardless. What defendant wanted to hear, I assume, was that if the Court finds infringement, it will stay the proceedings until the outcome of the FRAND claim pending in Munich. However, the JR is right that the request did not seem to be formulated as such.
01 August 2025
Local Division Munich, Headwater v Samsung
Infringement / révocation
Facts
Infringement action started on 12 February 2024.
During the interim conference on 28 February 2025 JR dealt with procedural motions. Various other procedural applications were made which according to the JR would be decided after the oral hearing.
Samsung denies infringement and argues further that Headwater is not entitled to sue and that the patent is invalid.
The Court
- For claim interpretation the Court refers to the decision of the Court of Appeal re
- Nanostring (UPC_CoA_1/2024) and Vusiongroup (UPC_CoA_768/2024) and the decision of the Enlarged Board 1/24 of 18 June 2025.
- Parties agree on the skilled person.
- With respect to added matter the Court referred to the test as formulated in
- Abbott v Sibio (UPC_CoA_382/2024) of 14 February 2025. The Court states “This test essentially aligns with the long-standing case law of the EPO Boards of Appeal (G2/10; G3/89; G11/91). The present case is not affected by deviations of the EPO Board of Appeal case law on added matter in some details.”
- The Court decides that there is added matter in claim 1 and the claims invoked. Only one of the 30 auxiliary requests which have been submitted addresses this revocation ground but this request does not, according to the Court, solve the added matter problem.
- As the invoked claims are invalid there is no infringement.
- As the patent is invalid no decision with respect to the procedural orders is necessary.
Conclusion
Claims 1, 2, 5, 6, 10 and 33 are revoked. The value of the litigation is €5 million. Cost ceiling: €600,000.
Comment
- This case—like several before it lost on added-matter grounds—offers an important lesson for patent attorneys. This invalidity ground is the result of sloppy prosecution (and an examiner who is not doing his job properly). Patent attorneys are often (also because of time restraints for financial reasons) too much focused on just getting a patent granted.
- It is also a lesson for representatives to be far more critical before deciding to litigate on the basis of a patent. In this case the added matter problem was pretty clear.
- The Munich Division is giving some hints that it is not automatically giving more authority to the Court of Appeal than to the Enlarged Board of Appeal of the EPO. Although in the ideal world there should not be a difference between their decisions, it is clear that the Court of Appeal is deciding about the law in the UPC and not the Enlarged Board. So if there are differences the Division in Munich should apply the decisions of the Court of Appeal and not leave any doubt about that.
01 August 2025
Local Division Mannheim, Centripetal v Keysight
Further exchange of written pleadings
Facts
The claimant asked to be allowed to file a further brief with a new infringement theory after the defendant’s reply.
The defendant objected.
The Judge-Rapporteur (JR)
- It would lead to delays in view of the vacation period and a full agenda in September.
- Further briefs (R. 36 RoP) are not to be used for new infringement That would be contrary to the front-loaded character of the UPC procedure. The claimant can file a new case.
Comment
- I find the primary reason given irrelevant (although it shows that my plea about a better distribution of cases over the divisions has merit).
- It goes without saying, in my opinion, that you cannot introduce a whole new infringement reasoning after the written phase. I also think that you cannot do so with respect to the same patent, same allegedly infringing products and same defendant in new proceedings after a decision in the present case. The only way to achieve this is to withdraw the case and pay the costs and start a new case but under the Rules of Procedure that may be difficult because defendant has a clear interest in a decision in the present case. So it may be difficult to withdraw!
01 August 2025
Local Division Düsseldorf, Ona v Google and Ona v Apple
UPC_CFI_100/2024; 411/2024 / UPC_CFI_99/2024; UPC_CFI_392/2024
Entitlement to sue
Facts
After the written statements the Judge-Rapporteur (JR) stated that claimant’s statements about the ownership of the patent “appears to be slightly confusing”. The issues had (according to the JR) been dealt with in the Statement of Claim and Counterclaim “inadequately and inconsistently”.
The Judge-Rapporteur (JR)
- formulates 4 questions for the claimant and asks the claimant to comment on the ambiguities;
- orders the claimant to submit 6 documents.
Comment
- Lesson for representatives: before you launch proceedings, get your act together! Very often entitlement questions can be tricky because some companies make a mess of the documentation. (Lesson for inhouse lawyers: make sure the entitlement to your IP is fully documented through the years – of reorganization, mergers etc. – )
- The JR is to be praised. The Parties have apparently made a mess of it and the JR tries to help them to finally come up with a clear picture about entitlement.
01 August 2025
Court of Appeal, Strabag v Swarco
Confidentiality
Facts
- Swarco started infringement proceedings against Strabag.
- Strabag produced in defence a report from the Fraunhofer institute (commissioned by the manufacturer of the accused products, Chainzone) to refute the infringement claim.
- The report was produced without a confidentiality regime.
- Chainzone intervened and filed another slightly different report.
- The Local Division Vienna largely upheld the claim and in its decision showed pictures from the second report.
- Strabag and intervener Chainzone appealed and filed in the Court of Appeal various requests for confidentiality orders.
The Court of Appeal
- cites Art. 58 UPCA about the protection of trade secrets, personal data and other confidential information;
- refers to R. 262 RoP and R. 262A RoP.
- The Court formulates what a trade secret is: a. the precise configuration of a product or its components which is not generally known or readily accessible to persons who normally deal with this kind of information; b. information which has commercial value.
- 262 RoP and R. 262A RoP also protect other confidential information.
- A request under R. 262.2 RoP is directed to a request for public access. It does not automatically provide a confidentiality obligation for the opposing party and its representatives. That has to be achieved by R. 262A RoP.
- A request under R. 262.2 RoP is generally only made if the public lodges a request for information.
- Information that has already been published (e.g., in the Vienna judgment) cannot be made confidential anymore! An R. 262A RoP application has to be made at the time of the submission.
Comment
A must read for representatives!
-
- If you want information that you produce during the litigation to be kept confidential, you must file your R. 262A request at the same time and file a redacted version.
- You do not have to file a R. 262.2 RoP request because you will be able to do so after a member of the public asks for access.
- I think that you are not prevented from filing a R. 262.2 RoP request at the same time and that the Court can grant that request, which would mean that the Registry will only make the redacted version available to the public (if access is granted). A member of the public who was granted access can then still challenge the confidentiality.
- In this case, the defendant did not ask for confidentiality at the time of submitting the information in the proceedings. By seeking confidentiality only on appeal, the request came too late; neither the Court nor the other participants had any obligation to treat the information as confidential.
01 August 2025
Local Division Munich, Huawei v MediaTek
Confidentiality
Facts
Huawei has started infringement proceedings against MediaTek. MediaTek asked on the basis of R. 262A RoP for a confidentiality regime.
The Judge-Rapporteur (JR)
- Confidentiality Regime R. 262A RoP is granted.
- The JR wonders if an R. 262.2 RoP order would also cover representatives, etc., participating in litigation if there is no R. 262A RoP in place.
- The JR states that a request to have secret (parts of the) oral hearing(s) will be decided later.
- The JR does not exclude also ruling on an R. 262.2 RoP request but notes that is a different request (implying that the present request was only an R. 262A RoP request).
Comment
R. 262.2 RoP (see also the decision of today of the Court of Appeal) covers in my view the confidentiality towards the public (which does not have access to the information exchanged during proceedings, except to what is said during public hearings).
If you do not put in place a confidentiality regime for the participants to the litigation (which I do not consider as public) these participants are free to use that information (except the duty towards their clients) and what is important the Court is free to use this information in their judgment.
01 August 2025
Local Division Paris, N.J Diffusion v Gisela
Infringement
Facts
NJ Diffusion alleges infringement by Gisela.
Gisela does not challenge the validity of the patent and does not raise preliminary objections. The JR allowed one further exchange of written submissions but parts of the submission of NJ Diffusion were rejected. NJ Diffusion was declared in “redressement” (bankruptcy) but the two Court-nominated administrators decided to continue the proceedings.
The Court
- Rejects the defence that the claim is not admissible because the formalities of R. 13.1(n) have not been fulfilled.
- The Court interprets the claim in accordance with the case law of the Court of Appeal.
- Although the description contains two different examples, the claim only recites one of the examples. The broader original language was limited during prosecution in order to overcome an objection of the EPO.
- There is no direct infringement because the defendant’s product corresponds to the example that is no longer covered by the claim.
- Equivalence can be raised for the first time in reply to the defendant’s answer.
- The claimant argued French law regarding the doctrine of equivalence. The Court states that the test applied by the Division in The Hague was the Dutch test because both parties had agreed to it.
- After having discussed other decisions of UPC Divisions, the Court states that at least a common requirement for equivalence in all these decisions is the question of whether the means (of which it is alleged that they are equivalent) fulfill essentially the same function for realizing essentially the same result.
- In this case, the (different) means do not fulfill essentially the same function, so there is no infringement.
Comment
- A convincing decision.
- This is a good example of file wrapper estoppel. You cannot claim back subject matter that you have given up in order to overcome material patentability objections. However, one has to be careful not to go too far with file wrapper estoppel. For instance, limiting the claim to overcome added matter objections does not mean that you could not argue that the refused subject matter constitutes an infringement under the doctrine of equivalence.
- The Court is well aware that it is a UPC Court and not a French national court, and it is good that the Court tried to use an equivalence approach that seemed to fit all the decisions so far. This “means-function” approach is also practiced in the US and would also fit other jurisdictions. I should add that in that theory, the means themselves should also be essentially the same for a successful plea for infringement by the doctrine of equivalence.
01 August 2025
Local Division The Hague, Abbott v Menarini / Sinocare
Postponement
Facts
- Abbott started PI proceedings on 27 June 2025 against Menarini and Sinocare. Abbott lodged thereafter another PI request against the same product and the same parties but with a different patent.
- The Court set a date for 3 September 2025 for an oral hearing.
- On 28 July 2025 Menarini, also on behalf of Sinocare, asked for a postponement of the hearing date as that date would not guarantee a fair trial.
The Judge-Rapporteur (JR)
The request is refused as there are no exceptional circumstances.
Defendants can file an objection against the request for PI before 18 August 2025.
Comment
This is a no-brainer. Of course, you cannot get an extension under these circumstances (because August in Italy is a holiday month?). This is a PI case and if, as Menarini is allegedly arguing, it is a complicated case, you have to start working on it from day one and not ask for an extension after almost a month!
01 August 2025
Local Division Düsseldorf, American Wave Machines v Surftown
UPC_CFI_837/2024; 349/2025;394/2025
Confidentiality
Facts
Defendant asks for a confidentiality regime with respect to the technical aspects of their product. Claimant disputes that these details are confidential.
The Judge-Rapporteur (JR)
Agrees with defendants and orders a confidentiality regime.
Invites claimant to mention private individuals (outside the team of representatives and their assistants) to whom the information should be disclosed.
Comment
This is a textbook decision. Mentioning the representatives and their assistants without naming them allows for the necessary flexibility for the representative’s team, which is a practical approach.
– All comments above are Prof. Hoyng‘s personal opinions –
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