# 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-35-2026%26title%3DUPC%20Unfiltered%2C%20by%20Willem%20Hoyng%20%E2%80%93%20UPC%20decisions%20week%2035%2C%202026%26summary%3D "Linkedin") # UPC Unfiltered, by Willem Hoyng – UPC decisions week 35, 2026 31 août 2026 UPC Unfiltered 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). #### **7 May 2026 (*****late published*****)** **Central Division Paris, Omnia v Sidel** [UPC\_CFI\_799/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-05-07-omnia-v-sidel-po-final2-sig.pdf) ***Declaration of non-infringement*** **Facts** 1. The claimant files an action for a declaration of non-infringement (“DNI action”) in respect of two European patent applications: EP 4 594 194 and EP 4 624 351. Before the date of the Statement of Defence, the European Patent Office (“EPO”) had issued decisions to grant both applications, and one patent had formally been granted. 2. The defendant files a preliminary objection based on R. 19 RoP. **The Court** 1. The Court rejects the objection. It states, among other things, that the reasoning of the defendant would prevent parties from frustrating the UPC's jurisdiction, since proceedings may be commenced before grant in certain national courts. 2. As to the possibility of an opt-out, the Court states that an opt-out can be filed much earlier, while the patent application is pending. **Comment** 1. There are certainly arguments to be made for the opposite view, but I like this decision as it, to a certain extent, prevents the use of national courts to avoid the UPC and for the other practical reasons mentioned by the Court. 2. For representatives it is important to realize that if you want to avoid the UPC, you will have to file an opt-out very early in the prosecution phase. However, realize that if one of your competitors files a revocation or a DNI action in a national court after the opt-out, you can no longer withdraw it. 3. It is clear that securing jurisdiction is a matter of days. It is therefore important to be ready to act immediately once the EPO decides to grant! #### **17 August 2026** ***(late published)*** **Central Division Paris, SprintRay v X** [UPC\_CFI\_2020/2025; UPC\_CFI\_2034/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2026-08-17_sprintray-anordnung-1-mh-tz-kr.pdf_1.pdf) ***Change of language: conditional decision?*** **Facts** 1. A revocation action and an action for a declaration of non-infringement in respect of EP 3 762 212. 2. The patent was granted in German. 3. The defendants filed an application under R. 9 RoP requesting a change of the language to English. **The Court** 1. Article 49(6) UPCA is clear: the language of proceedings before the Central Division shall be the language in which the patent was granted. 2. The request was filed in English and was therefore inadmissible, but the Court nevertheless addresses it. 3. The Court states that a request under R. 9 RoP cannot be used to depart from Article 49(6) UPCA. This is also confirmed by the fact that, if a counterclaim for revocation is referred to the Central Division, it must be translated into the language in which the patent was granted. **Comment** A laudable effort by the defendant which was doomed to fail. However, it was a clear and loud cry from practice to do away with all these languages and adopt one language for the UPC. The common language for Europe is English. In the (almost never existing) situation that the defendant only acts in his own country and does not master English, the Court will make sure that pleadings etc. are translated. It would make the UPC more competitive with US and UK proceedings: it would create a level playing field in Europe and enhance transparency, make the system cheaper and make it truly international. As long as the French and German representatives in the Administrative Committee insist on speaking French and German, making the system more expensive because interpreters are necessary, it still seems far away! #### **21 August 2026** ***(late published)*** **Local Division The Hague, GSK v Pfizer** [UPC\_CFI\_620/2025; UPC\_CFI\_1509/2025; UPC\_CFI\_1511/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/f6b1b181-ac86-4b0b-bc21-02624f6935d3.pdf) ***Streamlining by the JR*** **Facts** Before the oral hearing, the JR deals with solicited and unsolicited issues which arose after the interim conference. **The JR** 1. The JR states, among other things, that, given the accelerated and front-loaded nature of the UPC proceedings, the threshold for new documents after all written submissions have been exchanged is high. It is then explained in detail why, in this case because of special circumstances, the document is allowed, making clear that the other party knows (and has already studied) the document. 2. Apart from the above, I understand from the JR that a request for a further exchange of pleadings before the end of the written proceedings, or a request to produce a further document, should not already include the substantive pleading or document. The Court must decide the request first. 3. The JR stresses that only the 5 best invalidity attacks and 10 auxiliary requests will be considered during the oral hearing. 4. The JR states that the defendants did not comply with her request to indicate one or two invalidity attacks in respect of each auxiliary request and therefore orders them (again) to do so. **Comment** The JR again does a good job. She wants to make sure that the one-day oral hearing focuses in an organized fashion on the real issues, and is understandably frustrated that, despite her efforts during the interim conference, the parties did not fully comply with her initial effort. The problem for parties is that they do not like making tough decisions as to what their best arguments are. (Probably because they have all experienced winning a case with an argument they did not think was their best!) However, this is the UPC and tough decisions are demanded. Experienced representatives who have already been confronted in their national courts with this type of proceeding (such as the accelerated proceedings in the Netherlands, with which the JR is of course very familiar) know how to make them. For the objective observer, the interesting thing is that the quality of the judgments after such efficient UPC proceedings is certainly not inferior to that of US or UK proceedings, where you spend weeks in court at far greater cost. #### **24 August 2026** **Local Division Hamburg, Malikie v Xiaomi** [UPC\_CFI\_1733/2025; UPC\_CFI\_1537/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/1733_2025%20MANNH.pdf); ***Settlement*** **Facts** The parties settled before the written proceedings closed. Both parties filed a request for withdrawal and consented to the withdrawal of the other party. Both stated that they did not want a decision on costs, but rather a return of the court fees. **The Court** The Court grants the request and orders a 50% reimbursement of the fees. **Comment** This is (also for the Court) the most efficient way to implement a settlement. Make sure to request reimbursement of the court fees at the same time (as was done here). #### **24 August 2026** **Local Division Lisbon, Ericsson v Asus** [UPC\_CFI\_2665/2026 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2ddabea1-45ae-4ce9-a2d5-bee8af659673.pdf) ***Stay of proceedings*** **Facts** 1. A decision in favor of Ericsson was rendered on 6 May 2026. 2. On 7 July 2026, Ericsson asked the Court to issue a decision on costs or rule that Asus had to pay €150,000 to Ericsson as a result of the cost agreement between the parties. 3. The Court granted the request on 29 July 2026. 4. Asus appealed. 5. On 7 July 2026, Ericsson had also filed an application for re-establishment of rights because it had missed the deadline of one month for starting cost proceedings. 6. In its response, Asus requested a dismissal of Ericsson’s request or a stay of the re-establishment of rights procedure until the Court of Appeal had decided on Asus’ appeal filed on 29 July 2026. 7. Ericsson did not oppose the stay. **Decision** The Court grants the stay. **Comment** This is, of course, the most practical decision. I predict that the appeal will be dismissed and that the re-establishment proceedings will not be necessary. If the parties have an agreement on costs and one party does not honour such an agreement, the claimant can simply ask the Court to give a decision on the agreed amount. It would be strange if cost proceedings were needed for that. As this agreement is clearly connected to the proceedings (regarding an EP) for which the Court has competence, the Court can, in my opinion, deal with it. #### **24 August 2026** **Local Division Lisbon, Ericsson v Asus** [UPC\_CFI\_757/2024](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/5efc1631-ebc2-4293-8f5b-2d0b4c1a8feb.pdf) ***Confidentiality after case closure*** **Facts** 1. On 6 May 2026, the Court held that the defendant Asus was infringing EP 2 819 131. 2. Asus had to give information about the infringing products it had sold within 10 weeks after service of the decision. 3. On 13 August 2026, Asus filed for a confidentiality order under R. 262A RoP and R. 262.2 RoP with respect to the information to be supplied. **The Court** 1. The Court refused the request. 2. As the circumstances justifying the protection of confidential information already existed during the proceedings, the request should have been made during the proceedings. **Comment** 1. This decision is correct and well-motivated, particularly given that the request was clearly made at a time (one week before the 10-week deadline) intended to frustrate the decision of the Court. 2. This is a lesson for representatives! If the claimant requests disclosure of confidential information in its Statement of Claim, make sure you request protection of that information during the proceedings. #### **24 August 2026** **Local Division Hamburg, Fraunhofer v HMD** [UPC\_ CFI\_494/2025; UPC\_CFI\_1128/2025 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/ec06cdac-3c9e-46d9-a135-9adb405faff0.pdf) [UPC\_495/2025; UPC\_CFI\_1131/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/06acec68-4a74-45ea-8aa1-3211d925167a.pdf) ***SEP case*** **Facts** 1. The claimant sued the defendant because of infringement of EP 2 380 167 (an advanced audio coding (“AAC”) standard-essential patent (“SEP”)). 2. The claimant licenses its AAC standard patents via the AAC patent pool. 3. The defendant produces smartphones. 4. Since 2017, the manager of the AAC patent pool, VIA, asked the defendant to take a license. 5. The defendant has never provided security. 6. The claimant made its first auxiliary request unconditional. **The Court** 1. The Court discusses the objective of the invention, which is to provide an improved method of generating a decorrelator filter for decoding a signal, and interprets the claims. The Court does not limit the claim on the basis of Figure 3, as suggested by the defendant, stating that this interpretation is supported by the claim as a whole. 2. After the first auxiliary request is made unconditional, the priority is valid. The Court refers to the Court of Appeal, stating that the applicable test is the same as that applied with respect to Article 123(2) EPC (extension of subject matter). 3. As priority can be claimed, the Court does not have to decide whether the working papers uploaded to the MPEG-database, which are to be considered accessible to a rather broadly defined group, constitute prior art. The Court concludes that the patent is novel. 4. The Court considers the patent inventive stating that a prior art publication invoked for an inventive step attack leads the skilled person even away from the invention. 5. The Court finds infringement because the standard applied in the defendant’s products reads on the claims. 6. The Court discusses the principles of exhaustion. The Court states in paragraphs 208–209: “208. The effects of exhaustion initially extend to claims relating to devices. However, according to the wording (“acts relating to a product protected by the patent”), the effects of exhaustion also extend to method claims relating to the handling of a product protected by the patent. This applies both to a product which has been obtained directly through an authorised use of the patented process, and to a product which utilises a process claim, provided that it is also protected by an apparatus claim and has been placed on the market with the consent of the patent holder. Exceptions apply in cases where the patent holder has expressly reserved the right to consent to the use of this process. The patent holder may commercialise his exclusive right only once; subsequent uses of the patent are therefore, in principle, deemed to have been remunerated, unless otherwise agreed. In any event, this is the result where the patent holder has explicitly consented to such acts of use (LD Munich, decision of 18 December 2024 – UPC\_CFI\_9/2023 – Huawei v Netgear, p. 119 f.). 209 The question of whether consent has been given, in so far as it has been declared within the framework of a contract, is governed by the law applicable to the contract. However, the legal consequences of consent given by the patent proprietor arise from the law of the relevant country of protection — in this case, therefore, from Article 29 UPCA. In order to preserve the marketability of the products concerned, these legal consequences are, in principle, not subject to the principle of party disposition (LD Munich, decision of 18 December 2024 – UPC\_CFI\_9/2023 – Huawei v Netgear, p. 120).” 7. In this case there is no exhaustion. 8. The Court rejects the FRAND defence, having regard to the decision of the Court of Justice of the European Union in *Huawei v ZTE*, which requires serious willingness on the part of the implementer — 'no lip service' — and a reasoned FRAND offer by the SEP holder. If licences are always granted as part of a pool licence, the offer of such a (FRAND) licence is sufficient, but in certain situations (e.g. cross-licensing situations), the SEP holder has to offer a bilateral licence. 9. Having discussed the general framework in detail (paragraphs 230–245), the Court concludes that the defendant was unwilling and did not provide security. 10. The injunction was granted. **Comment** 1. The defendant (the manufacturer of Nokia smartphones) managed to keep the claimant away for many years and then decided to fight when the claimant lost its patience after eight years (!). The result is not surprising. What is surprising is that the defendant could continue using the patents of the pool for eight years without paying, which of course exposed the SEP holder to the risk of the implementer's bankruptcy or reorganisation. 2. The decision on unwillingness was already justified because of the defendant not providing any security. 3. I have quoted the Court with regard to the exhaustion paragraphs. If a patent has a product claim and a method claim (which – let us assume – I have to use if I use the product) and I buy the product, then the patentee can prevent me from using the product by making it clear that the sale of the product does not include a license to use the method claim, and thus the product. I have a problem with this if the method claim is the only way I can use the product. If I buy a product (say a coffee machine) that has been put on the market in the EU with the consent of the patentee, then one of the permitted acts is using the product. Being able to stop that use (i.e. making coffee with my machine) seems to me like double dipping. It is different if the product (the coffee pad) is merely an essential part used in the method (making coffee), then it is only partly double dipping, as I have already paid for the raw materials used in the method but not for the method itself. In the first case, does it make a difference if I make sure (with divisionals) that the product and the method end up in different patents? #### **25 August 2026** **Local Division Paris, Sun v Vivo** [UPC\_CFI\_362/2025; UPC\_CFI\_0001786/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/ddf8405c-4564-406a-a228-3a695b144a9c.pdf) ***Settlement*** **Facts** Both parties filed an application for withdrawal, stating that they do not ask for costs. **The Court** The Court grants the request noting that no application for reimbursement of fees is made. **Comment** If the parties wished such reimbursement, they should have requested it at the same time as the request for withdrawal. #### **25 August 2026** **Local Division Düsseldorf, Versah v HaeNaem** [UPC\_CFI\_56/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/931e8dc8-45d9-4cff-b7a1-fcfb7eb36088.pdf) ***Infringement*** **Facts** 1. The claimant sues the defendant for infringement of EP 3 402 420. 2. The defendant filed a counterclaim for revocation. 3. The claimant requested to allow a further auxiliary request. The Court had not yet decided on that request. **The Court** 1. Although the patent is silent on the problem it resolves, the Court formulates the problem addressed by the patent on the basis of the description. 2. The Court gives a word in the claim a meaning different from its normal meaning, stating that the patent is its own lexicon. 3. With respect to sufficiency of disclosure, the Court states that even if the skilled person is only able to work the patent after some trial and error, the disclosure may nevertheless be sufficient. 4. The Court holds that it does not have to make a decision regarding priority as the most relevant prior art dates from before the priority date. 5. As for novelty and inventive step, the Court dismisses the arguments of the defendant. 6. With respect to infringement, the Court holds that the very detailed remarks of the claimant’s party expert establish infringement. The more general remarks of the defendant do not sufficiently refute the statements of the claimant’s party expert. 7. The Court concludes that both defendants offer and put the allegedly infringing products on the EU market. 8. The Court grants the requested injunction. **Comment** 1. The Court tells the defendant that it did not do enough to counter the arguments of the claimant (“that the challenged embodiment was objectively capable of fulfilling the features of the patent claim”) implying that they should have adduced evidence from their own party expert. 2. A party expert is fine, but I hope that the Court does not think that a party is right just because it has a party expert who says so. Of course, if a party expert can convince the Court that that party is right, that is fine, but I would be hesitant to give that more weight than the same arguments made by the representatives. In other words, for the defendant it was not so much the lack of a party expert but the apparent lack of knowledge necessary to counter the claimant‘s (expert’s) arguments. 3. The headnote is interesting. The headnote reads as follows: “When determining whether a product claim has been directly infringed, the decisive factor is whether the challenged embodiment is objectively capable of fulfilling the features of the patent claim, given its nature and suitability for use.” So, assume that the product claim includes X as one of its (hardware) elements and that the claim states that X is for cutting. If the alleged infringer’s product matches the description of the hardware in the claim, but X is unable to cut, then there is no infringement. I agree! But what if the cutting function of X, which is necessary to realize the inventive advantages, is only mentioned in the description but not in the claim? Would we say that this is a product claim, meaning absolute product protection and thus infringement, or would we say no infringement? I vote for the latter. 4. Why does this US company sue a Korean company in German in the busy Düsseldorf Division with respect to an English language patent? This makes no sense for the US claimant nor for the defendants (both non-German companies). They should have been able to change the language at least to English, but did not do so! To me, it is strange that clients agree to litigate in a language which they, I assume, do not master. #### **25 August 2026** **Local Division The Hague, Genevant v Moderna** [UPC\_CFI\_191/2025; UPC\_CFI\_617/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/e59ab02f-6203-4381-bf33-0f24bf588c89.pdf) ***Return of court fee*** **Facts** 1. Infringement and counterclaim for revocation proceedings. 2. The parties have settled. **The Court** 1. The Court grants the request for withdrawal of their respective actions. 2. Instead of 50% return of the court fees, the Court orders reimbursement of only 25% as the very substantial written proceedings had almost ended and the JR and the Court had to deal with substantial R. 19 RoP proceedings, as well as a revision thereof and a large number of applications. **Comment** The Court is a self-financed institution and I applaud The Hague Local Division for not returning the standard 50% given the exceptional quantity of work they had to do in this case. The Rules on reimbursement allow such exceptions, and the use of R. 370.9(e) RoP was fully justified in this case. #### **25 August 2026** **Local Division Hamburg, Cilag v Rivolution** [UPC\_CFI\_1535/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/56f48c87-531b-4a67-a03e-67326c5b9628.pdf) ***PI proceedings (urgency)*** **Facts** 1. Cilag filed an application for a preliminary injunction (“PI”) on the basis of EP 2 615 984. 2. Following an earlier PI granted by the Local Division Munich, the parties agreed on 18 October 2025 to a clearing process with regard to a new design-around product offered by the Chinese producer of the defendants. 3. No design-around product was presented for the clearing process despite requests by the claimant. 4. Therefore the claimant obtained a product (a medical instrument), with difficulty, only on 6 March 2026. 5. On 4 May 2026 the request for a PI was filed. **The Court** After discussing the patent and interpreting certain claim elements, the Court concludes that it is a case of literal infringement. The Court rejects the argument that because the anode and cathode are visible and accessible from the outside, they are not, as the claim requires “in the inside of the housing”. **Comment** 1. Of course, it was not smart of the defendants not to send the design-around product to the claimant when asked. They should have expected that this would not work in their favour in the discussion about urgency even if the drawings were in fact clear enough to establish infringement. The real product is always better than two-dimensional drawings. Therefore, certainly in view of the refusal, the argument of the claimant that they needed to first see the product carries a lot of weight. 2. I also wonder what kind of advice the defendants received about their design-around. For me (but I base this only on what I read in the decision) it seems pretty clear from the outset that the defendants were not going to win the war with this design-around. 3. One does not often see an invalidity argument based on Article 53(a) EPC (public order and morality, here based on the arguments of causing the unnecessary production of plastic waste). It is quite creative, but it also does not show a lot of faith in the obviousness arguments! #### **26 August 2026** **Local Division Düsseldorf, Topsoe v Sypox** [UPC\_CFI\_1696/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/0336c426-cba0-4b0e-8f8d-f3c387fb858e.pdf) ***Confidentiality*** **Facts** 1. On 25 November 2025, the Court granted an ex parte request for seizure of evidence and inspection relating to EP 3 802 413. 2. On 11 May 2026, the defendant Sypox started revocation proceedings in the Central Division Munich. 3. The extensive reports of the neutral experts carrying out the seizures have been disclosed to both the representatives of Topsoe and the defendant. 4. The defendant requests extensive confidentiality provisions with respect to the reports and seized documents. **The Court** 1. The Court uses the following principles to decide the request: 2. As the Düsseldorf Local Division has already stated (UPC\_CFI\_539/2024, Order of 19 November 2025, Headnotes 1–3, para. 28 et seq. – Bekaert v. Siltronic), the following assessment must be carried out to determine the scope of the disclosure of the detailed description to the applicant: a) The first step is to establish whether the information or evidence constitutes or contains trade secrets, personal data relating to third parties, or other confidential information. b) If this is the case, as a second step, this information must be redacted if it is irrelevant to the question of patent infringement or acts of use. c) Where confidential information relates to the question of infringement and/or acts of use, a decision must be made on a case-by-case basis, as to whether it should be disclosed to the applicant, who would then be obliged to maintain confidentiality vis-à-vis third parties, or whether the applicant’s access to such information should be restricted to a specific group of persons (third step). 3. With regard to the relevance of confidential information to the question of patent infringement (second step), the following applies: a) Information which the expert has actually relied on in his detailed description when examining patent infringement is generally considered relevant. It is for the respondent, who invokes the need for redaction, to demonstrate that this is not the case for certain information in exceptional circumstances. In doing so, the respondent may not rely on the argument that the patent infringement could have been adequately assessed on the basis of other information. b) Where, on the other hand, the matter concerns information which the expert did not rely on when examining the question of infringement, it is for the applicant to demonstrate its relevance. If the expert has quoted extensively from documents when drawing up the detailed description, and the applicant nevertheless seeks disclosure of these documents as well, the applicant must also explain why the remaining content of these documents is significant in addition to the detailed description. c) The relevance of certain information to patent infringement may also arise from the fact that, whilst such information is not directly necessary for determining whether the subject-matter falls within the scope of the patent claim, it is necessary for understanding the explanations as a whole. 4. The Court issues a detailed 47-page decision setting out the following general conclusions: 1. An attorneys' eyes only regime is possible only if the parties agree. 2. The expert will not be obliged to erase all the data. The confidentiality obligations provide enough security against data leaks. 5. The information can only be used in the (upcoming) proceedings. **Comment** All the general criteria and decisions make sense. The case shows how extremely time-consuming such requests can be for the Court. The court fee of €5,000 bears no relation to this! #### **26 August 2026** **Local Division The Hague, Ericsson v Transsion** [UPC\_CFI\_1568/2025; UPC\_CFI\_1791/2025; UPC\_CFI\_1793/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/a012d43a-831c-43f3-837a-5d34d48d7f26.pdf) ***Settlement*** **Facts** 1. The claimant requests withdrawal of the three proceedings and states that no decision on the costs is necessary except for a return of court fees. 2. The application was not signed by the defendants. At the invitation of the Court all defendants agreed except one. The Court stated, unless that defendant responded before 20 August, it would be assumed that it agreed. **Comment** 1. In the event of a counterclaim for revocation, it is preferable that the parties file a withdrawal request together. That saves everyone work. 2. The request for the return of court fees has been made in the same request as it should be! #### **26 August 2026** **Local Division Mannheim, iCat v Dentsply** [UPC\_CFI\_1938/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/dd52a734-fabd-4f2e-b38d-612e3230d423.pdf) ***Preliminary objections*** **Facts** 1. Dentsply was sued by iCat for infringement of EP 1 808 129. 2. Dentsply filed a preliminary objection (R. 19 RoP). 3. Dentsply claimed that the UPC cannot provide the full breadth of the relief sought, referring to the limitation period under Article 72 UPCA: the claimant claims damages from 4 June 2017, whereas the five-year limitation period would mean that damages could be claimed only from 11 June 2021. **The JR** The preliminary objection is inadmissible as the limitation of the temporal scope of certain remedies is not mentioned as a ground for objection in R. 19 RoP. **Comment** 1. A very curious action by the defendant, as it apparently does not understand the difference between jurisdiction, competence and the limitations of Article 72 UPCA. 2. During the main proceedings the defendant will learn that Article 72 UPCA only applies to monetary damages. It does not mean that you cannot get information with respect to the period before 11 June 2021 or that products delivered before that time cannot be recalled (all assuming that that would be proportionate and possible under the law governing the infringing acts before the entry of the UPC). 3. Article 72 certainly does not mean that infringements which started more than five years before an infringement case was filed can continue, as I read recently in an advice. Furthermore, if, before the entry of the UPC, the limitation period under the applicable national law had already extinguished the claim, then such a claim does not 'revive' because of the UPCA. #### **27 August 2026** **Central Division Munich, Sypox v Topsoe** [UPC\_CFI\_894/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/ba65ec93-5598-416c-8b2b-7ea48a86f6bf.pdf) ***SME*** **Facts** 1. Sypox is the defendant in seizure and inspection proceedings based on EP 3 802 413. The proceedings were started to find evidence that Sypox is infringing. 2. Sypox decided to try to revoke the patent in the Central Division. 3. Topsoe challenged the fact that Sypox had to pay half of the court fees because it claims to be a Small and Medium-sized Enterprise (“SME”). Topsoe basically argues that Sypox has a 10% shareholder which is a large company who in fact has the voting rights. 4. Topsoe further requests the Court to rule that Sypox has to provide security. 5. Topsoe also wants a higher value of the litigation. 6. Sypox asks for a lowering of the ceiling of recoverable costs. **The JR** 1. The veto rights of the 10% shareholder do not give that shareholder such an influence that Sypox is not entitled to its SME status. 2. The JR provisionally sets the value of the proceedings at €2,000,000 for recoverable costs. The JR states that the SME status alone is not enough to justify an order for security of costs. **Comment** A lesson for representatives: if you want an exception to the rule (lowering the ceiling of recoverable costs; asking for an order to provide security) you need to convincingly substantiate your request and first study the case law to learn what is necessary for such a request to succeed. #### **27 August 2026** **Local Division Düsseldorf, Aesculap v Shanghai Bojin Medical** [UPC\_CFI\_307/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/ab02cea6-d583-43f9-b821-9321a976fcf2.pdf) ***Settlement*** **Facts** 1. The parties settled after the oral hearing except for the case against defendant 2, which has different representatives. 2. The parties want a confirmation of the settlement agreement. **The Court** 1. The Court confirms the agreement between the parties by a decision that may be enforced as a final decision of the Court (R. 365 RoP). 2. The settlement also addresses costs. 3. The Court orders that the content of the agreement is to be regarded as confidential (R. 365.2 RoP). 4. An R. 262.2 RoP decision will only be taken if a member of the public asks the Registry for the agreement. **Comment** 1. In my opinion, parties should be able to ask for confidentiality of the agreement (R. 365.2 RoP) which should be granted. After such grant it should not be possible for the public to get access. A request for access should be refused. R. 262.2 RoP seems therefore irrelevant. With respect to the further filed pleadings in the proceedings, the common R. 262A RoP and R. 262.2 RoP remain applicable. 2. I assume that the Court is going to give a decision with respect to defendant 2 which is a holding company related to defendant 1? #### **27 August 2026** **Court of Appeal, Xingi v Avient** [UPC\_CoA\_76/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/95e94caa-de69-48f9-9334-06e567e7d570.pdf) **Request for production of evidence** **Facts** 1. Avient started infringement proceedings based on EP 2 791 402. The patent concerns yarns with a better ballistic performance and panels exhibiting specific characteristics against projectiles. 2. In its defence, the defendant disputed that the panels had these specific characteristics, stating that this can only be established with actual tests. 3. Avient filed an R. 190 RoP request after that defence. 4. The JR granted the application partially. 5. Xingi filed an appeal, especially since the production of fabric samples and a video (which Xingi had removed from the internet when the proceedings started) was ordered, as well as the delivery of the samples to the Netherlands, which was not specifically requested. 6. The respondents lodged a conditional cross-appeal. The JR had ruled that the testing of two variants was sufficient. If the Court of Appeal agreed with this, the respondents wanted to lodge an appeal as they wanted more samples tested. **The Court of Appeal** 1. The Court stated the following: 1. The purpose of R. 190 RoP is to ensure effective judicial protection by enabling access to specified evidence that is not readily accessible to the party bearing the burden of proof. An order under R. 190 RoP requires reasonably available evidence supporting the plausibility of the claim and is subject to the cumulative requirements of specificity, necessity and proportionality. R. 190 RoP does not permit fishing expeditions. 2. Under R. 190 RoP, the assessment of whether the production of specific evidence is justified by the requirements of necessity and proportionality falls, in principle, within the margin of discretion of the Court of First Instance. The Court of Appeal will interfere with that assessment only in the event of an error of law, a manifest error of assessment, or a failure properly to apply the limits inherent in R. 190 RoP. 3. The fact that a party considers the evidence already available sufficient to support its allegations does not preclude it from seeking access to additional evidence under R. 190 RoP if that party has a legitimate interest in the additional evidence (as in case when the adverse party argues that the fact to be proven can only be established by means of additional evidence). R. 190 RoP requires that the applicant has already presented reasonably available evidence supporting the plausibility of its claim. 4. Neither Art. 59 UPCA nor R. 190 RoP requires an application for the production of evidence to be lodged together with the Statement of claim. Whether such an application has been made in a timely manner must be assessed having regard to the state of the proceedings and to the procedural developments that have occurred at the time the request is filed. 5. New factual allegations and supporting evidence relied upon for the first time on appeal may be disregarded where no justification is provided for their late introduction as required by R. 222.2 RoP. 6. A conditional appeal is inadmissible where it makes consideration of the appeal dependent upon a prior determination by the Court of Appeal whether evidence not yet produced and tested will ultimately be sufficient for the purposes of the claim in the main proceedings. Whether such evidence is sufficient to establish the claim is a matter for the court deciding the merits of the case and therefore lies outside the scope of the appeal. Reference no: UPC-COA-76/2026 2 6. Upon service of the decision or of the order determining the appeal, a suspensive effect granted pending determination of that appeal ceases to operate. Any subsequent issues relating to the enforcement of the order of the Court of First Instance are to be assessed by the judgerapporteur of that Court in light of the circumstances then existing. 2. The Court dismisses the appeal and rejects the conditional cross-appeal as inadmissible. **Comment** 1. Representatives should read this before filing an R. 190 RoP request. 2. The important points are: 1. Such a request cannot be a fishing expedition; 2. It must be shown that infringement is probable; 3. The request has to be specific; 4. It has to be timely. A request should not interfere with the normal time schedule for proceedings; 5. It has to be necessary and proportionate. 6. Appealing such a decision does not make much sense (as shown in this case) as the JR has a wide discretion. 3. I do not understand Avient’s actions in appeal. If Avient was not happy with the fact that the JR did not fully grant their request, it could simply have filed an unconditional cross-appeal (although that would also not have been successful!). #### **28 August 2026** **Court of Appeal, Hurom v NUC** [UPC\_CoA\_678/2025 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/78f636da-5c79-4470-a57b-416157f7c03b.pdf) ***Appeals rejected*** **Facts** 1. Hurom appealed a decision of the Local Division Paris which found that NUC did not infringe EP 3 155 936 with respect to a juice squeezing module for a juicer. 2. At first instance Hurom amended the patent with a main request together with an auxiliary request. 3. The Local Division Paris revoked claims 1–6 of the main request and claims 1–3 of the auxiliary request for lack of inventive step. 4. For Poland, the LD Paris dismissed the claim for lack of proof of infringement. 5. On appeal Hurom relied on its auxiliary request (“New Main Request”) and filed two conditional auxiliary requests for the first time on appeal. 6. NUC cross-appealed. **The Court of Appeal** 1. NUC’s challenge about the admissibility of the New Main Request is rejected. A request to amend the patent (R. 30.1 RoP) need only explain why the auxiliary request fulfils the formal requirements of Articles 84, 123(2) and 123(3) EPC. Whether that explanation is correct is to be decided on the merits. 2. The Court of Appeal does not allow the newly filed auxiliary requests on appeal as they could have been made earlier during the proceedings. 3. The Court of Appeal defines the underlying product of the patent and interprets the claim of the New Main Request and holds: “as a general rule, in case of claim amendments, the patent description which remains unamended may be used as explanatory aids for the interpretation of a patent claim”. 4. The Court confirms the interpretation of the Court of First Instance. 5. The Court cites the principles for assessing inventive step. 6. The Court of Appeal states that the fact that the skilled person would not combine D1 (the realistic starting point) with D2 does not preclude the skilled person from including a particular measure disclosed in D2 in D1 if that measure was routine for the person skilled in the art. 7. The Court of Appeal confirms the decision of the Court of First Instance on inventive step in respect of the New Main Request and the two auxiliary requests filed in first instance. 8. It is possible to challenge international jurisdiction in the Statement of Defence rather than by way of a preliminary objection. 9. The UPC has jurisdiction in respect of Poland because two of the defendants are domiciled in UPC Contracting Member States (Article 4 Brussels I bis Regulation) and, in respect of the Korean defendant, on the basis of Article 8(1) Brussels I bis Regulation. 10. There is insufficient evidence that, under Polish law, the challenged acts (such as making a website accessible in Poland) amount to acts of infringement. 11. The Court of Appeal dismisses Hurom's appeal and dismisses the cross-appeal in part as inadmissible and in part as unfounded. **Comment** 1. Again, this decision shows the front-loaded character of the UPC proceedings and the high threshold for new auxiliary requests (and new facts) on appeal even in reaction to the judgment in first instance. If the decision is not a surprise decision and addresses issues raised during the written proceedings at first instance, you can no longer address them on appeal by filing an auxiliary request. 2. Even if you can argue successfully that the skilled person would not have combined a certain document with the realistic starting point, such document can be evidence that a certain measure is a routine measure and that implementing such measure in the realistic starting point is a matter of routine (and thus not inventive). 3. An auxiliary request is admissible if it addresses the formal requirements; whether the explanation is convincing is a question for the merits. I add that you do not need an auxiliary request if you rely on a (dependent) claim which has already been granted as long as you make clear what that claim is. A challenge on the basis of Article 84 against such a claim is not admissible. 4. It is also possible, in my opinion, to propose as part of an auxiliary request an amendment of the description. For instance, if you limit the claim to covering one of the examples of the patent, one could delete the other examples from the description and avoid the use of such other examples to read limitations into the claim. 5. With respect to infringement outside the UPC, you will have to prove that the acts you allege to have taken place constitute acts of infringement under the applicable national law. Note that for example aiding and abetting infringement under the UPCA is an act of infringement but in many countries it is an unlawful act (tort) over which the UPC may have no jurisdiction. **– 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 –**