UPC Unfiltered, by Willem Hoyng – UPC decisions week 02, 2026

19 December 2025 (published last week) 
Court of Appeal, Docket Navigator v Sumi Agro and Syngenta

UPC_CoA_523/2024 

Access to file

Facts

1. Docket Navigator wants access to certain documents from the Sumi Agro v Syngenta litigation, to make them accessible by their paying subscribers on its patent litigation intelligence platform.
2. Sumi Agro and Syngenta raise the following objections:
   1. the case is not ended, as an application for rehearing is pending;
   2. the control of the Court about who gets access is circumvented as via Docket Navigator everybody get access;
   3. copyright concerns.

The judge-rapporteur (“JR”) of the Court of Appeal

1. The JR refers to the principles decided in the Ocado v Autostore decision of 10 April 2024 (UPC_CoA_404/2023): if proceedings have ended, the general interest in access normally outweighs the interest of the integrity of the proceedings.
2. Copyright is not a general interest that must be observed under Art. 45 UPCA and is duly protected by national laws.
3. Directive 2001/29 on the harmonization of certain aspects of copyright and related rights is explicitly without prejudice to provisions concerning in particular access to public documents.
4. The procedure according to R. 262.1(b) RoP is based on individual assessments of each reasoned request for which legal representation is necessary. This serves to protect parties when it comes to legal proceedings in an adversarial situation.
5. The control of a reasoned request by a represented member of the public would be lost if this request would be granted in the present case, as any subscriber could access the documents.
6. JR refuses the request and does not award costs, as costs with respect to requests for access will only be awarded in exceptional cases.

Comment

1. This seems a correct decision to me because granting the request would make R. 262(1)(b) RoP into a dead letter.
2. The JR refers to the differences with respect to accessibility between the different national systems. This Rule and its interpretation by the Court of Appeal in the Ocado v Autostore decision is based on a compromise between the two extremes: no access and full access.
3. As a result, Courts and the Registry have quite some work to do, because each request has to be decided on an individual basis. The requested documents have to be checked on personal data, further implications are raised by requests, and other possible disputes about confidentiality can arise.
4. I wonder if the Rule should not be changed and only access will be given of the claim or counterclaim for revocation, for which the claimant has the responsibility to take care of the protection of personal data and confidential information.
5. Revocation is of a truly general interest. Such statement of claim or counterclaim for revocation should be accessible for everybody with the possibility to challenge confidentiality with a representative. If the challenge is successful (and the claimant therefore has claimed confidentiality without good reason), the claimant will have to pay the costs. This would prevent unnecessary confidentiality claims.
6. The JR states with respect to copyright that the Copyright Directive is without prejudice of copyright in public documents. That is correct just as the statement that Art. 45 UPCA does not mention copyright as a general interest. However, in my view pleadings are not public documents and are clearly protected by copyright. Making pleadings available to subscribers who pay for such service amounts, in my opinion, to an infringement of that copyright whether this is vested in the lawyer or law firm who drafted the pleading, or in the client as a “work for hire”, or because the copyright was transferred to the client.

19 December 2025 (published last week)
Court of Appeal, Viatris v Merz

UPC_CoA_906/2025 

Unnecessary appeal

Facts

1. Merz filed for a preliminary injunction (“PI”) in the Paris Local Division.
2. The JR ordered certain exhibits from Viatris’ rejoinder to be disregarded. The panel confirmed the order.
3. Viatris appealed that order.
4. The application for a PI of Merz was refused. Merz appealed that order.
5. The Court of Appeal asked the parties if they agreed that the appeal of Viatris was devoid of purpose.

The Court of Appeal

1. As in the appeal proceedings lodged by Merz, Viatris can ask for admission of the exhibits which were refused by the Paris Division, the appeal of Viatris has become devoid of purpose: “An exhibit or submission that was wrongfully rejected shall be taken into account without there being need for a separate appeal against the rejection by the CFI.”
2. No cost decision, as this is not a final order.

Comment

A very practical solution by the Court of Appeal, and a lesson for representatives to not file unnecessary appeals which cost your client money!

19 December 2025 (published last week)
Local Division Hamburg, Fraunhofer v HMD

UPC_CFI_494/2025; UPC_CFI_495/2025 

Request to produce evidence

Facts

1. HMD requests disclosure of the license agreements to which the claimant has referred in the Statement of Claim or pretrial negotiations.
2. HMD argues that this is an obligation (to behave transparently) under EU antitrust law.
3. HMD inter alia specifically asked for a license agreement with X which the claimant mentioned in a letter of 22 October 2018, as this would enable HMD to argue exhaustion.
4. The claimant is willing to produce the agreement with Y mentioned in its email to defendant of 2 October 2025. With respect to 5 license agreements mentioned in claimant’s letter in 2017, claimant states that they are no longer in force and therefore irrelevant. Same is true for the license agreement mentioned in the letter of 22 October 2018. 

The JR

1. The requests for the agreements referred to in 2017 and 2018 are rejected.
2. The request for the license agreement with Y is granted under strict confidentiality provisions (access only to 4 natural persons of defendant).  

Comment

1. Apparently HMD has been able to continue selling its mobile phones since 2017 without paying any license fee for the use of Fraunhofer’s standard essential patents.
2. Apparently the claimant has indicated to produce the agreement to which HMD refers for arguing that it can invoke exhaustion in the proceedings in response to that allegation, and that seems the reason that the JR did not order to produce that agreement.
3. This case shows that a request to produce evidence can be lodged during the proceedings. In this case, before filing the defence (which request does not extend the term for filing a defence). The same is also true for such a request in the Statement of Claim.

22 December 2025 (published last week)
Court of Appeal, Herbert Smith v Insulet and EOFlow

UPC_CoA_886/2025

Access to file

Facts

1. On 30 April 2025, the Court of Appeal decided on the appeal between Insulet and EOFlow.
2. Herbert Smith asked for a copy of the Statement of Appeal and of the Statement of Response submitted in these proceedings.
3. According to Herbert Smith, this was required to get a better understanding of the decision, which would enhance the firm’s ability to provide advice to its UPC clients.
4. Insulet and EOFlow resisted the request.
5. Insulet argued that the applicant failed to show a concrete legitimate interest.
6. EOFlow argued that:
   1. Herbert Smith’s interest is purely commercial
   2. R. 262.2 RoP confidentiality requests on some of the requested information are pending;
   3. the pleadings contain personal data;
   4. pleadings are copyright-protected. There is a serious risk of copyright infringement.

The Judge-Rapporteur (“JR”)

1. The JR cites Art. 45 UPCA and R. 262.1(b) RoP which state that on a reasonable request, pleadings and evidence should made available to the public after redaction of personal data and confidential information.
2. Cites the Court of Appeal decision in Ocado v Autostore (UPC_CoA_404/2023): in principle, the interest of a member of the public outweighs the general interests referred to in Art. 45 UPCA once the proceedings are terminated.
3. A law firm is a member of the public and the request is reasoned.
4. Copyright does not qualify as a general interest within the meaning of Art. 45 UPCA.
5. EOFlow’s confidentiality requests do not prevent access to the redacted version.
6. No costs are to be awarded for this type of request.
7. Access is granted, subject to redaction of personal data and limited to the redacted version of EOFlow’s statement.

Comment

1. The JR applied the various decisions of the Court of Appeal on requests for access to file. The outcome then comes as no surprise.
2. Copyright was raised with respect to submissions. I think that indeed submissions are protected by copyright which should be vested in the representatives (or the law firm(s)) which drafted them. But if you file submissions with the UPC there is of course an implied consent for the Court to make use of such pleadings in accordance with the UPCA and/or the Rules of Procedure (RoP).
3. The law firm (or other member of the public) obtaining a copy may study the copy and use its content but can certainly not file such copy or copy/paste parts of it in its own submissions. That would in my opinion amount to copyright infringement.

23 December 2025 (published last week)
Court of Appeal, Lindal v Rocep-Lusol

UPC_CoA_691/2025

Settlement in appeal

Facts

1. Lindal lost its revocation action. The Paris Central Division maintained the patent as amended by the first auxiliary request.
2. Lindal appealed.
3. On 19 December 2025, both parties jointly requested the withdrawal of the appeal and that 80% or 60%  of the appeal fees of Lindal be reimbursed.

The JR

1. The JR allows the withdrawal, closes the proceedings.
2. The JR orders a refund of 60% of the appeal fee.

Comment

1. The result of this move is that the judgment of first instance loses its effect and the patent remains in force in its original version.
2. If parties agree to settle via a withdrawal of the claim (and counterclaim), the most efficient way is to file a joint request: no need for the court to ask and wait for  the other party’s consent. 

24 December 2025 (published last week)

Court of Appeal, Sumi v Syngenta

UPC_CoA_523/2024

Application for rehearing / settlement

Facts

1. On 5 May 2025, Sumi filed an application for rehearing.
2. As the parties were discussing a possible settlement, the JR ordered a stay which was later extended.
3. On 18 December 2025, the parties applied jointly for a withdrawal, stating that no cost decision was necessary and asked the court fees to be waived.

The Court of Appeal

1. The Court of Appeal allows the withdrawal.
2. The Court of Appeal states that the appeal fee can only be waived after a fundamental procedural defect has been established in rehearing proceedings.
3. The applicant gets 60% of the appeal fee reimbursed.

Comment

1. Even if both parties ask for waiving the appeal fee (assuming that in their joint request they agreed that a fundamental procedural mistake has been made), that is not sufficient. The Court rules, in my opinion correctly, that the Court first has to decide whether such mistake has been made, which supposed that the parties did not move for withdrawing the action and the proceedings could go on.
2. The whole fee is € 2,500 (which in my opinion is far too low) and € 1,500 is being returned. So much ado about nothing!

24 December 2025 (published last week)
Court of Appeal, Suinno v Microsoft

UPC_CoA_911/2025

Leave for appeal of a cost decision?

Facts

1. The Central Division Paris decided in cost proceedings to award € 350,000 for infringement proceedings in first instance and in appeal, security for costs proceedings and proceedings about legal representation of Suinno.
2. Suinno lodged an application for leave for appeal against this decision and asked for suspensive effect, which was rejected.
3. Suinno wanted the costs award to be lowered from € 300,000 (Hoyng: I think € 350,000 was meant) to € 137,815.80.

The JR

1. The JR in first instance, who handled the case step by step, is best placed to judge what is reasonable and proportionate.
2. The Court of Appeal deciding on the application for leave will therefore only undertake a marginal review.
3. The ceiling for reimbursable costs (based on the value of the litigation) was set in first instance at € 600,000.
4. Taking that into account, € 350,000 seems reasonable and proportionate.
5. The JR denies leave for appeal.

Comment

1. It becomes quite clear that it will be extremely difficult to get leave for appeal of a cost decision. The Court of Appeal will not go into any detail but only consider such request marginally. Only when it is clearly and immediately obvious that the cost decision is unreasonable and disproportionate can one expect to be granted leave for appeal.
2. As can also be seen from this decision, the costs for appeal proceedings are dealt with before the Court of First Instance.
3. Once again: try to avoid cost proceedings – which will cost further money that cannot be recouped – by agreeing about costs. That is the best solution for all parties concerned: representatives, the Court and last but not least the users of the UPC. 

29 December 2025 (published last week)
Court of Appeal, Amazon v Interdigital

UPC_CoA_936/2025

Suspensive Effect

Facts

1. On 30 September 2025, the Local Division Mannheim issued an ex parte order forbidding Amazon to seek for or continue seeking an antisuit injunction or a similar measure, such as a temporary restraining order, which would result in Interdigital being prevented from conducting patent infringement proceedings in the UPC based on patents granted for the UPC, in particular, to refrain from asking the UK High Court for an interim license or to rule that InterDigital would violate its FRAND obligations if it did not grant an interim license, and, in brief, to take every necessary step so that the UPC can decide and enforce judgments in patent infringement proceedings with respect to patents granted for the UPC.
2. On 22 December 2025, the Mannheim Division confirmed the order in review proceedings.
3. In case of non-compliance with the order, the Mannheim Division ruled that a penalty of up to € 50 million and an additional € 500,000 per day may be imposed.
4. Amazon appealed on 23 December asking for suspensive effect as far as the order prohibits Amazon from pursuing its request for final relief in the UK.
5. Amazon asked this because the Mannheim Local Division stated in its order that Amazon may already be in breach of the order, which meant that the Mannheim Division could initiate penalty proceedings any day.

The Court of Appeal (standing judge)

1. Amazon referred to the correct criteria for suspensive effect.
2. However, Amazon has not demonstrated that the order of the Court of First Instance (CFI) is “manifestly” erroneous. This is not to say that the order may not be erroneous.
3. The question whether or not a request for a court-determined license as Amazon applied for (in the UK) is an antisuit injunction, is a complex issue.
4. According to the standing judge, what the CFI stated with respect to Amazon possibly already being in breach of the order is not relevant considering that, before being able to impose penalty sums, the CFI will have to hear both parties and Amazon could then still ask for suspensive effect.
5. The request for suspensive effect is rejected. 

Comment

1. It is understandable and prudent that the standing judge (in this case the President of the Court of Appeal) did not decide that the decision of the Mannheim Local Division is manifestly erroneous. It was not necessary and is preferable (also vis-à-vis his colleagues) to decide this matter with the full panel. 
   Note, however, that the standing judge explicitly states that this does not prejudge whether or not the decision is erroneous. This is interesting because such addition was of course not necessary. We have already seen refusals of suspensive effect in cases where the full panel of the Court of Appeal later ruled that the decision was wrong.
2. Amazon does not have to worry about having to pay the draconian penalty sums because of the CFI suggesting that it may already be in breach of the order. The standing judge makes clear that if the Mannheim Court, after hearing the parties, would indeed impose penalty payments, Amazon could still ask for suspensive effect.
3. Even more importantly, the standing judge states very clearly in paragraph 13 that the Mannheim Local Division has not ruled that Amazon has violated the order but only that the (confirmed) order is based on a finding of “imminent danger”. So the possibility that the Mannheim Local Division would start immediate penalty proceedings is very remote.
4. This ruling shows that for a decision to be manifestly erroneous, it has to be very clearly wrong at first glance. A known example to date: a decision of The Hague Local Division which had extended an injunction to Ireland as if Ireland was a UPC country. On the contrary, the decision of the Hamburg Local Division which had in fact injuncted prior art products was not considered manifestly erroneous but (unsurprisingly) overturned on appeal. So the bar for manifestly erroneous is very high! 

29 December 2025 (published last week)
Court of Appeal, VMR v NJOY

UPC_CoA_71/2025

Amendment of patent

Facts

1. VMR’s patent relating to electronic cigarettes (EP 3 456 214) was revoked by the Paris Central Division for lack of inventive step.
2. On 22 November 2023, the Opposition Division upheld the patent in amended form.
3. VMR appealed the decision.

The Court

1. The defendant NJOY filed a translation of a Korean prior art document (Lee). VRM considers this translation to be inaccurate and therefore inadmissible. According to the Court, VMR should have verified the correctness of the translation during the first instance proceedings. VMR’s request to introduce on appeal what it claims to be the correct translation of Lee is rejected. It would also not make a difference for the outcome of the proceedings.
2. The Court states that a defence to an application to amend a patent may, where appropriate in view of the proposed amendments, contain new invalidity and infringement arguments, but it may not introduce new grounds of invalidity with respect to the original claim.
3. Considerations of proportionality and fairness (together with R.44 RoP which requires an “indication” of the facts relied on) contradict an overly strict application of the “front loaded” system of the UPC.
4. That means that, in response to a defence, a claimant may be allowed to introduce new facts and evidence. This may include evidence submitted to substantiate a point already made on the common general knowledge.
5. The parties did not raise specific objections against the definition of the skilled person by the Court of First Instance.
6. The Court discusses the description, the background of the invention, and the object of the invention. It notes that the description does not explicitly identify the problem solved by the patent or what technical effects are achieved by the invention.
7. The Court concludes that the skilled person would understand that the invention aims “to provide a vaporizer < > with a window at the cartonizer receiving segment, so that a portion of the inserted cartonizer is visible from the outside”.
8. Applying Nanostring, the Court construes the claim and remarks: “It is reminded that claim features must always be interpreted in the light of the claim as a whole.”
9. The Court deals then with inventive step applying Amgen v Sanofi and Meril v Edwards, both issued on 25 November 2025.
10. The Court refuses to accept the “problem” as formulated by VMR, finding that “is not the understanding of the skilled person”.
11. The Court considers the same publication a realistic starting point as the Central Division and states that this publication (US Patent Application No. 2010/0242974 A1, referred to as Pan) had not been considered during prosecution and opposition proceedings.
12. The Court rejects VMR’s arguments that the Central Division had incorrectly held that Pan missed only one feature compared to claim 1. According to the Court of Appeal, the other allegedly missing features were all present in Pan.
13. The Court held that making a cartridge (partly) from glass of translucent plastic so that the interior is visible is common general knowledge, and concluded that claim 1 is invalid because of lack of inventive step.
14. With respect to the auxiliary requests, the Court held that any application to amend the patent should explain why the proposed amendments satisfy the requirements of Art. 84, 123(2), (3) EPC, and why the proposed amendments are valid.
15. The Court further held that the proposed amendments were also invalid, either because they add elements which are also disclosed by Pan or because they violate Art. 84 EPC.
16. The Court confirms the decision of the Central Division. 

Comment

1. If a party could and should have done something in the first instance proceedings (such as checking a translation of a Korean patent), it cannot repair this on appeal.
2. A party may not introduce a new ground of invalidity against the original claim in its defence to a request for claim amendments.
3. These principles are consistent  with the front loaded character of UPC proceedings and with the principle that (without the approval of the Court of Appeal), new facts and evidence cannot be introduced on appeal.
4. At the same time, these principles should not be applied in an overly strict way that would infringe the principles of fairness and proportionality. Hard and fast rules make bad justice, and the Court of Appeal’s balanced approach is therefore welcomed. For representatives, this means working diligently before and from the first day of the proceedings, while also developing (or trying to acquire) a good sense of reasonableness, fairness and proportionality. After all, that is what the law is all about. It is not an exact science!
5. Another important lesson from this decision is that an application to amend the patent must clearly explain why the proposed amendments fulfil both the formal (Art. 84, 123.2, 123.3 EPC) and material (Art. 83, 54 and 56 EPC) requirements for valid patents.
6. A further key takeaway for appeal proceedings is that a general reference to, or repetition of, submissions made at first instance is not enough. If a party disagrees with a finding or statement of the Court in First Instance, it must specifically identify and challenge that point in its Grounds of Appeal.
7. The patent in this case is silent as to the problem solved by the invention. While this is not a requirement –and I have heard some patent attorneys argue that that is a good strategy to keep all options open–, I have my doubts. If it is not obvious from the description what problem is resolved, my first inclination is to think (which is not always correct) that there may be a problem with inventive step (and in this case that inclination proves to be correct!).
8. In the present case, the strategy backfired. VMR argued that one of the problems solved by the invention was “facilitating to check the status of the battery electrical contacts”, but the Court of Appeal held that this was not how the skilled person would understand the invention. As a result, not mentioning this problem in the original application was not a smart strategy. In my view, a diligent patent attorney should carefully consider all potential problems that might later be  argued as being solved by the invention and mention them in the application, while taking care not to imply that infringement exists only where the accused product/method solves all these problems. As a disclaimer, I add that I am  not a patent attorney and would not have been able to become one. It is a difficult profession. I am a simple litigator, which requires completely different skills.
9. The decision is not surprising and shows the importance of a thorough prior art search before starting litigation. On the basis of the prosecution history and the decision of the Opposition Division, one might have assumed that the patentee had a good case. However,  had a comprehensive prior art search identified Pan at an earlier stage, I assume that the patentee would not have started the litigation.
10. Especially for SME’s, which are encouraged to apply (and pay for) patents, incomplete search results from the EPO are a source of frustration. I this case, it is difficult to understand why Pan which related to the exact same subject matter was not found by the EPO! It would be good if the EPO, when confronted with this type of cases, carries out internal investigations into why such relevant prior are was not found, with a view to improving their services.
11. The clear lesson for users of the system is to not rely solely on the EPO search but, before embarking on (expensive) litigation, to do a thorough prior art search by a competent patent attorney. 

30 December 2025 (late published)
Central Division Paris, Papst v EPO

UPC_CFI_1771/2025, UPC_CFI_1771/2025 (EN)

Action against decision EPO

Facts

1.  EP 3 327 608 was granted on 16 April 2025.
2. The parent application was filed on 31 July 2005. At that time, Malta was not a member of the EPC.
3. On 16 April 2025, the patentee asked for a Unitary Patent.
4. The EPO refuses to grant the Unitary Patent because the patent has not been granted for all UPC states.
5. Papst appeals.

The standing judge

The standing judge dismisses the appeal.

Comment

1. The standing judge gives a very elaborate and, in my opinion, convincing decision. However, the practical significance of the case is limited, as the grant of the patent took almost 20 years and Malta joined the EPC in 2007.
2. Anyway, on the face of it, it is understandable that a Unitary Patent cannot be granted for only a part of the UPC territory. Much like the requirement that the claims of an EP patent should be the same for all UPC countries, on the basis of one of the principles of a Unitary Patent: one patent covering the whole UPC territory like a USA patent covers all the states of the USA.

5 January 2026
Local Division Hamburg, Nera v Xiaomi

UPC_CFI_730/2025 

Application for costs for appeal

Facts

1. The Local Division had decided that the non-EU Xiaomi entity cannot be sued at the offices of Xiaomi GmbH (the German subsidiary).
2. Nera appealed that decision, but lost.
3. With respect to costs, the Court of Appeal had stated that the Local Division should decide these in their final decision.
4. The Division decided with respect to the costs in appeal, that these should be borne by the claimant.
5. Defendant now requests in cost proceedings to award the costs for the appeal with respect to this procedural dispute.

The Court

1. After general considerations about costs the Court states the following:
   1. Normally, it is reasonable that in UPC proceedings a lawyer and a patent attorney act for a client. Because of the strict timelines, it may sometimes be reasonable to have more than two representatives.
   2. In this matter, a procedural point, it would have been economically prudent to have only one lawyer conduct the matter (instead of three);
   3. The Court therefore deducts two thirds of the costs for the lawyers;
   4. Only when costs are not plausible, it is necessary to request a specification of the work done;
   5. It is reasonable that at least one person of the client is present during the oral hearing;
   6. The Court costs can also be claimed;
   7. Costs for cost proceedings are generally not reimbursable.
2. The Court refers to other Divisions an orders confidentiality with respect to the costs of the representatives.

Comment

1. To work with three attorneys on a simple procedural point. “Simple” because it was quite clear from the beginning that the The Hague Convention does not allow this type of service!
2. The JR is much more practical than for instance the LD in Brussels which required a precise specification of all the work done by the representatives. This is according to the JR not necessary if the amounts and hours are plausible.
3. I sincerely hope that the Court of Appeal will rule that the amounts for representation are not entitled to confidentiality. It is very important for users of the system to be able to see what has been charged by representatives for UPC proceedings. Although quality of representation should be the first consideration for a potential user, efficiency (no three lawyers for a simple procedural point!) and (overall) costs are also considerations for potential users. 

6 January 2026
Court of Appeal, Angelalign v Align

UPC_CoA_2/2026

Discretionary review

Facts

1. The plaintiff Align applied for a preliminary injunction (“PI”) before the Local Division Düsseldorf.
2. At Align’s request, on 16 December 2025, the LD Düsseldorf decided to disregard certain non-infringement arguments raised by Angelalign in its rejoinder, and refused Angelalign’s request to file further submissions.
3. On 23 December 2025, Angelalign lodged a request for leave to appeal, which was refused on 29 December 2025 by the Local Division.
4. On 6 January 2026, Angelalign requested discretionary review.
5. The oral hearing in the PI proceedings is scheduled for 14 January 2026.

The standing judge

1. The standing judge reiterates the procedural steps for a discretionary review:
   1. hearing of the other party;
   2. if the review is allowed: assignment of the case to a panel by the President of the Court of Appeal;
   3. the standing judge or panel may, if considered necessary, invite parties to lodge further statement of grounds and responses. This is not always necessary;
   4. the parties have the right to be heard on appeal.
2. It would not be fair to give Align less than 4 working days to answer to the request for discretionary review, as this is the same amount of time Angelalign took to file its request for discretionary review, after having taken a week to lodge its request for leave to appeal.
3. This would require Align to respond by January 12, leaving the Court of Appeal with insufficient time for a decision in view of the oral hearing scheduled for 14 January.
4. Disrupting the schedule of the oral hearing would only be justified if the decision would have been manifestly erroneous.
5. The front loaded character of PI proceedings also allows late-filed arguments and documents to be disregarded.
6. In the request for discretionary review, Angelalign should have put all the information which made clear that the impugned order was manifestly erroneous.
7. The request is dismissed.

Comment

1. The decision of the LD is dated 16 December 2025. The hearing is scheduled on 14 January 2026. Angelalign decided first to enjoy the Xmas dinner and the New Year champagne before setting out, in fairly general terms on paper, why it disagreed with the order of the LD.
2. If Angelalign expected that by enjoying Xmas and the New Year would also allow it to postpone the scheduled hearing, it was mistaken!
3. The lesson is: ask for leave for appeal and discretionary review of an order only where that order is manifestly wrong and, especially where the procedural schedule is tight (like in this case), file the request for leave to appeal and discretionary review promptly, ideally within one or two days after the decision is rendered, setting out all the arguments and evidence from the outset.
4. I note that, in PI proceedings, the LD is not required to allow two rounds of written submissions.
5. Finally, one may ask why this case was filed in the busy Düsseldorf Local Division? The case could have been brought in many less busy Divisions.
6. It is unfortunate that parties (often on the advice of their representatives) decide to overload busy Divisions with cases. In this case, a US claimant represented by a UK firm! If the advice to file in this LD was based on the assumption that “German Divisions are patent friendly”, then that advice is not supported by the statistics!

7 January 2026
Paris Central Division, Suinno v Microsoft

UPC_CFI_433/2024

Amendment of patent

Facts

1. Suinno initiates infringement proceedings against Microsoft before the Central Division.
2. Microsoft files a counterclaim for revocation.
3. Suinno files a conditional application to amend the patent.
4. Suinno failed to provide the security for costs, which let to the termination of the infringement proceedings.
5. In the (remaining) revocation proceedings, the oral hearing was held on 31 October 2025. 

The Court

1. No stay of the proceedings despite Suinno’s failure to pay the costs of the infringement proceedings.
2. The Court agreed with Suinno on the definition of the skilled person and with Microsoft on the breakdown of claim 1 into claim features, and interprets the claim applying the Court of Appeal’s decision in Nanostring v 10x Genomics.
3. With respect to added subject matter, the Court applying the Court of Appeal’s decision in Abbott v Sibio (UPC_CoA_382/2024) states:
   “36. However, the removal or replacement of a feature is not considered added-subject matter if the feature is not described as being essential in the application as filed, it is not indispensable to the function of the invention, and the removal or replacement requires no real modification of other features to compensate for the change.”
   “37. Any features which, even if mentioned throughout the application in the context of the invention, do not actually contribute to the solution of the technical problem are not essential features.”
4. The Court upholds two of Microsoft’s numerous added subject matter arguments  and concludes that claim 1 as granted is invalid.
5. With respect to auxiliary requests, the Court remarks:
   “111. According to Rule 30 ‘RoP’, the defendant in a counterclaim for revocation action is entitled to amend the patent, provided that the relevant application is included in the statement of defence (or, in any event, meets the filing deadline for this application) and contains the information referred to in Rule 30 (1) (a) (c) ‘RoP’. This includes the language of the application, an indication of whether the amendments are conditional or unconditional, and an explanation of how the amendments comply with Articles 84 and 123 (2) (3) ‘EPC’ and why the proposed amended claims are valid. Rule 30 (1) (c) also requires that the proposed amendments must be reasonable in number in the circumstances of the case.”
   “112. Furthermore, Rule 30 (2) ‘RoP’ allows for a subsequent request to amend the patent, provided that such request is admitted into the proceedings with the permission of the Court. The term ‘subsequent’ must be interpreted as referring to a request which follows a previous one, making it sufficiently clear that the term refers to any request that amends the original application to amend the patent (see CD Paris, decision of 19 July 2024, UPC_CFI_255/2023 and o.). When deciding on a subsequent request to amend the patent, the Court must take into account all the relevant circumstances of the case, including whether the party seeking the subsequent amendment is able to justify that the amendment in question could not have been made with reasonable diligence at an earlier stage, and the amendment will not unreasonably hinder the other party in the conduct of the action (see Court of Appeal, decision of 25 November 2025, UPC_CoA_457/2024 and o.).”
6. The Court further holds that, except where claims are deleted, a request for amendment should also always  be accompanied by a full set of the claims reflecting the proposed amendment. The Court is not allowed to give directions with respect to the formulation.
7. The Court considers only the first auxiliary request to have been properly filed. All other auxiliary requests were not, as they left it to the Court with the task to identify their content and lacked clarity.
8. The first auxiliary request failed to address the extension of subject matter objections. The patent is therefore held to be invalid.
9. The Court nevertheless also addresses inventive step and concludes that the patent is also not inventive.
10. The patent is revoked.

Comment

1. The Suinno drama continues. It highlights the importance of engaging competent patent attorneys when you prosecute a patent application and experienced litigators when you litigate in the UPC. That said, in view of the Court’s findings on inventive step, I conclude that right from the start the “invention” was not inventive.
2. Microsoft (which has of course substantial resources) will no doubt again seek an award of costs, even though, from what I have noticed from the previous costs proceedings, it seems rather unlikely that Suinno will be able to pay!
3. The decision is a must read for representatives, particularly in relation to the Paris Central Division’s remarks with respect to amendments. Reading between the lines, I also understand the Court to suggest that even where a party seeks only to defend certain granted claims, a request for amendment is necessary. As I have said before, I consider this approach incorrect, as long as it is clear which granted claims are defended.
4. Furthermore, I consider as too strict the Court’s position that it cannot make any suggestions about the formulation of an amendment. While it is, of course, for a party to suggest auxiliary requests, it seems to me not fair, equitable and proportionate to invalidate a patent which would be valid by very small change of the proposed amended text. Anyway, representatives have been warned!

– 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”.