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# UPC Unfiltered, by Willem Hoyng – UPC decisions week 17, 2026

 27 avril 2026  News 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.

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#### **16 April 2026** ***(late published)***
**Local Division Milan, Prinoth v Xelom**

[UPC\_CFI\_702/2025; UPC\_ CFI\_1757/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-04-16%20LDMilan%20UPC_CFI_703-2025%20ORD.pdf)

***Case management***

**Facts**

1. On 3 April 2026, the claimant requested a one-month extension for filing its reply due on 27 April 2026.
2. Xelom does not agree.
3. The claimant had filed an application to amend the patent and submitted 6 auxiliary requests on 27 January 2026.
4. On 26 March 2026, Xelom answered to the application for amendment with 7 new documents and 100 invalidity attacks against the auxiliary requests, and introducing 3 new inventive step arguments against the original claim, which had already been attacked with 150 attacks on novelty and inventive step.
5. At the same date (26 March 2026), Xelom filed a Rejoinder to the Reply to the Statement of Defence in the infringement case, introducing entirely new non-infringement arguments.
6. It also submitted a technical report of 360 pages.

**The JR**

In view of these exceptional circumstances, it grants the requested extension.

**Comment**

1. Are we before the Italian national courts or the UPC?
2. I wonder whether the JR reads the case law on how a JR should handle a case like this:
    1. following the filing in the revocation proceedings with 150 invalidity attacks, the JR should have asked Xelom, within a week after this filing, to identify its 20 preferred attacks, and Prinoth to respond to these in its Defence;
    2. with respect to the 150 attacks against the auxiliary requests, the JR should have told Xelom to select its best 3 attacks for each auxiliary request;
    3. the JR should have refused the admission of 7 new documents (unless Xelom could make abundantly clear that they could not have been submitted earlier in the proceedings);
    4. the JR should have refused the three new invalidity arguments against the original claim;
    5. the JR should have refused the late-filed new non-infringement arguments;
    6. the JR should have ordered Xelom to file a report not exceeding 40 pages;
    7. the JR should (then) have refused the request for an extension of time by Prinoth.
3. It is unclear from the case file whether Prinoth requested the JR to take the above decisions. If not, this suggests that Prinoth’s representatives may not have sufficiently considered UPC case law. In any event, it would have still been the task of the JR to manage the case along the lines suggested above.
4. In my opinion, the procedural attitude of Xelom seems to amount to a misuse of procedural law.

#### **17 April 2026** ***(late published)***
**Court of Appea, Guardant v Sophia**

[UPC\_CoA\_49/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Order%20on%20leave%20to%20appeal%2049-2026%20%28R.%20221%20RoP%29.pdf)

***Leave of appeal (costs)***

**Facts**

1. The LD Paris rejected the application for a preliminary injunction (“PI”) and ordered Guardant to pay an interim award of € 400.000.
2. Guardant appealed with respect to one of the five patents originally invoked.
3. Within a month after the PI proceedings, Sophia started cost proceedings and also requested a confidentiality order regarding its costs.
4. Guardant stated that the cost application was inadmissible or, alternatively, unfounded.
5. The JR:
    1. granted the confidentiality request;
    2. ordered costs to be paid at the amount of € 600.000, noting that € 400.000 had already been ordered.
6. Guardant asked for leave for appeal of the cost decision.
7. Guardant argues that:
    1. the JR issued the cost decision before it could see the unredacted application and before it had the opportunity to comment;
    2. an appeal was already pending at the time of the cost decision, and an interim award of damages had already been granted. For efficiency reasons, parties often agree to stay cost proceedings until the appeal has been decided.
8. Sophia did not oppose the request.

**The Standing Judge of the Court of Appeal**

1. The Standing Judge grants the request, noting that the cost decision should have been taken after Guardant had access to the unredacted version and could comment on it.
2. There is no reference to the pending appeal against the PI. Cost proceedings are specific and separate. If leave for appeal is granted, the appeal will be decided by the standing judge (R. 221.5 RoP).
3. Guardant is ordered to lodge a written submission no later than 4 May 2026, and Sophia to respond not later than 18 May 2026.

**Comment**

1. The LD Paris was a bit too efficient, but this is all due to the complex and time-consuming nature of costs determination. First of all, lawyers do not want their invoices to become public and therefore request confidentiality, which courts typically grant. As a result, until a decision is made on confidentiality and access is given to the unredacted version, the other party only sees the redacted version. The Court then has to allow time for submissions and responses before reaching a decision.
2. We have to realize that, prior to all this, the Court had already had to decide on the interim award of costs.
3. There are ongoing appeal proceedings with respect to the PI. The Court of Appeal will ultimately decide who must bear the costs, which leads to new costs proceedings before the LD Paris.
4. If Guardant is successful, then the whole prior determination of interim costs and Sophia’s first-instance costs has been unnecessary. In that case, Guardant’s costs would need to be established both at first instance and on appeal.
5. Sophia must timely initiate proceedings on the merits. What happens with costs if it loses those proceedings, or if it fails to file them timely? Then, as far as I understand, Guardant would be entitled to claim costs incurred at first instance and on appeal, and to claim back everything already paid to Sophia.
6. As I said before: agree on costs and change the Rules. No more cost proceedings, instead, establish a table of costs based on the value of the litigation, which costs are then simply awarded without the need for cost proceedings. The amount in the table can be around 70% of the current ceilings for recoverable costs, and as a final rule: winner takes all.
7. It is totally inefficient and unsatisfactory if judges and parties spend so much time on cost proceedings.

#### **20 April 2026**
**Local Division Mannheim, Nokia v Geely**

[UPC\_ CFI\_1291/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-04-20%20-%20AASI_1291_2026_endg_signed_all.pdf)

Anti-interim license injunction

**Facts**

1. Nokia filed a preliminary injunction (“PI”) application for an *ex parte* anti-suit injunction.
2. According to Nokia, the anti-suit injunction takes the form of a request for an interim license in China, which would prevent or hinder Nokia from enforcing its patents in the UPC.
3. Nokia demands that Geely withdraws its request for an interim license insofar as it has effect in the UPC.
4. Nokia further requests an order prohibiting Geely from seeking, before foreign courts, any measure preventing Nokia from enforcing its patents in the UPC.
5. Nokia has stated that it does not object to the pending case in China concerning the determination of the FRAND royalty.

**The Court**

The Court refers to Articles 17(2) and 47 of the EU Charter and Article 6 ECHR, and further states that the request for an interim license is not necessary for internal (China) reasons but is intended to hinder the enforcement of patent rights elsewhere. The Court grants the PI.

**Comment**

1. Why does Nokia (which apparently has no problem with the rate setting by the Chinese court) want to avoid an interim license? Chinese counsel state that if Nokia, despite such an interim license, continues to seek an injunction in the UPC, it may face difficulties in China for not respecting the decision of the Chinese court, which could result in significant penalties.
2. Why would Nokia not want to give up litigation in the UPC? This is because German courts have a reputation for granting injunctions against implementers, according to implementers, *de facto* regardless of the defenses raised.
    The German Divisions in the UPC have largely continued that practice (despite different opinions among UPC countries on how to handle SEP cases). Of course, a UPC-wide injunction gives the SEP holder (here, Nokia) an even stronger position to demand a high royalty, as implementers often cannot afford to leave the market. As there is no suspensive effect, such cases rarely reach appeal, meaning that the Court of Appeal has no opportunity to define a coherent SEP regime for the UPC.
3. I am not persuaded by the Charter and human rights arguments of the Mannheim Division where a company has voluntarily committed to license on FRAND terms in exchange for its patents being part of a standard, thereby securing money for each and every use of that standard. At the same time, I also have no pity for implementers who use every trick in the book to avoid payment and do not show (with acts) a genuine willingness to take a FRAND license. In normal circumstances, the “gun” (the injunction) should stay in the pocket, but it should also not prevent the SEP holder from having to negotiate with his hands tied behind his back. The German Divisions appear closer to applying a “machine gun” approach, and the Chinese courts lean more towards a “hands tied behind the back” approach.
4. I do not know whether this sequence of anti-anti-(etc.) suit injunctions is particularly productive. For example, what happens if Geely applies to a Chinese court for an anti-anti-anti-suit injunction ordering Nokia:
    1. to withdraw the PI;
    2. not to ask the LD to impose penalties;
    3. and, if the LD imposes penalties, to reimburse Geely for the penalties it has to pay to the UPC?
5. There are far better ways to resolve such disputes with a willing implementer.
6. The attitude of the Mannheim Division (“stay out of my UPC garden”) may also appear somewhat hypocritical, given that the UPC/EU has no problem removing the weeds from the gardens of other countries (with so-called “crossborder injunctions”).
7. It all starts with Nokia voluntarily accepting to license on FRAND terms without including a jurisdiction clause specifying the court that determines the FRAND conditions. The result is that basically each court of the country where there are patents is competent to interpret the agreement to license.
8. To rule that agreements which parties intend to have global effect, do not have global effect is strange. Suppose I would promise to keep something secret, but that this does not have effect outside The Netherlands? In my opinion it is a bit easy to say: no, it has no effect in Germany, because of the public order: freedom of speech!

#### **21 April 2026**
**Local Division Milan, Dainese v Alpinestars**

[UPC\_CFI\_472/2024](https://www.unifiedpatentcourt.org/sites/default/files/upc_documents/2026-04-21%20LDMilan%20UPC_CFI_472-2024%20DEC_Anonim-12.pdf)

***Jurisdiction / infringement / revocation***

**Facts**

1. An infringement action was brought based on EP 4 072 364 against two Alpinestars Italy companies and Motocard Bike in Spain.
2. The defendants filed a counterclaim for revocation.
3. The Opposition Division upheld the patent in amended form, which corresponds to the main request filed by the claimant in response to the revocation action.
4. The defendants also filed revocation actions in Spain and Italy.
5. The preliminary objection of the Spanish defendant regarding the Court’s lack of international jurisdiction was to be decided together with the main case.

**The Court**

1. The Court concludes that Article 8(1) of the Brussels Regulation (“BR”) is applicable with respect to jurisdiction over the Spanish defendant, as the allegedly infringing products are the same and the applicable substantive law is fully aligned in substance and scope. It was therefore foreseeable for the Spanish company to be sued in another EU state.
2. Referring to *BSH v Electrolux*, the Court stayed the case against the Spanish defendant because invalidity proceedings had been filed and were pending in Spain.
3. The Court decided not to stay the proceedings because of the pending appeal before the Board of Appeal.
4. The Court notes that there is a contradiction in the claim, as feature d) defines one or more inner housings, while feature j) requires a plurality of housings.
5. The Court accepts only the invalidity attacks set out in the Statement of Revocation, as far as these have been substantiated, and rejects any later filed arguments.
6. The Court examines inventive step in light of both the problem solution approach and the criteria set by the Court of Appeal (the parties having also argued the case on that basis), as the Court allowed an extra brief to give the parties the opportunity to address inventive step accordingly.
7. The Court considers the patent valid but not infringed.

**Comment**

1. The LD Milan now also publishes the names of the representatives. In that sense, it is now in conformity with all other Divisions and the Court of Appeal.
2. In my view, the Court provides a far too extensive review of all the case law on Article 8(1) BR, but then seems to fail to apply it convincingly to the case at hand.
3. In *Roche*, the Court of Justice held that if every defendant only infringes in its own country, Article 8(1) (then Article 6(1) BR) is not applicable. One would therefore expect the Court to clarify that it has international jurisdiction because the anchor defendant and/or the Spanish defendant (allegedly) infringe also in each other’s country, or together in a third country (see *Solvay v Honeywell*). From the facts of the case, this indeed appears likely, but it is strange that the Court mentions all kind of requirements (such as “no abuse”) while remaining silent on what is, in my view, the most crucial one.
4. It is also surprising (and, in my view, wrong) that the infringement proceedings are stayed merely because an invalidity action is pending in Spain. While this is certainly possible, such stay would have been more appropriate if the Court had concluded that the EP was invalid for the UPC countries. However, the Court held that the patent is valid.
5. Even more surprising is that the Court does find that the patent is not infringed, yet still stays the case for Spain. It is very clear that the Court is competent for the infringement case, it should have dismissed the claim for Spain.
6. As regards the decisions on revocation and infringement, I do not see anything strange based on the facts as set out in the decision, except that the Court (perhaps as a courtesy to the parties or as a reminder of the good old times) also assessed inventive step using the problem solution approach. In the end, the result was the same as before the Opposition Division.

#### **22 April 2026**
**Central Division Paris, Huntsman v BASF**

[UPC\_ CFI\_461/2026 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/CD%20Paris%20-%20461-2025%20-%2022.04.2026%20anonymized%20version.pdf)

Revocation action

**Facts**

Revocation of EP 1 516 720 granted in German.

**The Court**

1. A revocation action against an expired patent is as such allowable, especially in cases where there are claims with respect to infringement during the existence of the patent.
2. The Court is not bound to what the description states about the object of the invention. The Court, after studying the patent and prior art can come to a different conclusion.
3. The Court refers with respect to the principles for claim interpretation and inventive step to the decisions of the Court of Appel in *Nanostring v 10x Genomics* and *Meril v Edwards*.
4. The claimants state that the patent is not novel and/or lacks inventive step.
5. The Court considers the patent, after discussing two prior art documents, novel.
6. The Court discusses all the arguments of the claimants with respect to inventive step and concludes that D19 in combination with the general knowledge of the skilled person makes the patent obvious. D19 also disclosed the independent claim 9.
7. The Court discusses then the 10 auxiliary requests and remarks:
    *“For determining inventive step for auxiliary requests the Court is bound to the arguments put forward by the patentee. This means that the arguments which are mentioned in the patent are only taken in consideration if they have been put forward by the patentee.”*
8. The Court considers the first auxiliary request patentable and maintains the patent amended according to the first auxiliary request.

**Comment**

1. In this case, there can be no discussion about whether for a revocation action a certain interest is necessary, because in this case the patentee had invoked its patent in Belgium against the claimant. It would in my view be different if there is no interest for the claimant, because there is then also no general interest to remove an obstacle to free competition, as the patent has expired. During the lifetime of a patent one may argue that a revocation action is always in the interest of society (free competition), but Article 47(5) UPCA requires that the claimant has to be “concerned by the patent”. This seems to indicate that he needs at least a certain (indirect) interest for the revocation action.
2. I agree with the Court that the object of the invention should be objectively determined, and may be different than stated in the description of the patent, especially in cases where certain prior art has not been taken in consideration during prosecution of the patent or have been given a wrong meaning.
3. I think that to hold that with respect to the defence of an auxiliary request, only the argumentation forwarded by the claimant as to the validity (especially inventive step) can be taken in consideration is a too rigid approach. I think it depends on the circumstances of the case whether also statements in the description can be taken in consideration. This is in my view certainly the case if the validity of a dependent claim is defended (for which in my view – but that is not the view of all Local Divisions – no auxiliary request is necessary). However, it is a WARNING for all representatives which file auxiliary requests: each auxiliary request should be motivated and also if certain arguments for inventive step are rather clear because of the description (or the filewrapper), you should repeat them.

#### **23 April 2026**
**Local Division Düsseldorf, Quantificare v Canfield**

[UPC\_ CFI\_559/2024 ; UPC\_ CFI\_106/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Entscheidung_Quantificare%20v.%20Canfield__signed_all_VT.pdf)

***Same decision as in the national court***

**Facts**

Infringement proceedings and a counterclaim for revocation.

**The Court**

1. The Court has international jurisdiction over the defendants on the basis of Article 4 of the Brussels Regulation (“BR”) with respect to the Dutch, German, Italian and French defendants, and on the basis of Article 8(1) with respect to the US parent company.
2. Infringement in Germany is sufficient for an UPC wide injunction, even where Germany is carved out, as there was already a national decision against the German and US companies.
3. The patent is valid and infringed.
4. The Court grants the injunction, among other relief.

**Comment**

1. The claimant had already obtained an injunction before the Düsseldorf national court against defendants 1 and 2 (the German subsidiary and the US parent company), and also in Germany the Bundesgerichtshof (“BGH”), on appeal, had decided that the patent was valid.
2. The claimant, a French company with an European patent granted in French, initiates a new action against the parent company Canfield and the German subsidiary, but now also includes the Dutch and Italian subsidiaries and the French distributor.
3. For obvious reasons, the claimant files again in Düsseldorf, but now before the UPC, presumably thinking (correctly) that this UPC Division is rather unlikely to reach different conclusions from those of their German colleagues.
4. It might have been preferable if another Division, such as The Hague or Paris, had examined the case.
5. However, the (very busy) Düsseldorf Division was happy to take the case and held it had international jurisdiction. In the light of the defence by Canfield, it cannot be blamed for it.
6. My question is whether the defendant could have avoided this forum shopping by arguing that there was no jurisdiction over the German company, who sells only in Germany (see Article 29(2) BR), and this would have meant there was no internal competence over the non-German companies and no jurisdiction over the US company based on Article 8(1) BR.
7. The claimant obtained the desired result. I thought that one of the non-infringement arguments, namely that the patented device did not see on moving subjects, certainly had merit; however, as this was not excluded in the claim or description, the Court applied the (literal) wording of the claim.
8. The defendant did a good effort to invoke prior art that had not been seen by the BGH and, on the basis of which the PTAB (in the US) ruled that the invention was not inventive. No word was spent on that decision by the Düsseldorf Division.
9. All what I would call proportionality arguments (which indeed should have been much better substantiated) were rejected. The well known lesson is that, while it is nice that proportionality in recognized in the EU Enforcement Directive, in Germany, and it appears also before the UPC, it is a de facto dead letter, except in exceptional (what I would call misuse) cases.
10. Far before the time of proportionality, I remember such a misuse case. In that case the building which was rented by the government to house the court had an infringing central heating system. I asked the judge sitting in that same court house for an injunction against the use of the heating system. It was February and very cold. The judge, after holding that the landlord was infringing, considered the demand for an injunction a misuse. I sometimes wonder how this would be decided in Germany and before the UPC. Maybe the Court would just grant the injunction and work in freezing temperatures in order to avoid the application of proportionality?

#### **23 April 2026**
**Local Division Munich, Advanced Standard v Xiaomi**

[UPC\_CFI\_617/2025 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-04-23%20-%20Order%20-%20Panel%20review%20Order%20of%2023%20April%202026%20-%20CFI_617-25%20-%20redacted%20-%20signed%20and%20anonymized.pdf)

SEP license

**Facts**

1. The claimant, Advanced Standard, sues Xiaomi for patent infringement.
2. Xiaomi provided claimant with a bank guarantee, as security for any potential license fee obligations, claiming (conditionally) entitlement to a SEP license.
3. Xiaomi also filed a counterclaim for revocation.
4. Xiaomi also asked for security for costs.
5. The JR, after hearing the parties, considered that the bank guarantee for a potential license fee claim is not a secured asset which takes away the concerns that the claimant would be able to pay the costs of defendant.
6. The claimant filed an application for review.

**The panel**

1. Applying the case law of the Court of Appeal, the Court confirms the order of the JR.
2. The Court also is not willing to grant the request of claimant to add to the order the exception that no security has to be put up if the claimant before the deadline for providing security, would prove to have secured litigation insurance (in conformity with the order of the Court of Appeal of 18 February 2026 UPC\_CoA\_890/2025).
3. The Court considered that it always depends on the yet unknown content of the insurance whether such insurance provides sufficient security and states that the claimant could have secured such insurance much earlier.

**Comment**

1. Xiaomi, the implementer, is trying to avoid an injunction by putting up security for potential FRAND license payments. Did they also show that the bank guarantee is sufficient to cover a FRAND royalty for their past and future sales by (under confidentiality) informing claimant about their sales?
2. Of course the question is then what FRAND amount should be covered the bank guarantee. It should not necessarily be the amount requested by the SEP owner but an amount which can realistically be seen as FRAND (for example confirmed by an independent expert).
3. That should certainly be enough to avoid an injunction. If the invoked patent(s) is (are all) revoked, the defendant should be able to claim the costs for the bank guarantee (in the counterclaim for revocation).
4. The lesson for the SEP holder who has no assets (other than patents) is that such a bank guarantee by the implementer cannot serve as security, which is understandable because if the claimant loses (and defendant is entitled to costs) then that bank guarantee has no value. The lesson for the SEP holder without assets: make sure you have your litigation financing – including an insurance for the costs of the defendant – in place before starting.

**– 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 –**