UPC Unfiltered, by Willem Hoyng – UPC decisions week 16, 2026

26 March 2026 (late published)
Local Division Munich, Huawei v MediaTek

UPC_CFI_1234/2025; UPC_ CFI_1235/2025

Access to file

Facts

The applicant MediaTek wanted access to the pleadings and evidence in UPC_CFI_248/2025, in which Huawei was one of the parties.

The applicant made it clear that it only wanted the redacted versions and agreed to the necessary redactions of personal data.

The JR granted the requested access, stating that:

1. interest for training purposes is sufficient;
2. the applicant does not have to enter into a confidentiality agreement;
3. pleadings which have led to a settlement can be of interest for training purposes;
4. the fact that information can be gained from such access does not constitute a fishing expedition;
5. access does not to have be restricted by a confidentiality order because access does not entitle the applicant to disclose or publish the pleadings; and
6. the copyright objections are unfounded as the applicant did not intend to publish the pleadings.
7. The defendant filed a request for review by the panel (R. 333.1 RoP).
8. The JR instructed the Registry not to provide access until the proceedings relating to the request for access are concluded. 

The Court

1. R. 262.1(b) RoP stated that the JR should decide on public access. R. 333.1 RoP was not applicable as R. 262.1(b) RoP does not transfer competence from the panel to the JR. The panel was not competent to make decisions regarding publication.
2. The Court referred to previous Court of Appeal decision regarding public access (UPC_CoA_404/2023, UPC_CoA_480/2024 and UPC_CoA_481/2024). All of these appeals were dealt with directly without a review procedure.
3. Despite the request being inadmissible, the Court stated that the decision of the JR was correct because:
   1. the Court of Appeal has already ruled that a law firm has an interest if it submits a request for training or advisory purposes;
   2. it is not necessary to justify this, nor is it necessary for the information to directly reveal how the Court handled the case;
   3. even if only a Statement of claim as well as a Statement of defence and Counterclaim for revocation are filed, an employee of a law firm can gain an indirect insight how the Court handles cases and how the law develops. 

Comment  

1. We should not be naive. Of course, the law firm that requested access was not (primarily) doing so for training purposes or to gain insight into how the Court handles cases! They, in all likelihood, have a (potential) client who fears being attacked based on the same patent which was at issue in the settled case. It is worthwhile to find out what non infringement arguments were used against that patent and what invalidity arguments were included in the Counterclaim for revocation.
2. By now, we know that “training purposes” gives a law firm full access to work already carried out by others.
3. Huawei tried to escape the consequences of public access with all kind of arguments, but in the light of the Court of Appeal decisions, this had little chance of succeeding. 

10 April 2026 (late published)
Local Division The Hague, Maxell v Samsung

UPC_ CFI_251/2025; UPC_CFI_769/2025

Interim conference

Facts

1. On 10 April 2026, an interim conference was held by video conference.
2. The JR, the TQJ and the President attended from the side of the Court.
    

The JR

The following decisions were made during the interim conference:

1. Samsung’s objection against the paragraphs on the de facto FRAND defence contained in Maxell’s rejoinder to the counterclaim will be decided if this proves to be relevant for the decision. (The word “assets” in no. 3 of the order is a typo and should read “asserts”).
2. The value of the litigation is set at € 1,5 million for the infringement and € 2 million for the counterclaim.
3. The parties’ requests are clarified and corrected.
4. Maxell’s objection against the new invalidity attacks in Samsung’s rejoinder is admitted.
5. Samsung has to clarify within a week what are its most promising invalidity attacks (3 to 5).
6. Within one week after Samsung’s submissions, Maxwell is to submit its list of auxiliary requests (ARs) (5 to 10) on which it intends to rely.
7. A week later, Samsung shall inform the Court of the invalidity attacks (1 and 2) it wants to rely on against the AR.
8. With respect to the statements under 5 to 7, parties shall indicate which parts of their submissions are relevant to each attack or AR.
9. Other housekeeping matters addressed:
   1. An updated comprehensive overview of exhibits is to be submitted;
   2. Timing for the oral argument and permission to exchange power point presentations (without any new information) and sent to the Court at the latest one hour before the start of the hearing.
   3. Parties are urged to agree on costs and otherwise to send to the Court a specified overview of the costs two days before the hearing.

Comment

1. The Court did a lot of housekeeping to keep the oral hearing focused on the key issues!
2. In The Netherlands, it is also customary for the parties in patent litigation to agree on costs and representatives are urged to do so. The Court “helps” by otherwise requiring the parties to specify the costs (which enables the Court to suggest an agreement!).
3. German national practice of mentioning “Evidence: court expert” is translated by the JR into UPC language, i.e. a R.185 RoP request for a court-appointed expert. Another reason for representatives used to national proceedings to read all the Rules!
   
    

10 April 2026 (late published)
Paris Local Division, Orange v HMD

UPC_CFI_301/2025

FRAND case, further submissions

Facts

1. Orange sued HMD.
2. After receiving HMD’s rejoinder, Orange asked the Court to declare certain facts and arguments brought by HMD inadmissible on the ground that they were not raised in response to its reply but introduce new facts and arguments. Alternatively, Orange asked to be allowed to file further written submissions.
3. HMD states that there was nothing truly new (and that “front-loaded” should be interpreted largely). If the Court were to allow the alternative request, it wants the possibility to answer.

The JR

1. The disputed facts and arguments concern non-technical issues relating to the FRAND defence. There is no provision that such FRAND defence should be raised in specific submissions such as a Counterclaim for revocation. Under the general principle of fairness, Orange should be able to react (whether or not the facts and arguments presented by HMD are new).
2. There is no justification for HMD to react (as HMD is the one who raised the FRAND defence in the first place). Their final response (rejoinder with respect to Orange’s application for amending the patent) is still due.
3. The JR allowed Orange’s request and dismissed HMD’s.

Comment

1. Although this seems a practical solution which does not interfere with the progress of the proceedings and which may lead to a better instruction of the Court, I am somewhat puzzled by the decision.
2. Like each defence, the FRAND defence is a defence to defend against the claim of the claimant. So why is this fundamentally different from another defence? If HMD did not bring all their arguments in their Statement of defence, why should they be allowed to do that in their Rejoinder when Orange cannot react anymore and why are these new elements admitted?
3. I see no special reason for that just because it is a FRAND defence.
4. I agree that if there are good reasons for new facts and submissions, then it is fair to give Orange the possibility to react. But, in such a case, it is also fair to give the defendant the possibility to react or in this case to say explicitly (what the JR meant to say is implicitly) that HMD could react in their last rejoinder with respect to Orange’s Application to amend its patent.
5. I say this because the rejoinder to the application to amend the patent can in principle not be used to bring facts and arguments which have nothing to do with this application (but with the FRAND defence).
6. Ultimately, nothing prevented HMD from filing a Counterclaim, asking the Court to rule that its offer is FRAND and that Orange is not entitled to an injunction, should the Court hold that the invoked patent is valid and has been infringed.
7. I do not know the case but I assume that, in order to avoid an injunction on the ground of unwillingness to agree to a FRAND license, HMD has made a (conditional) FRAND offer and paid license fees in escrow while giving information about their use of the patent (if that information is sensitive, under a confidentiality obligation). These, in my opinion, should be the conditions for a successful FRAND defence.

10 April 2026 (late published)
Local Division Lisbon, Boehringer v Zentiva

UPC_CFI_858/2025

Action devoid of purpose

Facts

1. The Court of Appeal granted an injunction against Zentiva on the risk of imminent infringement.
2. Boehringer filed an action on the merits in compliance with R. 213 RoP within 30 days.
3. After Zentiva filed a defence without a Counterclaim for revocation, the patent expired.

The Court

1. The Court is at any time entitled to dispose of the action if it considers that the action has become devoid of purpose (i.e. there is no longer any need to adjudicate on it).
2. The Court notes that Zentiva did not file a Counterclaim for revocation.
3. The Court further notes that Boehringer did not allege that the patent is infringed but only that there was a threat of infringement.
4. The Court disposes of the action as being devoid of purpose, considering that the Court of Appeal had already decided that there was indeed a threat of infringement.  

Comment

1. A practical and logical decision. See R. 360 RoP.
2. The only (theoretical) interest that the parties seem to have is in the entitlement to costs but this seems insufficient to me for a complete procedure. Therefore, I think that the decision to just have each party bear their own costs was justified.  

10 April 2026 (late published)   
Local Division Paris, SharkNinja v SEB

UPC_ CFI_1594/2025

Preliminary injunction (PI) 

Facts

1. SharkNinja started PI proceedings against SEB for infringement of EP 3 689 198 (for a cooking device and components thereof) and EP 3 689 201 (which was dropped).
2. SEB disputed validity and infringement.
3. In its final written submission, SharkNinja invoked the combination of claims 1 and 8.
4. SEB contested the right to amend the patent in PI proceedings.

The Court

1. The Court recalled the requirements for a PI and refers to the Court of Appeal’s decisions in Nanostring v. 10x Genomics (UPC_CoA_335/2023) and Amgen v. Sanofi (UPC_CoA_528/2024) for claim interpretation.
2. The Court described the content of the patent and interprets certain claim elements.
3. The Court discussed novelty (after citing the gold standard).
4. The Court (based on two expert declarations submitted by SEB) concluded that it is more likely than not that claim 1 is invalid.
5. The Court discussed all 7 dependent claims and concluded that they are also more likely than not invalid.
6. Regarding the combination of claims 1 and 8, the Court remarked that the Court of Appeal had already decided that a PI could be based on a version of the claims that differed from the granted version (Onward v Niche, UPC_CoA_898/2025). The Court observed that claim 8 is a dependent claim and as such incorporates claim 1. Therefore, amending the claims was not necessary since the combination of claims 1 and 8 was already covered by granted claim 8. However, it had already decided that claims 1 and 8 are more likely than not not novel.
7. The Court dismissed the PI.

Comment

The Court (in a convincing, well-reasoned decision) gives the representatives a few lessons:

1. Yes, you can invoke a different claim than as granted in PI proceedings.
2. Invoking a combination of claim 1 and claim 8 as a new argument does not improve the patentee’s position since claim 8 is a dependent claim: therefore, claim 8 as granted already includes claim 1. This is the same as invoking claim 8 from the outset, which lacked prima facie novelty according to the Court.
3. Claim 8 lacks novelty if all the features of claim 1 and the additional features of claim 8 are disclosed in a single document. This is the correct method for assessing the novelty of claim 8, as the Court did. 

14 April 2026 
Court of Appeal, La Siddhi v Athena

UPC_CoA_48/2026

Application for suspensive effect

Facts

1. The applicant filed a revocation action in the Central Division Milan.
2. On 13 March 2026, the Central Division ordered the applicant to provide a security for the costs of the defendant for EUR 75,000 (either in the form of a deposit or bank guarantee) within 6 weeks.
3. On 27 March 2026, the applicant lodged an appeal and asked for suspensive effect.
4. Among other things, the applicant argued that it faced the immediate risk of being prevented from continuing the proceedings and denying suspensive effect would be contrary to Art. 47 of the Charter of Fundamental Rights.

The JR

1. The JR reiterated the principles and case law with respect to suspensive effect.  
2. Despite taking into consideration that the applicant is an SME, the JR still refused the suspensive effect.

Comment

1. Why is an SME spending its (apparently) scarce resources on an appeal that has no chance of succeeding from the outset? (See the lesson of the JR with respect to the suspensive effect.)
2. If you are an SME that is allegedly unable to pursue an infringement claim because you have to provide a security of EUR 75,000, then you should make sure you seek some financing before suing. You can certainly find financing if you have a good case.
3. The inventor of the Windsurfer, who applied for a US patent, sold in only 4 windsurfers the first year and had no money for foreign applications. However, he was funded by his own patent attorney, who believed in the invention’s potential. It was a good investment because, in the end, the German patent generated a huge license income!
4. Perhaps this could be an idea for the patent attorneys at La Siddhi. As they started the case for their SME client, they must believe in it. As the saying goes, “Put your money where your mouth is”!

14 April 2026
Local Division Paris, BMS v BYD

UPC_CFI_2070/2025

International jurisdiction

Facts

1. On 15 December 2025, BMS started an infringement case against the BYD defendants.
2. The JR set the starting date for the time period to file a Preliminary objection and the Statement of defence on 16 February 2026.
3. On 16 March 2026, the two Chinese BYD companies and the UK BYD company filed a preliminary objection. The Chinese BYD companies contested jurisdiction for the infringement claim in the UK but not for the relevant UPC states. The UK BYD company contested jurisdiction for the UK and the UPC.

The JR

1. The JR found that it had jurisdiction over the Dutch and French BYD companies based on Art. Brussels I bis Regulation (BR).
2. The two Chinese companies are allegedly infringing in the EU and the UK.
3. The defendant 3, BYD Europe, a Dutch company, is also allegedly infringing in the UK.
4. The claims are undeniably closely connected as they concern the same infringing acts, the same product and the same national parts of the patent.
5. Accordingly, there is a risk of irreconcilable judgments if these two Chinese defendants are not tried alongside the other defendants in relation to the acts committed within France/the European Union and for the alleged infringement in the UK.
6. It does not appear necessary to rule at this stage on the question of the UPC’s lack of jurisdiction with respect to the alleged acts committed in the UK territory relating to the UK national part of the patent. Instead, the JR referred the question to the panel in the judgment on the merits.
7. The JR decided that there is no international jurisdiction over defendant 7, BYD UK, as this company only acts in the UK. This company cannot be expected to be sued in the UPC.

Comment

1. The JR stated, on the one hand, that the conditions of Art. 8(1) BR for dealing with the two Chinese companies’ allegedly infringing acts in the UK are fulfilled but postpones the final decision to the decision on the merits.
2. It is correct that there is a possibility of conflicting judgments because both the UK Court and the Local Division could rule on the alleged infringement committed by the Chinese and Dutch defendants in the UK: the Local Division can decide on the infringement claim in the UK on the basis of Art. 4 BR against the Dutch defendant, and on the basis of Art. 8(1) AR against the Chinese BYD companies.
3. Waiting for the final decision on the merits avoids the need to make a final decision on the dispute over international jurisdiction if, for example, the patent is found to be invalid or not infringed.
4. I have already raised the question of whether judgments are irreconcilable. If they differ from decisions of the EU Courts, you cannot execute the decisions in the other jurisdiction.
5. Is the decision regarding the UK company correct? It is not based in the UPC territory, so Art. 4 BR does not apply. It is not being sued for infringement in the UPC territory, so Art. 7(2) BR is not applicable either. However, it could be sued in the UK alongside a UPC-domiciled company (the Dutch BYD company), which is accused of infringing in the UK. Consequently, on the one hand, the UK Court could come to decide on the infringement allegations of a UPC-based company in the UK alongside the case against the UK company. On the other hand, the UPC Local Division could decide on the infringing acts of this same UPC-based company in the UK. The patent and the alleged infringing acts are the same, and are subject to the principles set out in Art. 69 EPC! If a UK company buys infringing products from a group company based in the UPC, should it not expect to be sued alongside that group company? In Primus v Roche (C-539/03), Art. 8(1) BR (formerly Art. 6(1) BR) was not applicable because EU-based Roche companies were selling in their own territory, but that is not the case here.

6. The final question, of course, is whether comity reasons would dictate that the UPC should not assume jurisdiction over non-EU companies that only infringe in their own country. In my view, the decision not to accept international jurisdiction for the UK company is the correct one, regardless of the reasoning. 
    

    

14 April 2026
Local Division The Hague, UMICORE v Elemental 

UPC_CFI_1612/2025

Confidentiality

Facts

1. The defendants asked for a confidentiality order with respect to a part of their defence brief and one of the exhibits filed with that defence on the basis of R. 262A RoP and R. 262.2 RoP.
2. The claimant requested access for certain named individuals.
3. The claimant, alleging it had not received a fully unredacted version of the defence, requested that the starting date of the time period for its reply be postponed until full access is granted.

The JR

The JR granted the request for confidentiality with access with regard to certain individuals on the claimant’s side, but not the request that any challenge to the confidentiality by a member of the public should be denied.
 

Comment

The defendant asked for confidentiality both under R. 262A RoP (confidentiality between the parties to the litigation) and R. 262 RoP (confidentiality towards the public): the JR granted both. That is efficient because if a member of the public asks for access to pleadings or exhibits, it is already clear that they will not be given access to the confidential parts thereof. Of course, it is understandable that the JR leaves open the possibility for such members of the public to challenge the confidentiality status. 

14 April 2026
Local Division The Hague, KPN v Oleading

UPC_CFI_2246/2025

Production of license agreements

Facts

1. An infringement claim was filed by KPN.
2. KPN was willing to give access to counsel and outside experts of the defendants to all of its license agreements with smartphone manufacturers relating to EP 3 944 587 (and its foreign family members).
3. The parties submitted a joint request to the Court for the same confidentiality regime to be applied in this case as in a parallel case before the Landgericht Düsseldorf. 

The JR

The JR granted the request.

As the parties requested a case management hearing, the JR asked the parties for convenient days in the period of 20 April to 20 May 2026.

Comment

In national litigation (for example, in the Netherlands or France), patent litigators are used to reaching agreement on procedural matters (including confidentiality regimes and costs) if this is practical. This would also be a desirable attitude in the UPC. Why did the parties request a management conference? We do not know. Did they hope to be able to settle under the Mr. Brinkman guidance? Pure speculation!

14 April 2026 
Local Division Brussels, GC Aesthetics v Establishment Labs

UPC_CFI_1357/2025; UPC_CFI_629/2025

Application to produce evidence

Facts

1. Labs served a Statement of claim on all 14 Aesthetics defendants on 14 November 2025.
2. On 16 February 2026, the defendants filed their Statement of defence and Counterclaim for revocation.
3. On 20 March 2026, the defendants filed an “Evidence Production Request”. Labs was given 5 days to respond, which was later extended to 30 March 2026.
4. The request concerned evidence about a pre-priority date product which the defendants alleged would be novelty-destroying.
5. Labs stated that it would further dispute the request in their Reply to the Counterclaim for revocation (beyond their reply of 30 March).

The Court

1. The Court stated that it had requested a full response from Labs  and would not wait for further observations from them.
2. The Court recited all the applicable provisions from the No. 2004/48 Enforcement Directive, the UPCA and the Rules.
3. The Court lists the conditions to be fulfilled:
   1. the presentation of reasonably available evidence;
   2. the requested evidence must be specifically identified and in the control of the other party;
   3. the other party’s confidential information must be protected;
   4. the request must be proportionate, equitable and fair.
4. The Court granted the request after having established that all the requested materials fulfil the 5 conditions set out above.
5. The Court stated that, if the claimant produced a physical sample of the alleged prior art product and confirmed that that product had been publicly known before the priority date, no further production of evidence would be necessary.

Comment

The claimant argued that the request was premature but I think the Court was absolutely right to grant it, given that the claimant did not admit in its Defence to the Counterclaim for revocation that the alleged prior art product was indeed publicly known before the priority date. The Court was also right to point out that the UPC is supposed to issue a decision within 12 to 14 months, meaning that the request was not premature. 

16 April 2026
Local Division Mannheim, Corning v TCL

UPC_CFI_414/2025

Infringement decision

Facts

1. Corning sued TCL for infringement of the German part of EP 3 296 274 for alkali-free boroalumino silicate glass sheets.
2. Various defendants settled with Corning during the litigation.
3. A different TCL company than the ones being sued filed a Revocation action in the Munich section of the Central Division. This action was dismissed on 24 February 2026.
4. The claimant filed 20 auxiliary requests in its Defence to the Counterclaim for revocation.

The Court

1. The Court found that you can file a Counterclaim for revocation for (in this case) both the French and German parts of a EP although the infringement claim is limited to the German part of the EP.
2. The Court, after describing the content of the patent and the technical advantage it claims to provide (i.e. the technical problem solved), interpreted the different claim features.
3. The Court concluded that there was no added matter (in no. 87 of the decision the word “not” is missing). It stated that it fully agrees with the Munich Central Division.
4. The same is true for sufficiency of disclosure and novelty.
5. Regarding inventive step, the Court again agreed with the decision of the Munich Central Division that the necessary motivation to add MgO to the prior art (CC19) is missing.
6. All the other inventive step attacks were also rejected, mostly for lack of a pointer or motivation to make the necessary change(s) to the known composition.
7. The Court did not follow the validity decision of the Chinese final appellate judgment because the inventive step requirements (called “creativity”), namely “prominent substantive features” and “remarkable advancement”, are not applicable standards before the UPC. The Court is also found this decision unconvincing.
8. As the Counterclaim for revocation was unsuccessful with respect to the independent claim, there was no legal interest in looking into the validity of the dependent claims.
9. Referring to the decision by the CoA in Philips v Belkin (UPC_CoA_534/2024), the Court did not accept infringement by defendant 4 based on the mere fact that defendant 4 was the holding company of an infringing company.
10. Whether or not infringing activities are going on at present was found to be irrelevant, as past infringement alone justified an injunction.
11. The Court found the requested remedies (except publication) to be proportionate.

Comment

1. A rather straightforward decision.
2. In practice, the semi-bifurcated UPC system gives infringers two bites at the cherry: an invalidity attack can be brought by filing a Counterclaim for revocation and by filing a Revocation action in the Central Division (using another group company). In theory, this means that the same Court of First Instance could deliver conflicting decisions, which would be a very strange consequence. In this case, however, the Local Division Mannheim agreed with its Munich colleagues! However, this strange political compromise should be abolished when the UPC can be revised in four years’ time.
3. If that happens, the Mannheim Local Division’s decision that you can claim more countries than necessary for your defence in the Counterclaim for revocation can be applauded. This is somewhat illogical as, with securities for costs, we treat the claimant in the revocation as the defendant in the infringement claim. However, it is sometimes better to be practical than logical!
4. The Court made the interesting remark that, even where the injunction is broadly worded, penalty payments can only be claimed in enforcement proceedings if the infringement corresponds to the specific acts at issue in the proceedings. In my view, this encourages to defendants to make only minor changes to the infringing acts, as this could prevent penalty payments from being imposed. I think the rule should be that, where it is clear, in light of the decision, that an activity constitutes infringement, the party should remain liable for penalty payments. 

16 April 2026
Court of Appeal, Belkin v Philips

UPC_CoA_54/2026

Start of the appeal term

Facts

1. Philips filed an infringement action against Belkin based on EP 2 867 997.
2. On 11 February 2026, the Munich Local Division held an oral hearing and gave a panel decision without the reasons.
3. On 13 April 2026, Belkin appealed the decision.
4. Belkin requested to be exempted from filing grounds of appeal and formulating the remedies sought until the grounds of the first instance decision were provided.

The Court of Appeal

1. The Court of Appeal referred to Art. 77(1) UPCA, which states that decisions or orders must be “reasoned”.
2. This means that a decision is only complete once the reasons have also been served. Therefore, the two-month period for lodging a Statement of appeal only begins after the reasons have been served.
3. Therefore, Belkin’s requests were denied because the time period for lodging an appeal has not yet begun. 

Comment

1. Understandably, Belkin did not want to take any risks. The Court of Appeal issued a logical and practical decision that put the matter to rest.
2. Such “on the spot” decisions immediately after the oral arguments are customary in opposition proceedings at the EPO and are liked by litigants (certainly if you win!). However, they are not without risks. A judge once told me that, after a hearing, the whole panel was convinced of the outcome, but when he tried to write down the reasons for the decision down on paper, he realized that it was actually wrong, and the entire panel changed its mind. This also happened once at the EPO, and the Opposition Division issued a different written decision to the one announced orally. This, of course, is not possible (as also ruled by the Board of Appeal)!

16 April 2026
Local Division Düsseldorf, Brita v Wessper

UPC_CFI_779/2024

Indirect infringement

Facts

1. Infringement case based on EP 1 748 830 for a “Vorrichtung zur Filtration von Flüssigkeiten“ (apparatus for filtration of liquids).
2. The patent expired on 27 April 2025.
3. The claimant argued for indirect infringement due to the sale of Aquamax filter cartridges, which can be used in water carafes of both the defendant and the claimant.

The Court

1. After discussing the patent, the claim structure and some of the claim features, the Court turned to the question of indirect infringement.
2. The first question the Court addressed was the “suitability”: it concluded that the accused cartridges fulfil all the features of the cartridges in the claim and are suitable for use in the patented device.
3. The Court concluded that the cartridge is an essential element of the invention. According to the Court, all features of a claim are generally essential elements of the invention.
4. According to the court, the double territorial element was also fulfilled. The fact that the delivery in Germany was not carried out by the defendant itself is not relevant.
5. The Court found that the end users of the accused cartridges in the devices supplied by the claimant are not entitled to such use in the sense of Art. 26 UPCA as they have not obtained a license either.
6. The Court also found that the cartridges were destined for the infringing use as they comprise an element necessary for use in the claimant’s water carafe, but not in the defendant’s.
7. The patent rights have not been exhausted because the end users are not entitled to the use of the patented combination.
8. With respect to exhaustion, the question is whether or not the replacement of the cartridge constitutes an allowable normal use of the patented combination or, in fact, the new making of the patented product. If the regular replacement of a consumable or worn part of a patented combination is to be expected, the buyer may expect to be allowed to do so. However, this is different if the technical and economic advantages of the invention lie in the substituted part, which, according to the Court, is the case here.
9. The decision is essentially based on considerations relating to the dependent claims, which cover specific elements of the cartridge that confer specific technical advantages, despite not being mentioned in the patent description.
10. The Aquamax cartridges were deemed to constitute indirect infringement.

Comments

1. Does Art. 26 UPCA require that, for indirect infringement, both the supply and the use of the invention take place within the same Contracting Member State (double territoriality)?
   For example, let us assume there is also a patent in France. In my shop in Strasbourg, near the German border, I offer cartridges for the patented water carafes in Germany. Can the patentee take action? According to the Court, no. But can you read Art. 26 UPCA differently? In such a situation, I think that under Art. 26 UPCA, you could sue the French shopkeeper for indirect infringement.
2. When I purchase a water filter, coffee machine or printer, I expect to be able to use them without having to pay a premium for consumables, even though I understand very well that this may be commercially attractive for the patentee. Therefore, I am not impressed by the economic or the technical arguments. Furthermore, why should I be considered an infringer if I do not replace all the elements of the infringing combination, assuming that all of these elements are essential? The patentee should (and in the case at hand might have been able to) seek a claim directed to the consumable. If such a claim is not granted, they should not obtain it through the concept of indirect infringement. The good old times of “Elementenschütz” in Germany and The Netherlands are over!
3. If you would like to read about these old times, and now Art. 26 UPCA, you can send me an email to receive a 1988 thesis on the subject, including how the US (still) deals with it.  

16 April 2026
Local Division Paris, Michelin v Goodyear

UPC_CFI_138/2025

Decision infringement case

Facts

1. On 21 February 2025, Michelin sued Goodyear for infringement of EP 2 323 858, which is valid only in France, for “variable surface area tire tread”.
2. Goodyear filed a defence and a counterclaim for revocation.
3. Michelin responded with 14 auxiliary requests.

The Court

1. The Court described the patent and stated that the parties had agreed on the skilled person and the interpretation of certain claim elements.
2. The Court did not follow Goodyear’s restrictive interpretation of “tread element” based on the simple embodiment in the description.
3. With respect to how a certain claim element is understood by a person skilled in the art, both parties had filed written declarations from (ex)employees, calling them “expert declarations”. The Court qualified these as witness statements.
4. During the interim conference the Court asked Goodyear to rank their invalidity arguments.
5. The Court stated that, with respect to the novelty of a product claim, the intended technical effect is irrelevant, and concluded that claim 1 was not novel.
6. The Court noted that Michelin had not argued that the dependent claims were novel or inventive, but had simply argued that, since claim 1 was valid, these dependent claims were also valid.
7. The Court dismissed the claim, having found none of the auxiliary requests to be valid.

Comment

1. During the interim conference, the Court tried to bring some order to the case, but in the end agreed to deal with all 14 auxiliary requests!
2. Bravo, EPO: it granted a patent after the applicant amended the description with a prior art document, even though a thorough look (such as that carried out by the Court) would have revealed that this prior art destroys the novelty.
3. If a prior art product reads on the patent claims, it is irrelevant whether that product was used for a completely different purpose. However, the patentee did not try this, and the use of that product for a different purpose may be patentable. As that different use was disclosed in the application, it may have been worthwhile to try such an auxiliary request.
4. I am also surprised that the claimant (Michelin) apparently accepted that if the independent claim were invalid, the same would be true of the dependent claims.
5. Especially in a case such as this, where the independent claim is not novel, it may very well be that the dependent claims (which add further features) are novel, and even the defendant acknowledged such novelty for claims 7 to 14. Moreover, with regard to inventive step, they relied on the prior art document referred to above, which showed a similar product for a different purpose. Therefore, you could ask the question whether such a document was relevant to the assessment of inventive step.
6. Michelin makes fantastic tires, but I was not terribly impressed by their performance in the UPC, as far as one can judge from reading the judgment.

17 April 2026
Court of Appeal, Abbott v Sinocare

UPC_CoA_901/2025

Claim interpretation

Facts

1. On 22 October 2025, the Local Division The Hague rejected a PI application because it considered it not more likely than not that patent EP 3 988 471 for a glucose monitoring system had been infringed.
2. The patent was maintained in amended form by the OD.
3. Abbott appealed.
4. Sinocare cross-appealed due to the decision of the Local Division that Abbott had an urgent interest.

The Court of Appeal

1. Following a discussion about the content of the patent and agreeing with the Local Division about the skilled person, the Court construed the claim, having cited all the relevant case law with respect to claim interpretation.
2. The Court of Appeal disagreed with the respondents, who wanted to impose limitations on the claim that are contrary to its wording of the claim and not justified by the description.
3. The Court explained why the limitation read into the claim by the Local Division “that the event data must be displayed on or near the graph line of the timeline graph or in any case on the graph” cannot be found in the claims (no. 54 and 55 of the decision).
4. The Court of Appeal concluded that it is more likely than not that the patent has been infringed.
5. As the Local Division had not ruled on the validity, the Court of Appeal also dealt with the invalidity arguments.
6. The Court of Appeal clarified that including numerous (30) prior art documents in the proceedings to argue obviousness is insufficient and will not be considered unless there is a reasoning explaining why and how certain prior art leads to obviousness.
7. The respondents argued that a non-technical difference with a prior art document could not lead to an inventive step over such a document. The Court of Appeal did not agree, stating that “[a] feature that is non technical as such may still contribute to the technical character of the claimed invention as a whole by its interaction with other claim features”.
8. The patent is more likely than not to be valid.
9. Regarding infringing acts, the Court of Appeal concluded that there is only indirect infringement, as direct infringement would include the iPhone, which is not offered by the respondents.
10. The Court of Appeal discussed urgency, necessity, proportionality and found for the patentee.
11. A generally worded injunction is justified (after clarifying that a Sinocare product that has been on the market for several years is not covered), as this would cover small changes to the product without altering the technical features that are decisive for the technical teaching or similar products that would be introduced to the market under a different name.
12. The cross-appeal is inadmissible, as the requirement of urgency is a necessary part of Abbott’s appeal and the same issue cannot be subject of a cross-appeal.

Comment

1. The decision shows again that, in exceptional circumstances only, it is possible to impose more limitations on a claim(element) than are necessary based on the wording. Such exceptional circumstances should then be justified by the purpose of the invention or by a clear indication in the description (or the file wrapper – the limited interpretation was proposed by the patentee during the prosecution to argue that the invention was not obvious).
2. In this case, the LD (which had granted a PI on another Abbott patent of) interpreted the claims as having limitations that simply were not there.
3. The Court declared the cross-appeal inadmissible. This should not be misunderstood in the sense that, if one wins a case, a cross-appeal is never necessary with respect to parts of the decisions in which the Court has ruled against the winner (for example, if the Court rules that there is no literal infringement, but there is infringement based on the doctrine of equivalence).
4. It is important to realize that, as the Court of Appeal stated, in order to address the question whether Abbott’s appeal is justified, the Court would automatically have to address with urgency, because a PI cannot be granted without urgency. So, it would have been more than sufficient for Sinocare to state in its response that there was no urgency.
5. Regarding my example of literal infringement, I would take no risks. If the other side were to appeal, I would file a conditional cross-appeal, arguing that there is literal infringement, as such a case is quite different from the case at hand, where the Court of Appeal could not reverse and issue a PI without having ruled on urgency.
6. Perhaps the Court of Appeal will rule that raising your objection against that part of the decision in your response to the appeal is sufficient, but it is better to be safe than sorry. 

– All comments above are Prof. Hoyng‘s personal opinions –