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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15 September 2025
Local Division Munich, Sanofi v Accord/Stada/Reddy/Zentiva
UPC_CFI_145/2024 – UPC_CFI_463/2024
UPC_CFI_146/2024 – UPC_CFI_496/2024
UPC_CFI_147/2024 – UPC_CFI_374/2024
UPC_CFI_148/2024 – UPC_CFI_503/2024
Second interim conference
Facts
Points raised during second interim conference:
- The Board of Appeal (“BoA”) of the European Patent Office (“EPO”) had not yet uploaded the written reasoned decision following the oral hearing of 2-4 June 2025. According to a BoA communication, the parties could expect the written decision by 15 September 2025 or the end of September. The Court decides that the parties have until 8 October 2025 to comment on the decision.
- The claimant informs that an appeal has been filed against the French nullity decision. An oral hearing is scheduled for 18 June 2026.
- The experts (2) will be heard on the basis of their written submissions and will be answering 10 detailed questions formulated by the JR. Such questions mainly relate to the issue whether the skilled person thinks there is a reasonable chance of success if the third phase oncological studies have been approved and have been ongoing for three years without premature interruption.
- The JR sets a detailed agenda for a three-day hearing. (There are four different generic companies and each has its own representative.)
- A late filed declaration by Zentiva is refused as the request to file further evidence could have been filed earlier.
- JR confirms the value of the litigation as set out in the order of 22 January 2024.
- Parties are again suggested to conclude an agreement on costs.
Comment
-
- The BoA decided on 4 June 2025 to uphold the patent (for a new treatment of prostate cancer). Why is there no written decision after more than 3,5 months while the BoA has been informed about the pending litigation? It all shows that the UPC should be very conservative in granting stays because of a pending opposition. This is also what the Rules of Procedure reflect.
- In this case the oral hearing is scheduled for 14-17 October 2025. The BoA promised to issue its written decision by the end of September. Let us hope for the parties and the Court that they keep their promise!
- Note that in France, the hearing date before the Appeal Court is only scheduled for 18 June 2026. So the Munich Local Division has (also) to decide for France (assuming Sanofi included that in their claim) before the fate of the French EP is known, all also assuming that the nullity case in France is not between the same parties. If that is indeed not the case, the Munich Local Division can stay the case for France or make its decision for France conditional on the outcome of the French appeal, if it considers the patent valid and infringed.
- The JR again asks the parties to agree on costs. It is hoped that the representatives will now indeed follow the request of the JR. I noticed that generally representatives from most UPC countries do not have experience with agreeing on costs. It would be good if a conference organizer (or EPLAW together with EPLIT?) would organize a conference about costs in the UPC and how to reach agreement on costs. Far too much of the Court’s time and clients’ money is spent on costs, while for most (normal) patent practitioners it is also not their favorite subject!
In the same case, the JR issued also on 15 September 2025 a procedural order for summoning the experts to the oral hearing (see here). [link: https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/8C24B868EB8A72616EC2A5792021E3AE_en.pdf]
15 September 2025
Local Division Mannheim, Total Semiconductor v Texas Instruments
Review of cost order
Facts
1. The claimant, Total Semiconductors, is a US company.
2. Defendants 2 and 3 asked for security of costs.
3. They argued:
a. A claim for cost reimbursement would be difficult to enforce in the US;
b. The claimant has probably not enough funds to reimburse costs;
c. The claimant was founded recently for litigation purposes by third party investors;
d. The representative of the US company, Tacitus Technologies Ventures LLC, has a seat in a co-working place.
4. The claimants opposed the request.
5. The JR had ordered the claimant to provide security.
The Court
1. The Court confirmed that the fact that the claimant is a startup company as such does not justify an order to provide security, but all the additional circumstances justified the JR’s decision.
2. The request for review was rejected.
Comment
1. When do representatives realize that requests to review are almost never successful? The outcome of this request was clearly predictable.
2. If outside investors are financing litigation of a startup company which has insufficient assets, the financing should include a guarantee to cover the opposing party’s costs in the event the litigation is lost.
3. Different from the US litigation, in the UPC the losing party has to pay the (recoverable) costs of the winner.
15 September 2025
Local Division Düsseldorf, Dolby v Beko
UPC_CFI_135/2024; UPC_CFI_477/2024
Request for simultaneous translation
Facts
- An Irish claimant starts case in German against a Turkish defendant.
- The claimant requests simultaneous translation of the oral hearing of 16 October 2025.
The JR
Allows the simultaneous translation at the party’s own expense.
Comment
1. Why did an Irish claimant start the case in German and now states that they do not master German? Of course the case should have been filed in English! I cannot imagine that the claimant is happy to have to pay for translation costs of the written submissions and now for the costs of simultaneous translation let alone that it has to suffer from what is “lost in translation”.
2. It goes without saying that the request that the Court arranges for the simultaneous translation had to be refused.
3. I do think that there is no reason to allow simultaneous translation if a claimant can litigate in its own language but chooses not to. In such cases, the Registrar should not be burdened with organizing it, even if the claimant pays the costs. However, under the present Rules it seems difficult to refuse simultaneous translation flat out.
16 September 2025
Local Division Mannheim, Huawei v MediaTek
Request for production of documents
Facts
- In this SEP case, the defendant asks for the production of license agreements.
- Apart from the three license agreements mentioned in its pleadings, the claimant is willing to hand over two more license agreements. The claimant states that the other requested agreements do not concern smartphones.
- The claimant states it was unable to give details about the content of these license agreements before the litigation started because of the confidentiality clauses in the agreements. Moreover, the claimant has not been able to get the approval to disclose these. So, a Court order is necessary to be able to disclose the content.
The JR
Orders claimant to produce 7 license agreements together with its reply, with the possibility to black out parts on which the claimant does not rely.
Comment
1. The JR confirms that it depends on the stage in which the proceedings are whether or not the request for disclosure of documents (here, license agreements) pursuant to R. 190 RoP is justified.
2. In this case, the claimant wanted to produce license agreements (apparently to show that its offer to MediaTek for a license is FRAND) but was prevented to do so because of confidentiality clauses in the agreement. This time the defendant requested the agreements to be produced, but also the claimant could ask for such order if the parties to the license agreement refuse to allow disclosure in litigation.
3. I am still waiting for a case in which the UPC is asked to set the FRAND royalty to be paid, for instance by an implementor who asks for a declaration of non-infringement of a portfolio of (SEP) patents in case of payment of or willingness to enter an agreement, according to an attached exhibit, with a (worldwide) royalty of X or a royalty which de Court determines to be FRAND. Why should the UK Courts offer this possibility (representing a relatively small market) and the UPC not?
16 September 2025
Court of Appeal, Bodycap v EPO
Refusal of Unitary Effect
Facts
1. Appeal of an Order of the Central Division (Milan Section).
2. The patent was granted on 18 December 2024.
3. On 17 January 2025, a request for Unitary Effect was filed by the representative.
4. On 27 January 2025, the EPO asked to correct certain deficiencies within one month because it noted that the address of one of the co-owners in the application was different from the address on file at the EPO.
5. The representative responded on 3 March 2025 (after the one-month period for an answer had expired).
6. The EPO rejected the request on 17 June 2025.
7. On 8 July 2025, Bodycap asked for reversal of that decision.
8. On 6 August 2025, the Court of First Instance rejected the request.
9. On 26 August 2025, Bodycap appealed.
Decision of the JR
1. The Rules with respect to an interlocutory revision (R. 91 RoP) do not apply (R. 85.2 RoP) with respect to a decision of the EPO to refuse unitary effect. This follows from the short (three weeks) time period allowed for requesting a reversal and for issuing a decision.
2. Failure to meet a deadline can under certain conditions be repaired by a reestablishment of rights (Rule 22 UPR). However, R. 22.6 RoP expressly exclude the one-month period for correcting deficiencies.
3. As compliance with the one-month period is mandatory, the appeal has to fail.
Comment
This appeal was bound to fail as the JR explains very clearly. In this case the representative was two days late. The financial consequences are substantial: the difference between the maintenance fees for all 18 countries over the maintenance fees for a Unitary Patent is significant. Moreover, the patentee can be confronted with 18 invalidity actions in the different UPC countries. Of course, the patentee may limit all that by giving up exclusive rights in some of the UPC countries; however, this entails the (financial) consequence that the invention will not be protected in those jurisdictions. The representative will have to call their insurer – this decision is a warning to all patent attorneys!
17 September 2025
Local Division Düsseldorf, InterDigital v Walt Disney
UPC_CFI_297/2025; UPC_CFI_651/2025
No bifurcation
Decision
The Court decides early to not bifurcate and ask for a Technically Qualified Judge (“TQJ”) to be nominated in the infringement and revocation proceedings.
Comment
This is a practical decision because the TQJ is involved from the beginning and dates for the hearings can be set early taking into account the availability of the TQJ. The R. 37 RoP should be amended in the sense that parties have to express their opinion about (possible) bifurcation in the Statement of Claim and the Statement of Defence/Counterclaim for Revocation, with the Court deciding as soon as possible after the Counterclaim for Revocation.
17 September 2025
Local Division Paris, Merz v Viatris
Case management of a PI
Facts
- Merz asked for preliminary injunction (“PI”) measures in an application of 30 pages served on 10 August 2025.
- The Court sets a time scheme for a defence, reply, rejoinder and oral hearing (on 10 October 2025).
- Viatris filed a defence of 473 pages.
- Merz objected and asked for a consolidated defence.
The JR
Ordered:
- Viatris to file a 70 pages summary of the main points;
- Merz to file a reply 10 days later focused on invalidity matters;
- The JR will set up a case management hearing at least one week before the oral hearing.
Comment
Excellent case management! Representatives who thought to frustrate PI proceedings by filing a 473 pages answer saw their strategy fail. You wonder how strong your case (a pharma dispute) is, if you need 473 pages for your defence!
17 September 2025
Local Division Düsseldorf, Ona v Apple
UPC_CFI_99/2024; UPC_CFI_392/2024
Reimbursement of court fees
Facts
The parties settled and the Court had already ordered a 40% reimbursement of the court fees (instead of 60% because of all the work the Court had already done) to the claimants. Now also defendant Apple asks and obtained a 40% reimbursement (€ 8,000) of the court fees paid for the Counterclaim for Revocation.
Comment
- A simple settlement requires three R. 265 RoP orders and two orders for reimbursement of fees with a decision motivating why 40% instead of 60% is reasonable! Do we really think that the return of € 8,000 to Apple makes a difference for Apple? A simple letter of the parties to the JR or Registry stating that the case is settled and no return of fees. The latter should be the result of a review of the Rules.
- Let us not use the judges for mundane tasks and having said that: let them all recruit a (brilliant student as) law clerk as US judges do. All (IP) law students in the UPC countries would love to have such experience for a year and it would make far more efficient use of the judges.
17 September 2205
Local Division The Hague, Washtower v IBG
Service of judgment
Facts
- The Court granted a preliminary injunction on the condition of a certain security to be given before enforcement.
- Washtower indicated to the Court that they wanted to enforce and posted the security with the Court.
- The Court invited the defendants’ representatives to indicate if they were willing to accept service of the judgment. This was accepted.
- The Court orders the Registry to serve the judgment.
Comment
- Three defendants in this case are located in Germany and one in Poland. The representatives also represented the defendants in the proceedings. Why then did the Court ask the representatives if they were willing to accept service of the judgment?
- The question arises whether Part 5, Chapter 2, entitled “Service” of the Rules of Procedure is applicable to the service of judgments, or only to service of the Statement of Claim and “all originating pleadings in actions referred to in Art. 32(1) of the Agreement”? A judgment is not a pleading. So, the answer seems to be that Part 5 Chapter 2 of the Rules is on the face of it not applicable. However, R. 276 RoP explicitly declares Chapter 2 applicable to service of orders and decisions.
- In any event, service of a judgment has to be in conformity with Regulation (EU) 2020/1784, of which Article 19 for electronic service has rather strict conditions. The relevant question is whether there is express consent of the defendants to serve electronically on the address of representatives in the course of the proceedings. I assume that service of a judgment is service “in the course of the proceedings”. Would the fact that a representative gives its email address to be able to act for the defendant in the proceedings, amount to express consent also for serving the judgment? The Court apparently doubts this.
18 September 2025
Local Division Düsseldorf, Atlas v TP-Link
UPC_CFI_416/2024; UPC_CFI_417/2024
Stay of proceedings
Facts
Both parties ask for a stay until the EPO has decided in the opposition proceedings.
The JR
Stay granted.
Comment
The JR refers to R. 295(a) RoP. I therefore assume that the decision of the EPO may be expected “to be given rapidly”. The Düsseldorf Division is (too) busy, so I understand that if the parties ask for a stay, the Division will be inclined to grant it!
– 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”.