# 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-38-2026%26title%3DUPC%20Unfiltered%2C%20by%20Willem%20Hoyng%20%E2%80%93%20UPC%20decisions%20week%2038%2C%202026%26summary%3D "Linkedin") # UPC Unfiltered, by Willem Hoyng – UPC decisions week 38, 2026 21 septembre 2026 UPC Unfiltered News Unified Patent Court (UPC) 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). #### **9 September 2026** ***(late published)*** #### **Local Division Paris, BYD v BMSI** [UPC\_CFI\_2437/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/e55a546e-6720-45c7-82bb-94ffbb7760a2.pdf) ***DNI action*** **Facts** 1. On 19 December 2025, BMSI commenced an infringement action based on EP 2 937 706 against seven BYD companies. 2. BYD first filed a defence and a counterclaim for revocation. 3. Then, on 6 July 2026, BYD filed an action for a declaration of non-infringement (DNI) and asked the Court to join all 3 actions. 4. On 13 August 2026, BMSI asked the Court to dismiss or, alternatively, stay the DNI action. **The Judge-Rapporteur (JR)** 1. The JR cites the requirements to be fulfilled before starting a DNI action according to R. 61.1 RoP. Furthermore, the JR refers to R. 361 RoP (“manifestly inadmissible”) and R. 362 RoP (“res judicata”) which were also invoked by BMSI as reasons for dismissal. 2. The JR confirms that BYD has certainly an interest in a DNI aimed at ensuring that it does not infringe the asserted patent with a product (battery) which is similar to the one at issue in the proceedings. 3. The JR concludes that BYD’s letter of 18 May 2026, in which BMSI was first asked for a DNI confirmation, is sufficiently precise and that BMSI cannot seriously argue that this is not the case. It also did not ask for further technical information. 4. The JR also dismisses the arguments based on R. 361 RoP (“only for clear cut cases”) or R. 362 RoP (“there is no absolute bar”). 5. The JR finds no grounds for a stay. **Comment** Judging from the tone of the decision, it looks to me that the JR is irritated by BMSI requesting a dismissal of the DNI action on clearly baseless arguments. Representatives should not waste the Court’s time (and their clients’ money?) on such actions. #### **10 September 2026** ***(late published)*** #### **Court of Appeal, Dainese v Motocard** [UPC\_CoA\_97/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/5b42e06a-9d71-4002-bf4d-2d08f1d73833.pdf) ***Timely payment of court fees*** **Facts** 1. On 8 August 2024, the appellant lodged an infringement action against six defendants before the Local Division Milan. 2. On 21 April 2026, the LD Milan dismissed the infringement claim. 3. The appellant appealed on 19 June 2026. 4. After a request of the Registry on 26 June 2026 to pay the court fees, the appellant filed, on 2 July 2026, evidence of a bank transfer dated 30 June 2026. 5. The respondent filed a request pursuant to R. 361 RoP (“manifestly inadmissible”) asking the Court of Appeal to dismiss the appeal because the court fees were paid beyond the time period for lodging an appeal (referring to R. 15.2 RoP). **The JR** 1. After analyzing the different rules, the JR concludes that an appeal is inadmissible if the appellant does not pay the court fees within 14 days of the reminder to do so by the Registry. 2. In this case, the declaration of appeal was filed in time and the bank transfer of 30 June (which is the decisive date) was still within the 14-day period. 3. The JR dismisses the request. 4. As this is not a final order, no decision on costs is necessary. **Comment** A lesson for representatives: make sure to pay your court fees in time, at the latest within 14 days of getting a reminder by the Registry. #### **14 September 2026** #### **Local Division Mannheim, Ericsson v Verifone** [UPC\_CFI\_1795/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/5237a9af-4a91-4d32-b46d-e6618489fc1e.pdf); [UPC\_CFI\_1796/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/35272b15-3ab9-4dcb-bd03-2ac92573a9af.pdf); [UPC\_CFI\_661/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2a557940-9e81-406c-a442-2e88f998b8c9.pdf) ***Settlement*** **Facts** 1. This matter relates to three standard-essential patents (SEP): EP 3 397 009, EP 2 506 479, EP 4 277 422. 2. In these three cases, the parties reached a settlement. **The JR** 1. The JR increases the value of the litigation in view of a FRAND specific claim; 2. The JR gives an elaborate explanation why he only awards a 40% (instead of 50%) return of court fees. **Comment** The above-mentioned three cases are all decided and reported on 14 September 2026. There are (at least) three interesting aspects. 1. The Court had separated early on the (SEP) case started on the basis of three patents into three different cases. 2. The Statement of Claim contained so-called “FRAND” specific claims (for Fair, Reasonable and Non-Discriminatory license terms), asking the Court to determine a FRAND rate if the Court were to find the offer of the claimant not to be FRAND-compliant. The claimant argued that this did not increase the value of the litigation. The JR disagreed. He did not decide whether the UPC can set a FRAND rate or not. I do think that a Court can do so if such request is properly formulated so that it can be seen as a license defence or as a declaration that such defence does not exist (see Art. 32.1(a) UPCA). The JR speculates that a Court may decide such rate setting (maybe better: a FRAND-compliance claim) in separate proceedings. That seems indeed more efficient because it may avoid having to deal with infringement and validity of three or even 5 patents (as two other patents were litigated in The Hague). The JR is in my opinion right that FRAND specific claims increase the economic value of the proceedings because they de facto relate to the value of the use of a certain standard (worldwide). 3. The JR, after having increased the value of the litigation and ordering an extra payment of fees, only awarded a 40% return of court fees instead of 50%, pointing to the work which the Court had to do prior to the settlement. This seems to me fully justified. #### **14 September 2026** #### **Central Division Paris, Ericsson v Transsion** [UPC\_CFI\_1571/2025 ; UPC\_CFI\_710/2026 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/19cac0a1-252b-43e8-b064-0393689a09b6.pdf) ***Settlement*** **Facts** As in the case above, the cases were settled. **The Court** 1. The Court accepts the withdrawals, assuming that the two defendants, which did not respond, agree to it. 2. The Court does not awards a 50% reimbursement, but only 35% in view of the exceptional nature of the case. **Comment** Why 40% in Mannheim and 35% in Paris? SEP cases are generally complicated and labor-intensive for the Court, particularly if multiple cases are brought before various Local Divisions. Why not apply a standard 25% in all Divisions in such a situation, instead of 50%? #### **14 September 2026** #### **Local Division The Hague, GSK v Moderna** [UPC\_CFI\_616/2025; UPC\_CFI\_1439/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/cdc51d4a-0453-4dcf-9202-6ba8af96b751.pdf) ***Revocation JR order after oral argument*** **Facts** 1. GSK started an infringement action against 15 Moderna companies on the basis of EP 2 590 626. 2. Moderna filed a counterclaim for revocation. 3. On 12 June 2026, the JR had refused new technical reports as late-filed, for having been filed with the latest submissions in the revocation proceedings while they pertained to the infringement case. 4. The decision of the JR was confirmed in the R105.5 RoP Order. 5. The oral hearing took place on 1 September 2026. 6. On 3 September 2026, the Presiding Judge informed the parties that the Court intended to (partly) revoke the order of refusal by the JR and asked the parties to comment by 7 September 2026. 7. GSK requests the order to be (partly) revoked. 8. Moderna states that this is procedurally impossible but, should the new technical reports be admitted, it demands extra explanations from GSK, after which it should be able to respond. **The Court** 1. Referring to R. 335 RoP, the Court (partly) revokes the order of the JR stating that during the oral hearing the importance of the new ATEM reports for the infringement question became clear. Fairness requires their admittance into the case and that the opposing party be given the right to comment on them. 2. The Court considers R. 114. RoP to not be applicable; but if applicable the Court considers the case an exceptional case in the sense of R. 114 RoP. 3. The Court gives GSK until 16 September 2026 to give a no more than 600-word long explanation. Moderna thereafter has a week to respond with a maximum of 900 words. **Comment** 1. R. 335 RoP does give the Court the possibility to vary or revoke an order, including in my opinion after such order has been confirmed in review proceedings. Later in the proceedings, circumstances may change and R. 335 RoP is intended to give the Court maximum flexibility to manage the case in such a way that it can deliver the most appropriate decision. 2. I do think that R. 114 RoP (which in exceptional circumstances gives the Court the possibility to adjourn the case and call for further evidence) is in fact the appropriate rule in this situation, because the evidence which the Court wants to have is not presently in the proceedings because it was refused and I cannot see how the refused reports can be qualified as anything other than “evidence”. 3. I commented last week on late-filed facts and arguments and the tension between the front-loaded character of UPC proceedings and the fact that the question of infringement and validity is a question of law (see Unfiltered week 37). The above case illustrates this even more clearly. Not only the JR, but also the Court during panel review, had explicitly not allowed the late-filed evidence and arguments. That these were late could hardly be disputed as they had to do with the infringement case but were filed with the last submissions in the revocation proceedings (instead of the claimant asking for a further round of written submissions - R. 36 RoP -). 4. In this case, I assume that Moderna has argued that the Court has to make its decision on the basis of the facts as they were established in the proceedings at the time of oral argument. The Court has to decide the legal question of infringement on the basis of the facts on record. The burden of proof of the infringement allegations is on GSK and if the Court cannot find infringement on the basis of the evidence filed by GSK in due course, the Court should in principle dismiss the case. 5. This is different from a situation where all the relevant facts of the case have been submitted but the claimant, on the basis of these facts, comes up with (too) late new arguments why there is infringement. In that case, the Court can and should still come to the correct answer to the legal question of infringement (but, as indicated in my comment last week, should avoid a surprise decision, i.e. one based on reasons undiscussed by the parties). 6. If a claimant has not provided all the facts (evidence) for an infringement finding, I do not think that it is “unfair” to dismiss the case, even though it may be seen as unsatisfactory because there may well be infringement while the Court would reach a non-infringement verdict. 7. The Rules give the Court a way out in exceptional cases, with the possibility to allow a party to bring further evidence even after the oral hearing to avoid an incorrect result. It is for the Court of Appeal to determine what “exceptional” means but I think that at least a party should have argued that it is willing to bring such additional relevant evidence, which here was clearly the case. However, if one could have brought that evidence earlier (which is also the case here), can one bring this under “exceptional circumstances” in the front-loaded UPC proceedings, also having regard to R. 36 RoP (which one failed to use)? It is certainly unsatisfactory for a Court to have to give a decision on the basis of incomplete facts but it is a principle that it is up to the parties to bring the facts to the table and if a party does not do so then you may lose where you may have won. These are the rules of the game! #### **14 September 2026** #### **Local Division Brussels, Barco v Yealink** [UPC\_CFI\_806/2025; UPC\_CFI\_185/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/5e69ce39-75a2-4740-a5e7-ef74ad5d623c.pdf) ***Interim conference*** **Facts** An interim conference was held. **The JR** 1. A settlement was not possible at this time. 2. The value of the revocation action is higher than the value of the infringement action, also having regard to third parties’ oppositions filed against the patent. 3. The parties have committed to agree on costs as soon as the JR has set the value of the case and to inform the Court accordingly. 4. The parties accept the agenda proposed by the JR for the oral hearing and agree on a timeframe. 5. The parties requested a preliminary opinion. The Court will give such opinion at the start of the hearing and will give parties 30-45 minutes to prepare their reaction to the preliminary opinion during the oral argument. 6. With respect to the outstanding decision of the Court of Appeal on the refusal of a late auxiliary request which had been admitted in the (EPO) opposition proceedings against the patent, the different scenarios were discussed and agreed. **Comment** 1. The JR is right that the value of the counterclaim for revocation is in general higher than the value of the infringement action and applied the (standard) rule that it is 50% higher. 2. The different associations of representatives indicated, when asked by the Advisory Committee of the UPC, that they prefer to receive preliminary opinions. The JR in Brussels listened to the parties in this respect, which I think is very good. It is hoped that all Local Divisions will eventually do so. Of course, it would be even preferable to receive such opinion prior to the oral hearing but that is often difficult for the Court to do so as the judges often meet the day before the hearing to discuss the case. 3. However, an opinion at the start of the hearing whereafter the parties get some time (30-60 minutes) to prepare their response also works. It would be good if all Local Divisions would have the same policy. #### **14 September 2026** #### **Local Division The Hague, CureVac v Moderna** [UPC\_CFI\_1407/2026; UPC\_CFI\_3154/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/9fa4e36e-c41f-49e9-a286-d118ab573b72.pdf) ***Preliminary Objection*** **Facts** 1. An infringement case was started against 13 Moderna companies based on EP 4 108 769. 2. Moderna filed a Preliminary Objection (PO). 3. Moderna then filed a defence and counterclaim for revocation and asked for confidentiality. 4. In its PO, Moderna argues that the Court lacks international jurisdiction with respect to the US Moderna companies and the Polish, UK and Norwegian Moderna subsidiaries. 5. Moderna further asks for dismissal of all the infringements claims directed at non-UPC States on the ground that they are manifestly bound to fail (R. 361 RoP) because of lack of evidence of infringement according to the applicable national law. **The JR** 1. The JR refers the issue of international jurisdiction to the main proceedings. 2. The JR dismisses the request for dismissal on the basis of R. 361 RoP, which only applies to clear-cut situations. 3. The JR urges the parties to agree on a confidentiality regime. **Comment** 1. Why can’t parties agree on a confidentiality regime? It is good that the JR pushes for them to do so. More generally, responsible representatives should be able to agree on various procedural aspects without involving the Court, saving the Court time and their clients’ money. 2. As stated before, I do not think that a claimant arguing literal infringement in an EPO/non-UPC country should have to prove that in that country a(technical) infringement claim would also succeed. If there is (technical) infringement under the UPC regime, there should be a presumption of infringement in such EPO/non-UPC country (which is also bound by Art. 69 EPO and the Protocol for its interpretation). It should be for the defendant to make it credible that is the situation would nevertheless the application of the same provision (Art. 69 EPO) is different. The same is true for straightforward infringing acts such as selling in such country. #### **15 September 2026** #### **Local Division Brussels, In(k)control v Esko** [UPC\_CFI\_871/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/c344d95e-1850-4fc6-a38d-83c230efcd08.pdf) ***Resuming proceedings after a stay*** **Facts** 1. The JR had stayed the proceedings because the parties were seeking an amicable settlement and had ordered them to report before 1 September 2026 about the result. 2. On 31 August 2026, the parties reported that no settlement had been reached. 3. The defendants argued that the period for filing the defence should start anew after the stay. The claimant disagreed. **The JR** The JR agrees with the claimant: the time elapsed before the stay counts for the calculation of the (remaining) period for filing the response. **Comment** 1. A stay is no more than a stay, not a new beginning! 2. The Court should avoid granting a stay unless the parties have indicated that an agreement has been reached or agreed to use a mediator from PMAC to try to reach a settlement. A stay with no settlement in sight is not in line with the objectives of the UPC. #### **15 September 2026** #### **Local Division The Hague, Toolgen v Vertex** [UPC\_CFI\_1830/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/9d61b3e4-cbee-465a-bc1f-f839c5e7ace4.pdf) ***R 190 RoP Application - Alignment of defence dates*** **Facts** 1. Infringement proceedings concerning EP 4 397 760. 2. The parties filed a joint request for the alignment of the defence dates for the US and Dutch defendants. 3. Three weeks after the Statement of Claim, the defendants filed a request for the production of the evidence (documents filed in the UK proceedings). 4. The defendants asked for a R. 361 RoP dismissal of the request for injunctive relief. **The Court** 1. Dismissed the R. 190 RoP request, as the defendants used this to obtain documents from the UK proceedings which, under UK law, can only be used in those proceedings. The defendants should have asked the UK Court for permission to use these documents. They did not do so, which shows that they apparently would not have obtained the documents. 2. R. 361 RoP is only applicable for clear-cut cases. 3. The alignment of the defence dates is granted. **Comment** 1. The Court does understandably not allow to circumvent UK law by means of an R. 190 RoP request. Comity requires so. That is certainly the case if there is a mechanism under UK law for the UK Court to decide whether the documents can be used in foreign proceedings. 2. R. 361 RoP (early dismissal because a claim is manifestly bound to fail) is only going to work in clear-cut cases. So representatives would be wise to stop wasting the Court’s time on these useless exercises. #### **15 September 2026** #### **Local Division Munich, DivX v Netflix** [UPC\_CFI\_465/2025 ; UPC\_CFI\_1121/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/076d8333-b003-492c-8650-d14127d44396.pdf) ***Infringement / Revocation*** **Facts** 1. The claimant filed infringement proceedings based on EP 4 213 033. 2. The defendant filed a revocation counterclaim. 3. The patent is a fourth-generation patent with a priority date of 5 January 2006. It is a Unitary Patent granted on 7 May 2025 for a method of progressively playing back a media sequence. 4. The claimant filed 6 auxiliary requests. 5. The Opposition Division issued a preliminary opinion on 3 July 2026. 6. Both parties allege that the other party filed late arguments. **The Court** 1. The Court first decides which late filed arguments/pleadings it allows under R. 9.2 RoP and R. 36 RoP and which it does not. 2. The Court discusses the patent and formulates the problem (which is not indicated in the patent) for which the patent provides a solution. 3. The Court defines the skilled person in accordance with the defendant’s statement, which the claimant had not disputed, and discusses the meaning of various claim elements. 4. The Court bases its interpretation on the original English text, stating with respect to “media sequence” that the German translation (“Wiedergabe”) is too general. The Court rejects the arguments of defendant in favour of a narrower interpretation of certain claim elements. 5. The Court discusses the revocation arguments, each time citing the criteria established in the case law of the Court of Appeal. 6. With respect to “extension of subject matter”, the Court does not accept the defendant’s “intermediate generalization” arguments (referring to *CoA 382/2024, Abbott v Sibio*). 7. The Court considers claim 1 novel and inventive. With respect to inventive step, it holds that the necessary incentive to combine documents is lacking. 8. The Court does not agree with the preliminary opinion of the Opposition Division, stating that it fails to explain why the skilled person would come to certain conclusions without any inducement and holding that the combination of D1 and D16 is based on hindsight. 9. The Court concludes that the patent is (indirectly) infringed. **Comment** 1. Both parties did not litigate in the intended UPC (front-loaded) fashion, and the Local Division accepted this to a large extent by using its discretionary powers under R. 9.2 RoP and R. 36 RoP in such a way that the proceedings started to look as national proceedings. In my opinion, R. 36 RoP means that further written pleadings should be allowed only in exceptional situations following a reasoned request . It was not the intention of this Rule that further written pleadings could be admitted by retroactively applying R. 36 RoP. 2. The case confirms that, in the UPC: 1. the interpretation of the claim is generally crucial for the outcome of the infringement proceedings; 2. the Court is relatively liberal with respect to extension of subject matter, especially in the area of intermediate generalization; 3. for a successful inventive step attack, it is crucial to argue convincingly why (i.e., what would prompt) the skilled person to make the combination which leads to the invention (“incentive”). 3. The case was based on what I call a submarine patent. I do not know if earlier versions of the claims of this patent family were relevant to Netflix (the original claim, the grandfather, the parent etc.) or if the claims were formulated after Netflix came onto the market. We talk a lot about legal certainty for third parties when we discuss Art. 69 EPC, but not when we talk about submarine patents (kept hidden in applications of – sometimes – hundreds of pages). Did the skilled person indeed, at the time the original application was filed, read in that application immediately without further thinking the invention for which 19 years later a patent is granted? If I start to develop (and invest in) a new product, do I have to find all the possible patent claims in all extensive patent applications? In practice I know that this is just impossible which means that despite due diligence I may be confronted that I have to stop selling my successful product because of an injunction based on a submarine patent. #### **16 September 2026** #### **Court of Appeal, Heraeus v Vibrantz** [UPC\_CoA\_919/2025; UPC\_CoA\_920/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/1a6e6532-9092-41f7-9e17-267cc9a7bf2f.pdf) ***First instance decision confirmed*** **Facts** 1. The claimant sued the defendant for alleged direct and indirect infringement of EP 3 215 288 in Germany, France, Italy and Romania. 2. The defendant filed a counterclaim for revocation. 3. The Munich Local Division dismissed the infringement action on the basis of a prior use defence in Germany and because of lack of evidence of infringing acts in the other countries. 4. The Local Division refused the revocation for Germany insofar as it was based on grounds which had already been judged in German national proceedings between the (predecessor of) the parties, and dismissed the action insofar as it was based on other grounds. 5. For the other countries, the claimant defended the patent in the version upheld by the *Bundespatentgericht*. 6. For the other countries, the Division reached the same decision as the German national court. **The Court of Appeal** 1. The Court (after citing the relevant criteria and defining the skilled person) interprets certain claim elements. 2. If, under the law of the state in which a decision is made, that decision is *res judicata*, this must be recognized by the UPC and, contrary to what R. 362.1 suggests, the Court has no discretion in this respect. 3. The Court discusses the scope of the *res judicata* effect of the decision of the *Bundespatentgericht* under German law and concludes that grounds already decided in the national German case cannot be raised again. This is the case with respect to inventive step, but not with respect to insufficiency of disclosure and clarity. 4. The Court discusses these invalidity grounds, cites the criteria established by the Court of Appeal, and rejects them. 5. After finding the claim novel, the Court rejects the inventive step attacks. 6. As the defendant no longer argued on appeal that claims 2 to 8 were invalid, these claims are therefore not part of the appeal proceedings. 7. With respect to infringement, the Court confirms the decision of the Local Division. For Germany, the Court rules that the defendant is entitled to a private prior use defence, while for the other countries there is no proof of a (threat of) infringement. **Comment** 1. A very detailed and convincing decision. 2. If you want to know about the (limited) scope of a German prior user right, read no. 279 to 300. The requirements for a prior user defence and the scope of the prior user right are different throughout the EU (and thus within the UPC). From the point of view of the free circulation of goods, this and the fact that such prior use defence does not allow export to other EU countries, is in fact difficult to defend and, certainly with respect to a Unitary Patent, an anomaly. 3. The decision contains a stern warning to representatives. It is important to make very clear in you Statement of Appeal what invalidity attacks (and for that matter: infringement allegations) you want to maintain on appeal. 4. The decision also teaches that you have only one bite at the apple. If you have already attacked the patent in national proceedings and lost, you cannot attack the patent again on the same grounds, assuming that, under the national law of the country where you challenged the patent, such a repeated attack would be considered *res judicata*. 5. Although in this case this would not have made a difference, it might have been a better strategy to have the patent attacked in the Central Division by a company which was not the (successor of the) claimant in the national proceedings. 6. Different from the Court, I think that acts in a country where there is no patent protection can, under specific circumstances, still contribute to a finding of infringement in a country where the patent is protected. As an example: a Dutch company travels to patent-free Germany, where it buys product X and has ownership transferred to it, but asks the German company to arrange for the transport of X by a transport company to The Netherlands. Under Dutch law, the German company infringes the patent for X in The Netherlands. #### **16 September 2026** #### **Local Division Brussels, In(k)control v Esko** [UPC\_CFI\_871/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/44c404a8-7d84-4dde-97c9-cfa5c7dd3931.pdf)[R. 158 RoP ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/b07a58ef-fb90-445f-9641-f9796987813d.pdf) ***Extension of time limits after a stay*** **Facts** 1. After the case had been stayed, the proceedings were resumed after 1 September 2026. 2. The JR decided that the three-month period for filing a defence did not start anew after the stay, but that the time elapsed before the stay counted towards the three-month period. 3. Thereafter, Esko asked the Court for leave to appeal against this decision and requested an extension of the time limit (R. 9.3 RoP) because of special circumstances. In the meantime, Esko asked also requested a change of language. **The JR** 1. On the same day of the request, the JR contacted the representatives of the parties, and the parties reached an agreement on an extended time limit for the defence and the further rounds of written submissions. Esko withdrew its request for leave to appeal. 2. The JR ordered in accordance with the parties’ agreement, noting that, because of the stay, an oral hearing within one year, as contemplated by the Rules, would in any event not be possible, so the slight further delay caused by the extension of the time limits was acceptable. **Comment** A quick reaction by the JR resulted in a reasonable outcome and less work for the Court and (potentially) the Court of Appeal. #### **16 September 2026** #### **Local Division Munich, Avago v Hyundai** [UPC\_CFI\_52/2026; UPC\_CFI\_2285/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/d85c1609-fe84-4de3-be68-b019f2e1bd5e.pdf) ***Stay*** **Facts** 1. Infringement action based on EP 3 651 429. 2. The case was filed on 7 January 2026. 3. The oral hearing was scheduled for 15 April 2027. 4. The patent was revoked by the EPO. 5. The Board of Appeal had adopted accelerated proceedings and stated that it would issue a decision in the summer of 2027. 6. The defendant requested for a stay of the proceedings. **The JR** Granted the stay. **Comment** 1. The general rule that opposition proceedings are not a reason to stay proceedings, “except if a decision (in the Opposition Proceedings) is to be given rapidly”. 2. Nevertheless (and, in my view, understandably), the JR granted the stay. 3. For no reason, the claimant filed in the busy German Division and, as a result, got a date for the oral hearing only on 15 April 2027. The summer of 2027, when the decision of the Board of Appeal is expected, is only a few months later. The OD has already revoked the patent. Why should the very busy Munich Division spend precious time on a case which may end in the patent being revoked by the EPO! #### **17 September 2026** #### **Local Division Munich, Oxford v MGI** [UPC\_CFI\_2307/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/483b45c5-5f08-4520-97a1-6d1d4d9e1caa.pdf) ***PI proceedings*** **Facts** 1. Oxford filed PI proceedings against 4 defendants (one German and three Chinese entities). 2. Oxford initially invoked four patents but subsequently restricted that to two (EP 2 422 198 and EP 2 715 343) and, following an order of the JR, provided a claim construction and infringement mapping. 3. The patents relate to Oxford’s nanopore technology to sequence polynucleotide molecules. 4. In parallel Australian proceedings, defendant 2 had admitted infringement. 5. The representatives of defendant 1, who also represented the Chinese defendants in the UK, twice refused to accept service on behalf of the Chinese defendants. 6. Service of the Chinese defendants had not completed at the time of the oral hearing. 7. The claimant had in the past cooperated with the Chinese defendants under strict confidentiality conditions and subject to an undertaking that the Chinese companies would not engage in the sale of a competing product. **The Court** 1. Split the cases against the German entity which had been served, and the three Chinese defendants. 2. The Court concluded that it was more likely than not that the patents were valid and infringed. 3. With respect to the inventive-step attack on EP 198, the Court remarks that MGI’s arguments appear to rely on hindsight. All four attacks fail because there is no clear pointer to the specific combination. 4. With respect to infringement, the Court concludes that MGI did not rebut Oxford’s technical evidence . 5. With respect to EP 343, the Court rejected the 3 novelty arguments and, with respect to the inventive step arguments, the Court remarked: “The problem providing ultra-low concentration detection in EP 343 is solved by taking a step that would be considered detrimental in the context of the prior art. This is a classic indicator of inventive step.” 6. The Court also concludes that there is infringement, holding, among other things, that contesting by ignorance is not good enough under R. 171.2 RoP. As it is impossible to prove a negative fact, the other party has a secondary burden of proof to make it credible that the negative fact is not fulfilled; in other words, where the claim states that something should not be present, the other party must make it credible that something is in fact present. **Comment** 1. The decision provides an interesting read. Everybody who is interested in the development of sequencing should read paragraphs 82-95. I remember litigating the first generation PCR patents based on the invention in 1983 of 1993 Nobel prize winner Kary Mullis, a rather controversial figure and evidence that some inventions are made under strange circumstances (“while tripping on LSD, I saw DNA chains and electric molecules appeared to float and twist around the road”). 2. I do not understand why the Court split the case. It was very clear that the Chinese defendants knew about the case. In urgent cases, a Court can, under the The Hague Convention, proceed with the case even if service has not been completed (Art. 15, last paragraph). #### **18 September 2026** #### **Court of Appeal, AMMS v Gilead** [UPC\_CoA\_121/2026 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/26e655eb-e080-44f7-87b0-56b8ae37be5a.pdf) ***Costs and suspensive effect*** **Facts** 1. Gilead filed a revocation action against EP 3 854 403. 2. The Central Division Milan revoked the patent and stated that AMMS had to bear the (agreed) costs (€ 800.000). 3. AMMS filed an appeal. 4. Gilead started cost proceedings. 5. AMMS requested to stay the cost proceedings until the decision on appeal. 6. The CD ordered payment of € 800.000 within 4 weeks. 7. AMMS asked leave for appeal and suspensive effect. 8. Leave for appeal was granted. Suspensive effect refused by the standing judge of the Court of Appeal. **The JR of the Court of Appeal** 1. The JR refers to Art. 74 UPCA and holds that the general rule is that an appeal does not have suspensive effect except in case of decisions in revocation proceedings. 2. In exceptional cases the Court of Appeal can grant suspensive effect. 3. The exception for decisions in revocation proceedings is limited to its purpose and may not go beyond its scope. This is also the case for cost decisions formally contained in such revocation proceedings. 4. Cost proceedings are independent from appeal proceedings against first instance decisions. Such decision can therefore not benefit from the automatic suspensive effect of the revocation proceedings. 5. A Court may (always) stay proceedings where the proper administration of justice so requires balancing the interest of the parties and the specific circumstances of the case (such as the fact that the cost proceedings are the result of a decision in revocation proceedings which are under appeal). 6. Also the auxiliary request to pay in instalments falls under the discretionary power of the JR in first instance. 7. The JR did not overstep its discretionary power. **Comment** 1. The JR refers to the fact that cost proceedings are separate proceedings. However, from the decision it seems clear to me that the decision (no automatic suspensive effect) would have been the same if the cost decision would have been part of the revocation decision. 2. If parties have agreed about costs, the Court should in my opinion, different from what the CD in Milan did, also give a final decision on costs and not require the winning party to have to go through cost proceedings in order to get a decision which can be executed. 3. If AMMS knew that it would be impossible to pay the agreed amount at once, it should of course have agreed with Gilead to pay in instalments. 4. The lesson for representatives is clear. In general, always warn your defendant client that an appeal has no suspensive effect and make sure that the client can and is willing to pay the agreed costs at once. Otherwise, try to agree payment in instalments (or even better, after the decision had become final). I do not know what AMMS has spent on all the procedural steps which it undertook to avoid payment, but that could in all likelihood have been avoided. #### **18 September 2026** #### **Local Division Mannheim, Honeywell v Sovex** [UPC\_CFI\_575/2025; UPC\_ CFI\_1135/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/96992de3-09b0-45a9-bf3c-7af8def9e042.pdf) ***License defence*** **Facts** 1. Honeywell sues defendants for infringement of EP 2 563 695 for a telescope belt conveyor. 2. The defendants filed a counterclaim for revocation. 3. As of 2022, the defendants were licensed under the patent and the trademark Sovex. 4. The license agreement was terminated because of a failure to report sales and pay royalties timely. 5. A case is pending before the District Court in The Hague with respect to the termination of the agreement against (some of) defendants. The defendants filed a counterclaim asking the Court to declare that the license agreement has not been validly terminated and is still in force. **The Court** 1. The Court describes the patent and the problems for which the patent proposes a solution. 2. The Court discusses the meaning of certain claim features for the skilled person (a mechanical engineer). 3. The Court holds that claim 1 is novel over the prior art document mentioned in the patent stating: *“This reasoning of Defendants must be rejected. A statement that a certain (technical) arrangement is not present, cannot be understood as an (implicit) direct and unambiguous disclosure of that arrangement. On the contrary, it is to be seen as an explicit confirmation that the arrangement is absent and therefore not disclosed.”* 4. With respect to inventive step, the Court observes that the prior art document which deliberately chooses a different construction, would not motivate the skilled person to implement missing feature 1.7, the more so as it would not be possible to implement such feature without changing the construction shown in the prior art document. 5. The other inventive step arguments are rejected because the combination of documents would not lead to claim 1 of the patent and/or the fact that the skilled person would not combine the documents (for instance because it would require a redesign). 6. Defendants have according to the Court not sufficiently substantiated the fact that the license agreement was terminated unlawfully. Defendants had not even produced the exhibits on which they relied in the Dutch proceedings or information about foreign law. 7. The defendants did not dispute € 75.000 as interim damages. 8. Parties have agreed on costs. 9. Injunction and the other relief is granted. **Comment** 1. If in a prior art publication, a product with a certain technical feature as a possibility is disclosed but for certain practical reasons is rejected and another technical feature for the disclosed product is used, does then that prior art document take away the novelty with respect to that product with the rejected feature? 2. I think if the skilled person reading the disclosure will immediately envisage also the product with the rejected feature, this would take away novelty. 3. It is different if the rejection is based on the fact that the product would not work with the rejected feature, or if the skilled person realizes by reading the disclosure that the disclosed product would not work (would need re-designing) with the rejected feature. 4. The outcome of this case was pretty obvious. All the invoked prior art had already been considered by the EPO. The product had been licensed, which is a clear indication that it was infringing (certainly as it was the result of a cooperation between patentee and defendant). 5. So the only real defence was the argument that the termination was unlawful, but in order to establish that defendant did not do the best possible job. It relied just on his pleadings in the case in the Dutch national court without even producing the exhibits. Under certain circumstances, it is possible that a termination is unjustified under Dutch law, for example if, in view of all circumstances of the case, the breach of contract is too immaterial to justify the termination and/or would violate reasonableness and fairness. However, winning on the basis of these arguments requires far more than what the defendants put on the table and in the UPC it requires also proving the applicable law.