UPC Unfiltered, by Willem Hoyng – UPC decisions week 36, 2026

18 August 2026 (late published)

Local Division Mannheim, InterDigital v Walt Disney

UPC_CFI_86/2025

Penalty sums / withdrawal

Facts

1. InterDigital requested the Court to impose penalty sums concerning EP 2 465 265.
2. InterDigital thereafter requested the withdrawal of this request.
3. Disney did not respond.

The JR

The JR grants the request, stating that, if R. 265 RoP applies by analogy, withdrawal is permitted as no interest of the defendants seems to preclude it.

Comment

Note that the interests of the Court are at stake (assuming that the defendants did indeed fail to comply with the terms of an order of the Court). In the first place, because a court may expect that its orders are respected and, in the second place, a court has a financial interest in collecting fines. 

The Court apparently does not see reasons to continue on its own motion. There is, of course, no such reason if InterDigital states in its application that it has come to the conclusion that Disney has complied with the order. But what about a situation where a claimant alleges the forfeiture of at least EUR 500,000 in penalty sums, and the parties agree that the claimant will withdraw its claim if it is paid EUR 200,000?

31 August 2026

Court of Appeal, Fujifilm v Kodak

UPC_CoA_312/2025

Suspensive effect

Facts

1. On 2 June 2026, the Court of Appeal set aside an order of the Mannheim Division that had rejected the defence of private prior use and dismissed the infringement action.
2. Kodak lost the infringement case at first instance but now won on appeal. Fujifilm was ordered to pay damages caused by enforcing the infringement decision of the first instance.
3. Fujifilm filed a request for a rehearing and asked for suspensive effect.

The Court of Appeal

1. Pursuant to Article 81(2) UPCA and Rule 252 RoP, an application for rehearing has no suspensive effect.
2. Fujifilm does not identify any special circumstances which would justify a deviation from the principle of no suspensive effect.
3. It is not good enough to merely refer to the argument in the main case with respect to the alleged existence of fundamental procedural defects.

Comment

1. For obtaining suspensive effect, you have to identify specific circumstances. In this case such circumstances were not even argued.
2. The consequence of allowing suspensive effect in this case would, in my opinion, have had very far-reaching consequences, as the first instance decision would still have been in force. In theory, this would have allowed Fujifilm to prevent Kodak from marketing its products in Germany.
3. If one realizes that the chance that a request for rehearing would succeed is very small, then this is a further argument to not grant suspensive effect.
4. We will see what comes from this request for a rehearing, but parties should realize that it is not a further appeal!

1 September 2026

Local Division Düsseldorf, Aesculap v Bojin

UPC_CFI_307/2025

Intermediary

Facts

1. Aesculap filed infringement proceedings for direct and indirect infringement of EP  2 892 442.
2. The Court had already, in earlier preliminary injunction proceedings, granted an injunction against defendant 2.
3. The case was settled between the claimant and defendants 1 and 3.
4. Defendant 2 did not appear during the oral hearing.

The Court

1. The Court refers to R. 116.3 RoP and stated that a party that does not appear for the oral arguments is supposed to rely on its written statements.
2. The claimant did not ask for a default decision (R. 116.5 RoP).
3. As defendant 2 is established in the UPC (Germany), international jurisdiction is also given for the UK.
4. The two products at issue infringe the claims literally.
5. As the patent was granted in German. The German text of the claims (which in itself is consistent and clear) cannot be given a different meaning because of the French and English translations.
6. The fact that defendant 2 was named in the CE declaration of conformity, which is necessary for importing the infringing products, does not make defendant 2 a co-infringer or an accessory to infringement.
7. However, defendant 2 qualifies as an intermediary (i.e., a provider of intermediary services).
8. If the representative of the non-EU manufacturer stops providing its services, the infringing products will become illegal. Therefore, an order to stop acting as intermediary is useful for preventing further infringement.
9. With respect to the UK, the Court can grant injunctions under the condition that the patent will not be declared invalid in the UK.
10. UK law has to be applied when determining whether the patent has been infringed.
11. Under UK law, the intermediary would be held jointly liable for the infringement.
12. The Court grants the requested injunction (not to further provide services for the offering etc. of the infringing product in Germany, France, and the UK, i.e., the countries in which the EP was granted). 

Comment

1. I agree that if the German claim of the EP granted in German is clear, you cannot argue a different meaning on the basis of the French and English translations of the claim. It is more the other way around. In case of ambiguity in the translated claims, it seems logical to refer to the claim in the language of the patent.
2. I do not understand – as I have already commented before – why the company that holds the CE notification (which is responsible for product liability in the EU for the infringing (medical) products) is not considered an accessory to the infringement (like a joint tortfeasor in the UK). The sale of the products would not be possible without the CE holder. What is the difference between this and a company that enables another company to use its marketing approval for the sale of pharmaceuticals? This way, it is very easy for non-EU producers to sell their products via the internet with a subsidiary in the EU that holds the CE registration but does nothing else. This ensures that damages for infringement by the non-EU seller must be collected in a country where collection is difficult, if not impossible, in practice.

2 September 2026

Local Division Düsseldorf, YMTC v Micron

UPC_CFI_1034/2025; UPC_CFI_931/2026

Late arguments

Facts

1. This order concerns an infringement case and a counterclaim for revocation.
2. On 20 July 2026, the defendants filed their Rejoinder to the Reply to the Statement of Defence, Reply to the Defence to the Counterclaim and Defence to the Application to amend the patent.  
3. On 25 August 2026, the claimant filed an application to disregard arguments or to allow a further exchange of pleadings (R. 36 RoP).
4. The defendants did not agree!

The Presiding Judge

1. The decision on rejecting the new arguments will be deferred.
2. The claimant can react to the new arguments by 17 September 2026.

Comment

1. While this decision is understandable in an extremely busy Division, it is not what should happen in UPC proceedings. The JR should study the matter and make a decision and not accept late-filed arguments.
2. Assuming they are late-filed, the claimant is now forced to react to them (and, of course, defendant will request to respond, too), and we effectively end up in proceedings that may belong in a national court, but not in the UPC. 

2 September 2026

Local Division Munich, IAGON v Influx 

UPC_CFI_2280/2025, UPC_CFI_3018/2026

Security for costs

Facts

1. IAGON started infringement proceedings on the basis of EP 3 878 161.
2. The defendants asked for security for costs for an amount of EUR 112,000.
3. The defendants argued that the claimant is registered in the United Arab Emirates (UAE), which does not have a publicly accessible company register. The only available source of financial information is a MICA White Paper. The CEO is the same as the CEO of the Norwegian IAGON, which transferred the patent to the claimant.
    

The JR

1. The JR cites all the applicable criteria and case law.
2. The MICA White Paper shows that IAGON’s financial resources are sufficient to support its current operations and limited business activities for 36 months.
3. The fact that the UAE is not a member state of the EU or EEA is as such not an argument for having to provide security. IAGON referred to various reports which indicated that monetary claims are generally enforceable in the UAE.
4. The JR rejects the request.

Comment

1. The decision shows that, to obtain security, it is certainly not enough to argue that the claimant is established in a foreign country. Solid evidence is necessary to support the argument that enforcement of decisions is difficult. It is clear that the defendant did not do enough. For example, what are the prospects of the enforcing forfeited penalty sums, which may differ from simple monetary claims etc.
2. The argument that a company was able to carry out its modest business for 36 months does not impress me much if, before the start of the lawsuit, the patent was transferred from Norway to the UAE. 
3. Of course, the defendant has to come up with arguments that this limited business is certainly no guarantee that the company has sufficient assets.

2 September 2026

Local Division Düsseldorf, InterDigital v Walt Disney

UPC_CFI_297/2025; UPC_CFI_651/2025

Infringement of auxiliary request

Facts

1. InterDigital sued 11 Disney companies for infringement of EP 2 080 349.
2. Disney filed a counterclaim for revocation.
3. The patent is valid in Germany and the Netherlands, and will expire on 20 April 2027.
4. Claimant targeted the Disney+ streaming service which one can receive on the Disney+ app. 

The Court

1. The Court rejects the request of the claimant of 8 December 2025, considering 36 auxiliary requests to be reasonable. 
2. The Court does not need to rule on the claimant’s requests dated 11 February 2026 regarding the disregard of late-filed documents, as these are irrelevant to the decision.
3. The Court basically follows the defendant in determining the skilled person.
4. The Court describes the patent and, after formulating the principles, interprets certain claim features. It does not agree with the more limited view of the claimant with respect to the meaning of “session”.
5. The Court avoids deciding whether the prosecution history can play a role in the interpretation of claims. 
6. The revocation case is limited to claims 1, 4 and 8. These claims as granted lack novelty because of D1 and D7.
7. After the Court interprets the added claim features in the auxiliary requests, it considers auxiliary request K5 to be novel. Further, with respect to inventive step, it holds that there is no attack with respect to the combination of all features of K5, so that further discussion is not necessary.
8. The Court grants confidentiality with respect to the information to be supplied by the defendants.

Comments

1. I have the distinct impression that Disney already has a different solution in place, as they claimed in the proceedings, so the injunction is in fact irrelevant for its business. This may also explain why, despite claiming that an injunction early in the proceedings would have very serious consequences, it did not invoke proportionality.
2. The defendant took the necessary steps to ensure that the information it has to provide to the claimant would remain confidential. You have to argue this during the main proceedings.
3. Having to defend yourself against more than 30 auxiliary requests during an oral argument was never the intention of the drafters of the Rules of Procedure. In a case like this, this leads to a finding of inventive step because defendant has not specifically addressed inventive step of all the added features of one of these more than 30 auxiliary requests. These requests have also been given a broad interpretation in the infringement finding. I find it all not very satisfactory and would be anxious to see what the Court of Appeal makes of this if it ever comes to that.

2 September 2026

Central Division Munich, Wittenstein v Vestas

UPC_CFI_523/2025

Revocation action

Facts

1. Wittenstein requested revocation of EP 4 226 039 for a wind turbine.
2. The EPO Opposition Division maintained the patent on the basis of auxiliary request 1 but this decision has not yet become legally binding.
3. The claimant invoked novelty, inventive step, insufficient disclosure and non-entitlement as reasons for revocation.
4. The claimant filed 7 auxiliary requests.

The Court

1. In para. 18, the Court states the following:

   “It is further established case law that, under the front-loaded procedural system of the UPC, the parties are required to set out their full case as early as possible (see RoP, preamble at 7, and also e.g. Court of Appeal, UPC_CoA 71/2025, decision of 29 December 2025, NJOY/VMR., paras. 24 and 27). However, not every new argument changes the nature or scope of the dispute so that it constitutes an amendment of a case requiring a party to apply for leave under Rule 263 RoP. Further, whether a new argument is admissible depends on the circumstances of the case, including the reasons why a party had not already raised the argument and the procedural opportunities for the other party to respond to the new argument (see Court of Appeal, UPC_456/2024, order of 21 November 2024, OrthoApnea, paras. 23 and 26–27).”

    

2. The Court, applying these principles, allows certain arguments and rejects others as being late.
3. The Court discusses the patent and states what the invention is.
4. The Court defines the skilled person and, after reciting the general principles, interprets claim 1 of the patent.
5. After reciting all the principles, the Court discusses novelty of claim 1 in relation to D20, which was, according to the claimant, published on the internet on 13 April 2026. The claimant supports this date with reference to a screenshot from the so-called “Wayback Machine”. According to this screenshot, publication took place before 10 May 2026, i.e., the priority date.
6. The Court accepts this evidence but rules that the publication is not novelty-destroying.
7. The Court holds the same regarding D11. The Court specifically holds that it has doubts whether, six years after making a statement during a conference, a witness can remember exactly what they said, adding that the declaration of what they said as such is rather vague.
8. The Court again, after citing all the criteria with respect to the inventive step and after defining the object of the invention and the underlying problem, concludes that none of the proposed combinations of prior art documents made the invention obvious.
9. The claimant further argued that the patent was invalid because the inventor was the claimant, not the defendant.
10. The Court holds that this invalidity ground can only be invoked if the patentee is not entitled to the patent at all. In this case, which is based on events during a cooperation between the parties, it has not been established that (the predecessor of) the defendant was the sole inventor.
11. Claims 21 and 22 were challenged on the grounds of insufficiency. Although claim 1 is valid, the Court states that there is an interest in bringing a standalone revocation action to look into the validity of claims 21 and 22. This is because it is not known which claims the claimant wants to invoke in a possible infringement action. 
12. The Court considers that these claims are not sufficiently disclosed.
13. In auxiliary request 1, claims 21 and 22 were deleted.
14. The patent is maintained according to auxiliary request 1. 

Comment

1. I agree with the Court that, with respect to a novelty attack, one cannot rely on a witness who made a public presentation six years ago and states that they disclosed the invention during that presentation. Without supporting evidence (such as slides or a recording or an article just after the presentation), this could not establish a successful novelty attack. In the Netherlands we used to say: one witness is no witness!
2. In an infringement action, if claim 1 is not infringed, the dependent claims are also not infringed. So, you do not have to look at the dependent claims. In a revocation case, the fact that claim 1 is valid does not automatically mean that the dependent claims are valid, as can be seen in this case. They are novel and inventive because claim 1 is novel and inventive but they may be (because of the added features) insufficiently disclosed or against, for example, good morals. 
3. The Court is right that there is an interest in the validity of the subclaims. Suppose, in subsequent infringement proceedings, the Court holds the first 20 claims to be invalid. Then, it is important whether or not this Court invalidated claims 21 and 22. 
4. I again do not understand why auxiliary requests were necessary in this case. The defendant only defended granted claims. The Court finds claims 1-20 valid, and 21 and 22 to be invalid – no auxiliary request necessary! Patent attorneys who litigate in the UPC should forget certain EPO habits!
5. The Court is in my opinion right that invalidity on the ground that the patentee is not entitled to the invention can only be invoked by the true inventor or his successor in title and only with respect to the whole invention.
6. If such a situation occurs, the best strategy is acting before the patent is granted. During the application procedure (according to the Protocol on Recognition) one national court is competent to decide for the whole EP and that court can also decide that parties are co-inventors. During the litigation the application procedure is stayed.
7. In the UPC co-inventorship cannot be argued. After grant, one can only argue that via a national procedure which procedure can cover many countries (if you sue in the country of the defendant). The advantage of a co-ownership is that one can use the patent without infringing!
8. In conclusion: if the claimant wanted to be able to use the invention, and assuming they were a co-inventor, they should have sued in Denmark and asked the Danish court to rule that Vestas had to transfer co-ownership of all the EPs in force in the different EP countries. 

3 September 2026

Local Division Brussels, In(k)control v Esko

UPC_CFI_871/2026

Stay

Facts

1. The parties requested and obtained a stay due to settlement negotiations.
2. On 31 August 2026, the parties informed the Court that no settlement had been reached.
3. The defendant stated that it was of the opinion that periods which were already running at the time of the stay would restart after the stay (“time shall begin to run afresh”).

The Court

The JR gives an extremely long exposé with respect to this question and decides that, under normal circumstances, the different time periods that began before the stay continue to run after the stay.

Comment

1. In my opinion, this is the correct decision.
2. The JR discusses the different language versions. It will be clear that the Rules Committee did its work in English and that, although all language versions have equal status, English is the de facto original language and the other versions are translations.
3. The case shows that it is better to only grant stays if the parties state that they have reached a settlement in principle. This would put a certain amount of pressure on the parties as they would know that settlement negotiations alone are not sufficient for a stay.

3 September 2026

Court of Appeal, X v Amycel

UPC_CoA_935/2025

Interpreter

Facts

1. The oral hearing for this appeal case is scheduled for 23 September 2026. 
2. On 31 August 2026, the appellant requested Polish-English interpretation facilities, as they are a private party and do not sufficiently understand English. 

The Court of Appeal

1. The Court of Appeal holds that such requests have to be lodged no later than one month before the hearing (R.109.1 RoP).
2. As the appellant has a representative and does not provide any other arguments besides the fact that they would be able to follow the proceedings better, a court interpreter is not necessary and the request is refused.
3. X is allowed to arrange its own interpreter.

Comment

1. It is now clear that the Court is only prepared to pay for interpreters under very exceptional circumstances.
2. I think this is fully justified. If I am sued in Poland or in a national court, I cannot expect the court to provide me with a translation. A self-financed court should certainly not spend money on this. 

3 September 2026

Court of Appeal, WEPA v Essity

UPC_CoA_113/2026

Evidentiary seizure

Facts

1. On 17 April 2026, the Local Division The Hague granted a request for an evidentiary seizure and inspection order at the premises of WEPA.
2. The ex parte order contained the possibility for the bailiff and expert to ask questions.
3. The order was confirmed by the Local Division after review.
4. WEPA appealed.
5.  

The Court of Appeal

1. The Court of Appeal dismisses WEPA’s complaint that it should have been heard before the order was given. The Local Division has discretion when ordering ex parte and should take into account:
   1. the urgency of the action;
   2. whether the reasons for not hearing the other party are well founded;
   3. the probability that evidence may be destroyed or otherwise cease to be available.
2. In this case, there was a risk that the evidence would cease to be available, which is sufficient for granting an ex parte order. 
3. The scope of an evidentiary seizure is not limited to technical evidence. It may also encompass evidence of acts of infringement.
4. WEPA’s complaint about the questioning of its employees is well-founded. While the Local Division The Hague had allowed the bailiff and the expert to ask questions, it indicated that the WEPA employees were not obliged to answer. The Court of Appeal states that questioning the technical details of the product has to be conducted under the control of the Court.
5. However, practical questions necessary for executing the order are permitted, such as those relating to passwords required to access digital data.
6. The Local Division is not obliged to assess the validity of the patent.
7. Essity did comply with its duty to disclose relevant facts.
8. A prior user right does not play a role in these proceedings. That will be decided in the main proceedings. 
9. WEPA’s request for compensation was not made during the review proceedings and, therefore, cannot be raised on appeal.
10. The Court of Appeal orders the destruction of the original expert report and instructs the expert to file a new report within two weeks of the order of the Court of Appeal.

Comment

1. An understandable decision by the Court of Appeal, as an evidentiary seizure/inspection order cannot be used to hear witnesses. Such hearings are conducted by the Court.
2. However, this does not mean that the bailiff and/or expert cannot ask questions which are necessary for carrying out the seizure and inspection. Employees cannot, for instance, refuse to answer a question about the location of certain documents or about a password. 
3. The rest of the decision confirms what we already know. I only miss one aspect: necessity. Is the seizure necessary for obtaining the evidence? Such seizures are an excellent means to disturb a competitor’s business, especially during exhibitions. So, I am of the opinion that such an order should not be granted if it is clear that the evidence can be obtained in a different way (for example, if the product is on sale and easily obtainable and it is clear where it is sold). 

4 September 2026

Local Division Düsseldorf, Grundfos v Xinhu

UPC_CFI_11/2024

Refund of security for costs

Facts

After the defendant had paid the costs and the claimant had confirmed that payment, it requested a refund of the security for costs that the Court of Appeal had ordered. 

The Court

The Court ordered the refund.

Comment

The security for costs had been provided by payment of the amount to the Court. Does the Court put that in an interest-bearing account and do you get the amount back with the interest? Or should the party who forced you to provide the security pay the lost interest?

4 September 2026

Court of Appeal, Surf Loch v American Wave

UPC_CoA_92/2026

Request for documents

Facts

1. Appellant American Wave filed an appeal against a default revocation decision with respect to EP 2 728 089 demanded by respondent WhiteWater.
2. Applicant Surf Loch requested access to certain documents.

The Court of Appeal

1. American Wave requests refusal of the request or alternatively a prohibition to use the documents in foreign (US) proceedings.
2. The Court cites the different provisions and case law relating to the request, holding that in general documents are not accessible after the case had ended, unless a member of the public can demonstrate specific interest.
3. Such special interest lies in the validity of a patent, especially when the applicant is also concerned with as a competitor or a licensee, or when a party is accused of infringing a product that they also intent to market. 
4. During the proceedings the JR may impose certain restrictions for the protection of the integrity of the proceedings. 
5. Surf Loch did not provide any details as to why the patent was relevant or regarding its proposed activities in Europe. It also did not state that the patent had been asserted against any of its European activities.
6. Surf Loch did not disclose that the IPR proceedings it relied on as basis for its request were already closed. Nor did substantiate the necessity of the requested documents for these proceedings.  
7. The Court dismissed the request.

Comment

1. Vague and untrue or incomplete statements do not establish the special interest necessary for obtaining pleadings and evidence during proceedings. That is no surprise!
2. In its decision, the Court also refers to the difference of US law in the field of patents. Quite frankly, I have attended quite some Markman hearings, in which the meaning of claims is established, that were remarkably similar to what I was used to at home (with, of course, some difference such as the “means plus function concept” in US law). I can also certainly see that certain prior art and inventive step arguments can be very relevant for US proceedings. It is also interesting to see if a patentee uses contradictory argumentation. In general, I can see  a specific interest for a member of the public (who has been sued for infringement in the US) in getting access to pleadings and evidence, although certainly not in a case such as presented here to the Court. The way I read the decision of the Court of Appeal, the possibility to obtain access for use in US proceedings is not, as such, excluded, but you will have to clearly and convincingly explain why this can be relevant even under a different legal system. I agree with this. I point out that the US law goes as far as giving a party to foreign proceedings the possibility (28 U.S. Code §1782) to obtain evidence for such proceedings. It remains to be seen if the UPC will provide the same possibilities. 

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