# News Detail Share now [](https://www.linkedin.com/uas/login?session_redirect=https%3A%2F%2Fwww.linkedin.com%2FshareArticle%3Fmini%3Dtrue%26url%3Dhttps%3A%2F%2Fwww.hoyngrokhmonegier.com%2Fes%2Fnoticias%2Fdetail%2Fupc-unfiltered-by-willem-hoyng-upc-decisions-week-45-2026%26title%3DUPC%20Unfiltered%2C%20by%20Willem%20Hoyng%20%E2%80%93%20UPC%20decisions%20week%2045%2C%202026%26summary%3D "Linkedin") # UPC Unfiltered, by Willem Hoyng – UPC decisions week 45, 2026 09 noviembre 2026 UPC Unfiltered News Unified Patent Court (UPC) Hot Topic News Below, [Prof. Willem Hoyng](https://www.hoyngrokhmonegier.com/our-team/legal-experts/prof-willem-hoyng) provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC. Interested in more of this? Stay tuned and subscribe [here](https://mailchi.mp/8fbd8890d03b/upc-unfiltered-by-willem-hoyng) for weekly updates. Find all decisions, commentary and more on our [UPC Intelligence Platform](https://upcintelligence.hoyngrokhmonegier.com/). On the go, multi-tasking or just prefer to listen? “Willem Hoyng’s UPC Unfiltered AI Podcast” – your weekly, AI-generated podcast discussing Willem Hoyng’s commentary on UPC case law of last week, offers a convenient alternative. Listen on [Spotify](https://open.spotify.com/show/53wwzF7LNSqqouR0wzXgJD?si=ae84739b09904ee1&nd=1&dlsi=71b6a174bdbd4f32) or [Apple Podcasts](https://podcasts.apple.com/us/podcast/willem-hoyngs-upc-unfiltered-ai-podcast/id1806092389). Dear reader, As we the start our fourth year of the Unfiltered, Prof. Willem Hoyng made a small change at the request of some of his readers. While Prof. Willem Hoyng will still discuss all the decisions published last week, he will always start with what he considers as the most interesting (must read / listen) decisions, marked with an asterisk. The other decisions will then be published / discussed in the order in which they were published. #### **\* 2 November 2026** **Court of Appeal, Netflix v DivX** [UPC-CoA-176/2026; UPC-CoA-177/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/20016c0c-dcbc-45a3-80cb-70cd160d7126.pdf) ***Suspensive effect*** **Facts** 1. DivX sued Netflix for infringement of Unitary Patent 4 213 033. 2. The Opposition Division (“OD”) had delivered an opinion on 3 July 2026 for a hearing on 1 and 2 October 2026. 3. On 15 September 2026, the LD Munich granted the injunction and dismissed the counterclaim for revocation. 4. DivX had indicated that it would enforce this decision. 5. Netflix requested the Court of Appeal for suspensive effect of the decision during appeal. 6. Netflix stated that the LD has violated Art. 76 sub 1 and 2 UPCA because it had based its infringement finding on a fact which had not been argued by the claimant. 7. Netflix further stated that the LD had made an evident mistake with respect to the claim interpretation. Netflix only became aware of this interpretation during the oral argument and could not respond anymore in the counterclaim for revocation. 8. Therefore, it argued that the Court of Appeal should order suspensive effect as the OD (after the decision of the LD) had revoked the patent. This can only be different if the decision of the OD is so flawed that it is probable that the Board will not follow that decision. However, the LD had not stated this with respect to the preliminary opinion of the OD. 9. Furthermore, Netflix stated that the Court of Appeal should ask questions to the ECJ. **The Court of Appeal** 1. The provision, Art. 74 sub 1 UPCA, is that, in principle, an appeal has no suspensive effect. The only exception to this would be if the interests of the party requesting suspension outweighed those of the claimant. This may be the case if the decision is clearly wrong, if non-suspension means that the appeal is pointless, or if fundamental procedural rules are violated and it cannot be excluded that without such violation a different result would have been reached. 2. The Court does not agree with the arguments of Netflix. With respect to Art. 76 sub 1 UPCA the Court states: > *“21. For the purpose of determining the content and scope of claims under Article 76(1) of the Agreement on a Unified Patent Court (UPC Agreement), it is not merely the wording of the claim for relief that is decisive, but also the factual circumstances presented in its support. The subject matter of the dispute—by which the Court is bound pursuant to Article 76(1) of the UPC Agreement—is defined by the plaintiff’s (or applicant’s) claim and the underlying factual circumstances (cf. UPC Court of Appeal, 14 February 2025, UPC-CoA-383/2024, para. 158, \*Abbott/Sibio\*). These factual circumstances encompass all facts that, when viewed reasonably from the perspective of the parties, belong to the complex of facts submitted by the plaintiff to support the action. In the context of a patent infringement action, the decisive factor is the set of factual circumstances presented by the plaintiff from which an alleged patent infringement arises. Consequently, what is generally critical is the specific factual configuration of an accused product or process which, according to the plaintiff’s submissions, results in that product or process meeting the features of the patent claim.”* 1. There is also no surprise decision with regard to Art. 76 sub 2 UPCA. 2. The Court of Appeal rejects the argument of Netflix that the LD has simply prohibited all other versions of the web browser function based on the Cadmium Player alone, on the basis that, as far as the patent is concerned, these different versions are essentially the same. The Court of Appeal states that against the allegation of the patentee, Netflix should have provided a more detailed explanation as to why such allegation was wrong. This general allegation by the patentee is not, as Netflix states, a “fishing expedition”. 3. The Court considers that there is no evident mistake in the claim interpretation by the LD. 4. The LD’s decision to order Netflix to provide information without ordering confidentiality is also not an evident mistake, as during the proceedings, Netflix should not only have stated that this information was confidential, but also should have stated why this information was confidential. 5. The fact that the LD did not stay the case after the negative opinion of the OD is also not a serious mistake. 6. Granting an injunction with respect to a patent that is revoked by the OD is not contrary to Art. 47 of the EU Charter. It follows from the case law of the Court of Justice that Art. 47 does not require precedence to be given to a decision of the OD. **Comment** 1. Is it proportionate not to give suspensive effect to a first instance decision, when immediately after that decision the granting authority concludes that its examination department should not have granted the patent on which that first instance decision is based? This is a question you can ask yourself. 2. However, it is important for your practice to realize that, according to this decision, the answer is generally that this is not disproportionate, even when the first instance court has not motivated why the OD’s decision is clearly wrong and there is a clear possibility that on appeal that decision will not be maintained, but apparently simply disagrees with the decision. 3. Whether we like it or not, proportionality is part of our EU law with respect to IP rights. Would it not be time to ask the Court of Justice to clarify what this means, as it did with respect to costs and liability for enforcing judgments which later proved to be incorrect? **Disclaimer**: My firm acted as co-counsel for Netflix. However, I have not been involved in the case and only became aware of this when I read the decision. #### **\* 2 November 2026** **Court of Appeal, X v Amycel** [UPC-CoA-935/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/b506c24e-ec08-4272-9d25-919b543d667a.pdf) ***Service / default*** **Facts** 1. Amycel is the owner of patent EP 1 993 350. It accused X of infringement due to the marketing of a mushroom strain under the name ‘Cayene’. 2. The LD The Hague issued an injunction in PI proceedings. 3. X appealed, filed a revocation action in the CD Milan but lost both proceedings by default. 4. Amycel started proceedings on the merit. The service of the Statement of Claim in Poland did not succeed. The JR concluded that the service constituted good service on the basis of R. 275 RoP. 5. The Statement of Defence was filed after the expiration of the three months and a re-establishment of rights was refused by the LD. A decision by default was issued (citing some of the considerations of the PI decision). 6. An application to set aside the decision by default was dismissed. 7. X appealed against all the decisions of the LD. **The Court** 1. With respect to the question if the service was valid, the Court of Appeal holds that the Registry attempted service twice in accordance with Art. 18 of the EU Service Regulation, but it failed both times. After that, the LD could validly apply the alternative service under R. 275 RoP, which does not necessarily have to be a method prescribed by internal Polish law. 2. In exercising its discretion under R. 9.3(a) RoP, the Court must take into account all of the circumstances of the case. This includes the reasons for the failure to comply with the time period, the conduct of the party and its representative, and how prompt the Court and the opposing party were informed of the relevant circumstances. A party seeking an extension on account of an unforeseen circumstance should inform the Court without undue delay once the circumstance becomes apparent, provided that such communication remains reasonably possible. 3. R. 353 RoP permits the Court to rectify clerical mistakes, errors in calculation and obvious slips in a decision or order. The circumstances contemplated by R. 353 RoP presuppose a discrepancy between the decision intended by the Court and its material expression. R. 353 RoP does not permit the Court, under the guise of rectification, to reconsider or alter a substantive legal assessment contained in the decision or to substitute a different legal conclusion for the one originally expressed. 4. Once an application to set aside a decision by default complies with the requirements of R. 356.2 RoP, the Court does not retain a general discretion to refuse it on the ground that the default is considered insufficiently justified or excusable. The explanation required by R. 356.2 RoP does not operate as a plea for relief as it requires the applicant to prove that the default occurred without fault or was otherwise excusable. It enables the Court to identify the cause and scope of the default and may involve the exercise of its discretionary powers in the subsequent conduct of the proceedings, including case-management orders, the allocation of costs and a notice under R. 356.3 RoP that a further decision by default shall be final. 5. The notice required by R. 356.3 RoP must be express and clear. It must specifically inform the party that, in the event of a further default, the resulting decision by default shall be final and that the remedy under R. 356 RoP will no longer be available. Mere notice that a decision by default will be issued does not satisfy that requirement. 6. Referral under R. 242.2(b) RoP may be justified where a procedural error prevented the inter partes written procedure from being completed before the Court of First Instance and deciding the action on appeal would require the Court of Appeal to conduct the remaining written procedure for the first time. **Comment** 1. I do agree with the Court of Appel that alternative service ex R. 275 RoP does not have to be a service according to the internal law of the country where service has to take place. However, I disagree that two failed attempts under Art. 18 of the EU Service Regulation is sufficient for applying R. 275 RoP. Art. 18 of the Regulation provides an alternative method of service under the Regulation. It is a very easy and cheap way of service: sending a registered letter with confirmation of receipt. Everybody with a bit of experience knows that a seasoned defendant will refuse to sign, which means that there is no valid service. Moreover, the defendant can refuse if it does not understand the language and can ask for a translation. The Registry only used this cheap method and did so twice. The Registry did not use the “normal” method which is described in Art. 8 of the Regulation. 2. My conclusion is that service under the Regulation was possible. In my opinion, one cannot conclude that service is not possible on the basis of two refused registered letters, and then serve a defendant on the basis of an internal UPC rule. 3. The Registry should have simply followed the method described in Art. 8 of the Service Regulation. 4. Finally, delivery by a private carrier is not, in my opinion, in accordance with Art. 18 of the Service Regulation. Although it has happened that a postman has himself forged the signature for recipient on the official form, that is clearly the exception. However, such practices are less guaranteed with a private carrier. 5. The headnotes are must read for both representatives and court of first instance judges. #### **\* 3 November 2026** **Court of Appeal, Yealink v Barco** [UPC-CoA-84/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/b1fdc712-60e7-4eaf-bac0-3172358deb5b.pdf) ***Costs*** **Facts** 1. Barco filed for a preliminary injunction (“PI”) at the LD Brussels. 2. Yealink challenged the Court’s competence. 3. The LD Brussels: 1. rejected the Preliminary Objection of Yealink; 2. dismissed the PI request of Barco because of lack of urgency. 4. Both parties appealed. 5. The Court of Appeal ruled on 28 November 2025: 1. ordered Barco to pay the costs of the court of first instance (“CFI”) proceedings; 2. awarded an interim award to pay to Yealink of € 66.000; 3. ordered that Barco had to pay the costs of the appeal proceedings and the application for suspensive effect; 4. ordered that Yealink had to pay Barco’s costs in the cross-appeal. 6. On 29 December 2025, Yealink started cost proceedings. 7. The LD Brussel ordered Barco to pay a (redacted) amount deducted with any interim costs paid. 8. Yealink filed an application for leave to appeal pursuant to R. 221 RoP. 9. Barco started proceedings on the merit on 25 August 2026. **The Court of Appeal** 1. Barco argued that Yealink did not ask for leave to appeal. This argument is rejected. Yealink filed in one document an application for leave to appeal, a Statement of Appeal and a Statement of the Grounds for Appeal, which is allowed. R. 221 RoP does not always require separate statements. 2. R. 221.2(a) RoP requires that the request for leave to appeal should specify why the appeal should be heard in such a way that the standing judge can decide on the basis of the application. References to specific parts are allowed. 3. Leave to appeal for a cost decision shall be granted if the order is manifestly erroneous or the decision raises a fundamental question of law and its review is necessary for a consistent application of the law. These are the same reasons as for discretionary review. 4. If the applicant invokes “manifest error” it must show that without the error the outcome of the decision would likely have been different. 5. The cost decision may be subject to separate proceedings following within one month after service of the decision on the merit. Therefore, the application in this case filed before the decision in the case on the merit is inadmissible. 6. If there are no proceedings on the merit pending and the applicant was ordered to pay the costs in PI proceedings, the one month period should apply by analogy for the costs in the PI proceedings that the defendant should receive. 7. If a case on the merit is started and the defendant has already started cost proceedings on the basis of the PI decision, these proceedings may continue. If the defendant has not already started cost proceedings and claimant files an appeal the defendant can still ask costs for the PI proceedings after the service of the decision in the case on the merits or also ask for a cost decision within one month after the service of the PI order. The same principles apply on appeal. 8. Regarding the costs of the first instance PI proceedings, Yealink did not file within one month after service. As Yealink did not file within one month of the PI order in First Instance, it can only file these costs after the case on the merit which started on 29 August and is ongoing. 9. With regard to the appeal costs, Yealink filed its costs within one month after the final order of the Court of Appeal. However, considering that Barco initiated proceedings on the merit on 29 August 2025, Yealink should file within one month after the service of the decision of the case on the merit. Therefore, Yealink’s application is inadmissible. > *“ 27. However, the current inadmissibility of Yealink´s application for a cost determination does not mean that the application for leave to appeal is unfounded. If the impugned decision had material substantive deficiencies as advanced by Yealink that disadvantaged Yealink, Yealink would be adversely affected by the res judicata effect of the denial of its requests. Conversely, if the Local Division had dismissed the requests as currently inadmissible, Yealink could reapply for a cost determination after the decision in the proceedings on the merits had been made.* > *28. The Brussels Local Division set the recoverable legal costs for the appeal proceedings at 50% of the applicable ceiling. It arrived at this figure by “balancing” the application of \[II.\] Number 5b) of the Guidelines (“decrease of the value to 66% for the overall PI proceedings”) with the “acceptance” by Barco that the ceiling in the PI first instance should be set at EUR 112,000”. Actually, the Brussels Local Division granted approximately 59% of this ceiling, which was EUR 66,000. 29.* > > *29. When exercising its discretion to determine the value in dispute, the Court “may” take the Guidelines into account (R. 370.6 RoP) but it is not obliged to do so (CoA, 10 June 2026, UPC-CoA-85/2026, para. 27, Speed Care Mineral v Teleflex Life Sciences). If the Court determines the value in dispute according to the Guidelines, the Guidelines must be applied correctly. The provisions in II. Number 5b) of the Guidelines cannot justify decreasing the ceiling to 66%, as the Brussels Local Division did in its first step. II Number 5b) (unchanged by the guidelines amended by decision of the Administrative Committee on 4 November 2025) states that in a case of an application for interim relief which is not followed by an infringement action on the merits the value of an application for interim relief for determining the level of the recoverable costs should be calculated at 66% of the value calculated in accordance with II.1.b) of the Guidelines. 9* > > *30. As the Brussels Local Division correctly held, the Guideline 5b) is not literally applicable because, in this case, an infringement action on the merits followed the PI proceedings. However, even if applied mutatis mutandis it would not follow that the applicable ceiling has to be decreased to 66%. It is the value of the proceedings that has to be decreased to 66%.* > > *31. Even if the value of the appeal proceedings, which the judge-rapporteur of the Brussels Local Division considered to be EUR 1,000,000 would be decreased to 66%, the applicable ceiling would still be up to EUR 112,000. The value of the proceedings would then be EUR 660,000 (66% of EUR 1,000,000). According to the scale of ceilings for recoverable costs, proceedings with a value in dispute of EUR 660,000 still have an applicable ceiling of up to EUR 112,000.* > > *32. To conclude, the impugned decision contains a manifest error.”* 1. When the costs exceed the ceiling for recoverable costs, it does not automatically mean that you get the amount of the ceiling. The costs have to be reasonable and proportionate. 2. The applicant in PI proceedings may not file a request for costs before the end of the case on the merit. This means that Barco cannot deduct its costs from the costs requested by Yealink. 3. The Court leaves open the question if compensation is possible without initiating cost proceedings. > *“VIII. Proceedings under R. 150 RoP et seq. is not a re-examination of which party is entitled to cost reimbursement under Art. 69 UPCA. In proceedings for provisional measures, this decision (hereinafter referred to as “cost allocation”; “répartition des frais” in French; “Kostengrundentscheidung” in German) should be made in the order deciding on the application for provisional measures (see Hanshow v Vusiongroup, para. 37). Similarly, in the proceedings on the merits, the decision on the merits should contain a cost allocation decision (see Hanshow v Vusiongroup para. 38). The only issue subject to separate proceedings for a cost decision pursuant to R. 150 RoP et seq. is cost determination, i.e. the question of which costs to which amount are recoverable (“détermination des frais” in French, “Kostenfestsetzung in German, see R. 150.1 RoP).”* **Comment** 1. Congratulations if you can read this decision without getting a headache. 2. Clearly, we have created a monster, wasting clients’ money and judges’ precious time. 3. Why can costs not have a simple system! Let’s see if there are national systems that deal with costs in a more efficient way! 4. I must admit: I have a headache but apparently I still do not understand it completely. I understand that you normally file your costs in PI proceedings after the case on te merit. However, if no such proceedings are filed defendant can start cost proceedings within a month after the service of the PI decision. If then later the claimant nevertheless starts a case on the merit, defendant can continue with the cost proceedings and if he has not started cost proceedings he can do so after the case on the merit. However, in consideration 24 the Court states that in that case defendant can also still file within one month after the PI order and these principles apply in appeal mutatis mutandis. However, when in appeal Yealink filed within one month after the decision in the PI proceedings after the case on the merit by Barco was started, Yealink’s application was not admissible (because it has to wait until the decision on the merit). Is there a contradiction? There is no such contradiction if in fact Yealink would have not filed within one month after the PI decision in appeal but the Court states it had filed within one month (which is only so if you read R. 360 RoP (b) into (c)) all assuming service of the PI decision on appeal took place on 28 November 2025). 5. On a simple point the JR does not make a decision! I would say. If you do not bother to file cost proceedings you should of course still be able, if the other side asks for costs, to invoke compensation with costs which have been awarded to you. That is only fair then asking for money but not wanting to pay what you owe because of a formality. #### **\* 5 November 2026** **Court of Appeal, Disney v InterDigital** [UPC-CoA-133/2026; UPC-CoA-134/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/a594610d-6ec2-4a03-9d9b-a90682b2c1ba.pdf) ***Confidentiality*** **Facts** 1. Disney filed its Grounds of Appeal on 16 October 2026 and requested confidentiality for certain information in its exhibits. 2. Certain information should be confidential towards the public. 3. Other information should be kept confidential by InterDigital and should not be disclosed or used outside the proceedings. 4. With respect to the information mentioned under 2, the public should be excluded from the oral hearing, and the decision of the Court of Appeal should not be published without redaction. **The JR of the Court of Appeal** While referring to Strabag v Swarco the Judge-Rapporteur (“JR”) states: 1. A request under R. 262.2 RoP does not prevent the other party from disclosing that information. In order to achieve that, you would have to file a request under R. 262.A RoP. 2. A request under R. 262A RoP has to be made when the document concerned is filed. If it is filed in first instance without the R. 262A RoP request, you cannot ask for such confidentiality anymore in appeal. 3. The JR ordered to upload the Statement of Appeal in a redacted version only with respect to information which has not been disclosed before. **Comment** 1. It seems that some representatives still do not know their way through the (confusing) confidentiality provisions. 2. I will reiterate how you should (in my opinion!) interpret the provisions: 1. If you want to make sure that certain information is treated confidential (even if there is already an agreement in place with the other party that includes a contractual confidentiality clause, or even if you do not mind that the other party receives the information, but you want to preserve confidentiality for the public) you should file the request ex R. 262A RoP when filing the information. 2. If it is information that you do not want to give to the other party, but only to a confidentiality club with certain members (for example, employees of the other party not involved in licensing negotiations), you should make that clear. 3. The confidentiality arrangement is also automatically valid in appeal and with respect to a request for information from the public. However, if a member of the public asks for information, it is advisable to state that you invoke R. 262.2 RoP with respect to all the information which has a R. 262A RoP status, unless the member of the public restricts its request to the redacted version. A member of the public can challenge the confidentiality under R. 262.3 RoP. 4. If on appeal you file new confidential information, you have to ask for R. 262A RoP at the time of filing. 5. I think that if you did not ask for R. 262A RoP protection it will be very difficult to claim R. 262.2 RoP protection if a member of the public asks for information, because you will have to make clear that nobody of the adverse party and/or experts were free to disclose that information and that the information has not been disclosed during the oral hearing, etc. 6. If you want to make sure that the confidential information is not disclosed during the interim or oral hearing, it is wise to ask that the Court orders such part of the hearing to not be accessible to the public. Be careful - you should also do this if nobody is present, because if the hearing is recorded and the recording is accessible to the public, your information could be made public. It is best to arrange this with the other party and the Court before the hearing so that the Court may schedule a part of the hearing in which the confidential information will remain confidential. #### **\* 5 November 2026** **Court of Appeal, Guardant v Sophia** [UPC-CoA-49/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/3f4fabac-f4f6-4810-96f7-594fdb8eee7a.pdf) ***Costs*** **Facts** The case concerns a dispute about costs. **The JR** 1. A defendant that is successful in preliminary injunction (“PI”) proceedings can file cost proceedings within one month after the service of the first instance order or the decision in the case on the merits. 2. Exceeding the ceiling of reasonable costs does not mean that the one is entitled to the ceiling as costs have to be reasonable and proportionate. 3. The Judge-Rapporteur (“JR”) may request the applicant to provide written evidence of all the costs and should give the other party the possibility to comment. In order to enable the other party to be able to judge the necessary and proportionality of the costs there should be a substantiated specification. 4. The JR states: > *“For the unsuccessful party to be able to comment on both the necessity and the proportionality of the costs for representation, the applicant for a cost decision should provide a sufficiently substantiated specification of the costs in view of the circumstances of the case, which would generally include breakdowns corresponding to each service provided in relation to the case, the date on which such service was provided, and the number of hours and rate billed for that specific service.”* 1. The JR sends the case back because this JR has not managed the case in first instance and therefore it is difficult to conduct the cost determination for the first instance. **Comment** 1. A must read for representatives that do claim costs and judges that deal with such costs proceedings. 2. My advice for (reasonable) representatives: try to agree on costs before the oral argument. For judges: try to force parties to a settlement. A good weapon for this is to require a specification of all costs one week before the oral argument in case no agreement is reached! #### **2 November 2026** **Court of Appeal, NST v Qualcomm** [UPC-CoA-71/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/eaa499d3-951a-4ae2-acc1-1fcb9441bce0.pdf) ***Appeal term*** **Facts** 1. On 11 March 2026, the LD Munich dismissed the infringement claim and the counterclaim for revocation. 2. On 11 May 2026, NST lodged an appeal against the decision on infringement. 3. On 15 October 2026, Qualcomm lodged its Statement of Response and a cross-appeal with respect to the dismissal of its counterclaim for revocation. **The JR** 1. The Judge-Rapporteur (“JR”) wondered if Qualcomm’s appeal is timely filed as a counterclaim for revocation is a separate case meaning that Qualcomm would have had to appeal within two months after the decision of the LD. 2. The JR asked the parties to comment. **Comment** 1. I hope that the Court of Appeal will take a more realistic than formalistic approach. A counterclaim for revocation is filed as a defence against an infringement case initiated by the patentee. If the Court rejects the infringement claim on the basis of other defences, then appealing a negative decision with respect to the counterclaim makes sense only if the patentee appeals the infringement decision. However, for now, I advise all representatives in the same situation to file a timely appeal on the condition that they will proceed if the patentee appeals. 2. The hope I express will in all likelihood not materialize because the Court of Appeal has already decided with regard to the conditional counterclaim for revocation that you have to appeal within the appeal term, should the claimant appeal. #### **2 November 2026** **Local Division The Hague, Avient v Xingi** [UPC\_CFI\_478/2025; UPC\_CFI\_585/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/0d452617-487e-4e69-84e3-a0a9be4d09e4.pdf) ***Interim conference*** **Facts** 1. This case concerns an infringement case re EP 2 791 402. 2. An interim conference was held on 26 October 2026 with the Judge-rapporteur (“JR”) and the Technically Qualified Judge (“TQJ”) present. **The JR** 1. The JR gave some preliminary guidance with respect to claim construction, infringement and validity. 2. The panel will decide on the claim for penalties and it will be argued during the oral argument because of the late response to the R. 190 RoP order. 3. The JR decided on the allegations with respect to late filing issues. 4. The defendant asked to consider making the counterclaim for revocation conditional. 5. The JR ordered the parties to list their most promising validity attacks and most important auxiliary requests. **Comment** The JR had (again) studied the case in detail together with the TQJ, which allowed her to provide preliminary views and address all objections regarding late-filed issues, ensuring an efficient and to the point oral hearing. The only thing I miss was for the Court to give its provisional views at the start of the hearing and allow the parties some time to rearrange their arguments. However, if the views expressed during the interim conference were so concrete that the parties realized what are the important issues for the Court, then that may not be necessary. #### **4 November 2026** **Local Division Düsseldorf, Veridium v T3K** [UPC\_CFI\_2738/2026; UPC\_CFI\_2739/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/b14f49ef-d760-4290-bfd0-0c2b6c513d68.pdf) ***Evidentiary seizure/inspection*** **Facts** 1. On 14 September 2026, at the request of Veridium, a seizure and inspection took place at the T3K premises. 2. The Court had ordered that the report of the seizure should first be given to representatives of T3K, which then could indicate which information in the report should be qualified as confidential. Thereafter, the representatives of Veridium could respond and the Court would decide what could be released to Veridium. 3. The extensive report had been filed but there was no representative for T3K. 4. Although T3K knew about the content of the order, it had chosen not to appoint a representative. It is too complicated to ask T3K outside of the CMS system about its opinion with respect to confidentiality. **The JR** The Judge-Rapporteur (“JR”) decides that the report should be made available to the claimant. The report can only be used in the proceedings that have to be started within the TRIP’s period, starting after this order has been uploaded in the CMS system. **Comment** 1. I tend to agree with the decision. A normal company, without an in-house lawyer or patent attorney, would (and should) ask a representative in such a situation, rather than put their head in the sand. 2. However, I would prefer, in light of the Enforcement Directive and the EU Trade Secrets Directive, that in such a situation, the JR would have given T3k the possibility to appoint a representative within one week, and, if not, to order as the JR did in this decision. 3. In any case, lawyers or representatives should ensure that their clients know what to do if confronted with an unexpected visit of a bailiff for an ex parte seizure or inspection, even if only a receptionist is present in the office on a day such as 24 or 31 December. In my experience, this is for some clients (and their lawyers) the most fruitful day to carry out such a seizure, depending on what they hope to find. Make sure the client is prepared, and that it can reach your assistance if necessary (and, as I have also experienced, make sure that not your whole office is on the annual ski trip . #### **4 November 2026** **Local Division Hamburg, Steros v Otec** [UPC\_CFI\_660/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/add96b9f-7227-4283-809d-9b4a9c063b3c.pdf) ***Infringement case*** **Facts** 1. Steros sued Otec for infringement of EP 4 249 647 for an Electrolytic Medium and Electropolishing Process using such Medium. 2. The Court of Appeal rejected the application for provisional measures (after they had been granted and enforced in first instance). **The Court** 1. The Court discussed the patent, defined the skilled person and interpreted claim 1 after citing all the applicable principles. 2. The Court held, with respect to the interpretation of the claim element “non-conductive fluid”, which is (only) described by its physical properties (“immiscibility with the conductive fluid and no significant conductivity”): > *“Therefore, the non-conductive fluid is not defined by a specific formula or substance class. However, the person skilled is aware that not every substance exhibiting the aforementioned physical properties is covered by the scope of protection of the patent-in-suit, but only those that are suitable for performing the function of the invention, because the technical interpretation of the terms used in the patent claim is determined primarily by the purpose of the feature described by those terms, as expressed in the patent specification. Based on the wording, the technical and functional meaning of the feature must be determined as it applies in the context of the invention. A function-based interpretation is, in any case, appropriate if the wording of the patent claim does not, on its own, allow for a clearly defined understanding. For just as with spatially and physically described features of a patent claim—where a functional interpretation cannot prevail over the spatially and physically described features—so too, in the case of features described solely by their physical properties, their technical function, as intended by the patent, may not be disregarded. Otherwise, the scope of protection would be limited solely by the physical properties of a material specified in the claim, without it being possible to achieve the result of the invention.”* 1. The conclusion of this claim interpretation is that the term “non-conductive fluid” is limited to water-in-oil emulsions. The defendant uses an oil-in-water emulsion and therefore does not infringe. 2. While citing the case law of other Divisions with respect to costs of a conditional counterclaim, the Court deviated from these decisions and stated that parties have to bear their own costs. **Comment** 1. After the correction by the Court of Appeal, the LD Hamburg, now comes to the correct result in a different way, based on an interpretation of the claim elements (see above), which I think is absolutely correct. 2. Unfortunately, as I have already stated several times before, in my opinion the cost decision is incorrect. Mannheim and Paris (unlike Munich) showed the way it should be done. Forget about formalities such as the fact that proceedings for infringement and revocation are distinct, and be realistic. Why does the defendant in the infringement case file a conditional counterclaim? There can be only one reason, which is triggered by the fact that claimant chose to accuse it of infringement. The defendant filed it (or rather: was forced to file it) as a defence alongside several other arguments as to why the defendant did not infringe. The defendant won. So the defendant should be reimbursed for its costs! #### **4 November 2026** **Court of Appeal, Fives v REEL** [UPC-CoA-42/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/9d094e47-ebc2-4752-9f10-f59a93f66cf3.pdf) ***Case management*** **Facts** 1. This case concerns an appeal of a decision by the LD Hamburg dated 11 February 2026. 2. A revocation case is pending before the CD Munich. 3. REEL basically asked for a stay pending the revocation proceedings. 4. REEL asked to disregard pleadings and evidence (specified by REEL) which Fives had not submitted in first instance. **The JR** The Judge-Rapporteur (“JR”) asked applicant Fives to comment on the requests for a stay and for disregarding pleadings and evidence. **Comment** The Statement of Response in which REEL made these requests is in principle the last pleading. Here the JR gives Fives the possibility to respond, which would enable the panel to decide on the requests before the oral hearing. This is certainly practical if the request for a stay is granted! In that case, the parties and the Court do not have to prepare for the oral hearing and, even if the stay is not granted, the parties know what pleadings and evidence are part of the proceedings. #### **5 November 2026** **Local Division Düsseldorf, Cilag v Ningbo** [UPC\_CFI\_1534/2026;](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/c97d8402-aa6b-4bb6-b57b-4584bd723df8.pdf)[UPC\_CFI\_1532/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/4a7d93ec-7de3-428d-86f3-71b962111840.pdf) ***PI proceedings / urgency*** **Facts** 1. This case concerns a preliminary injunction (“PI”) application based on EP 2 349 022 (EP 022) for surgical instruments. 2. An earlier product, the EnDrive Berluga, had been injuncted in 2024 by the Landgericht Munich. 3. In a letter dated 26 March 2025, the German partner of the defendants, Rivolution, was warned by the patentee of the fact that the EnDrive Beluga also infringed further patents among which EP 022. 4. In August 2025, Rivolution stated that in a few months they would get to the market with a product which would not infringe patent EP 022. 5. Rivolution did not provide the claimant with the new product despite several requests. 6. In the end the patentee obtained a product on 6 March 2026 and concluded on 9 April 2026 that the patent was infringed. On 4 May 2026, the patentee started infringement proceedings. 7. The defendants stated that the product was on the market as of 21 November 2025. **The Court** 1. R. 221.4 RoP makes clear that when the party filing the request waits too long (“unreasonable delay”) it loses its right for a PI. If it qualifies as an unreasonable delay depends on the circumstances of the case. 2. The Court cited the case law of the Court of Appeal and included that the relevant period starts at the time that the party filing the request knew or should have known that the new product infringed. 3. It is for the this party to show that it has acted without unnecessary delay. 4. The Court holds that the party filing the request has not shown that it has acted without undue delay. **Comment** 1. It is difficult to judge whether the Court’s decision is correct because, at an earlier stage than March 2026, the applicant apparently had already obtained drawings of the new product. However, it is unclear when they were received, partly because certain parts of the decision are redacted. 2. However, the impression is given that the busy Düsseldorf Division was rather strict on urgency in this case, which is of course a way of trying to get some breathing space. 3. I fully understand this attitude, and would even advise the Düsseldorf Division to publicly announce that, if a case can be heard in a less busy Division, a claimant cannot expect a hearing date before June 2028. Without any German claimant or defendant, this case could have easily been brought in a different Division, for instance in Paris or Milan, as these infringing acts also took place there. #### **5 November 2026** **Local Division Düsseldorf, Dai Nippon v Zapp** [UPC\_CFI\_466/2025 ; UPC\_CFI\_869/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/6ea323ec-2262-41d9-a621-be1e53f4ff7f.pdf) ***Infringement*** **Facts** 1. The case concerns infringement and revocation actions with respect to EP 3 805 415. 2. The Court refused late-filed documents by the defendant while holding that the claimant may invoke such late-filed documents. 3. The Court described the patent and defined the skilled person. 4. After stating the principles of claim interpretation and it discussed the claim on the points where parties disagreed. **The Court** 1. The Court decided that claim 1 is a product claim and not a method claim. 2. The Court stated that this is not a case with unusual parameters and leaves undecided if in such cases with respect to novelty, the patentee will have (a part of) the burden of proof. 3. The Court rejected the invalidity arguments. Contrary to the opinion of defendant, the Court holds that the description sufficiently discloses how to work the invention. 4. With respect to the novelty objection the Court stated: > *“1. Anyone relying on "prior public use" must demonstrate and prove that a product embodying all the features of the invention was made available to the public before the priority date—that is, without the recipient being subject to any express or implied obligation of confidentiality.* > > *2. Since the circumstances of an alleged prior public use typically fall entirely within the sphere of the party invoking it, strict requirements apply to the evidence provided: it must be proven comprehensively what was made available, when, to whom, and under what circumstances. This includes, in particular, establishing with sufficient certainty that the sample material examined corresponds to the product actually supplied (proof of identity).* > > *3. The disclosure of a broader numerical range does not automatically anticipate—in a manner that destroys novelty—a narrower, claimed range contained within it.* > > *This applies all the more when several parameters must be met cumulatively, and the prior art does not even address some of the claimed numerical ranges.”* 1. > *The patent is inventive: “to obtain the invention the skilled person would have do numerous tests and calculates with lots of effort. This amount to an inventive step with respect to D1”.* 2. The two other inventive step attacks failed because of lack of incentive. 3. The claim interpretation leads to a finding of infringement. 4. > *The Court applied the German and French law on the private prior use defence and rejected that defence. With respect to Germany, the Court states that even if the defendant would have delivered planks which fall under the claim before the priority date that that does not mean that it was in possession of the invention. What is decisive is whether the technical teaching of the invention “objektiv als Fertig herausstelt hat und subjektiv als solche erkannt wurde”.* 5. Also under French law “possession of the invention” is the central element of a private prior user’s right, just like in Germany. 6. The Court granted the injunction. 7. The parties had agreed on costs. > ***Comment*** > > *I think that all general considerations of the Court are correct:* 1. According to the general rule, the party arguing public prior use has the burden of proof. If the proof is not based on objectively verifiable facts but on facts and/or evidence in the control of the party who alleges prior use a stricter attitude, then ”it is more likely than not” is in my opinion logical and acceptable (although “up to the hill” or beyond reasonable doubt” may go too far). 2. That a specific range within a broader range can be novel is certainly acceptable. 3. If a product is delivered that falls under the scope of the claim but nobody realizes that it embodies an invention, then the decision that the one who has delivered such product does not possess the invention seems plausible. However, I struggle with the fact that somebody who manufactures or possesses such a product would infringe the later granted patent. #### **6 November 2026** **Local Division Mannheim, Samsung v ZTE** [UPC\_CFI\_188/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/e26501aa-9a6a-4e2c-9780-d2454ceade60.pdf) ***Court fees*** **Facts** The parties ZTE and Samsung settle the two cases pending between them: regarding EP 3 577 874 (UPC\_CFI\_847/2024 and UPC\_CFI\_422/2025) and regarding EP 4 096 288 (UPC\_CFI\_188/2025 and 606/2026). Samsung asked for a return of 20% of the court fees. That request was refused. **Comment** By now all representatives should know that the new reimbursement rules (in force as of 1 January 2026) are to be applied on settlements after 1 January 2026, and that for settlement after the closure of written procedure there is no return of fees anymore!