# 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-41-2026%26title%3DUPC%20Unfiltered%2C%20by%20Willem%20Hoyng%20%E2%80%93%20UPC%20decisions%20week%2041%2C%202026%26summary%3D "Linkedin") # UPC Unfiltered, by Willem Hoyng – UPC decisions week 41, 2026 12 octobre 2026 UPC Unfiltered News 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). #### **2 October 2026** ***(late published)*** **Local Division Düsseldorf, Micron v Ultron** [UPC\_CFI\_2660/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/0bc1ef45-4e9c-4275-bec2-bdaa81abbaa4.pdf) ***Service*** **Facts** 1. Claimant Micron stated that it had not been possible to serve the Statement of Claim to defendant 2 (a Dutch company) via postal service. 2. Micron asked permission to use alternative service set out in R. 275.1 RoP, which refers to service by a Dutch bailiff in accordance with Regulation (EU) 2020/1784 ("the Regulation"). **The JR** The Judge-Rapporteur ("JR") allowed the alternative service at the claimant expense. **Comment** 1. R. 271(4) RoP states that any other method foreseen by EU law can be used for service, referring to Regulation (EU) 2020/1784, by registered letter with acknowledgment of receipt. In the Netherlands, the postal service goes to the address indicated and, if nobody answers the door, they leave a form in the letterbox stating that a registered letter can be collected from a nearby post office within a certain number of days. Often, such a letter is never collected, meaning that service is not completed. The same is true if somebody opens the door but refuses to sign for receipt of the letter. 2. The Rules state that, apart from electronic service, this is the preferred method under the Regulation. While it is indeed the cheapest and simplest method, there is no guarantee that the service will be performed. 3. In my opinion, however, the request and order with respect to alternative service is unnecessary. The sub registry should have used one of the other methods set out in EU Regulation, which are clearly also covered by R. 271.4(a) RoP. They should simply send it to any Dutch bailiff with a request to serve (in Dutch, English or German) (see Art. 20 of the Regulation). 4. As mentioned previously: It is much better to let the claimant do (and pay for) the service, rather than the (sub)registry, although I must admit that the claimant also apparently did not know how to do this! #### **5 October 2026** **Court of Appeal, SharkNinja v SEB** [UPC\_CoA\_61/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/fe737308-de17-4c7c-bb86-65bfd622137a.pdf) ***Court fees in appeal*** **Facts** 1. During the first instance preliminary injunction ("PI") proceedings, SharkNinja withdrew its request based on EP 3 689 201 (EP 201). 2. On appeal, the Court of Appeal held in its final order that EP 201 was not the subject of the appeal and set the value of the litigation at 50% of that at first instance. 3. SharkNinja had paid the court fees for the appeal based on the value set by the Local Division Paris at first instance. 4. SharkNinja requested reimbursement of the overpaid fees. **The JR of the Court of Appeal** The JR granted the request. **Comment** 1. The appeal fees have to be based on the value of the litigation at first instance. 2. However, during the appeal, a party may ask the Court of Appeal to set a lower value with a reasoned request, or the Court of Appeal may set a lower value on its own motion. 3. If the lower value results in the appellant having overpaid, it can request a return of the court fees paid for the appeal. #### **6 October 2026** **Local Division Düsseldorf, Inficon v Elitech** [UPC\_CFI\_137/2025; UPC\_CFI\_512/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/786bf76c-006f-4d87-bf55-792281f84650.pdf) ***Infringement*** **Facts** 1. This decision is related to an infringement case based on EP 3 567 356 for a "sniffing leak detector". 2. The defendants filed a Counterclaim for revocation. **The Court** 1. The claimant did not provide a definition of the skilled person. The Court accepts the defendants' definition. 2. The Court discusses the patent which concerns the detection of gas leaks and construes the claim, rejecting a limited interpretation of the claim based on the examples in the patent. 3. The Court rejects the defendants' arguments regarding added matter, stating, among others that: > *"The assessment of whether there is added matter is a question of law to be decided on the basis of the facts brought forward by the parties. The facts are the relevant claims and the application as filed. Since the test is whether the relevant claims have basis in the application as a whole, the Court is allowed to look at the entire document (CoA, decision of 25 November 2025, UPC\_CoA\_528/2024)."* 4. The Court rejects the defendants' arguments regarding novelty and inventive step. 5. Regarding the inventive step challenge, the Court states: > *"The skilled person has no inventive skills and no imagination and requires a pointer or motivation that, starting from a realistic starting point, directs it to implement a next step in the direction of the claimed invention. As a general rule, a claimed solution must be considered not inventive / obvious when the skilled person would take the next step prompted by the pointer or as a matter of routine, and arrive at the claimed invention. If there is no pointer to combine a reasonable starting point with another document, a motivation to take the next step in the direction of the invention cannot be derived from the content of such a combination document itself. Failing a motivation for the skilled person to consult a document it will not become aware of its content, and it cannot be concluded that the skilled person would implement the missing feature disclosed therein."* 6. The Court finds that there is no infringement because the claimant failed to establish that the buffer chamber of the attacked embodiment permits to homogeneously mix gas drawn into the buffer chamber with the remaining gas. **Comment** 1. Although one of the most basic rules of claim interpretation is that one should not limit the meaning of a claim because of the examples in the patent, it is also incorrect to (always) give words or sentences the broadest possible grammatical meaning. If the clear purpose of a buffer chamber is to mix gases homogeneously, I wonder if you should stretch the meaning of "buffer chamber" to include something that is incapable of doing so. 2. I, a simple lawyer without a technical degree, learned in school that gases will always mix homogeneously in a chamber over a given time. 3. However, if one reads the Court's reasoning, it becomes clear that the way the infringing product is structured (e.g., with different valves) makes it not credible that there is a homogeneous mixture. The reason in my opinion is that there is no buffer chamber in the sense of the patent taking the description and drawings in consideration. 4. The author of the decision apparently started out with the usual broad reading of the claim wording, but then realized that it was unlikely that you get a homogeneous mixture in the product of defendant. 5. The claimant had apparently not raised the issue of homogeneous mixing convincingly, but the defendant had not denied it either. 6. In conclusion, the outcome is okay, but the way to get there is not very convincing. It would have been better to adopt a more realistic reading of the structural feature of the claim. 7. The route chosen by the Court also forced it to deal with the rule that if a fact is not denied, that fact is established. The claimant stated that there was homogeneous mixing and the defendants did not deny this. 8. The Court holds that, in such a situation, if the Court is not convinced that the claimant's statement is correct, it can still rule that there is no infringement. 9. While it is correct that infringement is a legal question, whether there is homogeneous mixing is clearly a factual question. If the defendant does not deny this fact, then in my opinion, this is the basis on which the Court has to apply the law. 10. Overall, in my opinion, this is an unconvincing decision with the correct result and that is what counts in the end! #### **7 October 2026** **Court of Appeal, TCL v Corning** [UPC\_CoA\_38/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/1602921d-60d1-4114-818c-fc38ce670007.pdf) ***Interim conference in appeal?*** **Facts** 1. This order relates to an appeal against a decision of the Central Division Munich dated 24 February 2026 (UPC\_CFI\_337/2025). 2. In its appeal, TCL asked the Court of Appeal to hold an interim conference. **The JR (of the Court of Appeal)** 1. Having read the written submissions (Statement of Grounds of Appeal and the Response), and taking into consideration the JR's task of ensuring a fair and efficient interim procedure, as well as ensuring that the case is ready for oral argument, the JR decides that an interim conference is not necessary. The case is ready for oral argument. 2. The JR closes the written procedure and sets a date for the oral hearing. **Comment** 1. The Rules provide for the same three phases of proceedings at the appeal stage as for proceedings at first instance. However, given the nature of appeal proceedings (in principle, no new grounds, facts and evidence), it is clear that interim proceedings, including an interim conference, are often not necessary. 2. If a party believes an interim conference is necessary, it should not only ask for it but also provide convincing reasons for its necessity (as for any other action of the JR before the oral hearing). #### **8 October 2026** **Court of Appeal, Esko v In(k)control** [UPC\_CoA\_73/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/0a48bbd5-611a-46a1-8019-0d742963d628.pdf) ***Language / Signing*** **Facts** 1. At first instance, Esko asked for a change of language of the proceedings from Dutch to English, but this was refused by the President of the Court of First Instance. 2. Esko appealed. 3. After the parties exchanged written pleadings and failed to settle the issue, In(k)control asked the Court to rule that the appeal was not admissible because the appeal request had not been signed with an advanced or qualified electronic signature. Alternatively, it asked the Court to dismiss the request. **The Court** 1. The Court holds that R. 4.1 RoP only requires written pleadings and other documents to be signed. There is no requirement for them to be signed with an advanced or qualified electronic signature, and this requirement also cannot be found in Regulation (EU) No 910/2014 either. 2. With regard to the change of language, the Court refers to the President's discretionary authority and the case law of the Court of Appeal. 3. The Court of Appeal concludes that the President's decision was justified, referring to the following reasons: 1. The claimant is a small company, whereas the defendants belong to a large international group with substantial financial resources. 2. Both parties are established in Flanders, where Dutch is the official language. 4. The Court of Appeal holds that none of the arguments of the appellants render the decision of the President unjustified. These were: 1. the language of the patent is English; 2. the Statement of claim and exhibits are largely in English; 3. the correspondence before the litigation was in English; 4. English is the language of the technology; 5. English is the working language of both parties; and 6. the requested measures also extend to countries outside the UPC, which would require communication with foreign lawyers. 5. The Court of Appeal dismisses the appeal. **Comment** 1. The advanced and qualified electronic signature are signatures which comply with EU legislation requirements (Regulation (EU) No 910/2014). The latter has the same legal effect as a handwritten signature. As the Court states, R. 4.1 RoP does not require it, and I cannot see why it would be necessary, given that documents can only be lodged via the Case Management System using a secure authentication process. However, the signature is useful because it is then clear which representative of a party is responsible for the content in case of several representatives of a party (and, in case such content requires disciplinary action, who should be disciplined!). 2. Every experienced representative would know that an appeal like this is not going to be successful. One could argue that the President's decision is wrong, but that of course does not mean that an appeal is successful, taking into consideration that this is a discretionary decision. That would only be the case if no one can understand the decision! 3. Do I agree with the decision? No, I would probably have done things differently. Also, a small Flemish company that works internationally is certainly capable of dealing with English. However, that is not really relevant. What is relevant is that, if the politicians want the UPC to be more efficient, they should revise the UPCA (in 2030) and follow the example of the Nordic/Baltic countries by adopting English as the only language. The President of the Court of First Instance is French, and two of the appeal judges are non-Dutch speakers (I assume). This is not very efficient, and these are just a few examples! #### **9 October 2026** **Court of Appeal, Beko v Dolby** [UPC\_CoA\_77/2026; UPC\_CoA\_78/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/3f937f24-b01d-4a85-b665-6c71acb7b2d5.pdf) ***Settlement*** **Facts** 1. The Local Division Düsseldorf had previously found infringement and dismissed the revocation action. 2. Beko appealed. 3. The parties settled. Beko consented to the withdrawal of the infringement action and Dolby agreed to the withdrawal of the counterclaim for revocation. **The Court of Appeal** 1. The Court of Appeal accepted the withdrawals. 2. No decision on costs is required as parties did not request a cost decision. 3. The Court of Appeal ordered a return of 50 percent of the court fees as the requests were made after 1 January 2026 but before the closure of the written phase. **Comment** This is not a withdrawal of the appeal (in which case the decision of the Local Division becomes final) but a withdrawal of both actions which means that if the patent was maintained in first instance on the basis of an auxiliary request, the patent in its original form will continue to be valid and that also the infringement decision of the Local Division will be considered as never having been issued. #### **9 October 2026** **Court of Appeal, NST v Qualcomm** [UPC\_CoA\_69/2026; UPC\_CoA\_71/2026; UPC\_CoA\_72/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/4c0d0c35-7629-465e-ac87-2baa35a1973c.pdf) ***No re-establishment of rights*** **Facts** 1. NST initiated infringement actions based on three patents before the LD Munich. 2. In one of the cases the Local Division decided that the patent (EP 1 552 669) was invalid. It dismissed the infringement and revocation action in the two other cases. 3. In the same decision, the LD rejected the R. 190 RoP application of NST. 4. NST filed appeal against the decisions. 5. The Court of Appeal held that the appeals, as far as pertaining to the R. 190 RoP request, were inadmissible because they were filed after the period stated in R. 224.1(b) RoP. 6. Thereafter, NST filed a request for re-establishment of rights which is the subject of the present proceedings. **The Court of Appeal** 1. The Court referred to its previous reasoning that the appeal was filed too late. 2. The Court referred to AIM v Supponer (order of 26 April 2024 UPC\_CoA\_500/2023). 3. The Court stated (among others): > *"26. It should have been clear – and indeed was clear – to NST that the R. 190-Application was rejected in the grounds of the impugned decisions. It follows that it should also have been clear that this constituted an order as meant in R. 220.1(c) RoP and therefore needed to be appealed within 15 days of its service. The failure of its inclusion in the 'requests section' and the operative part is a mere 'obvious slip'. NST unsuccessfully questions this. There is no doubt whatsoever that the MLD rejected the R. 190 RoP-Applications in its impugned decisions (see paras. 27-29 of the Order). The fact that the impugned decisions do not bear the title 'order', that the R. 190-Application was not in the 'requests section', and that the appeal information was missing cannot change that.* > > *27. It follows from the above that a representative exercising due care should not determine the applicable appeal period solely based on the heading of the document as 'decision' or 'order', the appeal information provided by the Court and the operative part. Rather he/she should take cognizance of its content, identify each decision contained therein as either an order or decision on the substance of it, and apply the applicable appeal period based on the UPCA and Rules of Procedure, independently of the (incomplete or erroneous) appeal information provided in the decision."* **Comment** 1. The outcome of this request for re-establishment comes as no surprise. 2. It is again a lesson that representatives should read the case law or (if that takes too much time) the "Unfiltered". 3. If one decision comprises multiple decisions and/or orders, you must verify the appeal term for all these different decisions/orders, as well as the heading (e.g. "Decision"). What is stated about the term for appeal is no safe heaven. 4. This was already crystal clear after AIM v Supponer. #### **9 October 2026** **Central Division Milan, Biogaran v Lundbeck** [UPC\_CFI\_1587/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/e5a81697-6a19-452e-ab6b-4a9173090573.pdf) ***Second medical use*** **Facts** 1. This case concerns a revocation case with respect to EP 4 223 296. 2. Defendant Lundbeck filed 3 Auxiliary requests. **The Court** 1. The Court allowed a (late) auxiliary request, which aligns the claims with those defended after the EPO's preliminary opinion in the opposition proceedings, as it merely removes two dependent claims and does not introduce new technical subject matter. 2. The new documents and new arguments introduced by Biogaran in the rejoinder were not admitted because Biogaran did not seek leave under R. 263 RoP, which is contrary to the front-loaded nature of UPC decisions. 3. With respect to the objective technical problem the Court stated: > *"54. In the Court's view, the objective technical problem could be formulated as the identification of the subgroup of alcohol-dependent patients who derive an improved therapeutic benefit from treatment with nalmefene. This formulation reflects the technical contribution disclosed in the patent while avoiding any pointer to the claimed solution. In particular, it does not refer to a high DRL at baseline, the maintenance of that high DRL after an observation period, or the as-needed administration of Nalmefene. Those features belong to the claimed solution and must be examined only at the subsequent stage, when assessing whether the skilled person, starting from a realistic prior-art disclosure and seeking to solve the identified problem, would have been prompted to arrive at the claimed subgroup with a reasonable expectation of success."* 4. With respect to "added matter" the Court ruled: > *"111. The party alleging added matter must identify, by means of a specific comparison, the subject-matter of the original disclosure that is said to have been extended in the later application or divisional patent."* > > *"113. The mere fact that the original application contains numerous embodiments and theoretically allows a very large number of combinations does not, in itself, establish added matter. Although this may raise issues of clarity or drafting technique, an extension of subject-matter arises only where the granted claim conveys technical information that the skilled person could not derive directly and unambiguously from the application as filed, contrary to Articles 123(2) and 138(1)(c) EPC.* > > *114. As an impartial body, the Court cannot further develop or investigate an objection stated only in general terms. Doing so would amount to an inadmissible ex officio examination of a ground for invalidity raised by a party."* 5. The Court considered that the invention is sufficiently disclosed stating: > *"This Court basically agrees with the EPO's findings in T 0728/21 (Vertex), 16 November 2023, where the EPO Board held, for example, that, for a second-medical use claim, the patent must make it credible at the filing date that the claimed composition is suitable for the therapeutic use. A deficient disclosure cannot be cured by post-published evidence."* 6. The Court considered the patent to be both novel and inventive, primarily because there was no pointer in the realistic starting point, and Biogaran did not identify any neurological or other technical considerations that would have prompted the skilled person to practice the missing claim elements. 7. With respect to inventive step the Court stated: > *"The fact that this attack relies on the combination of such a large number of prior-art documents suggests hindsight. Where an obviousness attack can be constructed only by selecting and combining numerous (more than 10) disclosures addressing different technical questions, none of which supplies the missing pointer or gives the skilled person a reason to consult the others, the resulting mosaic is indicative of an ex post facto analysis rather than the course the skilled person would have followed at the effective date."* 8. The Court dismissed the revocation action. **Comment** 1. This is a must-read decision for all representatives, particularly those specializing in pharma, as it deals with a second medical use patent. In this case the "second use" was the finding that a known drug used to treat a specific problem worked surprisingly better in a particular subgroup of patients. 2. One of the "parent" patents had been revoked by the Board of Appeal, but the Court correctly decided that this did not result in res iudicata for this case. 3. The Court also states that a grandparent application disclosing millions of possible combinations, as Biogaran stated, does not result in an extension of subject matter as such. This seems correct, as according to the Court, the skilled person would read the now claimed invention in the original application. 4. The decision also contains several statements about what a representative should (timely) state and explain with (the necessary) evidence. Although one might expect experienced representatives to be aware of this, this case again shows the importance of this fundamental procedural knowledge.