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 June 2025
Central Division Paris, Meissner v NJOY and Juul
Access to case files
Background
The Central Division Paris, in its decision of 5 November 2024, revoked Patent EP 3 498 115. Juul has appealed the decision.
Meissner, a patent attorney firm, seeks access to the written pleadings and evidence from the first instance case.
Decision of the JR
JR cites the Ocado and decides that access is granted.
Comment
- Both parties tried to resist the access, which they should have known from Ocado was a waste of effort.
- The Court refused to impose certain conditions, holding that such conditions (such as measures to prevent submitting copies of the pleadings/evidence in other proceedings (including opposition proceedings)) were only imposed in cases where the Court granted access during the proceedings.
- In this case, one of the parties argued that without certain conditions the party who obtained the information could simply copy/paste the document. This raises the interesting question if copy/pasting is possible. I think that can easily amount to copyright infringement. The same would be true for simply submitting a copy of a pleading in other proceedings. So lazy patent attorneys who think that they can do so, for example in pending opposition proceedings, should be aware of this. Pleadings and evidence can be a source of information and inspiration and can be used as such, but representatives should draft their own submissions.
10 June 2025
Local Division Düsseldorf, Aesculap AG v Shanghai International
Translation
Background
Aesculap filed for an ex parte preliminary injunction. The Court wants to hear the defendant. Aesculap does not object and the Court gives Shanghai International one month to respond.
The defendant files in English. The JR informs the defendant that the procedural language is German and that the oral proceedings will be held in German. The defendant subsequently asks for simultaneous translation.
The claimant has no problem with a simultaneous translation at the defendant’s own costs, and also consents to participation by video of a representative of the defendant.
The JR
The JR allows the request, but the defendant has to bear the costs.
Comment
The JR gives a long explanation why he has come to its decision. I think in the end it is simple. This is litigation between two German companies. Although the defendant is a subsidiary of a Chinese company, the Chinese parent has not been sued. Apparently a UK patent firm wants to represent the defendant. That is of course fine, but you cannot for that reason file documents in English and expect the Court to pay for simultaneous translation. The representative should master German, and have facilities – certainly in PI proceedings – to provide the parent company (apparently in charge of the proceedings) with instant translation.
12 June 2025
Local Division Düsseldorf, Canon v General Plastic
UPC_CFI_351/2024, UPC_CFI_595/2024
Bifurcation?
Decision of the Court
Early decision before the end of the written proceedings not to bifurcate (R. 272 RoP).
Comment
The earlier the better. Apparently a Technically Qualified Judge has also already been nominated (which is also very early).
12 June 2025
Local Division The Hague, Genevant v Moderna
UPC_CFI_191/2025; UPC_CFI_192/2025
Procedural Order
Background
The JR has decided on Moderna’s Preliminary Objection. Moderna requests review and in the alternative also leave for appeal against the decision of the panel.
The JR
The JR gives the claimants one week to react.
Comment
Publication of these types of orders does not add much, except that it shows that the Local Division of The Hague takes the speed of the proceedings seriously.
13 June 2025
Central Division Munich, TCL Europe v Corning
Amendment of case
Background
TCL Europe filed a revocation action on 22 April 2025. On 15 May 2025, various TCL companies that were sued for infringement in a Local Division, had filed a counterclaim for revocation relying on two additional added matter arguments and lodging a report of the Swedish Patent Office.
TCL wanted to add these to the Statement of Claim in the revocation action.
The defendant, Corning, resisted and asked (apparently, if the JR would accept Corning’s request) for a 4 weeks extension for the Statement of Defense, against which TCL objected.
The JR
The JR organized a video discussion with the parties. Thereafter, the parties agreed that the amendment of the Statement of Claim was allowed and a two week extension for the Statement of Defense was agreed. The JR ordered as agreed by the parties.
Comment
A hands on JR suggested the obvious solution, and that is what parties apparently needed to resolve this. You only wonder why the responsible representatives needed the JR in order to become reasonable!
– 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”.