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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25 August 2025
Court of Appeal, Sun v Vivo
UPC_CoA_758/2025 and UPC_CoA_759/2025
Confidential information (R. 262A RoP)
Facts
- Sun filed an infringement action based on a standard essential patent (SEP), asserting that it had offered a fair, reasonable and non discriminatory (FRAND) license to Vivo which Vivo does not want to accept.
- On the same day, Sun applied for a confidentiality regime with respect to certain parts of its Statement of Claim and exhibits, first with restriction of access to three employees and later for an attorney-eyes-only regime.
- The Paris Local Division granted the request but allowed three persons of Vivo to have access.
- Sun appealed and asked for a suspensive effect asking that access to the Highly Confidential Information (“HCI”) would be subject to an attorneys-eyes-only regime or, alternatively, access should be given to three Vivo employees who shall not participate in or advise on any licensing negotiations for a certain period, arguing that without suspensive effect the appeal would become pointless.
The Court of Appeal
- The Court of Appeal held that although R. 223.5 RoP states that there shall be no suspensive effect of an order, the Court of Appeal has already decided that this is possible because the prevailing of Art. 74 UPCA.
- The Court of Appeal states that suspensive effect is the exception to the rule and refuses suspensive effect because:
- Sun did not show that the three employees will not keep the information secret;
- the appeal without suspension is not devoid of purpose, because after a successful appeal the employees will not have further access and would not be able to make further use of the unredacted version or alternatively could not participate in license negotiations.
Comment
- How does this all works in practice? I assume Sun wants to produce agreements with other licensees showing that what they offered is FRAND, that Vivo is unwilling and that Sun is therefore entitled to an injunction.
- Almost all license agreements contain a confidentiality clause. So Sun had to make sure that Vivo does not get access to the content of these license agreements, and if that is not possible, at least make sure that the persons who get access do not participate in license negotiations in which they could use the confidential information, e.g. in negotiations with companies with which Sun had agreed confidentiality of the license agreement.
- One can also imagine that, if (what in practice often happens) during the litigation there are further license negotiations, Sun would not like that the persons who negotiate on behalf of Vivo have all the information from Sun’s existing licenses.
- The Paris Local Division apparently did not realize the commercial realities when issuing the order. The decision of the Court of Appeal again shows suspensive effect is only granted in highly exceptional circumstances, and the Court of Appeal considers that because of the relative short time of an appeal it is not devoid of purpose. This would of course be quite different if the three employees could not be trusted to keep the information secret or use it only for the allowed purposes.
25 August 2025
Local Division Hamburg, Med-EL v Nurotron
Service
Facts
The defendant has been represented in preliminary injunction (“PI”) proceedings by a UPC representative. The claimant is of the opinion that he can validly serve the infringement action on the merits to the defendant’s representative in the PI action.
The Court
The PI proceedings and the review proceedings of the ex parte PI order are different proceedings compared to proceedings on the merits and these latter proceedings cannot be served to the defendant’s representative in the PI proceedings and review proceedings. They have to be served in China according to The Hague Convention.
Comment
- Although very formalistic, I think the decision is correct. The representative has clearly stated that he only acts as representative in the PI proceedings and the pending review proceedings, which are indeed separate proceedings.
- However, it is clear that with these type of avoiding tactics, the client does not seem to strengthen its position in the review proceedings. Urgency and necessity seem now not difficult to establish and any material defence seems unconvincing from the start if his Chinese client uses all the tricks in the book to avoid a timely decision in the main proceedings.
26 August 2025
Local Division Munich, NEC v TCL
Public access
Facts
- The parties settled in January 2025.
- A law firm wants access to the register, specifying that it wants to receive the written pleadings and exhibits, if redacted in the redacted version.
- The parties ask to reject the requests. The claimant in the alternative asks that only the redacted versions, lodged during the proceedings in accordance with the R. 262A and 262.2 RoP requests, will be given to the law firm.
- The claimant argues that:
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- there is no reasoned request, as the reasons (educational purposes) are not the true reasons: they just filed a case based on the same patent and apparently that is why this law firm wants this information;
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- the interest of the claimant outweighs the interest of the public (because the claimant does not want its litigation strategy to become public);
- the case ended in a settlement. No access should then be given to the public.
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The Court
- This is a reasoned request of a member of the public.
- The Court does not decide whether or not acting as a strawman or concealing the true reason of the request would be abusive, as this is not proven. The law firm states that it does not act as representative in a case in which the patent of this case is at issue.
- If the law firm asks for the information because it advises a client about the patent out of court, then the interest for the law firm to obtain the information rather increases than decreases.
Comment
- After the decision of the Court of Appeal in Ocado v Autostore (see Hoyng Case Law Court of Appeal 2023-2024 p. 14-16), the outcome of this request was predictable.
- The decision also shows the usefulness of asking a R. 262A RoP confidentiality decision together with a R. 262.2 RoP decision, because the Court will then (generally) not have to decide twice about confidentiality.
- The decision also shows (as it mentions that there are numerous requests which put a strain on the Registry, because it has to remove personal data):
- that a party cannot hide its litigation strategy, which especially in more cases about the same patent (such as FRAND cases) is a disadvantage;
- that – as indicated above – it is burdensome for the Court and costly for the system.
- With respect to the latter, I think that a request by a company or law firm should only be possible against serious payment of a fee (per page). Only if a University or a recognized research institute (for one of their researchers) should make a request, there should be no, or a modest, fee.
26 August 2025
Local Division Milan, Dainese v Alpinestars
Confidentiality
Facts
Alpinestars asked for security for costs. In those proceedings, Dainese wants to file exhibits under a confidentiality regime. Alpinestars had no problem with the request, but wants access only for the general counsel of defendant 1, while the other defendants also want a person getting access.
The JR
The Court gives access only to the general counsel, but suspends the decision in order to give the possibility to appeal.
Comment
For such a minor issue the JR issues a very extensively motivated balanced decision. Again a sign for representatives not to file cases in very busy Local Divisions where judges will not have the time for such a decision.
26 August 2025
Paris Local Division, Sun v Vivo
UPC_CFI_361/2025; UPC_CFI_362/2025
Extension of term
Facts
Sun, the claimant, asked for a confidentiality order with respect to its Statement of Claim.
The final order was issued by the full panel on 31 July 2025. Sun appealed the order (in particular the access of three employees) and asked for suspensive effect. Vivo did not give access to these employees pending the appeal. Suspensive effect was refused by the Court of Appeal in a decision of 25 August 2025.
The question now was: when did the one-month term for a preliminary objection start to run, and alternatively, Vivo filed a request for an extension of time.
The Court
- It was very clear from the Court’s preliminary ruling of 3 July 2025 that the term would start to run on 31 July 2025, the date of the final decision.
- With respect to the request for extension the Court grants three weeks.
Comment
- The granted extension does not seem unreasonable, as Vivo apparently voluntarily waited with giving access to its three employees until the Court of Appeal decided on the suspension of the order to allow access to the three employees.
- However, as I noted earlier, it is undesirable and unnecessary if the extension of terms result in proceedings taking more than 12 to 14 months. Representatives very often can easily start with working on (large parts of) the case as soon as they have the unredacted version before the employees of their client has access.
26 August 2025
Local Division Düsseldorf, Hologic v Siemens
UPC_CFI_758/2024; UPC_CFI_259/2025
Confidential information
Facts
This concerns a request for confidentiality based on R. 262A RoP, which is not challenged by the other party.
The JR
Classified the information as confidential in the meaning of Art. 58 UPCA, R. 262.2 RoP.
Comment
This – according to the published decision – was a request based on R. 262A RoP. However, it appears the goal was not to avoid the information going to the other party, as the other party apparently knew the information. Instead, the goal was to make sure that the information does not go to third parties. The JR apparently requalified it as a request under R. 262.2 RoP as that is the Rule which ensures (except if challenged under R. 262.3 RoP) that third parties do not get access. Such decision is not only useful with respect to requests for access, but in my opinion a party can also invoke such decision during public oral hearings to request closed doors (R. 105.2 RoP and R. 115 RoP).
The question remains whether you do not also need a R. 262A RoP decision in this situation, to ensure that the other party does not make the information public? Of course, if parties are already bound to confidentiality (e.g. through a non-disclosure agreement), then that is not necessary, but a R. 262.2 RoP ruling as such seems not enough.
26 August 2025
Local Division Munich, Shangrao v Longi
Stay for settlement negotiations
Facts
Defendants 1-4 in this infringement action jointly ask suspension of the proceedings for settlement negotiations, and ask the Court to rule that if the case is resumed, the full term for a Preliminary Objection and Statement of Defence will run as of that date.
With respect to defendant 5 (a customer) they ask for a stay.
The JR
Agrees and rules accordingly.
Comment
A very busy Division. So they are happy if the case settles! The more so as the language of the case is English, which is more time consuming than German (according to the Division!).
26 August 2025
Local Division Munich, Huawei v MediaTek
Security for costs
Facts
Infringement case between the Chinese company Huawei on the one hand, and the Taiwanese company MediaTek and its German subsidiary on the other.
The Taiwanese entity has not been served, but the case against the German subsidiary is ongoing. That defendant asks security for costs.
Huawei, in response to that request, gives an undertaking that a cost decision can be executed against its German subsidiary. MediaTek Germany does not consider that to be sufficient.
The JR
Orders security for € 150.000.
Reasons:
- Service and enforcement of a cost decision in China is difficult.
- As service in China is difficult, it will also be difficult to enforce such decision with respect to assets of claimant in the EU/UK.
- Also the guarantee of the German subsidiary does not give absolute certainty, as the first step necessary for enforcing that guarantee would be service in China.
Comment
- A logical decision and one wonders why Huawei makes such a problem for putting up security for such a relatively small amount.
- The principle that if you are sued and you win you should be able to get the costs award by the Court without any problems, seems to me correct and that seems clearly also the point of view of the JR.
- I again see a too busy Division:
- A case between two non-German parent companies in German while their working language is English because the Division prefers German?
- The result is again a decision in German without even a headnote in English. So the above mentioned lesson (“certainty that you get your money as a defendant when you win”) is lost for the non-German speakers.
When do companies and their representatives start to file international cases in English in other than the very busy Divisions? That would be in the interest of their clients and of the (success of the) UPC.
27 August 2025
Local Division Mannheim, Eyesmatch v Samsung
Service
Facts
In this case there are 5 defendants. To date, service has been effected on three defendants but not for the Italian and Korean defendants.
Parties have agreed that defendants will all accept service and that the starting date for Preliminary Objections and Statement of Defence Counterclaim for Invalidity start on 1 September 2025, and that the period for reply and answer to a counterclaim shall be extended to 16 February 2026 (which means a two weeks extension).
The JR
The JR rules accordingly, citing the fact that further delay with respect to service and different dates for answer by the defendants is avoided and that as part of the overall agreement, the extension to 16 February 2026 (being a short term) is acceptable.
Comments
- This in my view is the way representatives should cooperate.
I immediately add that the short extension agreed for the reply and the defence to the counterclaim should not be understood as that representatives can agree on extensions for vacation, Christmas break, local festivities etc. (for which we have seen requests in the past!). One of the primary goals of the Rules of Procedure is to have decisions (and not – as one of the Divisions stated – only oral arguments) within 12 to 14 months. However, in this case the agreement prevented further delays because of service issues and a two weeks extension does not have to prevent a decision within 12-14 months in a Division with a normal caseload.
27 August 2025
Local Division Mannheim, Decathlon v Lidl
Refusal of submission
Facts
- The claimant requests the Court to disregard pages 3 through 14 of the defendant’s Rejoinder to the application to amend the patent, as these pages contain arguments regarding the patent as granted.
- Defendant argues that there are no new facts or arguments mentioned.
The JR
Grants the request, stating that the Rejoinder can only address the contents of the Reply and can not contain other content.
Comment
R. 32.3 RoP is crystal clear: “The Rejoinder shall be limited to the matters raised in the Reply”. This representative did apparently not know this Rule and formulated his Rejoinder in the national way!
28 August 2025
Local Division Mannheim, Faro v PMT and Blankenhorn
Return of fees
Facts
In PI proceedings, Faro has withdrawn its application against PMT with the consent of the Court. Faro now wants 60% of the court fees back on the basis of R. 370.9(b)(i) RoP.
The JR
- This rule does not apply to PI proceedings but to normal proceedings. In PI proceedings you cannot get court costs reimbursed.
- Moreover you can only claim costs back if a case is withdrawn against all defendants, because the court fee is independent of the number of defendants.
Comment
- A straightforward decision. Why do representatives request things when the (negative) answer is clear?
The (clear) rule that you pay one fee for all defendants should in my opinion be revised with, for instance, a 20 percent increase for each extra defendant as the claimant gets more value for his money. It does not have to sue defendants in separate proceedings (for which it would have to pay the full fee)!
29 August 2025
Local Division The Hague, City Glass v Maars
UPC_CFI_455/2024; UPC_CFI_684/2024
Infringement / damages proceedings
Facts
- The patent expired on 14 July 2024 and had been valid in The Netherlands, Belgium and France.
- The claimant wants a declaration of infringement, an order to inform the claimant about origin, distribution and quantities produced and sold, and a compensation for damages.
- The defendant argues that the patent is not infringed and not valid.
The Court
- Because the patent expired after the start of the UPC, the UPC is competent to hear the case.
- The parties disagree about the meaning of certain claim elements. The Court repeats the principles of claim construction as formulated by the Court of Appeal in Nanostring v 10x Genomics and also referred to G1/24 of the Enlarged Board of Appeal.
- Although the claim used the wording “a grooved rubber beading”, it is clear from the description and drawings that rubber beadings have to be inserted from two sides. So there have to be at least two rubber beadings.
- If the feature of the claim is interpreted correctly and not in a way that it makes no technical sense, there is sufficiency of disclosure.
- With respect to novelty the Court applies the so-called gold standard. The novelty attacks fail.
- With respect to the inventive step attack the Court states: “It is not argued or plausible, how the skilled person would (or even be inclined to) amend the glazing system of DE 087 in such a way to come to the claimed invention”. The Court dismissed the invalidity claim.
- The Court finds no infringement.
- The Court does not decide on equivalent infringement of feature 1.4 of the claim, because also element 1.6 is not present in accordance with the interpretation by the Court of that feature.
- During the interim conference parties were invited to agree on costs and they did so.
- The request for interest if costs are paid late is not granted because there is no basis for it in the UPCA or the Rules of Procedure.
Comment
- On infringement, the case for the patentees was a bit of a long shot, as the crucial feature of the claim was clearly not fulfilled and equivalence (which according to the Court – which I would agree with – would have not been successful) not argued. It shows the importance of claim interpretation.
- The decision also shows that sometimes features of claims have a more limited meaning than the literal meaning (see above under 3).
- It is about time that the other (especially the German) Divisions follow the example of the The Hague Division how to avoid to be burdened with cost proceedings. Not only is it less burdensome on the Court, it also shortens the total time for proceedings to be completely finished and it is less costly for the parties. It requires simply a change in attitude of representatives who are used to these cost proceedings, which change can easily be achieved by the Court. Just read the order after the interim conference in this case in which the parties – if they would not agree – were ordered to specify their costs before the oral argument.
- For non-Dutch representatives, also note that the Court allows you to hand in at the oral argument your pleading notes which contain the arguments you have prepared. It cannot be uploaded in the CMS and cannot contain more than you have argued (which will be checked by the Court) but it serves as an aide – a memoire for the judges with the preparation of the judgment. If important, the Court can always check the content against the tape of the hearing. It is a clear sign that the oral hearing is important and that the Court has not already decided the case before the oral hearing!
29 August 2025
Local Division Düsseldorf, Wonderland v Cybe
UPC_CFI_807/2024; UPC_CFI_334/2025
Change of claim
Facts
- The claimant filed infringement proceedings alleged infringement of claim 1 and certain subclaims by equivalence.
- The claimant argued that all claim elements except 1.4 and 1.6 were literally infringed, and that 1.4 and 1.6 were infringed by equivalence.
- The defendants claimed not to infringe claim element 1.9 and 1.10.
- In reply, the claimant argued that at least 1.9 and 1.10 were infringed by equivalence and on the same day filed a request to amend this claim (case) in the sense that they would be allowed to argue that 1.9 and 1.10 were infringed by equivalence.
The Court
An amendment of case is not necessary. The Court of Appeal had decided that adding an equivalence argument in response to an argument in the Statement of Defence does not necessarily change the nature or scope of the dispute (see the decision of the Court of Appeal in Ortho v Apnea; Hoyng, Case Law Court of Appeal 2023-2024 p. 95).
Comment
The representative was (overly) cautious. However, as follows from the decision of the Court of Appeal, it is all a matter of the circumstances of the case. If in correspondence before the proceedings, the defendant argues that there is no literal infringement, and the Statement of Claim contains no arguments on the doctrine of equivalence, you would have a problem. In this case, it would have been better if the claimant also with respect to other claim elements at least would have made clear that he was not giving up to raise the doctrine of equivalence against an unexpected argument of the defendant with respect to the other claim elements.
29 August 2025
Local Division Mannheim, Faro v PMT/Blankenhorn
Costs
Facts
At the exhibition “Control”, Faro’s patent attorney hands a warning letter to PMT’s representative in the presence of the manager of the company Blankenhorn, which also sells the allegedly infringing products of PMT.
The next day, after PMT continued exhibiting the infringing product, Faro filed for a PI against the two defendants.
On the last day on which defendant 2 could respond, it filed this R. 360 RoP request and provided a cease and desist declaration to Faro.
Faro and PMT had settled and informed the Court that the settlement should also include defendant 2.
The Court had allowed the withdrawal of claims.
The Court had to decide the cost issue because defendant 2 argued that it should not have to pay costs.
The Court
- The case against defendant 2 had ended because there is no issue to adjudicate.
- Defendant 2 had to pay the costs.
- The Court came to this conclusion because:
- a warning letter should not have been necessary, as defendant 2 knew that claimant wanted the infringement to stop immediately;
- both defendants did not immediately comply with what was asked by Faro’s patent attorney, which resulted in the request for a PI;
- the undertaking (cease and desist declaration) did not fully comply with what was demanded.
Comment
And understandable decision. If you want to avoid to have to pay costs, you should immediately fully comply with the demands of claimant. If you do not fully comply, you have to make sure that you will win on the parts you are not complying with in Court, and tell the claimant why you will not comply with them.
29 August 2025
Local Division The Hague, Cilag v Rivolution
Urgency in PI proceedings
The Court
The court finds there is no urgency: you could have sued in November 2024!
Comment
This is a good lesson for patentees and representatives: The urgency (and necessity) requirement is taken seriously in the UPC. As a rule of thumb: if you do not file for a PI within 2 to 3 months after you have became aware of the infringement, you (generally) will be too late. Especially larger companies are often not organized to act quickly, also because their decision-making process takes time. Representatives should educate their clients that if you are not truly “on the ball” in the UPC, you may be too late for a PI.
– All comments above are Prof. Hoyng‘s personal opinions –
For all decisions of the UPC’s Court of Appeal from the start in 2023 until 1 January 2025, Willem Hoyng’s more comprehensive summaries and comments are bundled in the book “Case law – Court of Appeal of the UPC 2023-2024”.