# 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-18-2026%26title%3DUPC%20Unfiltered%2C%20by%20Willem%20Hoyng%20%E2%80%93%20UPC%20decisions%20week%2018%2C%202026%26summary%3D "Linkedin") # UPC Unfiltered, by Willem Hoyng – UPC decisions week 18, 2026 04 mai 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. Interested in more of this? Stay tuned and subscribe [**here**](https://mailchi.mp/8fbd8890d03b/upc-unfiltered-by-willem-hoyng) for weekly updates. Find all decisions, commentary and more on our [**UPC Intelligence Platform**](https://upcintelligence.hoyngrokhmonegier.com/). 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). #### **24 April 2026** **Local Division The Hague, Stratasys v Bambulab** [UPC\_CFI\_305/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/20260424%20Final%20Order%20PI%20305-2026%20signed%20REDACTED.pdf) ***PI proceedings*** **Facts** 1. During a fair in Frankfurt fair between 18-21 November 2025, Bambulab introduced a new 3D printer. Such a printer was bought immediately after it became available and tested in the US by claimant Stratasys. These tests were concluded on 21 January 2026. 2. Stratasys (supported by a report of its in-house engineer) asks for a preliminary injunction (“PI”) for infringement of EP 2 964 450 relating to 3D printing. 3. In the meantime Bambulab had started a revocation action in the Central Division Paris. 4. The Court gave practical instructions about the written statements, including the number of pages, and refused a final submission by Stratasys which ignored the instructions of the Court. **The Court** 1. As the Court concluded that it is more likely than not that the patent is not infringed, the Court did not have to address other defences such as urgency and invalidity. 2. The Court did not allow online transcribers making a transcription. The Court pointed out that this situation was quite different from someone making a transcript of the audiotape at the premises of the Court. 3. The Court discussed the content of the patent and concluded that both parties more or less agreed about the objective problem solved by the invention. 4. After setting out the principles of claim interpretation and defining the skilled person, the Court interpreted the disputed claim element 1.4.1 as this element was decisive for the case. Claim element 1.4.1 stated: “the purge operations comprising printing at least one purge tower in a layer by layer manner, wherein”. 5. The Court noticed that the wording “layer by layer” was added during the prosecution phase. 6. Bambulab argued that “layer by layer” meant one layer “on top of the other layer”. Stratasys argued that this interpretation was too narrow. 7. The Court sided with Bambulab, extensively referring to the description, and finally stated that during prosecution Stratasys gave this (added) wording the same interpretation. 8. The Court refused the injunction, stated the value of the litigation (€ 1 million) and ordered payment of costs of € 112.000 within two weeks after Bambulab requests payment. **Comment** 1. This case is a perfect example of how to deal with a PI application in an efficient, fair and competent way: 1. set a procedural schedule very early on and limit written submissions to a reasonable number of pages with a certain flexibility for further submissions if deemed necessary for a good instruction of the case, but simply refuse submissions that do not comply with the order; 2. involve a technical judge; 3. only deal with issues necessary for the decision in PI; 4. have parties agree on costs; 5. considering that decisions are immediately enforceable: state (in this case) when payment of the costs is due. 2. In my opinion and on the basis of what is disclosed about the arguments of the parties and the description, the claim interpretation by the Court is convincing. With respect to the prosecution history, the Court of Appeal has stated that a statement of the patentee can (often) be seen as the opinion of the skilled person at the time of filing. This does not make it easy (not to say: not convincing) for a patentee in infringement proceedings to give a different (broader) interpretation to a claim element. However, I would like to add that everything depends on the specific circumstances. #### **24 April 2026** **Court of Appeal, Polytechnik v Dall** [UPC\_CoA\_57/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Order_Suspensive%20effect_UPC_COA_57-2026_Polytechnik%20vs%20Dall__2026_04_24.pdf) ***Suspensive effect*** **Facts** 1. Following the interim conference in these patent infringement proceedings before the Local Division (“LD”) Copenhagen, the JR ordered the defendant Polytechnik to produce construction drawings and manuals within two weeks and imposed a penalty payment of € 1.000 per day should this not be complied with. 2. The JR ordered the requested production of documents together with a confidentiality regime which limited access to the legal representatives of claimant Dall. 3. The defendant had argued that infringement was technically impossible with its own device and that its marketing materials that gave different information were incorrect. 4. The LD held that the claimant had provided reasonably available and plausible evidence of infringement. 5. Polytechnik filed an appeal on 20 April against the order of 10 April and asked for suspensive effect. **The Court of Appeal** 1. The application was admissible as it was timely filed and contained the grounds upon which suspension was asked alongside the facts, evidence and legal arguments in support thereof. 2. Suspensive effect shall only be granted in exceptional circumstances. 3. The Court of Appeal recited its own case law and indicated three circumstances which may lead to suspensive effect: 1. the appeal becomes devoid of purpose or largely ineffective; 2. the order is manifestly wrong; 3. an evident breach of fundamental procedural rights. 4. The Court stated that the appeal is not devoid of purpose considering that if the appeal is successful the information will be removed from the evidentiary record. 5. Contrary to what the defendant stated, the CEO and employees do not belong to the legal representatives who are granted access to the information. 6. The Court also does not agree with the reasoning that the documents the defendant has to produce would anticipate procedural stages reserved for remedies only after infringement has been established. The Court ruled that in any event this did not meet the threshold of a breach of fundamental procedural rights. **Comment** 1. This is a must read for all representatives. 2. It makes clear that you cannot try to slow down the proceedings by appealing a (well-reasoned) decision of the JR to produce evidence. 3. Assuming that the defendant is not infringing then its major problem was confidentiality. However, with regard to the infringement: if the statements in your marketing materials are not confirming what you state in the proceedings then suspicion is certainly reasonable. 4. Although the Court of Appeal stated that the interpretation that the CEO and others at the claimant would also get access was clearly wrong, the patent attorney belonging to the legal team did have access. 5. Because of this, the patent attorney did get to see all allegedly very secret details of the defendant’s device. Suppose the patent attorney would also be prosecuting patents for the claimant, he then had the necessary information to make sure that claims would read on the device of the defendant. Formally he would of course not be allowed to do this but … 6. Therefore, if that was a clear concern of the defendant, he should have made sure beforehand that the order by the JR would avoid this, for instance by excluding prosecuting patent attorneys. In appeal it was too late. 7. The defendant’s concerns are realistic because endless divisionals can be filed at the EPO. I have seen cases involving 17 divisionals, each time targeting the product of the competitor after it had been modified to avoid infringement of earlier claims. This is known as the ‘submarine strategy’! 8. Admire the amazing speed of the Court of Appeal: a decision in 4 days before the deadline of the order of the LD expired. The representatives took 10 days to file their request! #### **27 April 2026** **Local Division Düsseldorf, ETRI v Hisense** [UPC\_ CFI\_716/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-04%2027%20Rectification_signed-1.pdf) ***Calculation error*** **Facts** The Court corrects a calculation error: 60% of the court fees to be returned is not €14.400 but €18.600. **Comment** 1. If a Court is too busy errors can easily happen! Is this another lesson for parties to file in less busy local divisions? 2. Should they maybe next time also use a technical judge? #### **27 April 2026** **Local Division Düsseldorf, 10x Genomics v Curio** [UPC\_CFI\_140/2024](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-04-27%20Order%20release%20security_signed_all.pdf) ***Release of security*** **The Court** 1. Both the proceedings and the cost proceedings have ended. 2. The parties did not appeal. 3. The defendant asked for a release of the security. The claimant did not object. 4. The Court released the security. #### **27 April 2026** **Local Division Hamburg, Teleflex v Speedcare** [UPC\_ CFI\_685/2024; UPC\_ CFI\_157/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/685-2024%20Anonym.pdf) ***Auxiliary requests*** **Facts** 1. This case concerned an infringement case based on EP 2 077 811 for “Clay-based hemostatic agents and devices for delivery thereof”. The patent survived opposition proceedings. 2. The application for a preliminary injunction (“PI”) was dismissed. 3. The defendant filed a counterclaim for revocation of the claims that were invoked against it. 4. The claimant filed over 50 auxiliary requests. **The Court** 1. The claimant is mentioned in the different national registers as the patentee. That is rebuttable evidence that the patentee is the owner. 2. The Court accepts the 51 auxiliary requests in view of the numerous attacks on validity. The application to further amend the patent is considered not allowable as these auxiliary requests could have been made earlier. 3. The Court described the patent and the problem for which it provides a solution. 4. The skilled person has knowledge in both the medical and/or pharmaceutical field as well as knowledge of mineralogy. 5. The Court sided with the defendants with respect to claim interpretation and gave a rather broad interpretation on the basis of the description. 6. The Court considered the patent to be not novel and in the alternative not inventive. In addition, it considered all auxiliary requests to be invalid because of extension of subject matter and also decided with respect to the first set of auxiliary requests that they did not claim a known substance for an unknown (medical) treatment (Article 54 (5) EPC). **Comment** The Court allowed and discussed a great number of auxiliary requests, but for me, based on the prior art, it was clear that it would be virtually impossible to formulate any claim which would be novel and inventive. Although I admire the Court for its very diligent work, I think that the UPC is not a patent office and the fact that patent attorneys are allowed to argue cases should not lead to the EPO practices. The number of auxiliary requests allowed was vastly exaggerated. As I have mentioned before: the Drafting Commission of the Rules had a maximum of 5-7 requests in mind. A patentee should not rely on the EPO prior art search but should conduct its own search with the same quality as a potential defendant. They should then obtain the patent with which they intend to litigate following central limitation proceedings. #### **27 April 2026** **Court of Appeal, Niche Biomedical v Onward** [UPC\_CoA\_60/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Entscheidung%20-%2060-2026.pdf) ***Costs*** **Facts** 1. The Court of Appeal had decided that Onward had to bear the costs of the appeal proceedings. 2. Exactly one month later the claimant initiated cost proceedings in the Court of Appeal. On the same day it stated that it withdrew the application and filed it in the LD Munich. **The JR of the Court of Appeal** The withdrawal has to be seen as an application ex R. 265.1 RoP and will be granted. The other side does not need to be heard as they have no interest as they have not even seen the application for costs. **Comment** The representative was saved by the bell. He should have known that you have to apply for the costs in appeal by initiating cost proceedings at the Division of the First Instance. The question is: did the Registry of the Court of Appeal warn the representative? (In that case, the representative better bring them a good bottle of wine). Everything happened on the same day and thus just in time! #### **27 April 2026** **Local Division Brussels, Esko v In(k)control** [UPC\_CFI\_871/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/order_R%20323_871_2026_FB%20%28002%29-1.pdf) ***Change of language*** **Facts** 1. This infringement case was started in Dutch by the Belgian company In(k)control (established in Flanders), against another Belgian company Esko (also established in Flanders). 2. Esko asked for a change of language to the language of the patent: English. **The President of the Court of First Instance:** 1. A rapid and preferably early decision is required in these type of cases and benefits both parties. A further reply by the applicant is contrary to the Rules and can therefore not be considered. 2. The President cited all the criteria and concluded that the claimant is a small company, that both companies are located in Flanders and therefore refused to change the language. **Comment** The decision is understandable, but of course not very practical. Understandable because the claimant is a small company and the whole case plays in Flanders (and in Belgium language is a sensitive issue). Unpractical because the patent and all the prior art is in English, the President has to find two foreign judges and probably a technical judge that speak Dutch. In addition, in the Court of Appeal there is no panel of which all judges understand Dutch. Therefore, there will be probably a lot of translations necessary and (but that is probably not known to the President) I have never met anyone in business in Flanders who does not speak English (and French). In fact I would have never expected a Flemish representative to file proceedings in the UPC in Dutch. #### **27 April 2026** **Court of Appeal, Merz v Viatris** [UPC\_CoA\_917/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Final%20order%20in%20917-2025%20signed%20%28P%29.pdf) ***Appeal of PI*** **Facts** 1. In first instance Viatris (selling the generic product) stated that: 1. the patent lacks inventive step; 2. the SPC is invalid in view of prior marketing of the product in Bulgaria and Poland; 3. there is a lack of urgency; 4. there is a lack of proportionality; 5. Viatris should be able to continue marketing subject to a guarantee. 2. The LD Paris dismissed the request for a preliminary injunction (“PI”) because of a lack of urgency. 3. Viatris withdrew the invalidity defence of the patent and the SPC in the appeal proceedings. On appeal it maintained the lack of urgency and proportionality defence. **The Court of Appeal** 1. After a very detailed analysis of the facts (and stating that while national law is one of the applicable laws in the UPC in preliminary injunction (“PI”) proceedings, parties have the burden of proof with respect to applicable French law), the Court of Appeal concluded that there was urgency. It cited all the relevant decisions of the Court of Appeal. 2. The Court emphasized the right of a patentee to stop infringement, even shortly before the expiration of the SPC, especially if an injunction was unjustly refused in first instance. 3. The Court discussed all of Viatris’ proportionality arguments and rejected them all. **Comment** 1. The Court of Appeal shows the Paris Local Division that sometimes you have to dig deep to get to the core of the problem (here: urgency) and the right result, even if you are not helped by the representatives. 2. It confirms once again that, also in preliminary injunction (“PI”) proceedings, it only happens in very exceptional cases that an infringement is not followed by an injunction despite all the talk about weighing the interests of the parties and proportionality. See in this regard R. 211.3 RoP which was included especially because of the UK representatives in the Drafting Committee. 3. In this case, when I read that there was a lack of supply by the originator, I thought this was certainly a reason not to grant an injunction because of the interest of the patients. However, the Court convincingly explained that it was a false argument and that, in fact, it was the generic that could not supply! #### **28 April 2026** **Court of Appeal, Optopol v Topcon** [UPC\_ CoA\_56/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Order%20R%20220.%283%29%20RoP%20-%20OPTOPOL%20v.%20Topcon%20-%20UPC_CoA_56-2026.pdf) ***Mistake*** **Facts** 1. Topcon started an infringement action before the Local Division (“LD”) Düsseldorf. 2. The Statement of Reply and Defence in response to the counterclaim for revocation and the application to amend the patent had to be filed on 19 January 2026 at the latest. 3. However, this statement was filed on 26 January 2026 due to a mistake of a secretary who mentioned the wrong date in the agenda. 4. On 30 January 2026, Optopol filed an application for a decision by default. 5. On the same day Topcon informed the LD Düsseldorf that it would file an Application for Reestablishment of Rights which was then filed on 21 February stating that the missed deadline was noted on 21 January. 6. The LD read in that application also an R. 9 RoP request and extended the term for the statement retroactively. 7. Optopol asked for a discretionary review. **The Court** After considering all of Optopol’s arguments, the Court of Appeal sided with the LD and dismissed the application for discretionary review. **Comment** 1. As a representative, do you really think that if your colleague made a genuine mistake and filed a few days late, you would obtain a decision by default? Would that then be the end of the case, even if you were successful? If the LD looked at the circumstances, corrected the mistake and held that it did not cause any harm for Optopol or delay of the proceedings, would you think that an appeal would be successful? 2. Preambule 2 of the Rules of Procedure states “The Rules shall be applied (…) on the basis of the principles of proportionality, flexibility, fairness and equity”. 3. Instead of wasting the Court’s time and the client’s money, I believe there were better solutions. 4. The case law is clear: certain periods (such as for filing a cost application) cannot be extended (see also R. 198.1 RoP, R. 213 RoP and R. 224.1RoP). Failure to file an application in time in these cases means losing a material right, and the opposing party believes that they cannot be confronted with that right (claim) anymore. However, this is obviously not the case for a procedural period. 5. So, Topcon’s representative has a secretary who mentions the wrong date in the agenda. The representative does not mention also the date in its own agenda (?), and is not using correct procedure to correct the mistake. The representative is then taking a risk by waiting for the last day to file the wrong relief. 6. Optopol’s representative did not see the words “flexibility” and “fairness”. 7. This was not a good day for representatives in general and Topcon must be grateful that the judges did do justice. #### **28 April 2026** **Local Division Düsseldorf, Dai Nippon v Zapp** [UPC\_ CFI\_869/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Anordnung_R36_869_2025.pdf) ***Task of the JR*** **Facts** 1. The claimant Dai Nippon asked for an extension of term. 2. The claimant complained that in their rejoinder defendant Zapp made a fully new and elaborate statement with respect to the infringement case and the main invalidity case with respect to the request for amendment. 3. The claimant asked to specifically dismiss specified parts of the submission or alternatively give them three weeks to react in a further submission. **The JR** 1. The question of what is allowed with respect to new documents and new arguments is a “Sachfrage” (the material case) and not of case management. 2. As this decision has to be taken by the whole panel the JR considers it to be better to make that decision after the oral argument. That way the whole panel has read the whole file. 3. The JR grants the right to a further pleading within three weeks as this does also not lead to a delay of the decision. **Comment** 1. In my opinion, this is an understandable but incorrect decision. 2. The problem is an application of the Rules of Procedure. 3. The UPC works with a JR which should be on top of the case from day 1 and should resolve procedural issues. It is unsatisfactory (as in this case) if a defendant just ignores the Rules of Procedure and acts as if he is in German national proceedings. 4. This is also very unsatisfactory for the claimant, who now has to prepare a further brief and respond to all the new arguments, which in all likelihood should have never been part of the litigation. Finally, as parties have argued about it, there is a likelihood that the Court is inclined to accept the new arguments. 5. This is even more unsatisfactory given that the claimant specifically indicated what should not be allowed. Furthermore, in the rejoinder to the request for amendment of the patent, one cannot respond to the infringement case or the invalidity of the granted patent. 6. In my opinion, the JR should have given the defendant two weeks to respond to the claimant’s complaints and should have made a decision may be delaying a decision on unclear or debatable issues to the oral hearing. #### **28 April 2026** **Local Division Düsseldorf, Cup&Cino v Alpina** [UPC\_CFI\_47/2025; UPC\_ CFI\_68\_2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-04-28%20Order%2047_2025_signed.pdf) ***Case management*** **Facts** 1. This case concerns an infringement and revocation case. 2. The parties apparently complicated matters by filing unclear statements. 3. The JR noticed this chaos and decided to get some order. **The JR** 1. The content of the case is determined by the content of the claims. 2. The parties have to give a motivated interpretation of the claim elements in dispute and use the same interpretation in both the infringement and the validity case. 3. If you argue invalidity then the burden of proof lies with you. It is not sufficient for a novelty attack to just refer to a document or a figure in such document. You have to give a substantiated reasoning. With respect to inventive step, you must follow the case law and the steps as indicated by the Court of Appeal. 4. The auxiliary requests have to be presented in such a way that the Court can immediately see where the different claim parts can be found in the description or dependent claims. They have to be presented separately. An amount of six auxiliary requests is a reasonable number. 5. The response to such substantiated auxiliary requests should also be made in an orderly fashion and should be substantiated. **Comment** These lessons of the JR are a must read for all unexperienced representatives. I add that it is in fact a shame that such lessons are necessary. #### **28 April 2026** **Court of Appeal, Fakro v Dolle** [UPC\_ CoA\_928/2025; UPC\_ CoA\_929/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Aussetzung_final_mt.pdf) ***Settlement*** **Facts** 1. This is an appeal following a decision by the Local Division Hamburg (UPC\_CFI\_461/2024 and UPC\_ CFI\_718/2024). 2. The parties asked for a stay because they had settled but still had to file a withdrawal application. **The Court** The Court ordered a stay to ensure that the period for the Grounds of Appeal did not expire before the request for withdrawal had been decided upon. **Comment** This of course makes sense. Formal withdrawals on appeal make sense certainly when the patent has been revoked in first instance, because after such withdrawal the patent remains valid. #### **28 April 2026** **Court of Appeal, Suinno v Microsoft** [UPC\_CoA\_21/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Order%2028-04-2026%20signed%20RK-PR-IS-SK-UM.pdf) ***Security for costs*** **Facts** 1. The Court of Appeal granted a default judgment in the infringement proceedings after Suinno failed to provide security for costs. 2. After the default judgment Suinno was ordered to pay Microsoft costs in the infringement proceedings. Suinno was denied leave to appeal but, until today, did not pay Microsoft’s costs of € 350.000. 3. In the revocation proceedings Suinno’s patent was revoked. Suinno appealed. 4. Microsoft asked for a stay of the appeal and applied for security for costs for the appeal. 5. In the meantime, Suinno was ordered to pay € 300.000 with respect to the costs for the revocation case in first instance. 6. The Court of Appeal ordered Suinno to provide a security for costs for € 600.000 for the appeal and extended the deadline for the statement of response for Microsoft to 19 June 2025. 7. Suinno asked for a revocation of the order or a lower amount (up to € 50.000) for security. **The Court** 1. The Court noted that you can ask for revocation or variation of a management order. 2. Article 69(4) UPCA does not only apply in the cases of Article 59-62 UPCA and does also not suggest that providing security for costs is an exception. 3. The purpose of the security for costs is protecting the opposing parties from not being able to obtain costs. 4. The Enforcement Directive and the TRIPS Agreement do not contain any provision regarding security for costs. 5. Articles 17 (2) and 47 of the Charter of Fundamental Rights are not absolute and may be restricted to protect the rights and freedom of others. 6. In its reply to the application for security for costs, Suinno did not challenge the amount. Therefore, the arguments for a lower amount are too late. 7. You cannot ask questions to the European Court of Justice about the Charter of Fundamental Rights itself and there is no doubt that there is no violation of EU Law, the Enforcement Directive or the TRIPS Agreement. 8. The application was rejected. **Comment** 1. You cannot deny that Suinno is not fighting for the right to litigate, even though they are unable to provide security for costs. There are many systems that are different from the UPC, in which this is possible and where if you lose you do not or hardly have to pay anything. I mention the US, but in the EU this is (somewhat) different after the Enforcement Directive, which entitles you to costs. Before the Enforcement Directive, in many countries (the Netherlands, Belgium, France etc.) the winner received only a very limited amount of costs. 2. It is by now clear that in the UPC you cannot start litigation with a shell company without assets or in general without enough funding. So instead of a Don Quichotte fight like Suinno you should secure financing. It looks as if Suinno did not have such a good case, as the patent was invalidated, but hoped to get some money out of Microsoft just by starting a law suit. That backfired! Microsoft will in all likelihood not recover their costs, but they have made clear that if you want to get any money from them you will have to fight for it or have a good case. #### **29 April 2026** **Local Division Helsinki, AIM Sport v TGI** [UP\_CFI\_214/2023; UPC\_CFI\_403/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/214-2023%20403-2025%20Decision%20signed-6.pdf) ***Equivalence*** **Facts** 1. The infringement action and a preliminary injunction (“PI”) application were lodged on 5 July 2023. 2. After the case returned from the Court of Appeal which held that the Local Division (“LD”) had jurisdiction, AIM withdrew the PI. 3. AIM was invited to file an updated Statement of Claim and AIM added a new defendant. 4. On 11 April 2025 the Court of Appeal confirmed the order of the LD to allow an updated Statement of Claim and to accept the new defendant. 5. The defendant TGI filed a counterclaim for revocation and AIM filed a request for amendment of the patent. 6. The disputed patent was EP 3 295 663 for “Digitally overlaying an image with another image”. 7. The infringement claim was based only on independent method claim 12. 8. In the UK the SUB system used by TGI was found to infringe an amended form of the patent. 9. The (national) Court of Appeal of Munich had dismissed the infringement claim for Germany. **The Court** 1. During the interim conference, an agreement was reached about the knowledge of the skilled person and the fact that LED boards belonged to the common general knowledge. 2. The Court discussed the patent and the problem for which it gives a solution. It also construed the claim with reference to the Court of Appeal in Insulet v EOFlow (UPC\_CoA\_768/2024) and Nanostring (UPC\_CoA\_335/2023). 3. The Court first cited the claim elements on which the parties agreed. There were 4 claim elements on which the parties disagreed. 4. The Court gave a more restricted meaning than AIM to “intrinsic image property” and accepted TGI’s reading of claim 12. 5. After citing the criteria formulated by the Court of Appeal, the Court concluded that there was no added matter and that the patent was novel and inventive.. 6. The Court concluded that there was no literal infringement. 7. The Court noted that the Court of Appeal has not ruled about the doctrine of equivalence and because parties did so applied the considerations of the LD The Hague of 22 November 2024 (UPC\_CFI\_239/2023): 8. - Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context? 9. - Fair protection for the patentee: is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee in view of his contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)? 10. - Legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally? 11. - Novelty and inventiveness: is the allegedly infringing product novel and inventive over the prior art? (i.e. the Gillette/Formstein defence) 12. The Court recognized that there are other ways of establishing equivalence, but noted that it does not see reasons to diverge from the criteria to which both parties agree and concluded that there is no technical equivalence. 13. The Court dismissed both the infringement action and the revocation action. **Comment** 1. The same conclusion about non infringement was reached as before the German national Court of Appeal, but it was different to the decision in the UK. 2. As I have already mentioned before: I am not very enthusiastic about the (Dutch) equivalence test of The Hague. It allows too much freedom (uncertainty) when a Court states that it is a technical equivalent, but does not find infringement because of the certainty for third parties. I see no reason why the UPC should not adopt the means-function-result test, namely: is the same (or similar) result reached with (essentially) the same means in (essentially) the same way? The words “similar” and “essentially” provide sufficient certainty for third parties while also ensuring that the inventive idea, the essence of the invention, is used. Of course, the Gilette defence remains possible. A patent can never cover what was known in the prior art or what is not inventive over the prior art. #### **30 April 2026** **Court of Appeal, Adobe v Keeex** [UPC\_CoA\_1/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Order%20Adobe%20v%20Keex%20%281-2026%29%20%281%29.pdf) *Leave to appeal & security for costs* **Facts** 1. Keeex started infringement proceedings against Adobe. 2. Adobe asked for security for costs of € 5 million. 3. The Local Division Paris ordered a security of € 50.000. 4. Adobe appealed this decision directly to the Court of Appeal. **The Court of Appeal** 1. Adobe’s appeal is not admissible because it is an appeal according to R. 220.2 RoP and therefore Adobe needs leave for appeal. 2. The fact that the LD Paris made a mistake in stating that the order could be appealed according to R. 220.1 RoP is not an excuse. From Adobe’s statements it becomes clear that they had noticed the mistake before the end of the appeal term. 3. This also means that R. 313 RoP *restitutio in integrum* cannot be applied. 4. The Court emphasized the importance of a strict application of these appeal term rules also in the light of legal certainty. 5. Obiter dictum: the LD Paris was wrong to consider the weak financial status of the claimant when establishing such a low security. **Comment** 1. The Local Division Paris should not mention the appeal term in the operative part of the judgment but clearly and correctly (!) in a separate paragraph like other LD’s, as also ruled by the Court of Appeal 2. I wonder why the representative of Adobe not ask the Paris Local Division to correct their order and/or at least grant leave for appeal? 3. This is all the more painful as their appeal was justified. The weak financial status of the claimant is not a reason for a low security. This is, of course, a no-brainer, because then every claimant would place their patent in an empty shell company before starting the litigation. 4. This was certainly not good publicity for (the representatives of) the UPC! 5. It does raise a question: Is setting a security a management order that can be amended? The answer is yes (see the decision of the Court of Appeal this week in *Suinno v Microsoft*). So I advise the Local Division Paris to review its costs order in accordance with the decision of the Court of Appeal and/or Adobe to request for such revision (variation) of the order (R. 334 RoP). **– 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 –**