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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10 July 2025
Local Division Hamburg, Nera v Xiaomi
UPC_CFI_173/2024; UPC_CFI_424/2024
Infringement and revocation action
Note: This decision was not published in the week of 10 July 2025. The UPC publishes its decisions under the decision date only, instead of (also) on the publication date. I suggested several times to (also) do that, since otherwise a daily or weekly reader of the latest decisions may miss decisions that are published later. This is what happened with this decision.
Facts
- Nera (a licensing company) sues Xiaomi for infringement of its patents with respect to the mobile phones sold by Xiaomi in Germany and The Netherlands.
- Nera had bought the patent (EP 2 642 632).
- The defendants filed a counterclaim for revocation of the patent in all countries of the UPC for which it was in force, arguing extension of subject matter (Article 123(2) EPC), lack of novelty and lack of inventive step.
- The defendants also argued that the claimant was not entitled to sue and that they did not infringe.
- The claimant filed 66 auxiliary requests.
The Court
- Claimant has standing to sue. R. 8.4 RoP states that the registered owner of the patent should be considered as the patentee. The burden of proof that this information is incorrect, is on the defendant.
- The Court has international jurisdiction with respect to the counterclaim. The fact that not all claims are invoked in the infringement case does not prevent an invalidity attack with respect to the entire patent.
- The claimant is entitled, in response to the defence with respect to the application to amend the patent, to combine auxiliary requests which have already been discussed in depth in the application to amend the patent, without having to ask for approval in accordance with R. 30.2 RoP.
- The number of auxiliary requests is not objectionable. They are considered reasonable in number.
- The Court repeats the principles of claim interpretation of as laid down by the Court of Appeal (in Nanostring v 10XGenomics, UPC_CoA_335/2023) and discusses the meaning of the claim features. The fact that a claim feature (in the English language patent) is incorrectly translated in German and French is not important if the meaning is clear in the light of what is stated in the description.
- With respect to added matter the Court agrees with the defendants that the claim of the patent extends beyond the original application because claim feature 2.1 and also claim feature 3 cannot be inferred from the original application. In feature 2.1, the word “magnetic” in “magnetic substrate” in the original claim has been dropped, resulting in an intermediate generalization. The same is true for feature 3, in which also a limitation has been removed.
- The Court states:
“It is true that not every deviation between the wording of the original application documents and the requested version of the patent to be granted or granted constitutes a prohibited amendment under Article 123(2) EPC. This is because the purpose of Art. 123 EPC is not to preserve the wording of the original application documents, but the technical teachings contained therein (see EPO 20 September 2007 – T 1269/06, Beck RS 2007, 30 688 833, para. 2). Therefore, all changes that leave the information content of the original application documents untouched are unobjectionable. Standardization of the terms used or the replacement of cumbersome but unambiguous expressions by more easily understandable expressions with the same meaning therefore do not infringe Article 123(2) EPC. The requested version does not have to have a literal basis in the original application documents or be within the scope of customary technical expressions; it is sufficient if its technical teaching was originally disclosed (Benkard EPC/Sendrowski, 4th ed. 2023, EPC Art. 123 para. 140, 141).”
and
“by omitting the feature „magnetic“ from the wording of the claim, an object is claimed which is more general than the feature complex from which the feature was removed (cf. Benkard EPC/Sendrowski, 4th ed. 2023, EPC Art. 123 para. 173).” - Auxiliary requests 1 and 2 resolve the added matter problem.
- The auxiliary requests 1 and 2 are novel. The Court considers as follows (in my translation):
“For an invention to be considered prior art (Art. 54(1) EPC), it must be clearly, directly and unambiguously found in a single prior art and in its existing form. It must be identical in its essential features, in the same form, with the same arrangement and the same features (LK Munich, 31 July 2024 – UPC_CFI_233/2023, ACT_547520/2023, p. 21). For novelty to be lacking, each feature of the claimed subject-matter must be directly and unambiguously derivable from a single prior art document. This question must be answered from the perspective of the notional skilled person, taking into account his general knowledge at the time of publication of the cited document, if it is prior art under Art. 54(2) EPC (LD Düsseldorf, 28 January 2025 -UPC_CFI_335/2023, ACT_578607/2023, p. 46; LD Hamburg, 30 April 2025 – UPC_CFI_278/2023, ACT 561734/2024,p. 26 under C. I. 1.).
For the assessment of novelty, it is not relevant which problem is solved by a prior art document as long as the problem is not a feature of the claim or is interpreted as such. What is relevant is a feature-by-feature comparison of a claim with the content of a prior art document which shows that all features are disclosed in combination by this prior art document. The decisive factor is whether a prior art document discloses a composition which contains all the elements required for coverage by the claim. For example, if such a composition is described in individualised form in an example of a prior art document, this is sufficient to deny novelty (LD Düsseldorf, 28 January 2025 – UPC_CFI_335/2023, ACT_578607/2023, p. 46; CD Munich, 17 October 2024 -UPC_CFI_252/2023, ACT_551180/2023, p. 33).” - With respect to D5, on which the defendants rely for lack of novelty of claim 1, the Court notes (in my translation):
“It is not absolutely necessary for a prior art document to address the same problem as the patent in order to be prejudicial to novelty. However, the completely divergent problem solution of D5 prevents the skilled man from referring to D5.” - With respect to inventive step, the Court does not refer to the problem-solution-approach, but cites in the first place the text of Article 56 EPC and continues:
“A possible starting point is realistic if it’s teaching would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, wish to develop a product or process similar to that disclosed in the prior art and thus having a similar problem as the claimed invention. In order to assess inventive step the claimed subject matter, as understood, must be compared to the prior art and it must be seen whether it would have been obvious that he arrives at the claimed solution on the basis of a disclosure in the prior art which is regarded as a realistic starting point in view of the underlying problem.” - The Court concludes that the inventive step attack fails.
- The Court concludes that the devices of Xiaomi do (at least) not fulfil claim element 3 as added to claim 1 in the auxiliary request, so there is no infringement.
Comment
- This case is not one which should make patent attorneys, the European Patent Office (“EPO”) and the litigators proud! It contains wise lessons for all these professionals:
a. First of all the patent attorney who drafted the application. They did not do much more than apparently describing and claiming precisely the device as actually conceived by the inventor in all its details, never thinking about the fact that the inventive idea could also be applied in devices with other or different details irrelevant for embodying the invention.
b. During prosecution, the patent attorney clearly broadened the scope of the claims compared to the originally filed claims, without properly looking if there was basis in the description.
c. During examination, the patent attorney surprisingly got away with this broadening, because the examiner apparently did not notice it, while a very simple comparison with the first claim of the application and the new first claim should have immediately drawn his attention to this.
d. Before you start litigation, thorough preparation is extremely important. Do not rely on the work of the EPO but do a new (more creative) prior art search and check critically the entire prosecution file. In all my years as a litigator, there was always more relevant prior art than what was found by the EPO. In this case, such preparation should have resulted in the finding of the extension of subject matter, as it was so blatant. If you then not decide to go through a central limitation procedure, you should prepare your auxiliary requests and ask yourself the question if there would be still infringement. In this case, the action failed because there was clearly no infringement of the language added in the auxiliary request. - I think 66 auxiliary requests is not a reasonable number. The drafters of the Rules of Procedure had in mind a number of about 5 or 6. They wanted to avoid what happens at the EPO, and force the patentee to choose among the different possibilities in order to keep the litigation (also for the defendant) within reasonable boundaries.
- Above at points 7 and 10, I included (in translation) the considerations of the Court with respect to added matter and novelty. I always thought that the criteria (the so-called “gold standard”) were the same, but I read in these points slightly different tests with references to German text books (why are these so relevant?). I have the impression that under these tests it is more difficult to argue lack of novelty than lack of sufficient basis, while in my opinion it should be the same test. I am all in favor for a reasonable and not unrealistically strict application of the gold standard, to avoid invalidating patents for good inventions based on unrealistic considerations with respect to the views of the skilled person.
- Above at point 10, I included the Court’s statements with respect to novelty and prior art document D5. I have always learned that we have an absolute novelty requirement, and that also when no skilled person would or even could have “found” a certain prior art device which is exactly the same as the patented device (or a publication in which such device is described), the claim for that device is invalid. (In the past there have been Patent Acts which stated that prior art which was more than one hundred years old was no longer relevant!) The purpose for which such device is used is totally irrelevant except when that purpose means that the device must have different physical properties than the patented device. The latter is clearly the case here, as the Court convincingly shows, but the first sentence could have been more clear: A different purpose as such is irrelevant.
- The Court states that the teaching of a prior art document is what the skilled person learns from it at the time of publication. I know that this is in conformity with the EPO case law and the law in most UPC countries, but what happens if that teaching changes between the time the prior art is published and the priority date of the patent? My view is that what is relevant is what the skilled person reads in it at the priority date (which is also far easier to establish).
- My remarks with respect to German textbooks is not meant to say that they are of no value. Of course, literature is important, but in several UPC countries courts do not cite literature, as in the end it is (in the UPC) the Court of Appeal or the Court of Justice of the European Union (“CJEU”) that establishes the law, and not mr. X or ms. Y. Moreover, the UPC is an international Court, and although certain representatives seem to think that the UPC will simply follow German law, it seems unwise to reinforce this by referring only to German literature. After all, in other UPC countries there may also be relevant literature. As most judges do not master all languages let alone read all the literature, it is better to stop referring to literature and follow the tradition of the UPC countries which do not cite literature.
22 September 2025
Local Division Düsseldorf, Otec v Steros
Facts
- On 22 September 2025, Otec applied for an order for inspection and evidentiary seizure during an exhibition at the booth of Steros.
- No opposition had been filed with respect to the patent of Otec, but in a case with respect to a different machine of Steros, Steros had filed a revocation claim.
- On its website, Steros offers DLyte machines of the PRO500-Serie, PRO500 Carbide and PRO500 Hybrid.
- At the exhibition in Hannover, Steros shows a DLyte PRO500 Automated Cell.
- After an evidentiary seizure during an exhibition in Cologne with respect to the DLyte Compact machine, Otec has started proceedings on 12 June 2025.
- Otec states that it could not inspect the PRO500 machines at the exhibition in Cologne because the products were not exhibited. Otec further states an anonymous test purchase of a PRO500 machine (of over €100.000) is impossible.
The Court
- The Court held that it is not necessary for Otec to provide further details on the counterclaim for invalidity, because there is no clear reason to doubt the validity of the patent (as would e.g. be the case in the event of a negative decision about its validity).
- The matter is urgent.
- An ex parte order is justified because of the danger that Steros would remove the machine from the exhibition.
- Court grants the order for inspection and evidentiary seizure.
Comment
- This seems in view of the circumstances a logical decision as it is clear that it is practically impossible to get the evidence in a different way.
- The judge did not look at the counterclaim for invalidity and Otec did not comment on it, relying on the decision of the Court of Appeal of 15 July 2025 in Maguin v Tiru (UPC_CoA_327/2025).
- In that decision, the Court of Appeal provided clear guidelines for ex parte inspection and evidentiary seizure orders which every representative should read before formulating such order.
- In that decision (which was clearly followed by the judge granting the present order) the Court of Appeal holds that validity does not play a role “unless the presumption of validity can clearly be called into question”. As an example, the Court of Appeal refers to a decision of the EPO or the UPC with respect to the same patent.
- In this case, apparently (even after the seizure in Cologne) Steros had not filed a protective letter. However, that would probably not have made much difference without a prima facie knock-out invalidity or non-infringement argument.
23 September 2025
Court of Appeal, Apple/Ericsson v Asustek (Asus)
UPC_CoA_631/2025; UPC_CoA_632/2025
Intervention
Facts
- On 14 June 2024, Ericsson files two infringement actions against Asus.
- On 29 November 2024, Asus files its Statement of Defence and a Counterclaim for Revocation, requesting for protection of confidential information.
- On 20 December 2024, Ericsson asked for an external-eyes-only regime with respect to the Asus documents and license agreements Ericsson was going to file in the reply.
- Parties agreed on the confidentiality, but not on external-eyes-only.
- The JR of the Local Division of Milan ordered confidentiality but refused an external-eyes-only regime. The JR allowed one natural person of each party to get the information. On review, the Local Division of Milan confirmed the order of the JR.
- Ericsson appealed.
- Apple filed a request to intervene to support Ericsson, as certain agreements contain highly confidential information relating to Apple.
The Court of Appeal
- The JR referred Apple’s request to the panel.
- The panel grants Apple’s request because Apple has a legal interest in the outcome of the appeal.
Comment
- This seems a logical decision. It is clear that Apple has an own legal interest. It does not want information contained in its license agreements with Ericsson ending up in the hands of an Asus employee.
- This of course does not mean that the Court of Appeal will agree with an external-eyes-only regime. That will be decided later, after Apple has had the possibility to argue the case.
- I think that it may be wise for Ericsson and Apple as a fallback position to describe what kind of persons should be given access if the Court of Appeal would not accept an external-eyes-only regime. Under de Milan order, Asus could appoint any natural person. I think for instance that such person should reside in the EU so that possible sanctions have a true deterring effect. One could think of other conditions, which on the one hand give Apple the (near to) certainty that the information stays secret while on the other hand Asus is able to defend itself optimally.
23 September 2025
Court of Appeal, Apple/Sun v Vivo
UPC_CoA_755/2025; UPC_CoA_757/2025
Intervention
Comment
Same issue and same result as in Apple/Ericsson v Asustek of 23 September 2025.
23 September 2025
Local Division Milan, 3V Sigma v AGA
Confidentiality regime
Facts
- On 26-27 June 2025, AGA requested confidentiality protection of documents which were seized during an evidentiary seizure, and demanded that nobody (including the lawyers) would get to see the unredacted version, or alternatively only two lawyers and a consultant of 3V Sigma, or, in the further alternative, only the lawyers and 1 director of 3V Sigma.
- In a first preliminary order of 30 June 2025, the JR stated that the representatives of 3V Sigma should have access for the purpose of being able to respond to the request for confidentiality. Until such time, all documents including the report of the expert who carried out the seizure remained confidential.
- In their response, 3V Sigma acknowledges that certain documents were outside the scope of the seizure and could remain fully confidential. For other documents, 3V Sigma accepted a (normal) confidentiality regime (with at least one person of 3V Sigma having access).
The JR
- The JR refers and cites all the relevant provisions Article 56 UPCA, R. 262 RoP and the EU Directive 943/2016 and recent case law (concluding that on the basis of this recent case law the representatives and others in their firm working on the case get access).
- In view of the different provisions cited above, the JR considers that access to one outside technical consultant is sufficient in view of the complexity of the technology.
- He further considers that access to one employee of 3V Sigma is sufficient.
- The JR orders accordingly:
a. no access to the documents outside the scope of the seizure;
b. access to the representatives and their team;
c. access to one consultant;
d. access to one person of 3V Sigma.
Comment
- A very balanced and thorough way of dealing with the requests, making sure that an evidentiary seizure does not lead to disclosure of confidential information, also not via the expert report, while on the other hand respecting the right to a (good) defence by making sure that the representatives with their team can work without restriction and can consult a technical consultant and a client employee.
- Directive 943/2016, recital 34, states that it respects the fundamental rights recognized in particular by the Charter including “while respecting business secrecy”, “the right to an effective remedy and to a fair trial and the right of defence”.
I cannot read in Article 9 of the Directive the possibility to exclude the lawyers of the opposing party or order confidentiality without allowing at least one person of the opposing party access.
However, first of all, if parties agree, I think an external-eyes-only regime should be possible. Furthermore, in case of a seizure, I think that there should be a possibility for a party to argue that certain information is outside the scope of the seizure. The question is whether the representatives of the other party get access to that information in order to state their opinion on whether or not the information is outside the scope (as in this case the JR ordered), or whether that should be decided by the judge ex parte (with only the representative of the party whose information was seized present) to guarantee absolute confidentiality. I find the solution of the JR preferable, as we have to assume that representatives are well aware of their duty of confidentiality.
Finally, as said, I do not see a possibility to have an external-eyes-only regime but that does not mean that the person who gets access should not meet certain criteria. As an example, if in a SEP case the issue is whether an implementer has been “willing” or what a FRAND royalty is, then I think the person who gets access to the confidential information of the SEP holder should be someone who has nothing to do with negotiating license agreements.
24 September 2025
Court of Appeal, BEGA v Washtower
Extension of term for grounds for appeal
Facts
- The Local Division of The Hague granted an order in PI proceedings of 11 September 2025 issuing a preliminary injunction.
- Appeal was lodged on 22 September 2025.
- The deadline for filing the grounds for appeal is 26 September 2025.
- BEGA requested an extension for their grounds of appeal by two weeks, arguing (unexpected) professional constraints and the fact that one of the two lead attorneys has to attend a hearing at the EPO on 25 and 26 September.
Decision of the JR
Extension of three working days.
Comment
- As the JR states, this decision will likely not make any difference for the respondents (and will also not lead to delay of the appeal proceedings).
- However, I think such extensions should not be granted. First of all, why do the representatives ask only on 22 September 2025 for an extension, while the decision is of 11 September 2025 and the grounds of appeal are due on 26 September 2025? This puts pressure on the JR. If they had lodged the request on 11 September 2025, the JR would likely have not given three days.
- The extension rewards being unorganized. If you have an oral hearing at the EPO, you know the dates of the hearing for months already. If you have to file grounds of appeal in a case you also argued in first instance, you know the case very well. In such a situation, if you start working on the grounds of appeal on 11 September 2025, you can easily be ready by 18 September 2025, leaving almost another week to further prepare the EPO hearing.
- I am afraid that we will see other representatives following this example. Extensions should only be granted in absolutely extraordinary situations.
- About being organized! What about the JR: he receives the request on 22 September and gives a decision on 24 September. What if he would have taken 11 days to give a decision?
26 September 2025
Local Division Düsseldorf, Headwater v Samsung
Settlement
Facts
- On 30 July 2025, the Local Division dismissed the infringement claim and revoked claim 1 of the patent.
- Before the time for appeal expired, the claimant withdrew its infringement claim. The defendants agreed.
The Court
- Allowed the withdrawal of the infringement claim.
- Each party bears their own costs for the infringement action (which was agreed between the parties).
- Set the value of the infringement action at € 3 million.
Comment
- As long as a decision is not definite, you can withdraw your claim (if the defendant agrees, otherwise you will have to fulfil the conditions of R. 265 RoP). As the term for appeal was still running, the claimant could withdraw.
- Apparently the revocation of claim 1 is not subject of the agreement. I do not know if Headwater filed or will file an appeal, which they should be doing on 30 September at the latest.
– 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”.