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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9 September 2025
Local Division Munich, Papst v Ecovacs
Extension of a term
Note: This decision was only published after (the week of) 9 September
Facts
- Papst sues 4 Ecovacs companies for infringement: a Chinese, a French, a United States and a German company.
- At the time of the request for an extension of a term, only the German company had been served.
- Without the claimant’s consent, the representative for the German company seeks a two-months extension for its preliminary objection and the defence and counterclaim for revocation, offering that if the request is granted he will also appear for the other defendants.
- The claimant files a very long letter setting out the discussions between representatives and asks the Court to refuse the request.
Decision
Request refused.
Comment
- This looks like a logical decision. There is certainly an advantage to synchronize proceedings and ensuring that (especially Chinese) defendants appear in Court in cases where service is difficult. However, that advantage is primarily the claimant’s. If the claimant believes delay is not in its interest, the claimant will refuse cooperation. The Court then can still grant extensions on its own motion, but that should be reserved for ordinary circumstances.
- It is (for instance) very well possible that a claimant wants to avoid delays because an early decision against the (three) European infringers is more important, or because he wants to put pressure on the defendants to settle, etc.
- I am somewhat surprised that the representatives (especially of the claimant) apparently feel they can disclose all communications between representatives about a possible settlement to the Court. In certain UPC countries, such disclosure is impossible without approval of the other representative!
- I also note that, as also the Judge-Rapporteur (“JR”) expresses, the long letter to the Court by the claimant disclosing all the communications between the representatives and trying to picture his client as “the good guy” was totally unnecessary. As the defendant did not put forward any extraordinary reasons justifying a delay, the claimant’s representative could have simply said that his client did not agree and wanted to adhere to the time limits provided for in the Rules of Procedure.
26 September 2025
Local Division Düsseldorf, Labrador v bioMérieux
Summons to oral hearing
Order of the JR
The JR sets the oral hearing for 27 November 2025, announces closure of the written procedure on 7 November 2025, and indicates that for the moment she do not see the necessity of an interim conference.
Comment
- Is this decision a sign that this Labrador case is very straightforward, or is the Division in Düsseldorf overloaded with cases and unable to follow the way the Rules intended to organize proceedings?
- Indeed, R. 35 RoP only says that following the written proceedings, the JR will inform the parties when they intend to close the written procedure, after which the interim procedure starts. However, the idea of this was certainly not to close the written procedure just shortly before the oral hearing.
Clearly, if the oral argument is on 27 November 2025, there is de facto no interim procedure. That appears to be what the JR anticipates by stating that an interim conference is unnecessary. Not having an interim conference is not against the Rules of Procedure, because if the case is simple and the JR, after having studied the written exchanges, thinks that the case is ready for oral argument, such a conference does not make sense (although the idea of the interim conference is also to explore the possibility of settlement or for instance reaching agreement on costs). - However, the Rules of Procedure do not provide the possibility to completely skip the interim procedure. Under R. 110 RoP, as soon as the JR considers the file adequate for oral proceedings, the parties and the Presiding Judge are informed and the oral procedure starts.
- So, in this case, the interim procedure starts only on 7 November 2025 and before 27 November 2025, the JR will close the interim procedure?
- I note that until 7 November 2025, the parties can request to allow filing of further written statements. I hope and assume that any such request will be refused. If not, we are in fact almost completely back into the German national patent procedure.
- This scheduling in very busy divisions (as Düsseldorf is) seems designed so the file has to be studied only once, close to the hearing.
- That is all understandable, but not what the Rules intended. The Rules intended that almost as of day 1, at least the JR follows the procedure and can makes procedural decisions when necessary, ensuring quality of the decisions as the Court is informed on the case. The interim procedure ensures that oral proceedings can be focused and quality decisions can be delivered within 12-14 months. This week’s Court of Appeal decision in expert Klein v Seoul with respect to a decision by the Local Division Düsseldorf which shows the importance of thorough preparation of the oral hearing and making sure that judges are not overloaded with cases.
- If representatives are unwilling to file in less busy Divisions, the sub-registry of the busy Division should warn those representatives, whose cases can also be heard by other Divisions, that there will not be a decision in 12-14 months. This is preferable over overestimating the capacity of the Division and forcing the Division to take shortcuts contrary to the intentions of the Rules.
- If that does not result in better spread of the workload over the Divisions, the Agreement should be changed and the President of the Court of First Instance should be empowered to direct cases to different Divisions to assure the best use of the available capacity.
29 September 2025
Local Division Düsseldorf, Headwater v. Samsung
Withdrawal
Facts
This is the second case (concerning a different patent; the first was reported last week) in which Headwater withdraws its claim, this time before closure of the written proceedings. Headwater asks for the return of 60% of the court fees. The parties agree to bear their own costs.
The Court
The request is allowed and the proceedings are declared closed.
Comment
- Unlike last week’s case, which settled after the first‑instance decision but before expiry of the appeal period, this matter settled early and no revocation action had been filed.
- In the case reported last week it was unclear what happened to the revocation action (in which the Court had revoked the patent). The period for appeal has now expired; absent permission to withdraw or a timely appeal by Headwater, revocation of that patent has become final.
2 October 2025
Court of Appeal, expert Klein v Seoul
UPC_CoA_764/2024; UPC_CFI_774/2024
Extension of subject matter
Facts
- Seoul started first‑instance infringement proceedings. In its counterclaim, expert Klein requested revocation of the patent.
- In response, Seoul filed auxiliary requests.
- In first instance, the Local Division Düsseldorf held that Seoul could not invoke the priority of two Korean applications, but rejected expert Klein’s arguments on extension of subject matter and lack of inventive step, and found infringement.
- On appeal, expert Klein asks the Court of Appeal to annul the decision in first instance and to revoke the claims 1, 4, 5, 6 and 9 of the patent.
- Seoul requests to dismiss the appeal, or to confirm the validity of the patent on the basis of an auxiliary request.
- Expert Klein states that (also) the examples in the original application do not provide basis for claim 1. Furthermore, it disagrees with the decision on inventive step and infringement.
The Court of Appeal
- The Court notes that there is agreement about who is the skilled person.
- It establishes the meaning of the claim features using the criteria in Nanostring v 10x Genomics (UPC_CoA_335/2023).
- The Court noticed that in first instance, in its defence against the revocation claim, Seoul had accepted the meaning of feature 5.2 as forwarded by expert Klein, but on appeal changed its opinion and supported the Local Division’s reading.
- The Court further notes that Seoul did not substantiate with an expert opinion its statement that the skilled person would derive the claimed product from the theoretical possibility that a cutting step described in the specification would yield such a product.
- The Court concludes that each of the two reasons advanced by expert Klein independently leads to invalidity for extension of subject matter.
- The Court applied the following criteria for the application of Art. 123 (2) EPC.
“- An impermissible extension of subject-matter occurs when the subject-matter of the granted claim extends beyond the content of the application as originally filed. To determine this, the court must first determine what information a person skilled in the art, objectively and with reference to the filing date, would directly and unambiguously derive from the entirety of the application as filed, using his or her common general knowledge. In this context, even implicitly disclosed subject-matter is to be considered part of the content, i.e., subject-matter that clearly and unambiguously follows from what is expressly mentioned.
– If, as in this case, the patent resulted from a divisional application, this requirement applies to any earlier application. The subject-matter of granted claim 1 must therefore not extend beyond
(1) the disclosure of the originally filed application for the patent in suit and
(2) the disclosure of the original PCT application that has entered the regional phase and constitutes the parent application of the divisional application.”
Comment
- This is a convincing decision. In my view, the case for added subject matter was clear even on a relatively liberal understanding of the Court of Appeal’s “gold standard”.
- The Court of Appeal corrected the decision of the Local Division Düsseldorf within a year.
- A superficial reader should not infer that the outcome would have been different had Seoul not changed its position or had it submitted an expert report. I cannot see how this would have made a difference.
- Comparing the Local Division’s decision with the Court of Appeal’s, one is struck by the attention devoted to infringement and the limited attention to added matter. It reminded me of a national German infringement court!
- The Local Division Düsseldorf decided, and was entitled to decide, that it would not order security for execution of its injunction. Assuming the decision has been executed (which I do not know), then expert Klein can now try to obtain its damages from Seoul, a non-EU company in a country with which the EU does not have a treaty on the execution of judgments.
3 October 2025
Court of Appeal, Belkin v Philips
UPC_CoA_534/2024; UPC_CoA_19/2025; UPC_CoA_683/2025
Indirect infringement and offering
Facts
- In first instance, the Local Division Munich had rejected the counterclaim for revocation and granted an injunction against Belkin. The Local Division ordered the managing directors to use their function such that no further infringements outside Germany take place. The Local Division had refused to order Belkin to recall infringing products.
- The Court of Appeal suspended the decision with respect to the managing directors.
- On appeal:
- Belkin appealed against the infringement and revocation decision and the decision against the managing directors.
- Philips appealed against the refusal to order a recall and appealed against the decision with respect to the managing directors, because the Local Division had not ordered the managing directors to provide information. It further wanted a better (stricter) formulation of the order to provide information.
- In national proceedings in Germany, the German court in first instance and on appeal had held that Belkin did not infringe. In national invalidity proceedings, the Bundespatentgericht had upheld the patent. The appeal of that decision is pending.
The Court of Appeal
- The Court discusses the patent and the technical background (considerations 28-38) and the problem which the patent states to resolve (consideration 39).
- The Court of Appeal on claim construction:
- After having divided claim 20 in features, the Court of Appeal defines the skilled person and the meaning of the features of claim 20 (consideration 41-71).
- Regarding claim feature 20.6, the Court does not follow the (broad) interpretation of Belkin and with respect to element 20.6.1 the Court agrees with the Local Division and does not follow the (more restricted) reading of Belkin and the German national courts.
- The Court of Appeal acknowledges that what the patentee has said during prosecution can be an indication of what the skilled person thinks. However, it does not follow Belkin and the national German courts, as it is of the opinion that a different meaning of feature 20.6.1 cannot be derived from Philips’ statements during prosecution . Also here, the Court of Appeal agrees with the decision of the Local Division.
- The Court of Appeal confirms with a very detailed and thorough reasoning the decision with respect to the revocation claim (consideration 72 to 159). The Court considers it allowable that Belkin, on the basis of a prior art document that already was discussed in first instance, makes a new (further) argument, considering that Philips has had enough possibility to respond to that new argument.
- In considerations 161-170, the Court of Appeal deals with Belkin argument basically that based Article 36 of the Brussels I bis Regulation (“BR”) the Court is bound to the decision (and reasoning) of the Düsseldorf Regional Court.
- The Court of Appeal states that Article 36 BR cannot be applicable to Belkin International Inc., as that company was not a party to the German proceedings.
- The Court of Appeal states that the question to what the extent of the national German decision is binding, is to be decided by German law. According to German law, only the decision but not the underlying reasoning with respect to infringement is binding.
- Even if that would be wrong, until UPCA came into force, it was clear from Article 64 EPC and the case law of the CJEU (Roche, C‑539/03; Solvay, C‑616/10) that a decision with respect to the German part of an European Patent did not concern the same decision in law and fact as a decision between the same parties with respect to a different national part of the same patent.
- Belkin infringes claim 20, as it incorporates the Qi-Standard from which it appears that also claim feature 20.6 as interpreted by the Court is met. Parties agree that the other claim features of claim 20 are fulfilled.
- Article 63 (1) UPCA states in general that the Court can order an injunction in case of patent infringement. It does not state who the infringer is. From Article 25 UPCA, it follows that the person committing the acts mentioned in that article is the principal infringer. The Court can grant an injunction against such principal infringer without the necessity of knowledge or fault with respect to the patent infringement. Only the person who directly or indirectly infringes has the possibility to end the infringement and, in doing so, to obey the injunction.
- An infringer in the sense of Article 63 (1) UPCA read together with Article 25 UPCA is also persons who do not themselves carry out the acts of Article 25 UPCA but who can be held responsible for principal infringer’s conduct, e.g. as a provoker (“Anstifter”), accomplice (“Mittäter”) or accessory (“Gehilfe”). This follows from an autonomous interpretation consistent with the aim of Article 63 (1) of the UPCA.
- The text of Article 63 (1) UPCA makes clear that it is addressed not only to those who perform the acts described in Articles 25 and 26 of the UPCA, but to infringers in general.
- For an accessory who supports the acts of the principal infringer, it is necessary that they are not only aware of the acts constituting patent infringement, but also realise that these acts amount to an infringement.
- On the basis of these principles, a managing director (“Geschäftsführer”) can also be regarded as an infringer.
- However, this does not mean that a managing director is, merely by virtue of that role, to be treated as an infringer, particularly where they do not exercise control over the infringing acts.
- So long as liability is not imposed on a managing director without fault, there is no violation of the principles of proportionality or legal certainty.
- A managing director bears responsibility only if they act beyond the scope of their managerial duties, or if they know that their company is infringing and are able to stop the infringement but do not do so.
- The managing directors of Belkin do not infringe, as the condition described in 16 is not proven.
- “Offering” in Article 25 of the UPCA is to be understood in the economic, not the legal-technical, sense. Displaying an infringing product on a website, also without a price, is sufficient .
- In case of infringement, the Court must order the corrective measures of Article 64 (2) of the UPCA if proportionate, and where there is no willingness under Article 64 (4) of the UPCA to convert materials into a non-infringing state. The burden of proof lies with the infringer.
Comment
- The Court does not decide whether the development of a new argument, based on a prior-art document that was already in the first-instance proceedings, falls under R. 222.2 RoP. In my opinion, a complete new argument based on a prior-art document already in the proceedings is covered by R. 222.2 RoP. Stating for the first time that a document describes something is the assertion of a (new) fact and also new evidence for the submission that the patent is (in)valid. I note that (see the difference between R. 222.1 RoP and R. 222.2 RoP) on appeal you can make new arguments, but in my view this is a new argument based on a new fact, respectively new evidence. It would be unacceptable that a party in first instance produces 20 prior-art documents and on appeal states for the first time that in document 19 you can find X which is proof that the invention in combination with Y is not inventive. In this case (as the Court of Appeal rightly states) it does not matter, but what if this new submission would lead to a completely different result?
- The Court of Appeal is correct in rejecting Belkin’s arguments that the national German decision binds the UPC. However, the Local Division also issued an injunction for Germany against Belkin GmbH and Belkin Limited, which were also parties to the proceedings in Germany. The national decision dealt with the same patent and the same facts. The Local Division stated that the case in the UPC is different because it did not pertain to only Germany but also to other UPC countries.
PS: I assume that the statement in consideration 166, first sentence, that the activities of Belkin Limited and Belkin GmbH in Germany were not the subject of the local proceedings is an obvious slip: “in Germany” should read “outside Germany”. - The Local Division should not have included Germany as far as it concerns defendants Belkin Ltd and Belkin GmbH because of Article 36 BR. The Court of Appeal stated the same in the context of Article 34 UPCA (see consideration 170 the last three sentences) and corrected the judgment of the Local Division.
- The by far most important part of the judgment concerns what is generally called “indirect infringement”, which is not expressly mentioned in Article 26 of the UPCA. The Court had to decide on the responsibility of managing directors and used that occasion to address acts which in many national laws are treated as a tort (unlawful act). As an example: allowing a generic company to use your marketing approval, knowing or having to know that such use causes infringement, etc.
The Court decides that all these acts are covered by Article 63 (1) of the UPCA, based on a rather creative reading of Article 63 (1), which leads to a very sensible result. First, national laws differ on these kinds of acts; now we can apply harmonised UPC law to all of them. Second, the UPC can address them because they are now qualified as patent infringement. No doubt academics will question whether Article 63 (1) was meant to have this meaning (and in all likelihood it was not), but I find the reasoning (the overall goal of these provisions) and the practical result convincing and fully in line with the Enforcement Directive, which also pursues efficient enforcement of IP rights. - The advantage of having a specialised jurisdiction is also evident from the decision on what “to offer” means. While civil-law specialists could write a book about it, the Court is practical: of course it is not an offer in the legal-technical sense but in the economic sense. Showing an infringing product on a website (or during an exhibition) without a price can, in the end, harm the patentee.
- This decision is a must-read for every representative. I understand that the UPC will publish an English translation during the coming days. The above summary and comments are based on the German text and my own translation.
- In case of infringement the Court, at the request of the patentee, must order corrective measures. It is for the infringer to prove that these are not proportionate or that they will convert the infringing products into non‑infringing products. The Court of Appeal bases this on its (in my view correct) interpretation of the Enforcement Directive. This differs from the practice in certain UPC member states such as the Netherlands, where the patentee must give reasons why the corrective measures are justified.
- I note that this is a decision in main proceedings. In PI proceedings, the patentee, in my view also with respect to corrective measures, will have to prove urgency, necessity and proportionality.
– 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”.