UPC Unfiltered, by Willem Hoyng – UPC decisions week 48, 2025

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20 October 2025 (late published)
Local Division Düsseldorf, Canon v Katun (late published)

UPC_CFI_351/2024; UPC_CFI_595/2024

Further written pleadings

Facts

1. The claimant asks for permission (R. 36 RoP) for a further pleading.
2. The claimant wants to comment on the (further) favorable preliminary opinion of the Opposition Division (“OD”) and has made further test purchases.
3. The defendant does not object against the filing of the preliminary opinion of the OD but asks the Court to disregard the remarks of the claimant.
4. With respect to the additional test purchases the defendant states that if they are the same as in the Statement of Claim they are redundant. If they are different, the claimant should file an amendment of claim (R. 263 RoP). 

The Court 

1. The Court accepts the preliminary opinion of the OD and the summary given by the claimant and refuses the other remarks.
2. The Court rejects the further requests.

Comment

1. This is an old lawyer’s trick: already stating everything you want to put in the additional pleading in your request for a further pleading, thinking that if it is refused, the Court has the information anyway.
2. The judge-rapporteur (“JR”) is (too) nice. Why accept the summary of the preliminary opinion?
3. What should have happened: the claimant should have asked the defendant for their agreement to file the preliminary opinion. The defendant would have said yes so that the preliminary opinion can be filed. If the claimant wants to comment on it, they should have asked for further written submissions (R. 36 RoP) without any comments.
4. If I was a judge, this manner of “requesting” (with a request that is in fact a submission) would be automatically refused. The request should contain certain (convincing) reasons why you want to file a further written submission but not what you want to submit. 

24 October 2025 (late published)

Local Division Paris, Raccords v First Plast 

UPC_CFI_612/2024

File-wrapper estoppel

Facts

1. On 31 October 2024 Raccords started infringement proceedings against First Plast.
2. First Plast responded without a counterclaim for revocation.
3. The written procedure was closed on 11 July 2025.
4. The patent of Raccords was initially opted out, but the opt-out was withdrawn.
5. The injunction is only asked for France and Italy, for which countries the patent is in force.

The Court

1. During prosecution of the patent, the patentee limited its patent in response to a novelty objection of the examiner based on a prior art patent.
2. According to the Court, in such a situation, one cannot give a literal reading to the patent that ignores this limitation.
3. The parties defended different national tests for the doctrine of equivalence: the French method (means having the same function achieving the same result) v. the Dutch four steps test. The Court states that the UPC has not yet formulated its own test, but will apply a test that in its opinion forms a harmonized approach.
4. The Court concludes that the function of the modified means is not essentially the same.
5. Conclusion: the Court dismissed the claim.

Comment

1. The decision as such is straightforward and Raccords should not have commenced the action.
2. The Court correctly applied “file-wrapper estoppel”. If an applicant limits their claim in order to avoid the claim being not novel, common sense dictates that they cannot ignore that limitation in their claim interpretation.
3. Common sense why? Because in that case the patentee would be defending a claim that, he himself admitted during the prosecution, is invalid (not novel).
4. The same is of course true when invoking the doctrine of equivalence. Accepting infringement under the doctrine of equivalence in such circumstances is basically the same as accepting infringement of an invalid patent. The UK, The Netherlands and Germany invoke the Gilette or Formstein defence in such a situation. An equivalent which was already known in the prior art can never infringe. The same is true if an alleged equivalent is a non-inventive variant of something known in the prior art.
5. I have already defended the test applied by the Local Paris Division (cf. Local Division of Paris, Decision of 1 August 2025, N.J. Diffusion v. Gisela, UPC_CFI_363/2024) several times. There is equivalence if with essentially the same means in essentially the same way essentially the same result is reached. The Dutch test (invoked understandably by the defendant) can lead to unpredictable and inacceptable results as you can always find (unjustified) reasons for the certainty of third parties to refuse equivalence. The Dutch Supreme Court case about Tinnus’ water balloons (ECLI:NL:HR:2024:293) is a perfect example. One should also understand that the qualification “Dutch test” is misleading. It is a test of which the Dutch Supreme Court has said that it does not violate Art. 69 EPC, but the Dutch Supreme Court has said the same for the test proposed by the Local Paris Division.
6. Case lasted one year. Bravo Paris!

28 October 2025 (late published)

Local Division Munich, BFexaQC and ParTec v NVIDIA

UPC_CFI_729/2025

Security for costs

Facts

1. Claimant 2 (ParTec) is a spin-off of the University of Karlsruhe, Claimant 1 (BFexaQC) is entitled to enforce and license the patents of Claimant 2.
2. Another action between the parties was withdrawn after the patent was revoked. The claimants had to pay the costs.
3. A third case is pending before the Local Division of Munich.
4. The claimants also started litigation against Microsoft in the US.
5. In the summer of 2025, press articles surfaced stating that Claimant 2 was experiencing economic difficulties which led to a drastic loss of value on the German stock exchange.
6. The defendants now ask for a security for costs.

The JR

Orders security after an extensive motivation why there are serious doubts that claimants can pay the costs. Although no counterclaim for revocation had been filed yet, with the time limit to file said claim not yet having expired, the costs of such counterclaim are also taken in consideration. 

Comment

1. The decision shows that also when the claimant is a UPC company (which means that a cost order can easily be executed), it is still possible to ask for a security of costs if there are legitimate reasons (to be proven by the applicant) to have serious doubts about the capacity of the claimant to pay the costs if it loses the proceedings.
2. To already include the costs of a possible counterclaim for revocation makes practical sense. If no such revocation will be instituted (which seems extremely unlikely) the JR can be asked to review the cost order. 

6 November 2025 (late published)

Local Division Hamburg, Brita v Fileder 

UPC_CFI_1443/2025 

Ex parte

Facts

1. The patent concerns water filter systems.
2. A German distributor of infringing system provides a cease and desist declaration and informs the patentee that it gets the products from the defendant (a Polish company).
3. The Defendant does not answer the cease and desist letter.
4. Brita then files for an ex parte PI.

The Court

The Court, after having considered that there is urgency, literal infringement and no reason to doubt the validity, grants the ex parte for the UPC countries where the patent has been validated.

Comment

1. Not very clear to me why the Polish defendant did also not give a cease and desist declaration. To put your (EU) head in the sand seems in the end far more costly.
2. The Patentee knew since 17 October 2025 of the infringement and filed 5 November 2025! That is the way to fulfill the urgency requirement!

11 November 2025 (late published)

Local Division Munich, Solvay v Zhejiang 

UPC_CFI_771/2025; UPC_CFI_802/2025

Confidentiality

Facts

1. The JR has given a confidentiality order at the request of the defendant.
2. Parties tried in vain to agree on the confidentiality club.
3. The defendant objected against the claimant’s suggested names as they were not employees of the claimant.
4. JR formed a confidentiality club as requested by the claimant.
5. Defendant applied for a review of the order.

The Court (full panel)

1. R. 262A.6 RoP does not demand that the persons in the confidentiality club are employees of the parties.
2. What is relevant for access are the circumstances of the case, including the role of that person in the proceedings, the relevance of the confidential information to the performance of that role and the trustworthiness of the person in keeping the information secret.
3. Especially in a group of companies (an “economic unit”), it is usual that a person (f.i. the IP department) provides a service to other members of the unit.
4. All this has already been decided by the Court of Appeal (cf. Court of Appeal, Order of 12 February 2025, Daedalus Prime v. Xiaomi, UPC_CoA_621/2024).
5. Leave for appeal was refused. The JR’s order is confirmed and amended in the sense that the claimant has to make the two non-employees aware of the order and inform them that they have to keep the information secret outside these proceedings (unless they have acquired said information outside the proceedings). The obligation continues after the proceedings.

Comment

1. The addition makes sense. I would say that for such a person to not be bound by the confidentiality obligation, they will at least have to show with written evidence that they have obtained the same information elsewhere (and thus that said information ultimately did not come from the defendant).
2. In my view it is not sufficient that the claimant simply informs its non-employee of the obligation. I think that the claimant is liable in case of non-performance, both for its own employees but also for these non-employees. Of course the defendant may also seek recourse against the persons themselves if they did not comply with the confidentiality obligation, but the claimant may have more funds to cover damages.
3. A simple form to be signed by the party bound by the confidentiality club would make that responsibility clear. Such can then more easily be enforced in a court of law by the defendant. Especially as I doubt if the UPC is competent to hear such damage case.
   
    

18 November 2025 (late published)

Local Division The Hague, Advanced Cell Diagnostics v Molecular Instruments

UPC_CFI_187/2024, UPC_CFI_507/2024

Validity/Infringement (Equivalence)

Facts

1. The claimant invokes two patents in an infringement action against Molecular Instruments. It filed a Statement of Claim on 22 April 2024.
2. The defendant filed a Counterclaim for Revocation (claiming lack of novelty, obviousness, extension of subject matter and insufficiency) which triggered the claimant to file a conditional application to amend the patents, filing two auxiliary requests for each patent.
3. During the interim conference (2 July 2025):
   1. the value of the claim and counterclaim were set on € 5 million;
   2. parties agreed on the product description used in the UK;
   3. parties agreed on the statement of agreed common general knowledge in the UK;
   4. the defendant withdrew a certain added matter argument;
   5. parties were encouraged to agree on costs.
4. In the UK both patents were held to be invalid and one was also considered not infringed.

The Court

1. The Court construes the claim using the Nanostring principles (Court of Appeal, Order of 26 February 2024, NanoString Technologies v 10x Genomics, UPC_CoA_335/2023).
2. The skilled person is not disputed.
3. Specific properties of the claimed assay not mentioned in the claim cannot be interpreted as part of the claim.
4. The Court will only discuss the prior art documents which were presented as the most promising.
5. The Court notes that for lack of inventive step, the defendants rely on combinations of prior art with a common general knowledge, which goes beyond what was agreed upon between the parties as being common general knowledge in the UK. It can thus not be established if that is indeed common general knowledge.
6. For novelty the Court applies the Gold Standard.
7. In no. 49 the Court states: 
   “For the assessment of inventive step, the parties in theory agreed that the principles set out by the CD Munich in the Amgen v. Regeneron/Sanofi decision (UPC_1/2023 of 16 July 2024) should be applied. This decision mentions in 8.8: “In general, a claimed solution is obvious if, starting from the prior art, the skilled person would be motivated (i.e. have an incentive or in German: “Veranlassung”, see the CoA in NanoString/10x Genomics, p. 34) to consider the claimed solution and to implement it as a next step (“nächster Schritt”, CoA in NanoString/10x Genomics, p. 35, second par.) in developing the prior art.” In practice the parties rather seem to have applied a test that seems closer to the problem solutions approach. As in this case, the result does not depend on the specific test and as the cited sentence seems to apply to both, the Court will apply principles that are common to both tools for assessing inventive step below.”
8. When applying the above criteria, the Court concludes that none of the arguments alleging non-inventiveness, have merit.
9. The sufficiency argument of the defendant is based on a squeeze. If the defendant argues that claim elements are not obvious because they are not enabled in the prior art, than that would mean that they are insufficiently disclosed. However, this argument does not hold: the fact that the Court finds the claim inventive is not based on the fact that certain claim elements were not enabled in the prior art.
10. For both added matter and novelty, the Court applies the Gold Standard. It concludes that there is no added matter when applying the Gold Standard in the way as the Court of Appeal did in its Expert Klein decision (Court of Appeal, Decision of 2 October 2025, Expert Klein, UPC_CFI_764 and 774/2024).
11. As to infringement, the Court finds the equivalence arguments made only in the reply admissible, as the defendant could react on them in the rejoinder.
12. As all claims of the two patents as interpreted require no overlapping regions at all between the respective complimentary regions on the label probe and as there is an overlap in the defendant’s embodiments, there is no literal infringement.
13. The Court finds that there is no equivalence either. For the legal certainty of third parties, the Court finds it difficult to decide how much overlap would still be equivalent. Also, as the invention is basically based on a (new) combination of what is known, fair protection for the patentee does not require a finding of equivalence. Finally the Court states that the overlap is not just a work-around but leads to a better result because of the different way (overlap) the result is reached.

Comment

1. It is noted that an entirely different result is reached in the UK compared to the UPC, while the same provisions of the European Patent Convention (“EPC”) were applied. In the UK. Both patents were found to be invalid and one of them (if it would have valid) infringed. Before the UPC, both patents are considered valid, but no infringement is found.
2. Hereabove, I provided the inventive step criteria used by the Court before the Court of Appeal (last week) had spoken. However, although somewhat different I do not think that would have made a difference. It confirms my view that the standard for inventive step in the UPC seems somewhat lower than in the UK where they rely (in my view too heavily) on expert evidence from over qualified experts. They are to place themselves in the position of the average skilled person without any knowledge of the invention but that remains very difficult.
3. Note that in this case the Court also listened to the opinion of experts, who were present during the hearing (which is a good thing) and answered some questions. However, it is also clear that the Court (the two Dutch legal judges both having the necessary scientific background) did not entirely rely on these experts.
4. I disagree with the statement about the legal certainty for third parties, and the fact that if the invention is “simple” (here a new combination of known elements) you do not deserve the doctrine of equivalence. These considerations are unnecessary if one applies the means function test as proposed by the Paris Local Division (cf. Local Division of Paris, Decision of 1 August 2025, N.J. Diffusion v. Gisela, UPC_CFI_363/2024). If essentially the same result with essentially the same means in essentially the same way is obtained, no third party (properly advised by a – competent – patent attorney) can think that he/she can go ahead without a problem. Meanwhile, the patentee certainly deserves protection because the essence of his invention is used.
5. That does not mean that this decision is wrong, as apparently the method with overlap is not essentially the same and leads, one can argue, to an essentially different result.

6. What happened between 22 April 2024 and 2 July 2025? This case took 18 months. That is not in conformity with the 12-14 months standard. One can hope that the The Hague Division, which seems – because of the scientific background of both local legal judges – well placed to deal with these type of cases, makes a real effort to have a hearing within a year. 

    

18 November 2025 (late published)

Local Division Düsseldorf, LiNA v Tonglu and LiNA v Schultz

UPC_CFI_1600/2025, UPC_CFI_1598/2025

Evidentiary seizure

Facts

1. The applicant filed an application for preservation of evidence and inspection at defendant’s booth during the Medica trade fair by an independent expert and bailiff.
2. The applicant states that the product presented by Tonglu at the Medica trade fair looks the same as one obtained by the applicant in the US, which was a slavish copy of the (patented) product of applicant.
3. One can only say with certainty that the product is infringing if it is dissembled and analyzed.

The Court

1. The Düsseldorf Local Division is competent.
2. The applicant intends to bring an infringement action in Düsseldorf.
3. The applicant is the registered owner of the patent.
4. The applicant has comprehensively shown that infringement is likely.
5. The validity of the patent is not to be examined within these proceedings except if there would have been clear indications of invalidity.
6. The measures are needed to prove infringement.
7. There is no indication that the applicant had a previous opportunity to inspect the product because it is not on the market in Europe.
8. Security is not necessary because damage is minimal.

Order is granted as requested.

Comment

1. The (ex parte) application contained all the elements that, first of all, are necessary to obtain such order and that, secondly, should be contained in the order (such as the secrecy obligation of the expert, bailiff and representative of the claimant with respect to the information gathered during the seizure as long as the defendant has not expressed its views on what should stay confidential). So for both (unexperienced) representatives this is a textbook case.
2. It also shows the importance of a (convincing) protective letter if a company is going to show a product at a trade fair of which it knows or should know that it will attract the attention of the patentee. If one has serious prima facie invalidity arguments and/or non-infringement arguments, one can try to avoid such a disturbance during the exhibition.
3. Furthermore, companies should be prepared as to what to do if such evidentiary seizure takes place, both during trade fairs or at their premises.
4. Sometimes there are also practical measures possible to avoid such measures. In the case at hand, the defendant must have realized (in view of the US experience) that a seizure was not unlikely. If (and I say “if”) he had good non-infringement arguments, he could have simply stated in his protective letter that at the first request, they will hand over a product to the patentee during the exhibition.
5. On the other hand, as shown by the first ex parte application granted by the UPC, a patentee can also attempt to get an ex parte and make (further) publicity for the infringing product impossible. I have not yet seen a representative who visits or has visited the booth on the first day, have the product shown and explained to him and after having obtained the missing information, files for an ex parte injunction.

19 November 2025 (late published)

Local Division Düsseldorf, Inter Digital v Walt Disney

UPC_CFI_87/2025, UPC_CFI_488/2025

Further written pleadings

Facts

1. The claimant asks for a further written pleading to react on the rejoinder in the infringement case as the defendant raised a non-infringement argument for the first time, and as the defendant’s statements are incorrect with respect to the FRAND defense.
2. The claimant states that it will submit the further pleading within the time limit it has for its rejoinder in the counterclaim.
3. The defendant did not provide any comments.

The JR

The JR grants the request.

Comment

1. Although in the considerations, the JR states that both parties will be given two opportunities to comment on the FRAND issue, I do not see that reflected in the order. In general I think that if a party gets the opportunity under R. 36 RoP to file a further submission after the other party’s last written submission, the other party should get the opportunity to respond.
2. The JR also states in the considerations that this order does not imply a decision regarding the late submission of arguments. In this case, the defendant apparently raised a new argument for the first time in the rejoinder. That is in principle not possible. However, the claimant apparently did not protest but asked for a further written submission. That signals in my opinion that the claimant waived its right to object against the late submission. (?)

20 November 2025 (late published)

Central Division Munich, Baussmann v Raimund Beck Nageltechnik

UPC_CFI_836/2024

Inventive step

Facts

1. Baussmann starts a revocation action on 20 December 2024 with respect to Unitary Patent 4019790 B1 (“Nail for use in a nailsetter”).
2. Baussmann only invokes the revocation of claims 1 to 4 and 7 to 13. These are not novel and/or not inventive.
3. Raimund Beck amends claims 1-4 and 7-13 and files 11 auxiliary requests. It also asks to change the description.
4. During the oral hearing, Raimund Beck withdraws its request to change the patent description.

The Court

1. The Court cites the principles for claim interpretation with reference to: Court of Appeal, UPC_CoA_335/2023, order of 26 February 2024; Court of Appeal, UPC_CoA_1/2024, order of May 13, 2024; and Court of Appeal, UPC_CoA_182/2024, order of September 25, 2024.
2. The Court accepts the definition of the person skilled in the art by the claimant as the patentee has not given a definition.
3. The Court states that “for use in a nailsetter” only means that the nail can be used in a nailsetter which means that it needs to have a physical shape that makes such use possible.
4. The Court rejects the lack of clarity (Art. 84 EPC) and extension of subject matter arguments against the new main claim.
5. With respect to the question whether there is an inventive step, the Court states, after having referred to Art. 6 EPC:
   A technical effect or advantage over the prior art can be an indication of inventive step.
   A claim element that is the result of a random choice between different possibilities generally does not result in inventive step.
6. The Court states that there is in principle no place for the so-called “closest prior art”, what counts is a realistic starting point.
7. Furthermore, when reference is made to common general knowledge for an inventive step attack, it is important to avoid assessing the invention with knowledge of the invention. Also in such a case, it is necessary that the skilled person had an incentive to arrive at the claimed subject matter based on the state of the art.
8. The Court and the defendant are bound to the extent of the Statement of Claim. If not all the claims are attacked in a revocation claim, neither the Court nor the defendant can make changes. They have to accept their validity as they are granted.
9. The patent is maintained on the basis of the third auxiliary request.
    

Comment

1. Also in view of the Court of Appeal’s considerations on inventive step issued 5 days later (see hereafter), this decision seems correct.
2. However, on the face of it, this seemed a rather simple invention. The decision shows that especially in such cases one should not look at it with the knowledge of the invention (which one is generally at first glance inclined to do) and one has to realize that there should be something such as a pointer or other incentive to make the (with hindsight simple) step to the invention.
3. A (very elaborate) decision of the Central Division in 11 months!

21 November 2025 (late published)

Local Division Paris, Merz v Viatris 

UPC_CFI_697/2025

Urgency (unreasonable delay)

Facts

1. On 31 July 2025, Merz filed for a preliminary injunction against Viatris' generic product. This product was introduced on 10 June 2025 based on a marketing authorization dated 28 November 2021.
2. Viatris argues that the patent is invalid and that Merz lacks an urgent interest.
3. Merz became the patent owner on 23 August 2024 (by means of an assignment).

The Court

1. The period for calculation of unreasonable delay starts on the day on which the applicant became aware or should have become aware, of the infringement that would enable them to start PI proceedings with a reasonable prospect of success. Reference is made to case law of the Court of Appeal.
2. The Court decides that – for generic products – the starting point is the moment there is imminent infringement: the originator can obtain a PI from that moment on.
3. On 22 November 2024, Viatris' product was included in the list of reimbursable products with a price and its reimbursement rate.
4. Merz obtained after the assignment direct exploitation rights on 2 January 2025. Merz should have been aware of Viatris' imminent infringement from that moment on.
5. Merz acted with a unreasonable delay of more than 6 months.
6. Application rejected.

Comment

1. Merz and their representatives should have been more vigilant. They should have realized that urgency in the UPC is a serious requirement for PI’s (in contrast to many national systems such as France where the representatives of Merz practice). It is a serious requirement because in proceedings on the merit you can obtain a decision in 12-14 months.
2. Having said that, I think that – in this particular case – the Court has given a rather inflexible interpretation of the Court of Appeal decision. One should always consider all the circumstances of the case; these are rather special in this particular case. I mention:
   1. Merz obtained the SPC and exploitation right unusually late in January 2025;
   2. although Viatris had the possibility to come to the market as of 22 November 2024, they did not do so. This is quite unusual;
   3. Merz could therefore have been under the impression that Viatris was not interested. In particular because the SPC would expire in July 2026. Why take action under that assumption?;
   4. when Viatris entered the market 7 months after they had the possibility to enter the market Merz immediately take action;
   5. the SPC expired in July 2026. Refusing the PI meant that Merz would, in fact, get no protection until the end of the SPC;
   6. The Board of Appeal of the EPO had maintained the patent. So this was a prima facie case of infringement.
3. Conclusion:
   1. A strong warning for pharma companies and their representatives to act against a generic as soon as the generics is able to start selling their product somewhere in the UPC territory!
   2. My advise to the Local Division is to be a bit flexible, assuming the circumstances of the case and justice requires it. I think this case could have done with some more flexibility. In my view, it is not acceptable that Viatris can simply continue infringing until the end of the SPC - even if the Court may have a point in saying that Merz and their representatives could have avoided it by being more vigilant. Indeed why did Merz not write a letter to Viatris in January asking to confirm that they would not come on the market until the end of the SPC? After not having received a positive confirmation they should have filed the PI. 
      
       

25 November 2025

Court of Appeal, Meril v Edwards

UPC_CoA_464/2024, UPC_CoA_457/2024, UPC_CoA_458/2024, UPC_CoA_530/2024, UPC_CoA_532/2024, UPC_CoA_533/2024, UPC_CoA_21/2025, UPC_CoA_27/2025

Inventive step

Facts

1. Infringement proceedings were initiated on 1 June 2023 at the Local Division Munich.
2. The Central Division Paris upheld Edwards' patent with amended claims on 19 July 2024 in the (direct) revocation proceedings and the counterclaim of the Munich proceedings referred to it.  
3. The Local Division Munich found infringement and granted an injunction and other relief on 15 November 2024.
4. Merel appealed and also Edwards appealed not only of the above main decision but also of some orders during the first instance litigation.

The Court of Appeal

1. Admissibility of the direct revocation action
   Appeal of Edwards against the decision of the Central Division Paris is dismissed as the Central Division was correct to hold that the revocation was not field by the same parties. 
   Court of Appeal: “Same parties” has the same meaning as in Art. 29 Brussels Regulation: “There is not such a degree of identity between their interest that a judgment delivered against one of them [my addition: a Meril company] would have the force of res iudicata against the other [my addition: Meril company]”.
2. Further claim amendments
   “When deciding a subsequent request to amend the patent, the Court must take into consideration all relevant circumstances of the case including:
   1. the amendment could not have been made earlier with reasonable diligence;
   2. it will not unreasonably hinder the other party.”
      
      The JR has discretion: appeal rejected. 
       
3. If an earlier request for amendment has been refused, that does not mean you cannot lodge a new request.
4. Right to be heard
   The Court has to consider all arguments. However, it does not have to deal with all of the arguments explicitly in the decision. Irrelevant or superfluous arguments do not need to be addressed; arguments can also be addressed implicitly. Whatever the case may have been in first instance: the Court of Appeal did take them all in consideration.
5. Claim construction principle
   See Nanostring (UPC_CoA_335/2023).
6. Edwards' appeal against the CD’s finding that their request I contains “added matter”. The Court of Appeal applies the Gold standard (UPC_CoA_382/2024 Abbott v Sibio).
7. Appeal Meril against revocation decision
   The Court of Appeal rejects Meril’s added matter and novelty objections against the claim held valid by the CD Paris.
8. General inventive step principles quoted:
   “128.     A European patent is only validly granted for an invention if – apart from other requirements – it involves an inventive step. An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art (Art. 56 EPC).
   129.      National courts of the various EPC countries have different approaches and use different guidelines when assessing whether an invention involves an inventive step. One of those approaches is the so-called ‘problem-solution-approach’ used by the European Patent Office (EPO) and the Technical Boards of Appeal (TBA) of the EPO. In some jurisdictions, such as France, Italy, The Netherlands and Sweden, this approach is applied as well, but not necessarily as the only possible approach. In other jurisdictions, such as Germany and the UK, other approaches – sometimes referred to as more ‘holistic’ – are used. Despite the differences in approach, all of these are merely guidelines to assist in the establishment of inventive step as required by Art. 56 EPC, that, when properly applied, should and generally do lead to the same conclusion.
   130.      The burden and presentation of proof with regard to the facts from which the lack of validity of the patent is derived and other circumstances favourable to the invalidity or revocation lies with the claimant in a revocation action (Art. 54 and 65(1) UPCA, R. 44(e)-(g), 25.1(b)-(d) RoP). Even though proof of certain facts, if contested, may be required, the assessment of the relevant facts and circumstances is a question of law.
   131.      The approach taken by the Unified Patent Court when establishing inventive step, which can already be derived from the Order of the Court of Appeal in the Nanostring v 10X Genomics case (UPC_CoA_335/2023, Order of 26 February 2024), is as follows.
   132.      It first has to be established what the object of the invention is, i.e. the objective problem. This must be assessed from the perspective of the person skilled in the art, with their common general knowledge, as at the application or priority date (also referred to as the effective date) of the patent. This must be done by establishing what the invention adds to the state of the art, not by looking at the individual features of the claim, but by comparing the claim as a whole in the context of the specification and the drawings, thus also considering the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) that the person skilled in the art, on the basis of the application, understands is (are) achieved with the claimed invention.
   133.      In order to avoid hindsight, the objective problem should not contain pointers to the claimed solution. The claimed solution is obvious when at the effective date the person skilled in the art, starting from a realistic starting point in the state of the art in the relevant field of technology and wishing to solve the objective problem, would (and not only “could”) have arrived at the claimed solution.
   134.      The relevant field of technology is the specific field relevant to the objective problem to be solved as well as any field in which the same or similar problem arises and of which the person skilled in the art of the specific field must be expected to be aware.
   135.      A starting point is realistic if the teaching thereof would have been of interest to a person skilled in the art who, at the effective date, wishes to solve the objective problem. This may for instance be the case if the relevant piece of prior art already discloses several features similar to those relevant to the invention as claimed and/or addresses the same or a similar underlying problem as that of the claimed invention. There can be more than one realistic starting point, and the claimed invention must be inventive starting from each of them. 
   136.      The person skilled in the art has no inventive skills and no imagination and requires a pointer or motivation (in German: “Anlass”) that, starting from a realistic starting point, directs them to implement a next step in the direction of the claimed invention. As a general rule, a claimed solution must be 36 considered not inventive/obvious when the person skilled in the art would take the next step, prompted by the pointer or as a matter of routine, and arrive at the claimed invention.
   139.      First, it should be noted that for an inventive step to be present, it is not necessary to show improvement of the technical teaching as defined by the patent claims over the prior art. Inventive step may also be found if the patent claims disclose a non-obvious alternative to solutions known in the prior art (cf. Case Law of the EPO Boards of Appeal, 11th ed./July 2025, I.D.4.5).
   143.      A patent proprietor may rely upon a technical effect for inventive step, if the skilled person having the common general knowledge in mind, and based on the application as originally filed, would consider said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention (cf G 2/21, mn 94).”
9. The Court discusses all Meril's obviousness arguments. The Court also discussed the expert reports submitted in appeal (leaving aside the question whether or not filing of expert reports in appeal is allowed). The Court confirms the decision of the Central Division Paris. 

10. The appeal against the infringement decision of the Local Division Düsseldorf 
    The Court of Appeal confirms the infringement finding of the Local Division Munich

    The Court states (among others):

    1. The additional function of the indicated part of the product of appellant does not rule out that it is a stent within the meaning of the patent
    2. “Even if some benefits of the invention are contravened by the shape or width of the stents” that does not mean that there is no infringement. A less than optimal implementation of the claimed system is still an embodiment of the invention.
11. Injunction and corrective measures
    Injunction is justified. The Court of Appeal only moderates the exception in the situation that the Meril product the only product is which is available for patients with large valves.
12. Interim costs
    As a general rule, interim costs can as a general rule only be claimed for up to 50% of the ceiling.

Comment

1. This is the long-awaited decision regarding the application criteria of Art. 6 EPC. It is clear the Court of Appeal did not choose the problem-solution-approach. Instead, they chose a more holistic – dare I say realistic – approach.
2. One starts out with establishing the object of the invention – in essence answering the question what the objective problem is that the invention solves. In that context. one has to answer the question what the invention adds to the state of the art, but instead of looking at each claim element separately, one assesses the whole claim in light of the description. This means that the inventive concept underlying the invention – i.e. the idea behind / the essence of the invention – is also taken into consideration.
3. The objective technical problem must be formulated without incorporating any part of the solution (no hindsight). The question is then whether, starting from a realistic starting point in the prior art (e.g., a publication), the person skilled in the art would have set out to solve the problem. That person has no inventive ability or creative imagination and will not attempt a solution without an incentive and a reasonable expectation of success, unless the step would be a matter of routine.
4. My conclusion is that approach advocated in this decision is the correct approach to Article 6. That conclusion is reinforced by the Court of Appeal decisions in the Amgen cases (which will be discussed below). I think that – in practice – this test is a more realistic approach than the one applied in some national courts; I think the non-obviousness threshold was/is too high in those national courts. Some UK decisions also seem to suffer from an Article 6 approach that is too strict; I think that is caused by experts that are clearly over-qualified. I think that when these criteria are applied as intended, the UPC will be comparable to the US with respect to its inventive step assessment.
5. Needless to say: this decision, just as Amgen v Sanofi (see below), is a must-read for all representatives.

25 November 2025

Court of Appeal, Amgen v Sanofi and Amgen v Regeneron 

UPC_CoA_528/2024; UPC_CoA_529/2024

Validity

Facts

1. At first instance, the Central Division Munich (“CD Munich”) revoked the patent for lack of inventive step in both the revocation action and the counterclaim for revocation in the infringement action. The infringement action was filed in the Local Division Munich (“LD Munich”), and LD Munich referred the counterclaim to CD Munich.
2. The Opposition Division rejected the opposition. The case is presently pending at the Technical Board of Appeal.
3. On Appeal, respondents ask for confirmation of the revocation due to lack of inventive step, extension of subject matter, or insufficiency.
4. Respondents dropped their first instance defences regarding novelty and the entitlement to priority.

The Court

1. The Court of Appeal allows new arguments in the Statement of Appeal which are comments on an expert statement that the respondent filed in its last written submission in first instance. These comments also addresses the complaints of the patentee regarding the Court of First Instance finding that there was a reasonable chance of success.
2. The Court makes a decision about the priority date (which was undisputed on appeal).
3. The Court makes a decision about the skilled person. The Court established the skilled person is a team of scientists having experience in drug discovery. It also defines the object of the invention (a therapeutically effective treatment of a prevention of diseases related to elevated serum cholesterol levels).
4. The Court then applied the Nanostring decision, interpreting the claims that are formulated in the medical use format and parties agreed that this means that the claimed product must be objectively suitable for the claimed use (and is therefore therapeutically effective).
5. Dependent claims cannot lead to (a broader) interpretation of claim 1 (in the sense that claim 1 is already fulfilled in there is a certain noticeable cholesterol lowering effect. Claim 1 should be interpreted on its own and is (based on  normal interpretation) requiring that the use is therapeutically effective.
6. Having considered all arguments (again) and rejecting them, the Court of Appeal agrees with the OD that – based on the Gold Standard – there is no extension of subject-matter.
7. With respect to sufficiency, it is not required that every conceivable application of the claim leads to the claimed result, as long as the skilled person is able to obtain suitable embodiments within the claim scope based on its disclosure. In addition, a reasonable amount of trial-and-error must be accepted when attempting to work the invention. This Court of Appeal comes to the same conclusion as the CD in this respect.
8. In a broader sense, both Court of Appeal chambers used the same inventive step assessment in the 25 November 2025 decisions (see above). The headnotes states the following:
   1. The approach taken by the Unified Patent Court when establishing inventive step is as follows.
   2. It first has to be established what the object of the invention is, i.e. the objective problem. This must be assessed from the perspective of the skilled person (m/f – hereinafter referred to as ’it’), with its common general knowledge, as at the application or priority date (also referred to as the relevant date) of the patent. This must be done by establishing what the invention adds to the state of the art, not by looking at the individual features of the claim, but by comparing the claim as a whole in context of the description and the drawings, thus also considering the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) that the skilled person on the basis of the application understands is (are) achieved with the claimed invention.
   3. In order to avoid hindsight, the objective problem should not contain pointers to the claimed solution.
   4. The claimed solution is obvious when at the relevant date the skilled person, starting from a realistic starting point in the state of the art in the relevant field of technology, wishing to solve the objective problem, would (and not only: could) have arrived at the claimed solution.
   5. The relevant field of technology is the field relevant to the objective problem to be solved as well as any field in which the same or similar problem arises and of which the person skilled in the art of the specific field must be expected to be aware.
   6. A starting point is realistic if the teaching thereof would have been of interest to a skilled person who, at the relevant date, wishes to solve the objective problem. This may for instance be the case if the relevant piece of prior art already discloses several features similar to those relevant to the invention as claimed and/or addresses the same or a similar underlying problem as that of the claimed invention. There can be more than one realistic starting point and the claimed invention must be inventive starting from each of them.
   7. The skilled person has no inventive skills and no imagination and requires a pointer or motivation that, starting from a realistic starting point, directs it to implement a next step in the direction of the claimed invention. As a general rule, a claimed solution must be considered not inventive / obvious when the skilled person would take the next step prompted by the pointer or as a matter of routine, and arrive at the claimed invention.
   8. A claimed solution is obvious if the skilled person would have taken the next step in expectation of finding an envisaged solution of his technical problem. This is generally the case when the results of the next step were clearly predictable, or where there was a reasonable expectation of success.
   9. The burden of proof that the results were clearly predictable or the skilled person would have reasonably expected success, i.e. that the solution he envisages by taking the next step would solve the objective problem, lies on the party asserting invalidity of the patent.
   10. A reasonable expectation of success implies the ability of the skilled person to predict rationally, on the basis of scientific appraisal of the known facts before a research project was started, the successful conclusion of that project within acceptable time limits.
   11. Whether there is a reasonable expectation of success depends on the circumstances of the case. The more unexplored a technical field of research, the more difficult it was to make predictions about its successful conclusion and the lower the expectation of success. Envisaged practical or technical difficulties as well as the costs involved in testing whether the desired result will be obtained when taking a next step may also withhold the skilled person from taking that step. On the other hand, the stronger a pointer towards the claimed solution, the lower the threshold for a reasonable expectation of success.
   12. When the patentee brings forward and sufficiently substantiates uncertainties and / or practical or technical difficulties, the burden of proof that these would not prevent a skilled person from having a reasonable expectation of success, falls on the party alleging obviousness.
   13. The fact that other persons or teams were working contemporaneously on the same project does not necessarily imply that there was a reasonable expectation of success. It may also indicate that it was an interesting area to explore with a mere hope to succeed.
9. The Court concludes after having applied the above criteria there was not a reasonable chance of success that an antibody would be found that would be therapeutically effective in the treatment of the diseases referred to in claim 1 or of reducing the risk associated with such diseases (see par. 139-207). 

Comment

1. The second chamber of the Court of Appeal formulates the criteria for inventive step (which are the same as the ones formulated in Meril v. Edwards, as discussed above). It is therefore clear that the appeal judges have consulted each other: this is a decision of the entire Court of Appeal!
2. Note above under point 8 sub h and m the criteria for reasonable expectation of success. There seem to me more realistic and practical (“costs”) than we see in some EPO and national decisions. The reasonable expectation of success in the context of medical use claims is very important in this case. There is, in contrast to what Central Division held, only a reasonable expectation of success if there is expectation that the use of the antibody indeed leads to a therapeutically effective treatment. The Central Division construed claim 1 differently (also by referring to the dependent claims) in the sense that a noticeable effect as to cholesterol lowering was sufficient to comply with claim 1.
3. In my opinion, this also means that the invention for a second medical use claim is only sufficiently disclosed if it becomes reasonably clear to the skilled person that the product indeed has therapeutic value in the sense that it can be used in an effective treatment (based on the evidence contained in the original application).
4. Further – as I noted earlier – the Court of Appeal applies the gold standard in a more realistic way than we have seen in some cases at EPO. This approach avoid revoking patents for valuable inventions due to a too strict and unrealistic application of such formalities. Not every “intermediate generalization” or “choice from two different lists” arguments necessarily leads to an extension of subject matter.
5. The same realistic attitude is taken towards Article 83 EPC (“insufficient disclosure”).
6. Taken together, this reflects a more holistic approach to inventive step—asking “what inventive idea underlies the invention”—rather than a purely mechanical application of the problem-solution-approach (although, when applied correctly, both often lead to the same result). This shows that the Court of Appeal recognizes that the patent system exists to stimulate innovation. Protection should not be denied by an unrealistic application of the law where such strictness is not required to safeguard third‑party legal certainty.

27 November 2025

Court of Appeal, Strabag v Swarco

UPC_CoA_70/2025, UPC_CoA_001/2025 

Withdrawal / intervener

Facts

1. Strabag filed an appeal the first instance decision.
2. Chainzone has intervened on the side of Strabag and also appealed.
3. Strabag then wants to withdraw its appeal because of a settlement with Swarco.
4. Chainzone does not want to settle.

The Court

1. An intervener to support one of the parties cannot take a different position than the party he supports.
2. If that party withdraws its appeal that automatically means that the appeal of the intervener becomes without object (R. 360RoP).
3. The intervener is in the same position as the party he supports also with respect to costs.
4. Defendant agreed with the withdrawal.

The Court granted the request and declared the case closed.

Comment

It seems logical that if you intervene to support a party you cannot start to contradict it. Can you also intervene to defend your own interests? No you cannot, see R. 313.2 RoP! This is different in many national systems. So company X intervenes to support Y in a revocation case against Z. X brings better prior art in the proceedings. The patent is revoked but on appeal Y withdraws its claim (because Y grants it a license). X has to start new revocation proceedings! So think before you intervene. Ask Chainzone!

 

27 November 2025

Court of Appeal, Sun v Vivo

UPC_ CoA_0000904/2025; UPC_CoA_0000905/2025 

Stay

Facts

1. Vivo raised a preliminary objection in first instance with respect to the fact that Sun (apart from an injunction) was seeking a determination of the term of a FRAND terms between the parties (Claim A II). According to Vivo, a license issue can only be raised as a defence. The Local Division decided to rule on this in the main case.
2. Vivo also asked in first instance for a stay of the filing of its defence as long as issue 1 was not resolved. This was denied.
3. Vivo then asked the Court of Appeal to stay the proceedings in first instance, which was refused.
4. On 13 November 2025, Vivo lodged an appeal against the orders under 1 and 2 and asked again for a stay (R. 21.2 RoP) of the first instance proceedings. 

Court of Appeal

The Court of Appeal rejected the request.

Comment

1. Vivo argued that the question if the UPC can set the conditions for a FRAND license is very controversial. The Court of Appeal ruled – rightly in my opinion – that that is not good enough to outweigh the interest of Sun for an early decision, which seems logical as Vivo continues to infringe.
2. Vivo had already twice asked for a stay. You must be an optimist to think that the third time you will succeed!

28 November 2025
Court of Appeal, Barco v Yealink

UPC_CoA_317/2025; UPC_CoA_376/2025 

Competence

Facts

1. The LD Brussels had in first instance decided that it had jurisdiction and was competent to hear the case, but that Barco had no urgent interest.
2. Both parties appealed. Barco about the urgency decision, and in cross-appeal Yealink about the decision of the LD on jurisdiction.

The Court of Appeal

The Court of Appeal dismissed both appeals.

1. In PI proceedings, R. 19 RoP is not applicable, but if the Division is not competent that Division can, if the applicant indicates another Division which is competent, refer the case to that other Division. If the applicant does not indicate another Division the application will be dismissed.
2. The Registrar in PI proceedings will inform the applicant as soon as possible that the Division does not seem competent, and the applicant can within 14 days argue that the Division is competent and, if not, ask for referral to the competent Division.
3. With respect to international jurisdiction the Brussels Regulation is applicable. Special treaties between member states and other states remain in force but member states cannot enter into new treaties. Such special treaties do not bind other member states.
4. Art. 71a of the Brussels Ibis Regulation (“BR”) clarifies that the UPC is to be seen as a court of a member state. Art. 71b BR makes clear how to deal with non-EU defendants in the UPC.
5. Art. 33 UPCA regulates the intern competence within the UPC.
6. There is no order with respect to these internal competence and no reason for a more limited interpretation of Art. 33 (1)(a) UPCA and a preference for Art. 33 (1)(b) UPCA competence.
7. With respect to competence under Art. 33(1)(a) the Court will only look globally if there are acts of infringement.
8. The decision about lack of urgency is correct. In essence: starting 2,5 months from the date that you could have started action is too long.
9. An interim order of costs may also be ordered for the defendant.
10. Normally a party should as interim costs not receive more than half of the cost ceiling except if there has been a discussion of costs during the hearing or there is an agreement on costs.

Comment

1. The Court of Appeal gives a very clear signal: urgency for PI measures should be taken seriously. The moment you can act (you know or should know about the infringement) you should act within (I suggest if you do not want to take risks) within 6-8 weeks!
2. This is not only a strong signal to patent attorneys who take a long time to ask for Unitary Effect or arrange for validation and to representatives who do not act as fast as possible but especially to users of the system. Very often they are not realizing that they cannot spend a lot of time via the different management layers to make the decision to do something about the infringement. If thereafter they are going to look around for a representative, do all kinds of beauty contests, etc., then it may be too late to do something about the infringement in an effective way. So, general counsels, heads of IP, make sure to have a ready-to-use protocol that enables quick decision-making!
3. Many will get a headache if they have to read all the (wise) considerations about jurisdiction and competence. Let us try to keep it simple:
   1. first question: does the UPC have international jurisdiction? Look in the Brussels Ibis Regulation.
   2. second question: which Division is then competent to hear the case? Look in Art. 33 UPCA.
4. What a mess, these Rules about costs. That should be changed. If you win a PI case as a defendant, there is often no main case, but in order to get your full costs you have to go through cost proceedings! The Court of Appeal provides two ways out of this mess:

   1. What I have advocated many times: parties could agree on costs. 
      Advantages:

      1. you know the exposure;
      2. you do not have to go through cost proceedings (which is not considered by normal representatives as a favored job);
      3. you save your client money;
      4. you make the Court happy.

      Costs are discussed during the hearing. I propose the JR tells both parties to send their cost statement one week before the hearing, also to the other side, and an update the day before the hearing (the expected hours to be spent thereafter can be mentioned). Both parties get 5 minutes during the oral hearing to comment. The Court “forces” an agreement or awards as an intermediate cost decision 95%.

       

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

For all decisions of the UPC’s Court of Appeal from the start in 2023 until 1 January 2025, Willem Hoyng’s more comprehensive summaries and comments are bundled in the book “Case law – Court of Appeal of the UPC 2023-2024”.