# News Detail Share now [](https://www.linkedin.com/uas/login?session_redirect=https%3A%2F%2Fwww.linkedin.com%2FshareArticle%3Fmini%3Dtrue%26url%3Dhttps%3A%2F%2Fwww.hoyngrokhmonegier.com%2Ffr%2Factualites%2Fdetail%2Fupc-unfiltered-by-willem-hoyng-upc-decisions-week-12-2026%26title%3DUPC%20Unfiltered%2C%20by%20Willem%20Hoyng%20%E2%80%93%20UPC%20decisions%20week%2012%2C%202026%26summary%3D "Linkedin") # UPC Unfiltered, by Willem Hoyng – UPC decisions week 12, 2026 23 mars 2026 Unified Patent Court (UPC) Hot Topic News Below, [Prof. Willem Hoyng](https://www.hoyngrokhmonegier.com/our-team/legal-experts/prof-willem-hoyng) provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC. Interested in more of this? Stay tuned and subscribe [**here**](https://mailchi.mp/8fbd8890d03b/upc-unfiltered-by-willem-hoyng) for weekly updates. On the go, multi-tasking or just prefer to listen? “Willem Hoyng’s UPC Unfiltered AI Podcast” – your weekly, AI-generated podcast discussing Willem Hoyng’s commentary on UPC case law of last week, offers a convenient alternative. Listen on [**Spotify**](https://open.spotify.com/show/53wwzF7LNSqqouR0wzXgJD?si=ae84739b09904ee1&nd=1&dlsi=71b6a174bdbd4f32) or [**Apple Podcasts**](https://podcasts.apple.com/us/podcast/willem-hoyngs-upc-unfiltered-ai-podcast/id1806092389). #### **25 February 2026** ***(late published)*** #### **Local Division Düsseldorf, beMatrix v Yaham** [UPC\_CFI\_692/2026 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Order_UPC_CFI_692-2026_anonymized.pdf) ***Preliminary injunction*** **Facts** 1. The claimant filed a request for a preliminary injunction (“PI”) with respect to EP 3 757 442 for a “Display Module for a temporary exhibition stand”. 2. Service of the Chinese defendant takes place at the EuroShop exhibition in Düsseldorf. 3. The allegedly infringing device is exhibited at the EuroShop exhibition. 4. The defendant refused to remove the infringing device. 5. The claimant asks for an ex parte PI. **The Court** 1. The Court concludes that it is more likely than not that claimant is entitled to initiate proceedings and that the patent is valid and infringed. 2. The Court concludes that the claimant only became aware of the infringement in Spain (where there is no patent) from 3 to 6 February 2026, and there is urgency as the exhibition ends on 26 February 2026. 3. There is also necessity as this trade fair is, according to the applicant, one of the central and most influential events. 4. The order to provide information is rejected, as in a *ex parte* this may be disproportionate. 5. The PI is granted. 6. The defendant is ordered to deliver the devices with an infringing display module to a bailiff for the purpose of safekeeping until a decision between the parties about a claim for destruction. 7. The claimant has to provide security within 14 days in the amount of € 500.000. **Comment** 1. The Court states that in *ex parte* proceedings it can only award interim costs. That seems correct (see Court of Appeal in Barco v Yealink), because even if in the application for an *ex parte*, PI costs are claimed, the other party cannot comment. However, it does not make a substantial material difference, as a successful *ex parte* has to be followed by main proceedings (absent settlement) and if unsuccessful defendant (who did not know about the ex parte application) does not have costs. 2. The Court is right to decide that a request for information in ex parte PI proceedings is disproportionate. 3. In my opinion, *ex parte* proceedings should be reserved for extreme urgency. In this case, there had already been discussion in past years between the parties with respect to other models. These discussions were, I assume, about possible infringement. The applicant states that it became aware of the newest infringing product in Spain on 3 February, and the fact that this was also offered by a German company. They state that the Düsseldorf exhibition is the most important exhibition. I do not see why, if the applicants would have acted diligently, a PI hearing *inter partes* could not have taken place one or two days prior to the exhibition. #### **11 March 2026** ***(late published)*** #### **Local Division Munich, Network System Technologies (NST) v Qualcomm** [UPC\_CFI\_450/2024; ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-11%20Decision%20UPC_CFI_450-2024.pdf)[UPC\_CFI\_451/2024](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-11)[; ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-11%20Decision%20UPC_CFI_450-2024.pdf)[UPC\_CFI\_449/2024](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-11)[; ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-11%20Decision%20UPC_CFI_450-2024.pdf)[UPC\_CFI\_65/2024](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-11)[; ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-11%20Decision%20UPC_CFI_450-2024.pdf) [UPC\_ CFI\_64/2024; ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-11%20Decision%20UPC_CFI_450-2024.pdf)[UPC\_CFI\_63/2024](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-11) ***Infringement claim / order for inspection*** **Facts** 1. The claimant filed an infringement action against defendants 3-5 (Qualcomm entities) following the withdrawal of the actions against the Samsung entities. 2. Qualcomm filed a revocation action. 3. The claimant also requested that Qualcomm produces evidence. **The Court** 1. The claimant has standing to sue, as it is mentioned as the patent proprietor in the national registers. It is for the defendant to prove that the claimant is not the owner of the patents. 2. At the end of the hearing, the defendant (after this had been discussed by the Court) sought to make its counterclaim for revocation conditional. However, no formal request was made and no specific condition was mentioned. The statement made at the end of the oral hearing was therefore not sufficient. 3. The Court discusses the patent, the problem and the solution. Thereafter, it discusses the legal framework for claim construction, referring to Court of Appeal decisions in *inter aliaNanostring v 10x Genomics*,stating that the same interpretation should be applied for both the infringement and revocation actions. 4. The Court rejects the claimant’s argument that the skilled person would not be a specialist in computer networks. 5. The Court interprets the claims and concludes, inter alia, that: “*Accordingly, all data packets transmitted between these routers must also have the same number of N data elements*”. 6. The counterclaim for revocation is unfounded. The Court summarises the legal principles with respect to added matter, stating that this is a legal question. It reiterates that the whole application as filed should be taken in consideration and “that also implicitly disclosed subject matter, matter that is clear and unambiguous as consequence of what is explicitly mentioned, shall also be considered as part of the content”. The Court further states that this is a question of law to be decided on the basis of the facts put forward by the parties. 7. The Court rules that there is no added matter. 8. After setting out the gold standard, the Court finds the patent is novel. 9. Referring to the Court of Appeal decisions in *Sanofi v Amgen* and *Meril v Edwards*, the Court finds that the patent is inventive. 10. With respect to infringement, the Court sets out the applicable legal approach as follows: *“200. It is the Claimant who determines in the Statement of Claim which situation and circumstances the Court is to decide on in terms of location, time and substance. The underlying facts form the basis for the Court's decision and at the same time limit the court's competence to decide. In the event of a patent infringement action, the facts which are particularly relevant are those that allegedly constitute patent infringement within the meaning of Art. 25 ff. UPCA and fulfil the requirements for Court measures pursuant to Art. 56 ff. UPCA. Of particular importance in this context, beside the infringing act, is the design of a product or process as alleged by the Claimant, which, according to the Claimant's submission, is said to comprise all the features of the asserted patent claim. This essentially represents the “attacked embodiment.” Accordingly, the “attacked embodiment” is regularly determined by the factual design of a certain product or a process with regard to the features of the invoked patent claim as asserted in the Statement of Claim. This can be a specific product specified, for example, by its product name, product sheet and technical design. However, the attacked embodiment may also comprise all products that generally have the technical features specified by the Claimant, which allegedly realise the technical teaching of the patent claim. This may also include products unknown to the Claimant or, in the case of an injunction, future products insofar as they essentially correspond to the features of the product presented by the Claimant in his Statement of Claim, which he considers decisive for the patent infringement. In such a case, it is usually sufficient if the Claimant has exemplified the infringement on a sample of the attacked embodiment. What is ultimately meant by the attacked embodiment depends on the interpretation of the Claimant’s submission. Once this has been defined it is for the Court to decide whether this attacked embodiment realises the teaching of the patent claim.”* 11. The Court finds that there is no infringement, including under the doctrine of equivalence. The Court considers that it is not necessary to decide which test should be applied (referring to decisions of the Local Divisions of The Hague, Brussels and Mannheim), as the claimant did not specifically explain which claim features were allegedly implemented by equivalent means. 12. As to the request of the production of evidence, the Court referred to Art. 59(1) UPCA and Rule 190.1 RoP, holding that the claimant must set out which facts it seeks to prove, by which means, and for what reasons. Such facts must be relevant to the claims (or defences). 13. Whether the applicant for an order to produce evidence has presented reasonably available and plausible evidence depends on the circumstances of the case, and falls within the Court’s discretion. 14. The Court refuses the application, because claimant has not presented plausible evidence. **Comment** 1. The busy Local Division of Munich (where, according to the Rules, a decision should be in principle rendered within 6 weeks after the oral hearing, but in this case it took almost three months) arguably created additional work for itself by refusing that the defendant made its revocation claim conditional, adopting an (in my opinion) too formalistic approach. In my view, the defendant’s position was sufficiently clear: it accepted that the Court would only deal with the revocation counterclaim if the Court were to find infringement. This was all new for the German judges and representatives, who have operated their whole life in a bifurcated system! By contrast, in a non-bifurcated system such as that of The Netherlands, this issue is often addressed proactively by the Court, as defendants typically raise revocation as a defence against infringement. One may question why, in such a situation, a Court should be given more work than necessary! 2. Apart from setting out, in considerable detail, well-established legal principles in patent litigation (making it a good read for IP law students and less experienced representatives!), the decision is interesting with respect to the Court’s statement in section 200 regarding infringement. As I understand it, the Court states that a claimant may, in its Statement of Claim, seek an injunction for (a) certain product(s) and all products which have the same features; including future products that are as yet unknown. Accordingly, it is not necessary to specify each and every product. 3. In my view, if a defendant infringes a patent with Product A, the claimant is entitled to a general injunction “not to infringe EP … in the UPC (where the patent is in force), in particular with Product A”. While one may choose to repeat the wording of the claim, I do not consider this necessary. If Product B is also infringing, then it should be automatically covered by the general injunction. However, the imposition of penalty payments should only follow where, in the light of in the findings in the decision with respect to Product A, it is not doubtful that Product B is also infringing. If one wants to avoid discussions about that, if multiple products are or may be infringing, it is wise to follow the advice of the Court in this case. This means clearly defining that all products embodying certain specific features are infringing. This (in my opinion) still entitles the claimant to a general injunction, supplemented by wording particularly referring to all products comprising features a, b etc. 4. I agree that, for a successful request for the production of evidence, the applicant must explain why the specific evidence sought is relevant to establishing infringement. The defendant had complained that the decision on the request for the production of evidence should have been made at an earlier stage. Indeed, that would have been more practical, but the Court noted that that in complex cases it is difficult to deal with such requests without knowing the whole case. This may be true in exceptional cases; however, it would be desirable for such decisions to be taken during the interim procedure, preferably shortly after the written procedure, given that the UPC framework aims, wherever possible, for a final decision to follow the oral hearing. 5. One may wonder why an evidentiary seizure and inspection order can be granted prior to the start of the proceedings, whereas an order for the production of evidence is only available during the litigation? Anyway, the same result can often (though not always) be achieved by a (well-drafted) order for inspection. #### **11 March 2026** ***(late published)*** #### **Local Division Munich, BFexa QC v NVIDIA** [UPC\_CFI\_210/2025 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-11%20Entscheidung%20in%20CFI_180-25%20u%20CFI_210-25%20-%20BFexaQC%20gg%20Nvidia%20-%20redacted%20-%20signed%20and%20anonymized.pdf.pdf) ***File wrapper*** **Facts** 1. This concerns an infringement action based on unitary patent EP 3 743 812for a method of operating a heterogeneous computing system. 2. The defendants deny infringement and filed a counterclaim for revocation. 3. During the oral hearing, in response to a question by the Court, the defendants make the claim for revocation conditional, in the sense that they only want a decision if the Court finds infringement. **The Court** 1. The patentee is always entitled to enforce the patent (Art. 47.1 UPCA) also when it has granted an exclusive license. In this case also the exclusive licensee is entitled to enforce the patent (Art. 47.2 UPCA). 2. The Court notices that the patentee gave a different meaning to a word in the claim (“Iteration”) during the prosecution of the patent than it now defends in the infringement claim. Although the file wrapper cannot be used for claim interpretation, the statement during the prosecution is evidence of how the skilled person would interpret such a word. The Court refers to the Court of Appeal’s decision in Alexion v Samsung Bioepis (UPC\_CoA\_402/2024). 3. The Court concludes that there is no infringement. **Comment** 1. The UPC is still struggling with the role of the file wrapper, which is especially under German national law a problem, but not in most other countries of the UPC. Until now, the hot potato has been avoided by saying that a patentee’s statements during prosecution show what the skilled person was thinking at the time of the application. That is an elegant way of making the hot potato eatable, but not always the solution: an applicant of a patent does not necessarily say what the skilled person thinks, but rather gives a meaning to a term which is helpful to have the examiner grant him a patent. 2. For the rest: bravo! The victory for efficiency! 1. The Court is saved a lot of work, because during oral argument the defendant agreed to make the revocation conditional which different from the decision of the same day reported above, was accepted by the panel. This panel had Mr. Kupecz as foreign judge. He is known for trying to be efficient and practical, by e.g. suggesting parties to try to agree on costs. Did he make the difference, or was it something else? 2. The parties agreed on costs. As far as I can see, this was the first time since I promised a bottle of champagne to the first German representatives who settled on costs. So, during my next visit to Munch on 18 May 2026, I will deliver them! #### **13 March 2026** ***(late published)*** #### **Central Division Milan, La Siddhi v Athena** [UPC\_CFI\_927/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/GDPR-checked_R158%20decision%20panel%20signed.pdf) ***Security for costs*** **Facts** 1. In revocation action proceedings, in its Statement of Defence, Athena lodged a request for security for legal costs, arguing that: 1. The claimant is an SME; 2. The claimant’s obligations are more substantial than its assets; and 3. It will be difficult to recover costs, as the claimant is not based in the EU. **The Court** 1. The Court refers to the case law of the Court of Appeal. 2. The claimant’s financial status, based on its published annual accounts, indeed gives rise legitimate and real concern. The claimant’s argument that the defendant’s submission is “legally and factually unfounded” do not substantially dispute this. 3. The (disputed) argument that the claimant is an SME, is not as such a reason to refuse an order for security for costs. It may, however, play an “equity” role. 4. The Court orders security at the amount of €75,000, based on the Court’s cost estimation (the cost ceiling being € 112,000). **Comment** 1. This is a logical decision in view of the fact that claimant basically did not refute any of the defendant’s arguments. 2. I note that the claimant did not argue that an order for security would effectively prevent it from bringing the lawsuit, assuming that this would be a valid argument. As I said in a previous comment, if the claimant has a good case, it should be able to obtain financing, including the provision of security for costs. #### **13 March 2026** ***(late published)*** #### **Central Division Milan, Neurocrine v Spruce** [UPC\_CFI\_722/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/GDPR-checked_722-2025%20Order%20and%20decision%20on%20costs%20DEF.pdf) ***Devoid of purpose*** **Facts** 1. Neurocrine filed a claim for revocation action with respect to unitary patent EP 3 784 233. 2. On 15 October 2025, Spruce filed its defence and an application to amend the patent. 3. On 25 November 2025, the Opposition Division (“OD”) of the European Patent Office (“EPO”) revoked the patent. The reasons were published on 12 December 2025. 4. On 16 December 2025, Neurocrine filed its reply to the defence and its defence to the application to amend the patent. 5. On 19 January 2026, Spruce informed the EPO that it would not appeal the decision of the OD. 6. On 19 January 2026, Spruce filed an application for disposal of the revocation action and requested that Neurocrine bear the costs, arguing that it had refused a stay and had made late filings regarding the application to amend the grounds of invalidity and expert evidence. **The Court** 1. As the patent has been definitively revoked, the revocation action has become devoid of purpose and will be disposed of by way of an order (R. 360 RoP). 2. Neurocrine requested that the action be disposed of if Spruce declares that it would not invoke any divisional. However, that is not part of the revocation action. 3. Neurocrine is the successful party and is awarded 80% of the applicable cost ceiling, as most of the work is carried out during the written phase. The Court rejects Spruce’s arguments that Neurocrine should bear the costs, and awards € 480.000 to Neurocrine. 4. The Court refuses to treat the cost statement as confidential under R. 262.2 RoP. As regards further requests for confidentiality, the Court states that it will deal with these only after a member of the public requests access. **Comment** 1. Neurocrine only sought revocation of the patent, but once the patent had been revoked, it sought a kind of “arrow declaration” that Spruce would not invoke any divisional. 2. It is understandable that Neurocrine wanted that, but this was of course impossible because it was not subject of the proceedings. 3. As Spruce is not established in the UPC territory, Neurocrine could probably have applied to the Central Division in Milan for an arrow declaration, i.e. a declaration that Neurocrine’s product does not and/or will not infringe any patent granted on the basis of the original application which lead to EP 3 784 233, on the ground that Neurocrine’s product was obvious over the prior art existing on the filing date of that application. #### **16 March 2026** #### **Local Division Düsseldorf, Trumpf v IPG** [UPC\_CFI\_733/2024](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-16%20Trumpf%20Laser%20v.%20IPG%20Laser%20Decision%20redacted_signed_all_VT%20geschw%C3%A4rzt.pdf); [UPC\_CFI\_255/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-16%20Trumpf%20Laser%20v.%20IPG%20Laser%20Decision%20redacted_signed_all_VT%20geschw%C3%A4rzt.pdf) ***Infringement*** **Facts** 1. Trumpf filed infringement proceedings regarding EP 2 624 031 B1. 2. IPG filed a counterclaim for revocation. 3. Trumpf submitted 6 auxiliary requests. 4. Trumpf’s request for a further exchange of pleadings under R. 36 RoP was refused. **The Court** 1. The Court held that the skilled person is a physicist with several years of practical experience in the area of industrial laser technology for work on materials. 2. The Court analyzed the patent and defined the technical problem addressed by the invention. 3. It then interpreted certain claim elements, referring to the Court of Appeal’s decisions in *Nanostring v 10x Genomics* and *Mammut*. 4. The Court rejected the defendant’s broad interpretation of the radiation profile characteristics. 5. The Court decides that it is not necessary that two laser beams are to be produced by different sources. 6. The Court found it unnecessary to decide the defendant’s argument based on the prosecution history according to which only figure 6 of the patent discloses an embodiment falling within the scope of the claim. 7. The Court also rejected further arguments by the defendant seeking a limited interpretation of claim elements. 8. The Court rejects the defendant’s invalidity arguments. As regards novelty, it applied the gold standard and, referring to the Court of Appeal’s decision in *Nanostringv 10x Genomics*, confirmed that the same claim construction must be used for both infringement and validity. 9. For inventive step, the Court applied the principles set out in *Meril v Edwards* and *Amgen v Sanofi*. 10. The Court concluded that it had not been established that the skilled person, starting from a realistic starting point (D6), would have arrived at the invention. 11. The same was reached when starting from D7. 12. D1 and D3 were not considered realistic starting points. 13. The Court found that the patent was infringed. 14. As regards indirect infringement, the Court held that merely sending a warning letter to customers is insufficient. However, a recall cannot be ordered in respect of products that only give rise to indirect infringement. **Comment** 1. In my view, this is a well-reasoned decision, at least on the basis of the written decision and without access to the parties’ pleadings. 2. I note that the Court appears to require, for a successful revocation attack based on lack of inventive step, that the realistic starting point itself already contains the incentive/motivation to arrive at the invention. It is questionable whether this is necessary. In my opinion, the motivation/incentive can also come from other sources, such as a recognized problem in the common general knowledge, or from relevant literature. 3. Where a product used in a method claim can also be genuinely used in a non-infringing way (here, a laser), I agree that a merely sending a warning letter to customers instructing them not to use the product in an infringing way is insufficient and an injunction to cease indirect infringement justified. However, the assessment may differ if the customer agrees in writing not to use the product in the infringing way. Much will depend on the specific circumstances, such as the importance of being able to use the product in the infringing way. In any event, if in the future the product is (clearly) not intended for infringing use, there should be no injunction. 4. On the other hand, I do not see why a recall of such products should be excluded where no genuine non-infringing use is possible. The Court justifies its position (with reference to its own decisions and LD Mannheim) on the basis that such products are not themselves infringing products within the meaning of Article 64 UPCA. However, this reasoning is not convincing as these products are indirectly infringing the patent. Article 64 UPCA makes clear that also (non-infringing!) means or materials predominantly used for the creation of infringing products may be subject to corrective measures such as recall. Therefore, in my view, indirectly infringing products principally intended for infringing use can certainly be subject to recall. #### **16 March 2026** #### **Court of Appeal, Vivo v Sun Patent Trust** [UPC\_CoA\_904/2025, UPC\_CoA\_905/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Order%20VIVO%20v%20SUN_CoA_904%20and%20905-2025_2026-03-16_Signed.pdf) ***FRAND determination*** **Facts** 1. SPT started infringement proceedings before the Local Division of Paris on the basis of two standard essential patents (SEPs) against Vivo. 2. Sun requested: 3. I. a finding that Vivo infringes the asserted patents; 4. II. a finding that SPT’s license offer is FRAND or, alternatively, where the Court considers that adjustments to the terms on which Sun is willing to license are necessary in order to bring them in the FRAND range, to find that those adjusted terms are FRAND; 5. III.to grant an injunction if Vivo does not enter into a (FRAND) license agreement within a specified period to be determined by the Court. 6. Vivo filed a preliminary objection (“PO”), arguing that the Court has no competence with respect to request A.II (i.e. the FRAND determination). 7. The full panel rejected the PO. It held that the Court is competent to hear the FRAND issue, as it is only incidental or dependent on the main infringement issue. The Court postponed the final decision on the admissibility of request A.II to the main proceedings. 8. Vivo lodged an appeal against this decision. 9. The Court of Appeal refused to grant suspensive effect to the appeal. 10. In the meantime, Vivo raised a FRAND defence in its Statement of Defence in the main proceedings. **The Court of Appeal** 1. R. 19.5 RoP gives the Court of First Instance discretion to decide a PO later in the main proceedings. The Court did not misuse this discretion. There was a good reason to postpone the decision, as a finding of no infringement would render it unnecessary to rule on request A.II. 2. Although R.20.2 RoP refers to the judge-rapporteur (“JR”), the Court of Appeal clarified that also the full panel can decide on a PO. Every time the Rules mention the JR, also the full panel can decide. 3. The Court of Appeal confirmed the Court of First Instance’s assessment that request A.II does not constitute an independent claim, but is dependent on a finding of infringement. If further held that A.II represents a necessary condition in assessing whether the injunction requested under A.III should be granted. **Comment** 1. This is a logical decision. Art. 32(1) UPCA makes clear that the UPC has jurisdiction over infringement actions and all related defences, including counterclaims concerning licenses. 2. It follows that a claimant may legitimately anticipate such a defence (here, the entitlement to a FRAND license) and may deal with such defence proactively, as this is a condition for obtaining an injunction for infringement. 3. The Court did not rule on the question whether a SEP holder (who made an offer which is not accepted by the implementer) or vice versa an implementer (assuming the offers extend to European patents effective in UPC countries, or a Unitary Patent) should be able to ask for a FRAND determination. 4. However, this may not be necessary in practice, as this case shows how a SEP holder can do it, while implementers can use the same method by bringing an action for a declaration of non-infringement. 5. The fact that the full panel can decide instead of the JR (or the President) is unsurprising in the light of R. 333.1 RoP. #### **16 March 2026** #### **Court of Appeal, Ecovacs v Roborock** [UPC\_CoA\_3/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Final%20order%203-2026%20signed-1.pdf) ***Ex parte order for inspection*** **Facts** 1. Ecovacs applied for an order for inspection and preservation of evidence at Roborock’s exhibition stand during a trade fair in Berlin, concerning robot vacuum cleaners. 2. The order was granted *ex parte* due to the risk that the products might be removed, or their software altered. 3. Ecovacs argued it needed to verify whether the exhibited robot vacuum cleaners were identical to those sold by Roborock’s German subsidiary, and that there was no alternative way to establish that Roborock Hong Kong manufactured and supplied infringing products. 4. Roborock requested a review of the order. The Local Division subsequently revoked the order, finding that Ecovacs had misrepresented the facts, in particular because Roborock Hong Kong itself offered the vacuum cleaners for sale in Germany via Amazon. 5. Ecovacs filed an appeal against this decision. **The Court of Appeal** The Court of Appeal rejected the appeal. **Comment** 1. The Court of Appeal rejected – in my view, entirely justified – Evovacs’ argument that R. 197.1 RoP should be interpreted to mean that an inspection or seizure remains justified even where the information given to the Court is ambiguous or incomplete, as long as justification can be established after the seizure. 2. As I have written before, Divisions should realize how disrupting a “raid” on a competitor’s booth during an exhibition can be! Such (*ex parte*) orders should not be granted routinely. I understand that this implies that the Court has to spend more time to carefully scrutinize such requests, in particular whether the relevant information, assuming it is indeed clearly relevant, could be obtained by less invasive means. 3. Of course, parties that lie (and I also consider lying leaving out relevant facts or being intentionally ambiguous, etc.) should be punished; and representatives who knowingly cooperate in such misrepresentation should be disciplined. 4. I am, to say it mildly, surprised by Ecovacs’ arguments on appeal, which I would summarize as follows: it does not matter if I lie in order to obtain a seizure order, as long as I can later identify a justification that would have supported it. 5. The Court of Appeal gave the right answer! #### **18 March 2026** #### **Court of Appeal, EOFlow v Insulet** [UPC\_CoA\_930/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Final%20order%20appeal%20confidentiality.pdf) ***Confidentiality*** **Facts** 1. Insulet obtained a preliminary injunction against EOFlow. 2. In parallel, the Milan Central Division, in the context of a counterclaim for infringement, ordered EOFlow to provide information to Insulet. 3. Insulet filed an application seeking the imposition of a penalty. 4. EOFlow filed applications under R. 262.2 RoP. 5. The CD Milan imposed a penalty of € 150.000 and dismissed the R. 262.2 RoP request. 6. On 4 February 2026, the Court of Appeal dismissed the appeal against the penalty. 7. This appeal deals with the dismissal of the R. 262.2 RoP request. **The Court** The Court of Appeal dismissed the appeal, referring to its earlier decision of 29 January 2026 (CoA 930/2025). It rejected the argument that information supplied to the other party pursuant to a court order is implicitly confidential. **Comment** All information exchanged in litigation is in principle public, unless it has been designated as confidential under R. 262A RoP, including information submitted pursuant to a court order. The only exception arises where the parties have agreed to confidentiality, as was the case here with the settlement agreement with Menarini (except for what was disclosed in the public judgment). The lesson is, as I have said before, that if you do not request confidentiality under R. 262A RoP in the proceedings, there is no protection against public disclosure, as you can no longer seek protection under R. 262.2 RoP. #### **18 March 2026** #### **Local Division Düsseldorf, CUP&CINO v ALPINA** [ UPC\_CFI\_519/2024; UPC\_CFI\_64/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-18%20Entscheidung%20519%202024_anonymised.pdf) ***Destruction of advertising materials*** **Facts** 1. The case concerns an infringement action based on EP 3 398 487, relating to the production of milk foam. 2. In 2023, the Local Division Vienna had held, in preliminary injunction (“PI”) proceedings, that ALPINA’s machine did not infringe the patent. 3. ALPINA filed a counterclaim for revocation. 4. The claimant filed auxiliary requests. **The Court** 1. The Court rejected the narrow interpretation of certain claim features (in particular, hardware elements) based on the result those features are said to achieve in the description. It also referred to the description, which according to the Court makes clear that that result is only one of the ways to get better foam quality. 2. With respect to the revocation claim, the Court referred to the Court of Appeal’s case law on extension of subject matter and concluded that no extension arises when the application is assessed as a whole. 3. In addressing inventive step, the Court relied on the principles set out by the Court of Appeal in *Meril v Edwards*. 4. The Court finds inventive step, inter alia because the defendant failed to demonstrate the motivation for the skilled person to make the step towards the invention. 5. The Court concluded that the patent is infringed. 6. The Court granted an injunction and ordered the destruction of infringing products (but not promotional materials). 7. The Court declined to order the publication of the decision, referring to its own standard that publication is only justified if the claimant’s interests have not been adequately protected by other measures. At the same time, the Court noted that the Court of Appeal appears (“scheinbar”) to apply a two-step test; first, you have to look if the patentee has an interest in the publication, and second, you look whether the defendant’s interests outweigh those of the patentee. **Comment** 1. It is interesting to see that the Local Division Vienna reached a finding of non-infringement in the PI proceedings with a very detailed reasoning, also referring to the certainty for third parties. The Local Division Düsseldorf however does not spend a word on that decision. It would have been more convincing if the Court had explained in more detail why it disagreed with the Local Division Vienna. Judge Kupecz sat on both panels. Did he disagree with the Düsseldorf decision or with the Vienna decision, or did he change his mind? It will be interesting to see what the Court of Appeal (should be the case appealed) has to say. 2. Although it is a detail, it is interesting that the Court held that it cannot order the destruction of promotional materials. The general part of Article 64 UPCA refers to “appropriate measures be taken with regard to products found to be infringing”. In my view, the destruction of promotional materials for such infringing products could qualify as such an appropriate measure. The Court appears to rely on paragraph 2 of Article 64 UPCA; however, that paragraph includes the measures which have to be (shall) included, without excluding other measures. It would be strange to justify a situation in which infringing machines must be destroyed, while the promotional materials relating to those same machine may remain (which constitute offers for the infringing machine!). #### **18 March 2026** #### **Local Division Düsseldorf, Dolby v Beko** [UPC\_CFI\_135/2024; UPC\_CFI\_477/2024](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-03-18%20Dolby%20v.%20Beko%20Entscheidung%20final_redacted_signed_all.pdf) ***Unwillingness*** **Facts** 1. Dolby’s patent belongs to the Opus patent pool, which is managed by Vectis and was established in January 2023. 2. Vectis offers a license at a rate of € 0,15 per product, with a maximum of € 15 million a year, with no royalties due for the period prior to 1 January 2023. 3. On 21 April 2023, Vectis contacted Beko, providing a list of patents and offered to take a license. Beko responded that it had to study the patents, but it did not substantively react to several subsequent proposals of Vectis to engage in discussions. On 31 January 2024, Vectis sent claim charts. As no reaction had followed, Dolby started proceedings on 5 April 2024. 4. Beko argued that it did not infringe, that the patent was invalid because of extension of subject matter, lack of novelty, and lack of inventive step. 5. Beko also raised defenses based on exhaustion, abuse of dominant position, violation of Article 101 TFEU (including allegations of patent ambush), and a FRAND defense. 6. Dolby filed auxiliary requests and argued that Beko was not a willing licensee, had made no counteroffer, and had not given sales information nor security. **The Court** 1. The Court analyzed the patent (EP 3 605 534) and formulates the problem for which the patent gives a solution. 2. It interpreted certain elements of the independent claim 1 (product claim) and 6 (method claim) applying the principles as formulated by the Court of Appeal in *Nanostring v 10x Genomics*. 3. The Court refused to consider the defendant’s remarks on claim interpretation of the granted patent which were made in the rejoinder, as they did not constitute an answer to the statements in the reply (R. 32.3 RoP). In any event, the Court noted that even if these remarks were taken into account, they would not affect the claim interpretation. 4. Applying the standards of the Court of Appeal as *inter alia* set out in *Amgen v Sanofi*, the Court rejected the claim for revocation. 5. With respect to the alleged lack of priority and insufficiency of disclosure, the Court found the defendant’s arguments too general. 6. The Court concluded that the Opus standard falls within the scope on the patent. It rejected the defendant’s arguments and found that Beko’s products infringe. 7. The Court held that there was no exhaustion. It referred to Article 29 UPCA, stating that exhaustion is governed by the UPCA and not by national law. 8. The Court noted that it was unclear whether the license to the chipmaker (whose chips are used in the Beko’s products) contains license rights under the Opus standard. 9. The burden of proof for exhaustion lies with the defendant. The Court found that the defendant had failed to demonstrate that all requirements for exhaustion were met. Statements made for the first time during the oral hearing were considered too late. 10. The Court further refers to the claimant’s explanation of the two-tier licensing model, emphasizing that a license granted to a chipmaker does not necessarily extend to a license for the product in which the chip is used. 11. As regards the FRAND defense, the Court was willing to accept that Dolby holds a dominant position. It reasoned that Dolby has a dominant position because you can *de facto* not sell Smart TV’s, etc. without implementing the Opus standard, as this functionality is expected by customers. 12. The absence of a FRAND declaration by Dolby was held to be irrelevant. 13. The Court considered the EU Commission’s point of view that claim charts must be already included in the first letter to be too formalistic. At least, claim charts were provided in the letter of 24 January 2024, which letter contained a very clear infringement explanation. 14. The Court held that, following such notice, the implementer has to be willing to conclude a FRAND license. It found that Beko had failed to do so. 15. The Court therefore granted an injunction and related remedies. **Comment** 1. This is in my opinion a clear example of an unwilling licensee, who tries to avoid paying any license fee for use of standard essential patents as long as possible by evasive answers and not answering. The grant of an injunction is then to be expected. 2. Of course, an implementer should be able to argue that, in his view, it does not implement the standard (and therefore does not infringe) without losing (as decided by the LD Munich) the right to a FRAND license, if that position ultimately proves to be incorrect. The same is true for defenses such as exhaustion in this case. However, in such situation, the implementer should express its willingness to take a FRAND license if it is found to be wrong, provide information on its sales, and pay a FRAND license into escrow; and I would add, it should also seek confirmation of its position by filing a declaratory action. #### **18 March 2026** #### **Local Division Brussels, Establishment Labs v GC Aesthetics cs** [UPC\_CFI\_1357/2025 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/R_158_Order%28II%29_Signed_redacted.pdf) ***Security for costs*** **Facts** 1. This concerns an infringement action filed by Established Labs (“EL”) (a Costa Rican company) against GC Aethetics (“GC”). 2. GC asks for security for costs (R. 158.1 RoP). 3. GC argues: 1. Costa Rica never ratified the The Hague Convention on the Recognition and Enforcement of Foreign Judgments. 2. Enforcing a cost decision would take 4 years or more. 3. There are serious concerns about whether the claimant would be able to reimburse costs. 4. The financial situation of the parent company is irrelevant. 5. The recoverable legal costs are € 1.2 million, and for that amount security is sought. 4. EL argues: 1. Their financial situation is healthy (supported with a written statement by Mr. Denhon). 2. Enforcement is no problem (supported with a written statement by Mr. Batalla). 3. The requested amount is disproportionate. **The Court** 1. Refers to the Court of Appeal decisions in *Syntorr v Arthex* (and all other case law) and the two thresholds: 1. whether enforcement is unduly burdensome, and 1. whether there is a legitimate concern that any further costs may not be recuperable. 2. After elaborate consideration, the Court concludes that enforcement in Costa Rica is not unduly burdensome. 3. The Court ruled that there is a legitimate concern about EL’s financial ability to pay the costs, making clear that the long time enforcement takes plays a certain role and that only the financial situation of EL and not also of the parent company should be taken in consideration. 4. The Court accepts that € 1.2 million is the ceiling for recoverable costs, but based on proportionality and equity, it sets the amount for security at 50%. **Comment** 1. The Court should be praised for its extensive considerations, but to me all this is a waste of the Court’s valuable time (just like cost proceedings). In my opinion, it is also not realistic to consider a necessary two-step process for enforcement not burdensome, if it is going to take at least several years and will involve substantial legal costs (both from the UPC representatives and the Costa Rican lawyers). It is naive to think that obtaining an exequatur is just a formality. All kinds of defences can be raised with respect to due process, right to be heard, linguistic discrimination, proportionality, violation of public order etc. Moreover, certain countries have rules about enforcement. Those rules protect against enforcement if it endangers the company etc. I myself have seen enough of all that over the last 50 years! 2. So I suggest a simple rule. If a claimant is not an EU entity, such entity has to give security for costs for 50% of the applicable ceiling at the request of the claimant. The rule can only be set aside, if a party can put forward and prove exceptional circumstances which justify no security or a different security. With respect to EU claimants, it remains possible to require a security of costs if the defendant proves that there is a serious risk that such company is unable to pay costs. 3. Of course, as with costs, the best solution is that reasonable parties agree, instead of spending considerable amounts of monies on experts declarations and fees fighting the issue (as was the case here). **– All comments above are** [**Prof. Hoyng**](https://www.hoyngrokhmonegier.com/our-team/legal-experts/prof-willem-hoyng "https://www.hoyngrokhmonegier.com/our-team/legal-experts/prof-willem-hoyng")**‘s personal opinions –**