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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8 September 2025
Local Division Paris, KEEEX v ADOBE
Extension of time limit
Facts
This case has been filed against numerous (groups of) defendants allegedly applying a method patent (verifying the integrity of block data) in the field of AI, among which Irish and US defendants.
The defendants were served at different dates, or service was not possible because the company had moved.
The defendants asked for an extension of the time limit for their preliminary objection (“PO”) and Statement of Defence (“Defence”) of three months because of the length of the Statement of Claim (150 pages) and the numerous exhibits filed in the CMS system in a disorderly fashion.
They also argued that the Statement of Claim was unclear as to what was claimed against each defendant and cited the stakes of the case with more than 6 billion euros requested as damages.
The JR
The JR decided to align the time periods for filing a PO and the Defence, taking as a starting date the date of the latest service (4 September 2025) and granted a further extension of 4 weeks.
Comment
- The case was filed by a small French company (although the invention was made by a University) in French. However, the defendants cannot unilaterally ask for a change to English because the patent has been granted in French.
- The decision of the JR is the right one. Aligning the dates is desirable and in this exceptional case, where the English-speaking defendants are confronted with an unclear 150-pages Statement of Claim with numerous disorderly-filed exhibits and a huge damage claim, an extra month appears reasonable and fair. It also does not mean that the case cannot be decided within 14 months.
8 September 2025
Munich Central Division, TCL v Corning
Extension of time limit
Facts
In this revocation action, the claimant wanted a two-week extension for its Reply and its Defence to the application to amend the patent, and submitted all kinds of reasons for this request.
The JR
The JR refuses the extension with a solid motivation.
Comment
- Again we see representatives who do not understand that the periods mentioned in the Rules of Procedure are to be taken seriously and only in extraordinary (verifiable) circumstances will the Court grant an extension.
- The JR in this case has been a practicing lawyer for many years before becoming a judge and is not impressed by the (non-verifiable) arguments of the representatives. Every practicing lawyer knows that if something takes two months and two weeks you can certainly have it done in two months!
8 September 2025
Central Division Paris, Microsoft v Suinno
Confidentiality of lawyers’ invoices
Facts
Microsoft requested in cost proceedings that the exhibit containing the invoices of their law firm including the hours worked on the case would be treated as strictly confidential.
The Court
Cites the case law of the EU: three conditions for protection have to be fulfilled:
a) the information is only known to a limited number of people;
b) its disclosure is likely to cause serious harm to the person who provided it or to third parties;
c) the interests likely to be harmed by disclosure are objectively worthy of protection.
The Court considers that the invoices of lawyers qualify as confidential information and are also covered by the attorney-client privilege of R. 287 RoP.
Comment
- If I lose a case and I have to pay the legal costs claimed by the winner, why are these legal costs and the hours worked on the case confidential information? Can it be because it tells you something about the financial situation of the company which hired the lawyers? That is hardly convincing, as financial information is readily available. Even my own retirement BV has to publish financial data. Can it be because it reveals how important the patent is? I have hardly ever heard a client say: “Mr. Hoyng we want to start a lawsuit but the patent is not that important so please do not spend much time on it”. I have also never heard clients say: “This is an important patent so please charge higher rates and spend as much time as you like on it”. It is all very unrealistic.
On the contrary, what matters is transparency in terms of: how can you get (realistic) information on what the costs of defending a UPC case with a given law firm are; how efficient is it; do you see a high number of hours of unexperienced associates which in fact are learning while you pay for it; how is its service, etc. The best information does not come from legal guides or rankings, but from other companies who have had experience with a given law firm in UPC proceedings.
In this case I understand that neither the winner (because it himself claims confidentiality) nor the loser can disclose the information and nothing will be publicly available.
Lastly, the number of hours billed by a law firm and its invoices fall, according to this JR, under attorney-client privilege. I do not understand why. Does it mean that I, as an attorney, cannot disclose to a third party what was charged in a case and how many hours were worked on a case?
Has the UPC been created for the lawyers or for the potential users? One of the most important things for a user is finding a good representative and knowing what they can expect in terms of costs and what amount is reasonable. Again I think that if parties are willing to litigate about costs, then one of the consequences is that this normally should be accessible to the public. This is normally not likely to cause serious harm. - The Court is not willing to fix a penalty sum in case of non-compliance with the order so as to be able to assess the circumstances of the non-compliance. That seems to make sense but it means that in order to determine the penalty payments due you will have to go through extra proceedings. I do not see why the amount cannot be fixed right away especially because the defendant can always argue that what the claimant proposed as penalty is excessive. Of course, in order not to reach unreasonable sums, the Court can and should set a maximum which can be forfeited.
8 September 2025
Local Division Hamburg, Fraunhofer v HMD
Change of language
Facts
The case is filed in German. The defendant is a Finnish company which asks for a change of language to the language of the patent, i.e. to English.
The defendant points to the fact that most evidence submitted by the claimant is in English. The defendant is a non-German company which communicates with its representatives in English. Having to defend itself in German would take far more efforts and time. The defendant further pointed out that the German claimant is an internationally operating party which, before the litigation started, communicated with defendant in English.
The President of the Court in First Instance
Allows the request and orders the change of language.
Comment
- Knowing the case law of the Court of Appeal, the claimant should have known that filing in German did not make much sense, as a successful request for a change of language could be expected.
- In general, it would be better for the UPC if cases are litigated in English. It is the language which (almost) all users of the system understand and all judges master, and which can be used in all Local Divisions. The only exception which should be accepted is when both claimant and defendant are local companies, or in the very rare case that the defendant is a local company operating only locally.
- I note that the request for a change of language was only made two months after the Statement of Claim was filed. That is unnecessarily late, and if the Rules are revised it would be wise to stipulate that such request has to be made within a month. The two months are in strong contrast with the one month it took the President to take a decision (while, during that month, giving claimant 10 days to respond and consulting the Hamburg panel).
- It is known that for the overloaded German Divisions it would save time to do the cases in German but that cannot be a reason to file in German. This case is a perfect example. Why was this case not filed in the far less busy Division in Helsinki?
9 September 2025
Local Division Milan, Oerlikon v Himson
Settlement
Facts
After the oral proceedings, the parties settled the case and agreed that they both bear their own costs. They asked the Court to confirm the settlement (R. 365 RoP).
The Court
The Court rules accordingly, although I did not see a clear confirmation of the settlement in the decision which is required for applicability of R. 365 RoP (but this may be caused by an insufficient knowledge of Italian). The decision only provides that “this decision shall be recorded in the register by the Registry”.
Comment
- This case started on 12 July 2023. The oral hearing took place on 11 June 2025. Even accepting that service took place on 20 September 2023, then the oral hearing took place almost two years later. I have not seen any special reason why this took so long. The Local Division in Milan, which is certainly not overburdened with cases, thus did not have an oral hearing within 12 months after the start of the proceedings, which is not in line with the Rules of Procedure (see the Preamble) as this is one of the principles on which the UPC is founded. This is regrettable and does not aid to a better spread of cases over the different Divisions. All Divisions should do everything to keep this promise to the users: an oral hearing within 12 months and high-quality decisions 6 weeks later.
- The Court decided correctly: no return of fees when settlement occurs after the hearing (and I would add the same should apply for settlement just before the hearing).
9 September 2025
Local Division Düsseldorf, Ona v Google
(corrected and amended on 10 September 2025 – see below)
UPC_CFI_411/2024
Confidentiality order
Facts
Ona asked for a confidentiality order with respect to, inter alia, agreements with third parties containing confidentiality clauses. It also wants to prevent use of the confidential information from being used in parallel proceedings in Munich.
The JR
The JR grants the request.
Comment
- The JR does not allow the defendant (Google) to use the confidential information in parallel proceedings between the same parties regarding another patent, even though this information, according to Google, is relevant for the standing to sue.
- How is this going to work in practice? Google’s representative and two Google employees now know that Ona has documents containing relevant information for their case. They cannot produce these documents nor use this information. Can they ask the Munich Court to order Ona to produce the documents which are relevant with respect to the standing to sue?
- Assuming the answer is negative because “confidentiality” not only relates to the content of the information but also its existence (which I think would be the correct view), then it would not be acceptable in my opinion that Google loses the proceedings in Munich because it cannot use confidential information which it knows does exist.
- On the other hand, lawyers know that there are two kinds of truth: the formal truth and the material truth. The Rules of Procedure were created to try to make sure that decisions are based on the material truth.
10 September 2025
Local Division Düsseldorf, Ona v Google
UPC_CFI_100/2024; UPC_CFI_411/2024
Corrections of 9 September order
Facts
See hereabove with respect to the 9 September order.
The JR
For clarity, the Court’s order of 9 September 2025 should include an explicit statement that the information provided by claimant for which is asked protection is confidential.
The JR orders accordingly.
Comment
- Although I think the decision of 9 September 2025 was clear for (good faith) readers, the JR is applauded by not saying that but just make the correction avoiding each possible discussion.
- I wonder how the JR found out that there was something missing. Did he himself or the Registrar noted it, or was it one of the parties who spotted it. As to the latter, the decision does not mention any application.
- Although absolutely nothing indicates this happened here, I remind representatives that under the Code of Conduct (Art. 2.3), a representative cannot contact the judge unilaterally (e.g. by phone). I understand that certain German representatives, who as I understand can do so in their national system, have now taken the habit of contacting the (Local)(sub) Registrar for conveying messages to the JR or asking the judge to give him a call. In my view, this also goes against Art. 2.3 of the Code of Conduct.
11 September 2025
Local Division Düsseldorf, Ona v Apple
UPC_CFI_99/2024; UPC_CFI_392/2024
Reimbursement of court fees
Release of security
Facts
Ona filed an infringement action.
Apple filed its Statement of defence and counterclaim for revocation.
The Court ordered Ona to put up a security of € 500,000.
On 1 September 2025, Ona withdrew its claim, to which Apple agreed.
The withdrawal was accepted by the Court before the closure of the written procedure.
The Court
- Ordered a refund of 40% having regard to the amount of work done by the JR. The parties are only entitled to a 60% return of court fees if the Court is satisfied that this is appropriate.
- Ordered the security to be released.
Comment
A perfectly reasonable decision in view of all the work the JR had done. I have already advocated to abolish the reimbursement of court fees. Parties know when they embark on litigation what the fees are. The result of litigation can be a decision or a settlement (very often induced by litigation). There is no reason to reimburse the fees (which in general are only a fraction of the total costs). If a claimant does not want to pay any fees, they can decide not to embark on litigation. As the counterclaim for revocation is a (rather modest) fixed fee, there is no pressing reason to return the fee. The reimbursement of fees takes unnecessary time of the Court and the Registry. Lastly, the UPC should be a self-financed institution and not rely on non-litigating taxpayers. A general rule which would allow a request for a reimbursement of fees only if non-reimbursement would be grossly unfair, would be sufficient for exceptional cases or circumstances.
11 September 2205
Local Division The Hague, Washtower v Industriebeteiligungs- und Beratungs GmbH
PI proceedings
Facts
The applicants started preliminary injunction (“PI”) proceedings against the defendants claiming infringement of their patent relating to a cabinet for a washing machine.
The defendants argued that the patent is invalid for added matter and lack of inventive step. The defendants further argued that they do not infringe because their L-shaped retaining member is made of plastic and not (as the claim requires) from metal. Lastly, they argued that the case was not urgent.
The Court
- The defendants argued that the L-shaped retaining member was added during prosecution and constitutes added subject-matter (basically arguing intermediate generalization). The Court observes that during prosecution at the European Patent Office (“EPO”), the examining division had held the same, but that on appeal the Board of Appeal ruled that there was no added subject-matter and thus no violation of Art. 123 (2) of the European Patent Convention (“EPC”). The Court rules that this finding in itself already means that it is not more likely than not that the patent is invalid. However, the Court further develops why there is no added matter.
- The defendants argued that D1 is the closest prior art. The Court tends to agree with the applicants that D1 is not a realistic starting point despite the fact that the EPO used D1 as the closest prior art. The Court states that it does not matter, as no combination with D1 would make the invention obvious. The Court discusses the different combinations and also inventive step starting from D8.
- On infringement, the Court considers the plastic L-shaped retaining member as an equivalent to the metal L-shaped retaining member. The Court applies (as proposed by the parties) the equivalence test used in The Netherlands which it had already applied in Plant-e v Arkyne. The Court justifies this decision in the absence of guidance from the Court of Appeal. It also points to the need for a harmonized approach among Contracting Member States and observes that in all UPC countries a finding of infringement always requires that the variant performs essentially the same function as the element recited in the claim, with essentially the same result. Protection also cannot extend to what is not new or inventive over the prior art. Similarly, legal certainty for third parties and a fair protection for the patentee usually return in the doctrines of equivalence in some way or form as developed in the case law of the UPC Contracting Member States.
- The Court finds necessity and urgency (a two-month “delay” can still fulfill the urgency requirement).
- The Court grants the injunction against security (€ 25,000 for enforcing the injunction, € 75,000 for enforcing the recall) and an interim award of costs of € 62,000. The Court fixes penalty sums for non-compliance and orders the defendants to give information (origin, distribution channels, identity of producers or distributors).
Comment
- The Court rules that, as the Board of Appeal of the EPO had already decided on the added matter attack, it is not more likely than not that the patent is invalid. I think that, indeed, if the Board of Appeal has already decided on an invalidity objection identical to a defence in PI proceedings, this defence should not be successful.
Moreover, the Court itself gives a convincing reasoning. As noted earlier, it seems that the Court of Appeal of the UPC has a somewhat more liberal view than the EPO on “intermediate generalization”. Accordingly, if the Board of Appeal has already ruled that there is no intermediate generalization then it is very unlikely that this can succeed in the UPC. - As I have said before, I am not a big fan of the Dutch equivalence test, and it would be better to adopt the function-way-result test as applied in the United States. The test applied by the Local Division is not applied in any other country of the UPC. The Dutch Supreme Court has only ruled that this test is not contrary to Art. 69 EPC, without deciding that it is the only possible test. In my opinion, the test allows the Court to reach the result it wants to achieve, by referring to the fair protection for the patentee and legal certainty of third parties. In other words, the test offers insufficient guidance to the parties and makes the outcome too unpredictable. However, in the circumstances of this particular case, clearly the result would have been the same also under the function-way-result test.
12 September 2025
Local Division Düsseldorf, Triumph v IPG
UPC_CFI_733/2024; UPC_CFI_255/2025
Further submissions
Facts
- This concerns an infringement action with a counterclaim for revocation.
- In the rejoinder to the counterclaim for revocation and reply to the defence to the (subsidiary) application to amend the patent, the patentee withdrew all the subclaims (in order to defend the validity of the granted patent).
- IPG states that it is too late: the validity of the original patent is the subject of the counterclaim and not of the (subsidiary) request for amendment. The rejoinder (and not the reply with respect to the request for amendment) deals with the counterclaim and can only contain a reaction to the reply.
The Court
- Agrees with IPG.
- Does not allow the (subsidiary) request of the patentee for filing a further written submission (R. 36 RoP).
Comment
The representatives for the claimant insufficiently realized the front-loaded character of the UPC proceedings which does not allow for new arguments (such as a giving up of dependent claims and certainly no new arguments in a rejoinder ) if it could have been done earlier. It also does not work to put these arguments in support of the patent as granted in the reply to the defence to the application to amend the patent.
11 September 2025
Local Division Mannheim, Huawei v MediaTek
Confidential information
Facts
- MediaTek requests that the Division declares the technical part in their Statement of Defence as confidential, as this contains information about how certain chips function. This is very confidential sensitive information and know-how, argues MediaTek.
- Huawei is of the opinion that the information is not confidential.
The Court
- The Court accepts that the technical content is confidential, also noting that it is difficult to judge this question without in-depth knowledge of the file. Still, the Court finds an indication that the information is confidential in MediaTek´s assertion that also internally it has confidentiality measures in place with respect to this information, and that Huawei has not contested this.
- The Court is not willing to change the confidentiality club after each submission (in this case consisting of 6 persons of Huawei).
Comment
- The decision shows the importance for companies to also internally have measures in place to protect confidential information, for example by classifying and marking internal documents/drawings etc. as (highly) confidential. If it comes to litigation and the question arises whether or not certain information is confidential, the existence of such internal measures makes it much harder for the opposing party to argue that the information is not confidential.
- It is understandable that a court does not want to have a discussion over and over on the composition of the confidentiality club. So when choosing the person(s) who get access the first time, it is important to not only have persons of the legal department but persons who have an excellent knowledge of the (technical) subject matter of the litigation, and who can be of real assistance to the representative.
12 September 2025
Local Division Düsseldorf, Eyesmatch v Microsoft
Settlement – Reimbursement of court fees
Facts
Before closure of the written procedure, Eyesmatch filed for withdrawal of its claim.
Microsoft agreed. The parties agreed that they would bear their own costs.
Eyesmatch asked for a 60% reimbursement of the court fees.
Decision of the Court
- Allows the withdrawal.
- 60% of the court costs to be reimbursed.
Comment
The Court refers to the decision of the Court of Appeal in Dexcom v Abbott for not making a cost decision despite R. 265 RoP requiring it. As I have said several times before, R. 265 RoP was not drafted for settlements. Chapter 13 of the Rules of Procedure relates to settlement. If you do not want confirmation of the settlement, a simple notification to the JR suffices.
12 September 2025
Local Division Mannheim, Haas v Windhager
Direct / indirect infringement
Facts
- Infringement case in Germany with respect to Germany, Luxemburg and Austria, and a counterclaim for revocation.
- The claimant is a German company.
- The three defendants are Austrian companies.
The Court
- In consideration of Art. 24 to 29 UPCA, the Court decides that it has international competence on the basis of Art. 4(1) and 7(2) Brussels I bis Regulation. The Local Division Mannheim has internal jurisdiction because infringement is claimed in Germany.
- The Courts discusses the meaning of various features of the claim, referring to the decision by the Court of Appeal (UPC_CoA_335/2023) of 26 February 2024.
- Referring to the decision of the Court of appeal in UPC_CoA_182/2024 of 25 September 2024, the Court discusses the novelty attack over three prior art publications: the patent is found to be new.
- Without applying (explicitly) the problem-solution approach (holding that you are not obliged to select one document as the closest prior art), the Court concludes that the patent is inventive.
- With respect to acts committed after 1 June 2023, the law of the UPC is applicable. With respect to acts committed prior to 1 June 2023, national law is.
- Delivery of all the parts of the product, which the buyer has to put together, constitutes direct infringement.
- The Court grants a permanent injunction, but not against the managing director as the mere fact of acting as managing director is not sufficient to hold them liable for infringement.
Comment
I.
- The Court establishes that it has international jurisdiction at the same time as stating that the Austrian defendant’s home court (Art. 4 Brussels I Regulation) is (also) the Mannheim Division.
- The Mannheim Division apparently is of the opinion that in the UPC countries there is (also) one court (for EP and UP matters), i.e. the UPC. Therefore, what I do not completely understand is why the Division goes at length to decide that it has international jurisdiction against companies which are all established in the UPC territory. It seems that a national court undoubtedly has jurisdiction in its own country. But when the Court wants to exercise jurisdiction outside its own territory, then the question whether or not it has international jurisdiction arises.
- If the Local Division is of the opinion that the UPC is one court with jurisdiction for the entire territory of the UPC, then the only question which seems to arise is not a question of international jurisdiction because the Court is not asked to rule over defendants outside the UPC territory nor about infringement outside the UPC territory.
- The only jurisdictional question is that of internal jurisdiction: whether or not the Mannheim Local Division (or you could call it the Mannheim chamber of the UPC) can hear the case.
- Under the UPC, it is as though we all live in one country with its own single national Court (?).
- However, if you consider the question of jurisdiction with respect to the Austrian defendants and infringements outside Germany as a question of international jurisdiction, as the Mannheim Local Division does, then you should consider the Local Division of the UPC as a national German court. The home court for the Austrian defendants (Art. 4 Brussels I bis Regulation) would then only be the Local Division of Vienna.
- In the end, the Court of Justice of the European Union will have to decide what the meaning is of the wording in Art. 71a of the Brussels I bis Regulation (“a common court shall be deemed a court of a Member State”).
II.
- It is standard case law in all major patent jurisdictions that if you sell a product in parts which is to be assembled by the customer you may be liable for direct infringement. A nice example is the Windsurfer: the patent claimed the assembled product; of course, nobody was leaving the shop with the assembled Windsurfer. The German courts also considered it an infringement if the shop keeper sold on day 1 half of the parts (for instance the board and mast) and a few days later the remaining parts (the sail, wishbone and universal joint). They invented a nice word for it: “stuttersale”. If you rule differently IKEA would never (directly) infringe a product patent!
- Of course, this is all different if the invention lies in the (inventive way of) assembly of the product!
– 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”.