Below, 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.
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5 May 2025
Court of Appeal, Meril v SWAT
Public access
Facts
- In this case, there are two respondents: a private person (who is also a representative) and SWAT, in which the private person has invested and of which he is a board member.
- Both respondents asked for access to documents in the case between Edwards and Meril. Respondent 1 asked this as representative for himself and respondent 2.
- Both Meril and Edwards objected. The Central Division in Paris granted access as the proceedings had come to an end.
- Meril appealed and asked for the order to be set aside.
- The Judge-Rapporteur (“JR”) invited the parties to comment on the question of representation.
- The Court of Appeal issued an order on 13 February 2025 that also representatives of the UPC, if they are a party in UPC proceedings, need a representative (because of public policy/due process considerations). This was also the case for SWAT, in which respondent 1 had a high management position. The Court of Appeal gave respondents two weeks to appoint an authorized representative. The Court of Appeal warned that if no authorized representative would lodge the response for the two respondents within these two weeks, the Court of Appeal may draw negative consequences and give a reasoned decision (R. 235.3 RoP).
Decision of the Court of Appeal
- The question is: did an authorized representative lodge the Statement of Response? If not, then R. 235.3 RoP is applicable and triggers a decision by default (R. 357 RoP).
- Respondents lodged an application to change representative, but that was impossible because respondents had no authorized representative!
- Moreover, the person who was named as replacement did not make any appearance or claim to be the representative for respondents and did not sign the Statement of Response before the deadline.
- The legislative history shows that R. 235.3 RoP is a lex specialis (special rule) of R. 356/357 RoP (the decision by default) and means that the Court can make that default decision on its own motion without the application by a party as required by R. 355 RoP.
- The Court of Appeal rules that a default judgment is justified as respondents were warned and given a chance to rectify.
- The Court concludes that compensation of costs should not be awarded in relation to an application for access to the public register (R. 262 RoP).
Decision
- Order of Paris Central Division is set aside.
- The request for access is refused.
- The request for costs by Meril is refused.
Comment
- The Court of Appeal had already decided that a representative cannot represent himself, and the same is true for a representative who works for a company in a higher management position. (Order of 12 February 2025, UPC_CoA_635/2024 Meril v SWAT, see Unfiltered week 7.)
- Although the Court of Appeal offered respondents the possibility to appoint an independent (thus authorized) representative, respondent sub 1 started to play a bit of games with the Court of Appeal, such as filing for a replacement of representative (in fact implying that he had been his own authorized representative) and just using the name of a representative of the same firm who did not even sign the Statement of Response. You even wonder whether respondent sub 1 informed his colleague, whose name he was using as representative.
- The Court of Appeal states that if somebody does not file a Statement of Response, R. 235.3 RoP states that the Court may give a reasoned decision and that that is a lex specialis of the default judgment provisions.
- I wonder if that also necessitates always applying the Rules for a default decision. If it is a lex specialis, why can the Court (in this special case) not simply set aside the decision in first instance and rule that the application is inadmissible?
- If I understand the decision correctly, the respondents can now still file an application to set aside the decision by default (R. 356 RoP).
- The Court rules (giving a convincing reasoning) that respondents 1 and 2 do not have to pay costs because this is a public request for information from the register. I have already said earlier that it would be contrary to the whole concept of public access if parties would be able to cause the payment of costs by successfully fighting the access. That would have a chilling effect, e.g., on researchers seeking access. Moreover, as the Court of Appeal remarks, parties can indicate already before requests are made which information has to remain confidential (R. 262.2 RoP). However, is this not in the first place a case of a procedural question of admissibility, and if you look at it that way, why could you not rule that the respondents are the losing party and have to pay costs?
- I have no admiration for the behavior of this patent attorney/representative. His reaction to the possibility which the Court gave him is not what you may expect of a representative (see the Code of Conduct for representatives Art. 2.1 and Art. 2.4.1). Now he gets away with the possibility to annoy the Court further by filing an application to set aside the default judgment and does not have to pay any costs. For me, not a very satisfactory result.
6 May 2025
Local Division Düsseldorf, Ona v Apple
Confidentiality Information
The Order of the JR
The order in this case follows the earlier Confidentiality Order for the same reason. The information in the Rejoinder with respect to the functionality of Apple products is classified as confidential under R. 262.2 RoP.
The information can only be used in these proceedings and only seen by the three named representatives and their team and the CEO of the claimant.
Comment
- The reference to R. 262.2 RoP means that this information will not be disclosed when a member of the public asks for access to the file. This is the right way a confidentiality order should be asked and granted.
Note: a member of the public can, when asking for access to pleadings and evidence, always challenge the confidentiality (see R. 262.3 RoP). - The JR states that the representatives are liable for a culpable breach by their staff, and the Court can then impose a penalty payment. As said before, the penalty payment is, in my opinion, separate from the civil liability of the representative and their firm for the damages caused by a breach, also by a breach of their staff.
7 May 2025
Local Division Milan, Ericsson v Asustek
Withdrawal
Background
Ericsson filed infringement proceedings against three defendants.
Asustek c.s. answered and counterclaimed for invalidity.
One of the three defendants, Digital River, went bankrupt.
Ericsson filed a motion of withdrawal with respect to Digital River and stated that it would not be fair (as it did not lose) to have to bear costs of the (bankrupt) defendant. Digital River agreed to the withdrawal but, stating it was successful (the winning party), it claimed € 5,500 costs. It also filed an application for the withdrawal of its counterclaim, claiming that Ericsson had not incurred costs in defending the counterclaim because it had to defend the counterclaim anyway because of the two other defendants. Ericsson agreed with the withdrawal but asked for € 5,500 costs.
The Court (full panel)
No costs awarded
1. The withdrawal of Ericsson was caused by the insolvency of Digital River. Not fair to have Ericsson pay costs.
2. Ericsson did not pay extra costs to defend the counterclaim, which it had to defend against the other defendants anyway.
Comment
If you read this, you wonder why two sensible representatives cannot come to the same conclusion and save costs for their clients and time for the Court.
8 May 2025
Local Division Munich, Sanofi v Accord, Stada, Reddy and Zention
UPC_CFI_145/2024; 146/2024; 147/2024; 148/2024; 463/2024; 496/2024; 374/2024; 503/2024
Preliminary interim conferences
Background
- In a “Preliminary Interim Conference” of 15 January, the JR tried to get some order and clarity in this complicated infringement case by making suggestions to the parties, such as to agree on costs, to try to settle the case by using PMAC (which by the way is not yet in operation), and not to file numerous briefs for all the different claimants and defendants. One does not get the impression that these suggestions led to something. The different teams of representatives have still not formed a common defence team.
- The JR also mentioned numerous deficiencies (unclarities) in the Statement of Claim (of which defendants basically argued that this should lead to a dismissal).
- The JR ordered claimants (the Sanofi companies) to rectify the deficiencies within 7 days and defendants to answer to the rectification within a further 14 days.
- On 27 February 2025, the JR gave some further guidance and ordered a further round of comments because Sanofi “did not quite manage to remedy the deficiencies and some defendants amended the respective pleadings”.
- The present order of the JR is the reaction of the JR to these further briefs and to further issues.
- As to the facts the following:
a. The patent in issue was invalidated in France in first instance. An appeal was pending of which the result was not expected before 2026/2027.
b. The Board of Appeal had rescheduled the hearing in opposition proceedings from October to June 2025.
Order of the JR
- All requests and preliminary objections are referred to the panel, which will decide after the oral hearing.
- The JR observes: The CoA has already ruled that a carve-out of certain Contracting Member States (CMS) is possible; that the UPC has jurisdiction with respect to infringements committed before 1-6-2023; and that infringement in one state of the UPC is sufficient to claim infringement for all UPC states (where the patent is in force).
- Whether the French patent during the appeal is valid or not will be decided after the oral hearing.
- The French decision raises sufficient doubts about the validity that it is economical to await the decision of the Board of Appeal.
- Claimants have still not submitted a set of claims and requests which do not raise any doubt.
- Claimants have to explain clearly and unambiguously what the claimant wants from whom and why.
- A correct understanding of the content and the scope of the Statement of Claim is essential for the defendants to be able to defend themselves properly and for the decision on costs.
- If ambiguousness persists, it is up to the Court to give an interpretation to what is claimed with a generous view.
- Adding an auxiliary request for indirect infringement or changing a claim for damages into a claim for an interim award for damages is not an amendment of claim (R. 263 RoP). That is, e.g., adding a patent or a different infringing product to the claim.
Order
The JR sets further dates for reply and rejoinder and two further interim conferences (one to discuss the outcome of the Board of Appeal proceedings) and a date for the oral hearing.
Comment
- The JR in this case gives a perfect example of the role of the JR: a hands-on approach in an effort to streamline complicated proceedings by even having what he calls preliminary interim conferences during the written proceedings.
- The practical approach in these proceedings is indeed to have the oral hearing scheduled after the decision of the Board of Appeal (certainly in view of the fact that the French Court already invalidated the patent) and to postpone certain procedural decisions until that oral hearing.
- The JR criticizes the conduct of the representative of Sanofi, who made the case unduly complicated. He has according to the JR not been able (in three efforts) to formulate what Sanofi exactly wants.
- The JR announces that probably this will have consequences for Sanofi in the cost decision. However, the JR, in my view, is extremely lenient towards Sanofi, the patentee, by stating after the third failed effort to get clear claims on the table that the Court will now interpret what Sanofi wants and will do that in a generous way.
- Although I am strongly in favour of an attitude by a Court to not let procedural issues get in the way of doing justice (in the sense that if there is an infringement of a valid patent, the exclusive right should be protected), in this case, I would probably give (see R. 16.5 RoP) a decision by default R. 355 RoP.
- I say this first of all because the UPC has front-loaded proceedings. The way Sanofi has proceeded has, in my opinion, nothing to do with front-loaded proceedings.
- The JR rightly cites the interest of the defendant to know against what he has to defend himself and therefore gives the defendant an extra two months for his reply to respond to the last effort of Sanofi. However, this deprives the defendant of one round of written submissions, and second, it still requires him to answer a statement by Sanofi which (also according to the JR) contains ambiguities.
- I do not agree with the JR that adding an auxiliary claim for indirect infringement is not an amendment of claim. In principle, such a claim should be in the Statement of Claim, and if not, then a defendant should have the right to argue that the claim could have been made earlier or that it hinders him in the conduct of his action (R. 263.2 RoP). I do not think that the quoted cases of the Court of Appeal go as far as the JR interprets them as I think that a claim for indirect infringement (instead of direct infringement) changes the scope of the dispute. At least the claimants should have argued that unexpected defense arguments triggered the necessity of adding an auxiliary claim for indirect infringement.
8 May 2025
Local Division Lisbon, Boehringer v Zentiva
Imminent danger of infringement
Facts
- Boehringer started PI proceedings on 23 January 2025 against Zentiva (a Portuguese entity), arguing that there is an imminent danger of infringement.
- On 25 March 2025, the Portuguese Intellectual Property Court issued a PI.
- Opposition in the EPO was dismissed, and no appeal was lodged.
Decision
- The Court rejects the defence that the threat of infringement was caused by the Administration in Portugal issuing a notice and that therefore only the Portuguese Administrative Court is competent.
- The Court also rejects the defence that there is no need for a PI because there was already a PI in place in Portugal.
- The Court, however, holds that going through a PEP (a Prior Evaluation Procedure), which enables a generic to (also) offer to public hospitals, is not a threat of imminent infringement and dismisses the request for a PI.
Comment
- The Court decides to follow the Local Division Düsseldorf (6 September 2024 UPC_CFI_166/2024): “Did the potential infringer carry out acts that make it more likely than not that it intends to offer or place the product on the market.”
In general, it is a common understanding in Europe that obtaining a marketing authorisation as such is not enough but that, for instance, having the product listed for price reimbursement is sufficient to establish the threat of infringement. - It is quite clear that in this case, the defendant did more than just obtaining a marketing authorisation. It obtained a PEP, which was the final administrative step to offer and sell its product to public hospitals (hospitals in this case being the only place where the product is used).
- The Court basically puts a PEP on the same level as a marketing authorisation. Both are administrative actions to be able to sell the product. I tend to disagree, as in my view, obtaining a PEP is better compared to a listing for price reimbursement; also, the latter does not mean that the product will actually be sold, but it signals to the market that it is available. The PEP signals in fact the same to public hospitals.
8 May 2025
Court of Appeal, Hybridgenerator v HGSystem
Change of language in appeal
Background
The Local Division of Copenhagen decided not to order HGSystem to pay penalties to the Court for failure to comply with an order of 4 September 2024. Hybridgenerator appealed.
Both parties are Danish, and Danish is the language of proceedings. The JR suggests changing the language of the proceedings to English.
Order of the Court of Appeal
- Hybridgenerator agrees and stated that it will translate the Statement of Appeal under the condition that the costs of translation are borne by the losing party.
- HGSystem did not object under the condition that the Court of Appeal bears the expenses of translation.
- Court of Appeal orders change of language to English (the language of the patent).
Comment
- This makes sense (certainly as all Danes speak English, and anyway, if a representative wants to be able to work in the UPC, he or she should make sure that he/she understands and speaks good English). The Court states that it will take care of the translations of the documents itself and suggested that (in view of the simplicity of the case) an oral hearing was not necessary, which solves the cost issue in a practical way.
- The Court refers to Art. 49.4 UPCA, but that is applicable for the Court of First Instance. Art. 50 UPCA is for the Court of Appeal, but the provision is the same (Art. 50.2), but it also gives the Court of Appeal in exceptional cases the possibility to change the language to another language of a Contracting Member State without the consent of the parties. The last words are politically correct language, but in practice, this means of course English. That means that in fact, the Court of Appeal can deal with any case in English (even if the patent is not granted in English) as long as the case is “exceptional”.
- Nevertheless, as patents are granted in French, German, and English (and those are also the languages of the Central Division), the linguistic capabilities of the Court of Appeal are such and should be such that it can handle cases in all three languages in which EPs are granted.
8 May 2025
Local Division Düsseldorf, Grundfos v Hefei
Filewrapper estoppel / late invalidity arguments
Background
Infringement and counterclaim for invalidity with respect to a patent EP 2 778 423 concerning a “Heizungsumwälzpumpenaggregat,” which at least wins the prize for, until now, the longest word in UPC history. English translation “heating circulation pump unit”.
Decision
- The Court is competent to hear both infringement and revocation actions.
- The Court formulates the problem for which the patent gives a solution and interprets the patent claim in accordance with the principles laid down in Nanostring (UPC_CoA_335/2023; Hoyng, Case Law Court of Appeal 2023/2024, p. 21, 22).
- The Court does not make a decision about a file wrapper estoppel argument as the Court is of the opinion that that argument is not material for the interpretation which the Court gives to the claim, basically arguing that a limitation of the claim language does not mean that the claim is limited to the wording of that limitation.
- The Court finds infringement.
- The clarity of the claim (Art. 84) is not a ground for invalidity.
- The invention is new.
- The new arguments filed after the Defence to the Counterclaim are an amendment of claim (R. 263 RoP). The Court does not accept the new arguments, referring to the front-loaded character and the fact that the patentee has only one month to react to the reply containing the new arguments.
- With respect to inventive step, the Court also followed the teaching of Nanostring, stressing the necessity of a realistic starting point (which is not necessarily the closest prior art), the difficulty which the skilled person has to overcome to make the step which leads to the invention, advantages reached by the invention over the state of the art (different from choosing arbitrarily another possibility from different possibilities), and the avoidance of hindsight. All 5 argued combinations do not lead to lack of inventive step.
- The decision (that the invention does not involve an inventive step) of the Chinese Patent Office is based on a combination of D5 and D7 which has not been timely put forward by the defendant.
- Even if a Formstein defence could be raised in infringement proceedings and in a case of literal infringement, then this defence is rejected as the product to which the defendant refers is not the same as the infringing pump.
- The Court grants the injunction and other relief sought (but does not order destruction as the taking back of infringing products seems sufficient).
Comment
- A classic infringement case which does not raise questions about the application of the law (except for what I say hereafter).
- The Court applies the front-loaded character rather strictly, and this is a lesson for defendants that you should do everything to get your full invalidity case together in the Counterclaim for Revocation. So if you fear to infringe, do not wait until you are sued but start to work on it immediately and be complete. In this case, it remains unclear what would have happened if the defendant would have argued invalidity on the basis of the combination of D5 and D7. Although the Court is certainly not obliged to do so, it would have been good if in an obiter dictum it would have said that also the combination of D5 and D7 would not have led to invalidity, but maybe the Court agreed with the Chinese patent office!
- At least if you are late with an argument, follow the route of the amendment of claim and give a good explanation why it is not reasonable to rule that you could have raised it earlier. Try also to give arguments why your counterpart does not suffer any disadvantage. Send him the new arguments as soon as you know you are going to raise them in your reply and tell the Court that you have no objection if your counterpart gets a one-month extension for his rejoinder such that he also has two months. Who knows, if the defendant had followed such a course, he could have had the combination of D5 and D7 admitted into the procedure.
- The question of the allowance of a file wrapper estoppel argument remains in the air. As I have said before, angora cats should not exist. If for reasons of novelty or inventive step an applicant limits the claim, then he cannot claim this back in infringement proceedings. However, this is different for limitations for formality reasons; then nothing prevents the patentee from arguing that what he has given up still falls under the limited claim under the doctrine of equivalence. Also, a limitation because of material patentability reasons (novelty, inventive step) does not automatically mean that you are bound to the letter of your restriction. What matters is that you should not claim back what you had to give up to be inventive.
- I can illustrate this with my sock example. The problem is that after having washed socks a couple of times, you cannot find back the pair of socks. The solution is to put them in the washing machine attached to each other. You have two examples in the description of your application. In one, you use a clothespin (pince à linge; Wäscheklammer) to connect the socks. In the other one, you provide the sock with a press stud (bouton-pression, Drückknopf) to connect them. The examiner finds an article in which the use of a clothespin is shown. You restrict the claim to the connection of the socks with a press stud. Can you now argue that also socks which are provided with Velcro are covered because of the doctrine of equivalence? I think that you are not barred by file wrapper estoppel to do so. Indeed, the way I read the decision, the Court in fact comes to the same conclusion.
8 May 2025
Local Division Mannheim, Polidoro v Bekaert
Extension of period
Background
The Statement of Defence, not including a counterclaim for revocation, was filed on 10 March 2025 with access to the redacted version only. The unredacted version was accessible for the claimant (after a confidentiality order was given) on 19 March 2025. The Counterclaim for Revocation was served in a separate brief on 18 March 2025.
Claimant asked for an extension for the reply brief for one week, with the result that the reply brief, the defence to the counterclaim for revocation, and a possible request for amendment of the claims of the patent could all be filed on 19 May at the latest.
Decision of the JR
Request granted.
Comment
I think it should be standard (without having to lodge a request) that the period for an answer/reply, rejoinder, etc., would only start to run after a party (or the representatives and the person of the party who gets access to the confidential information) has had access to the unredacted version. It would be good if the Court of Appeal would issue such a ruling.
8 May 2025
Local Division Brussels, Yealink v Barco
Rectification of order
- Final order of 21 March 2025: the Court ordered Barco to bear reasonable and proportionate legal costs and other expenses incurred in these proceedings up to the applicable ceiling in an amount of € 112,000 as an interim award of costs.
- Was this now an order to pay these costs now, or must the costs and expenses be established in cost proceedings? This was as such not very clear, also because such applicable ceiling is only applicable with respect to the costs of the representation, not to expenses. “Up to an amount of € 112,000” suggests (when read in isolation) that it can also be less.
- The Court, probably realizing that it was not very clear (and realizing that this was not “a clerical error” which could be corrected under R. 353 RoP), provided a (convincing) explanation by reference to the statements of the parties and the decision itself, also in a way putting the blame for the misunderstanding on the representatives in that you always have to read an order in the context of the proceedings.
- Result: Barco has to pay € 112,000 (and if Yealink would also like to get the expenses – which they failed to claim in the proceedings – they should get these via cost proceedings).
Comment
The message “read decisions in their context” should be known by all representatives and this request to the Court should not have been necessary.
9 May 2025
Local Division Mannheim, Samsung v ZTE
Harmonisation of time period
Facts
Three defendants are served in infringement proceedings on three different dates.
Parties agreed that with respect to defendant 1, the term for answer will be extended, and for defendants 2 and 3, shortened, such that for all defendants, the date for filing their answer and possible counterclaim is the same.
JR
The JR agrees and orders the same.
Comment
An example of reasonable representatives who, by giving and taking, arrive at streamlining the proceedings, which is in the interest of all concerned. This should become standard practice in cases with multiple defendants.
9 May 2025
Local Division Milan, Oerlikon v Bhagat
Cost proceedings
Background
On 4 November 2024, the Milan Division found infringement by Bhagat and, among others, ordered Bhagat to pay 80 percent of the costs.
Oerlikon started cost proceedings and claimed € 120,425.28 costs for the representation. Bhagat disputed the reasonableness and proportionality and proposed half of these costs.
The JR
The JR stated that this was a rather simple case as Bhagat did not raise invalidity and did not contest the infringement, and held that € 80,000 for the costs of representation was reasonable and proportionate, and on that basis ordered Bhagat to pay (after adding the expenses and deducting 20 percent) € 77,064.85 within a month.
Comment
1. Why are the representatives of the parties not mentioned in the decision?
2. As in every Milan decision, the JR cites all the applicable provisions and case law, which is certainly for law students and further non-experts an excellent service (for law students: all these provisions and case law are based on the Enforcement Directive Art. 14 (Directive 2004/48/EC)).
3. The decision is based on what the JR considers reasonable and proportionate. However, in my opinion, this raises some questions. The UPC itself has introduced ceilings for recoverable costs in relation to the value of the case. The latter is an indication of the importance of the case, and the ceiling is based on what is reasonable and proportionate to spend on a case of such importance. I disagree with the JR that the ceiling is only for complicated cases with more patents.
4. In my opinion, this decision makes it even more difficult to get parties to agree on costs before the oral hearing (which would save clients money and the courts precious time). It is also going to trigger in each cost proceeding the argument of reasonableness and proportionality.
5. Now, do not get me wrong. There may be exceptional situations in which even the cost ceiling is not proportionate or reasonable, and this may very well be such a case, as Bhagat in fact immediately surrendered and was seeking a settlement (encouraged by the Court), but Oerlikon apparently wanted a full victory and all its costs, which in light of the case seemed to the Court apparently excessively high. However, the normal rule, in my opinion, should be that in a normal case (also with only one patent at stake) you are entitled to the cost ceiling if you show that your costs for representation are at or over that level.
– 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”.