UPC Unfiltered, by Willem Hoyng – UPC decisions week 03, 2026

18 December 2025 (late published)
Central Division Paris, IMI v Belparts

UPC_CFI_104/2025 ; UPC_CFI_364/2025 

Security for costs

Facts

1. This case started with a revocation action. Belparts filed a counterclaim for infringement.
2. The interim conference was held for the full panel. During the interim conference, security for costs was discussed.
3. In the counterclaim for infringement, IMI asked to order Belparts to provide security for € 500.000, arguing that Belparts is in a bad economic situation. 

The Court

1. The Court cites Art. 69(4) UPCA and R. 158.1 RoP about security for costs, and refers to the principles laid down by the Court of Appeal in the case Chint v Jingoa (CoA_431/2025).
2. The Court considers that since Belparts is established in Belgium, there is no risk with respect to enforcement.
3. IMI has not been able to establish that Belparts would not be able to pay costs.
4. The Court leaves open the question if IMI as defendant in the counterclaim can ask for security.
5. The Court dismisses the request.

The Court

1. A well-reasoned logical decision.
2. The open question if a defendant in a counterclaim for infringement can ask security should, in my opinion, be answered positively. This is different from a counterclaim for revocation lodged by a defendant who is sued for infringement. In the latter case the filing of the counterclaim is in fact acting as defendant, because without filing a counterclaim one cannot defend against infringement with the argument that the patent is invalid.

19 December 2025 (late published)
Local Division Mannheim, Centripetal v Palo Alto 

UPC_CFI_134/2025; UPC_CFI_660/2024 

Infringement / revocation

Facts

1. The main non-infringement defence in this case is the argument that the attacked embodiments were not configured to operate in accordance with the specific way on which the claimant based its alleged infringement, and that with respect to a certain claim feature it would be non-sensical to configure the embodiment in that way.
2. The counterclaim for revocation was based on insufficient disclosure, lack of novelty and lack of inventive step.

The Court

1. The Court finds no infringement, because patent is revoked. The application to amend the patent is unfounded.
2. The Court does not have to decide about allowance of the additional invalidity arguments put forward in the reply to the statement of defence, because the counterclaim for revocation itself results already in revocation.
3. The Court follows the usual decision making process:
   1. it first discusses the scope of the patent (network security);
   2. it discusses the disputed claim features relevant for the decision. The Court gives a broader interpretation to certain claim features than claimant.
4. Thereafter, the Court discusses the counterclaim for revocation, concluding that the patent lacks novelty over a document referred to as “Hawk”.
5. The application to amend is unfounded, which means that the Court does not have to decide if filing 32 auxiliary requests is reasonable and admissible. The Court discusses the different auxiliary requests and holds them not novel or not inventive.
6. With respect of the assessment of inventive step, the Court refers to the Court of Appeal’s decision in Amgen v Sanofi and Merel v Edwards.

Comment

1. A well-reasoned and in my opinion convincing decision, which hinges for a large part on the failed effort of the patentee to give the claims a limited meaning in order to escape on the one hand invalidity while on the other hand being able to argue infringement.
2. I do not understand why the Court says that it does not have to decide whether or not 32 auxiliary requests is a reasonable number because the application to amend is unfounded. The Court deals, as far as I understand the decision, with (only) 12 auxiliary requests. Apparently, this also covers the remaining 20?
3. Also in this case, the claimant (an Irish company), which filed a lawsuit against a US company, should not have filed in this busy German Division but could (and in my opinion should) have filed in for instance the Paris Local Division.
4. I hope that, after reading the decisions of this week, the users of the system now realize that it is not true that German Divisions are more patent-friendly than other Divisions. Representatives bear a responsibility not to overload German Divisions as it will lead to decisions which take (much) longer than 12-14 months, while elsewhere the same quality decision can be obtained within the timeframe promised to the users of the UPC. 

22 December 2025 (late published)
Local Division Düsseldorf, Atlas v Vantiva

UPC_CFI_407/2024; UPC_CFI_686/2024 

UPC_CFI_314/2024; UPC_CFI_568/2024 

Withdrawal

Facts

The parties settled the case. They both filed a withdrawal request and asked for a return of the fees paid for the claim for infringement and the counterclaim for revocation.

The Court

The Court decided accordingly.

Comment

1. The busy Düsseldorf Division was relieved from a case which a responsible representative should have never filed in the busy Düsseldorf Division as the case had hardly anything to do with Germany: the plaintiff was a US company and the defendant a French company. So the most logical place to sue was the Paris Local Division in English, and not in German which even the claimant itself does not speak!
2. The complicated settlement system (for which R. 265 RoP was not even written) should be replaced by a simple letter to the Registry, which can also deal with the straightforward requests for return of fees. Precious court time is saved and it is cheaper for the users of the system. 

29 December 2025 (late published)
Local Division Düsseldorf, Canon v Katun

UPC_CFI_351/2024; UPC_CFI_595/2024 

Costs of simultaneous translation

Facts

The case is in English. The Japanese claimant asks for simultaneous translation of the oral argument in Japanese.

The Court

The Court refers to a decision of the Local Division in The Hague and applies a two stage test:

1. Is simultaneous appropriate?
   Answer: yes, it is important that the people of Canon can follow the oral argument.
2. Should these be procedural costs or own costs?
   Answer: own costs.

Comment

This is a logical decision. I do not know if all UPC Divisions are equipped with hearing rooms in which simultaneous translation without disturbing the proceeding is possible, but if not, the Registry should arrange for such a set up and not allow a so-called “fluster” interpreter. In my experience it is very annoying if, while you are arguing a case, you at the same time hear very softly the Japanese translation. Especially if you are blessed with a very good hearing which has not been harmed by visiting rock concerts or bands like The Who!
 

9 January 2026 (late published)
Court of Appeal, Juul v NJOY

UPC_CoA_237/2025; UPC_CoA_5/2025; UPC_CoA_328/2025

Return of court fees and legal costs

Facts

1. The Paris Central Division revoked Juul’s patent.
2. Juul appealed. The Court of Appeal stayed the proceedings pending the outcome of the opposition proceedings pending before the Board of appeal (BoA) of the EPO. The Opposition Division (OD) had already revoked the patent.
3. The Board of Appeal of the EPO confirmed the decision of the OD.
4. NJOY requested the Court of Appeal to dismiss the appeal as there was no need to adjudicate (R. 360 RoP) while Juul applied for permission to withdraw the appeal (R. 265 RoP), to which NJOY consented.
5. Having found an agreement on reimbursable costs in first instance, the parties asked the Court of Appeal to rule only on the recoverable costs for the appeal.

The Court of Appeal

1. R. 265 RoP is also applicable on appeal.  Accordingly, as Juul had consented to the withdrawal of the appeal, this is accepted.
2. The new refund provisions (50% - instead of 60% - in case of withdrawal before the end of the written proceedings) are only applicable to cases started after 31 December 2025.
3. Juul argued that NJOY should bear the costs of the appeal because no infringement claim was ever brought against it and the revocation was unnecessary as they could just have awaited the outcome of the ongoing opposition. NJOY started the proceedings 6 months after the OD had already issued its preliminary opinion that the patent was invalid.
4. This line of argument fails. In principle, the party who withdraws an appeal has to pay the costs, being considered as the unsuccessful party. An exception is if the patentee has not given cause to start the action and, immediately after the start of revocation proceedings, not only surrenders the patent but also files a request for revocation with the EPO and timely pays the corresponding fee.
5. The Court orders:
   1. Juul to pay the recoverable costs incurred by NJOY on appeal;
   2. the return of 60% of the court fees paid by Juul.  

Comment

1. As a patentee, if you want to avoid the costs of a revocation action, you have to surrender your patent immediately (see above under 4).
2. On the other hand, if you want a patent revoked but also want to get your legal costs back even in case the patentee immediately surrenders its patent, it is advisable to send the patentee first a letter setting out the reasons why their patent is considered invalid and invite them to surrender their patent within f.i. four weeks.
3. The court fees have been revised but the revision only applies to new cases started in 2026. Personally, I am not in favor or returning fees as I have said before. Going from 60% to 50% is already a small step in the right direction. If the same step is taken every three years, I will achieve my goal in 15 years, which is not so long considering, as it took 65 years to get from the first proposal for a European patent court to the UPC!

9 January 2026 (late published)
Court of Appeal, VMR v NJOY

UPC_CoA_257/2025

Return of court fees 

Facts

The Court of Appel issues the same decision as in the previous case with respect to the return of court fees but notes that going forward, in cases filed as of 2026, withdrawal before the end of the oral procedure does not entitle anymore to a return of 20% of the court fees as was previously the case. But in the present case, since the action had been initiated prior to 2026, the appellant gets a 20% refund.

Comment

In the case where proceedings are withdrawn after the closure of the written proceedings but before the end of the oral phase of the proceedings, my wish for a “no return of fees” has been realized.

12 January 2026Central Division Paris, WhiteWater v American Wave

UPC_CFI_350/2025

Default decision

Facts

1. WhiteWater started revocation proceedings.
2. American Wave, a company based in the US, did not appear in court nor did it file a defence.
3. WhiteWater requests a decision by default.

The Court

1. All the conditions for a decision by default (R. 355 RoP) are met.
2. The Court bases its decision on the Statement of Claim.
3. The Court determines the skilled person and the common general knowledge and construes the claim following the principles laid down by the CoA in Nanostring v 10x Genomics (UPC_CoA_355/2023).
4. The Court discusses the patent’s subject-matter and disagrees in this respect with the expert declaration submitted by the claimant that the purpose of the patent is to generate high quality surfing waves, which the court finds to be contradicting the patent’s objective.
5. After a thorough and critical analysis of the Statement of Claim, the Court concludes that, contrary to the opinion expressed by the claimant, the patent is novel but as also argued by claimant not inventive.

Comment

1. American Wave apparently did not want to spend money to defend its patent in UPC revocation proceedings and did not appear in Court. The claimant now has to see if and how it can enforce its cost award in the USA, where the unsuccessful defendant is based. That may prove to be a difficult and expensive exercise.
2. I am somewhat surprised that the Court seems to assume (by referring to the appeal deadline) that an appeal of a default judgment is possible. My understanding is that the remedy against such decision is (only) a request to the Court to set aside the decision by default.
3. Finally, I doubt that, in a default situation that supposes that the defendant has been properly served (and declined to appear), such an in-depth analysis of the case is necessary.
4. In my opinion, this was not the intention of the Drafting Committee. The idea behind R. 353.2 RoP was that the UPC could grant a default decision if the claimant’s submissions are sufficient to make such decision possible, without however requiring to scrutinize all the statements of fact.
5. One should not forget that the defendant does have knowledge of the Statement of Claim point of view and decided (knowing the consequences) not to defend itself. Furthermore, the defendant still has the possibility to ask that the default decision be set aside.
6. The Court certainly had to spend a lot of time on such an elaborate judgment. Is that justified from an efficiency point of view?

13 January 2026
Local Division Munich, Emboline v AorticLab

UPC_CFI_628/2024; UPC_CFI_125/2025

Infringement action

Facts

1. Emboline filed an infringement action.
2. AorticLab denies infringement. At the oral hearing, it suggested that its counterclaim for revocation only be examined if the court were to find that the infringement claim was well-founded (what the court called an “intra-procedural condition”).

The Court

1. The parties agreed on the relevant expertise of the person skilled in the art (a team).
2. The Court first describes the subject-matter and the technical objectives of the patent.
3. The Court then goes on to interpret the main claim in accordance with the principles set out in Nanostring v 10x Genomics (UPC_CoA_335/2023), especially the features debated by the parties.
4. The Court leaves 3 non-infringement arguments undecided considering that as claim feature 10 was found not to be implemented, the infringement claim had to be dismissed.
5. As the Counterclaim for Revocation was made conditional on a finding of infringement during the hearing,  it did not have to be decided.
6. The Court decides that the defendant (who filed the Counterclaim for Revocation) has to pay the claimant’s costs for the revocation counterclaim, which are compensated by the costs that the claimant has to reimburse to the defendant for the infringement case. 

Comment

1. I agree that with the Court’s finding that there cannot be an infringement if a medical device could only be used in an infringing manner if the physician had to act contrary to normal practice.
2. However, I disagree with the general statement that when a device (any device), in addition to its normal, prescribed operating mode, could also be used as disclosed in a patent, it would constitute patent infringement.
   If such use as disclosed in the patent is the normal intended use, I would agree. But where there is a realistic and normal way of using the device that is non-infringing, I think one could at most claim indirect infringement (provided that the conditions for indirect infringement are fulfilled), except where the alleged infringer actively promotes infringing use or does not take reasonable measures to avoid infringing use. Only in these latter cases would a finding of direct infringement be justified.
3. If a device reads on a product claim but (in normal use does not produce the technical effects on the basis of which the product claim was held inventive) there cannot be an infringement. In fact such claim is too broad as it also covers non inventive subject matter.
4. As to the cost decision, according to which costs of the revocation action are to be borne by the defendant because the revocation counterclaim (brought by the defendant) was made conditional on a finding of infringement at trial, I think it is wrong and leads to unjust and impractical results.
5. The Rules of Procedure require the filing of a revocation counterclaim if a defendant  wants to claim invalidity of the patent as a defence. In this case, the defendant raised several non-infringement arguments and also argued that the patent was invalid. However, the defendant eventually indicated that this “defence” need not be decided if the Court found non-infringement. The filing of the (conditional) revocation was clearly a defence move caused by the patentee’s attack and the patentee lost its case. Therefore, in my opinion, the patentee should in these circumstances also pay the costs of the invalidity defence which could only be brought through a revocation counterclaim.
6. Note that the patentee also has to pay the costs related to the non-infringement defences which were not decided by the Court!
7. The decision of the Court leads to a situation where the defendant should consider refraining from making the Counterclaim for Revocation conditional if it wants to get its full costs back, which then (unnecessarily) increases the Court’s workload.
8. It is exactly for that reason that The Hague Local Division sometimes asks the defendant if it also wants a decision on the counterclaim in case the Court finds no infringement!
9. The Munich Local Division applied the law too rigidly, in my opinion, while the same law gives the possibility to come to a just, correct and efficient solution!
10. It seemed again unnecessary to have filed this case in a busy German Division. The case confirms that the German Divisions are not more patent-friendly than other Divisions. If users (and their representatives) keep filing without any necessity in the German Divisions (cases in the German language can be filed in Brussels and Vienna), they might end up getting decisions in 2 or 3 years’ time. The UPC promises decisions in 12-14 months but can only keep that promise if representatives actually make use of the capacity of other Local Divisions instead of overloading the busy German Divisions.

13 January 2026
Local Division Mannheim, ZTE v Samsung

UPC_CFI_850/2024

Production of own document

Facts

The defendant Samsung requested that (in the event that  ZTE’s submissions in its rejoinder to the FRAND counterclaim are not rejected as belated),  they themselves to be ordered to produce an own license agreement with a third party, and to make a further submission in order to refute ZTE’s arguments. On the same day, Samsung applied for confidential treatment of that license agreement to be produced.

The Judge-Rapporteur (“JR”)

1. The decision on whether ZTE’s submission should have been made earlier is left to the full panel.
2. No further written submission is allowed, also in view of the oral hearing scheduled in two months’ time.
3. In the interim procedure, Samsung is provisionally granted the opportunity to respond before 26 January 2026. The panel will then decide on the final admission of this submission at the latest after the oral hearing.
4. The Court grants a preliminary admission to produce the license agreement under a confidentiality regime with access to certain ZTE persons and (economic) advisers only.
5. All definite decisions are to be made at the latest after the oral hearing. 

Comment

1. Although understandable because of the complicated nature of the proceedings, I think it is unsatisfactory for the parties involved that (important) procedural decisions are deferred until after the (in principle final) oral hearing.
2. Had the (overloaded) Division had more time, such decisions should have been taken (even by the full panel) during the interim procedure (and hearing). However, as long as representatives (and their clients) continue to unnecessarily overload the German Divisions, this outcome is to some extent inevitable, and one cannot reasonably expect a Court being able to deliver a well-reasoned decision within 12-14 months. If this situation does not change, I sincerely hope that the Administrative Committee will take action for the good of the UPC system. The solution is not to add more chambers to German Divisions, as the UPC should not become effectively a German Court financed by the UPC member states. Let us hope that representatives will come to recognize the need to spread cases across the different Divisions. 

15 January 2025
Local Division Düsseldorf, Ona v Google

UPC_CFI_100/2024; UPC_CFI_411/2024

Indirect infringement claim filed too late

Facts

1. The proceedings concern infringement and revocation actions relating to EP 223098.
2. The claimant was ordered by the Judge-Rapporteur (“JR”) to provide further details regarding the assignment chain of the patent.
3. The Court dismissed the request to hold an interim conference.
4. The claimant filed an unsolicited submission introducing new claims of indirect infringement. The JR rejected this submission. The claimant asked for review of that decision.

The Court

1. The Court discusses the technical teaching of the patent.
2. Claim 9, which was disputed by the parties, is interpreted by the Court more narrowly than advocated by the claimant, which leads to a finding of non-infringement.
3. The Court applies the principles set out by the Court of Appeals (“CoA”) in Amgen v Sanofi when assessing inventive step.
4. The Court decides that:
   1. It is not necessary to rule on entitlement, as the patent is not infringed;
   2. The patent is not infringed. For direct infringement of a product claim, the alleged infringing product needs to have all the claimed elements of that product claim. Here the product does not contain the controller, which is located on accessary devices;
   3. The revocation action is dismissed.

Comment

This decision brings a clear lesson for practitioners on the front loaded character of UPC proceedings: If indirect infringement is neither alleged in your Statement of Claim nor raised in response to the defence, you are certainly too late. This case is a good example of a claimant who apparently (due to insufficient preparation) failed to notice that the (precise) products challenged did not contain all the elements of the asserted product claim. The Court therefore held that such products did not directly infringe! As I understand the decision, this mistake ultimately did not make much of a difference, as another claim element was also not reproduced! The Court further stated that, where indirect infringement is alleged, you must clearly set out and prove all elements required for indirect infringement. 

15 January 2026
Central Division Milan, Fisher v Flexicare

UPC_CFI_480/2025 

Subsequent auxiliary requests

Facts

1. This case concerns a revocation action regarding EP 4 185 356. The action was filed on 29 May 2025.
2. The Statement of Defence included an application to amend the patent with 13 auxiliary requests.
3. Auxiliary request 2 contains a feature which partly comes from dependent claim 7 as granted, and according to defendant, for the rest is straightforward. Therefore, this request cannot be attacked for lack of clarity (Art. 84 EPC).
4. The same feature was also part of auxiliary requests 3-13.
5. The claimant, in its answer to the auxiliary requests, maintained that claims 2-13 were unclear.
6. The defendant, in its reply, maintained its position, but also filed auxiliary requests 2A-13A, arguing that they were a direct response to the claimant’s answer.
7. The claimant, in its rejoinder, argued that auxiliary request 2A-13A were late.

The Court

1. The Court discusses R. 30.2 RoP (“subsequent auxiliary requests are only allowed with the permission of the Court”) and concludes from the case law that only in exceptional circumstances a subsequent auxiliary request should be allowed.
2. The Court considers the introduction of the auxiliary requests as an implicit request.
3. The Court considers the argument that the requests are a direct response to the arguments of the claimant in its answer to the auxiliary requests.
4. The Court concludes that in the request to amend the patent, an explanation should have been given why the proposed amendments satisfy the requirements of among others Art. 84 EPC.
5. The Court rejects the (implicit) request of R. 30.2 RoP.

Comment

1. The decision is in my opinion the correct one, but that is the only (albeit important) positive remark to be made.
2. First of all, apparently the defendant thought that you can successfully defend your patent with the assistance of patent attorneys who may have obtained an Art. 48.2 certificate, but seem not to know the Rules of Procedure. The idea that if you are able to deal with opposition proceedings in the EPO you can also competently defend your clients’ interests in the UPC is (in general) wrong. The proceedings are very different and clients’ interests are best served with a team of a competent experienced litigator with a (competent) patent attorney.
3. In this case the representatives of the patentee:
   1. insufficiently appreciated the front-loaded character of UPC proceedings;
   2. overlooked the requirement of R. 30(1)(b) RoP or gave it insufficient attention;
   3. should have realized that taking a part of a dependent claim with other new language to form part of an auxiliary request means that you have to argue with respect to the whole new claim why that claim is clear;
   4. should have known that R. 30.2 RoP (subsequent auxiliary requests) need a request for allowance to the Court (and will only be granted in exceptional circumstances).
4. I am also not impressed by the Court. The Court agrees with the claimant citing from the Rules of the EPO. The Rules of the EPO are irrelevant for UPC proceedings and a UPC Division should make that crystal clear. Furthermore, I think it is wrong to hold that it is sufficient to mention subsequent auxiliary requests in your reply to consider this as a request for permission. Indeed, I am the last to defend a too formalistic attitude to procedural rules, but to make a clear rule into a dead letter to help representatives goes in my opinion too far, certainly if such a rule has a specific purpose, which is to keep subsequent auxiliary requests in principle out of the proceedings in order to not impair the efficiency and timing of the proceedings.
5. I repeat my view, not shared by certain Divisions, that an application to amend (R. 30 RoP) (and auxiliary requests) are not necessary if the claimant defends only certain dependent claims, as long as the claimant makes clear which dependent claims. As these claims are granted claims, they do not need amendment.

– 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”.