UPC Unfiltered, by Willem Hoyng – UPC decisions week 47, 2025

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30 October 2025 (late published)
Local Division Paris, Sun v VIVO

UPC_CFI_361/2025; UPC_CFI_362/2025

FRAND (determination)
 

Facts

On 29 September 2025, VIVO filed a preliminary objection arguing that the Court had no jurisdiction. VIVO argued that the claimant, Sun, had asked for a FRAND determination, whereas the Court is only competent to deal with licenses as a defence.

The JR

1. It is clear that claimant's main case concerns infringement and that the Paris Local Division has jurisdiction: it is clear that VIVO’s products are offered in France (through www.fnac.com).
2. Under A.I of its prayer for relief in the Statement of Claim, the claimant asks for a declaration of infringement. Under A.II, the claimant asks for a declaration that the terms it offered to Vivo are (indeed) FRAND. A.II also includes the proviso that if the Court determines that adjustments are necessary, to find that those (adjusted) terms are FRAND. The claimant asks for an injunction if Vivo does not accept the FRAND terms under A.III.
3. With respect to A.II (whether or not the Court could set the FRAND terms): the JR referred this question to the main proceedings. 
    

Comment

1. I do not see why the Court could not set the FRAND terms as demanded under A.II if the Court considers the proposed terms not FRAND. One can for instance also ask the Court to set a period of two weeks for a recall or such period as the Court considers reasonable.
2. The Court is asked to grant an injunction and, in order to determine whether or not that is justified, it will have to deal with the question whether what the parties propose is FRAND. Certainly, if the claimant proposes to ask for an injunction only if the defendant is not willing to pay a FRAND royalty, it would not serve justice if the Court were not willing to state what FRAND terms are, if the parties disagree on this. The Court could (even after an interim conference) suggest asking the PMAC to advise what is FRAND or appoint a court expert, but should often be able, after having heard the arguments of the parties (and their experts), to decide for itself.
3. It is noted that, in this case, the claim under A.II also makes it possible for the Court to give a reasoned decision that the claimant’s offer is not FRAND and to give the claimant the possibility to amend its offer, taking into consideration the reasons why the offer is not FRAND, with, of course, the opportunity for the defendant to react. Nothing prevents the Court from giving such an intermediate decision.

13 November 2025 (late published)
Local Division Lisbon, Boehringer v Zentiva

UPC_CFI_858/2025

Preliminary objection

Facts

1. This concerns an infringement action.
2. Zentiva filed preliminary objection arguing that the Court lacks jurisdiction and should dismiss the action.
3. Zentiva’s arguments:
   1. The threat of infringement is solely based on an administrative act by Infarmed.
   2. This requires the Court to rule on the legality and effects of an administrative decision by a national authority.
   3. The Court has no jurisdiction to do so

The Court

1. The Court has jurisdiction for actions for actual or threatened infringement.
2. The question therefore is whether the claimant alleges in its Statement of Claim actual or threatened infringement, which is what the claimant does.
3. National Courts are competent in respect of administrative matters.
4. However, this case is not an administrative matter. The issuance of the Infarmed communication is not in and of itself the threat. It is only a fact which constitutes grounds for a threat.
5. The parties did not dispute the legality of the communication by Infarmed. The dispute does therefore not concern the decision of the administrative authority.
6. The argument of defendant that it has not carried out any infringing acts does not fall under the scope of a preliminary objection. This has to be assessed in the case on the merits. 

Comment

1. Why do representatives not first think before doing? It should have been clear to every representative who has gone to law school – even without being an IP law specialist – that these arguments would go nowhere and that clients are paying for a useless exercise, resulting in wasting the Court’s time.
2. Even if the decision of the administration in Portugal would have been incorrect and should be considered as non-existent (not granting Zentiva the right to carry out any commercial act with their infringing product) which was never alleged by Zentiva, that could still not mean that the Court has no jurisdiction. The allegations in the Statement of Claim are decisive for the question of jurisdiction (except if what is factually stated is clearly not credible).
3. As said, however, Zentiva did not even argue that there was something wrong with the decision of the Portuguese administration.
4. The same lack of understanding between the requirements for establishing jurisdiction and the requirements for establishing (a threat of) infringement becomes clear from the argument that Zentiva is not engaging in any infringing act.

5. The Lisbon Local Division knows the law and comes to the correct decision. 

    

17 November 2025
Local Division Düsseldorf, OTEC v STEROS

UPC_CFI_885/2025

Application for Inspection Order

Facts

1. After a seizure and inspection during an exhibition, the expert rendered his report on 8 October 2025. The subregistry uploaded this report in the case management system (“CMS”) on 10 October 2025.
2. By order of 30 October 2025, the Judge-Rapporteur (“JR”) sent the report to the representatives of STEROS and ordered them to indicate before 13 November 2025 if they want a confidentiality regime with respect to parts of the report.
3. STEROS did not make use of this opportunity.
    

The JR

1. As STEROS did not request confidentiality, the report should be made available to OTEC and their representatives.
2. OTEC has to file proceedings within 20 working days or 31 calendar days after the date on which it received the report.
3. The report can only be used in these proceedings.

Comment

1. This is a textbook way of handling an evidentiary seizure/order for inspection.
2. Why did it take almost three weeks to ask STEROS and their representatives the obvious question? It suggests the Düsseldorf Local Division is busy!
3. According to R. 196.2 RoP, the report can only be used in other proceedings with the consent of the Court. That is different under some national laws. Finding evidence for other, non-UPC proceedings in this way can therefore only be done with the approval of the Court. Other than in the US, the UPC does not have specific rules for obtaining evidence for non-UPC proceedings (e.g. US proceedings). Such a provision would probably be applauded in the US but would raise the question how to interpret the TRIPS requirement of initiating proceedings on the merits within 20/31 days.
   
    

17 November 2025
Local Division Düsseldorf, Leap Tools v Wizart

UPC_CFI_541/2025

Withdrawal of action

Facts

1. The action was filed on 13 June 2025 against defendant 1 and 2.
2. Claimant had not noted that defendant 1 had moved to the US which caused a first failed service. Thereafter, the responsible agent for defendant 1 refused to accept service for defendant 2.
3. The claimant asked the Court to allow service at the residence of the CEO of defendant 2 in Poland. However, defendant 2 does not exist!
4. Claimant asked withdrawal of the case against defendant 2.

The JR

1. The JR allows the withdrawal. Withdrawal in part (only against defendant 2) is allowed. As defendant 2 is not represented and it is clear that their interests are not harmed (as until now they have not made any costs) they do not have to be heard. Claimant has to bear the costs.

Comment

1. Not much progress has been made since 13 June 2025!

2. It is a good lesson for representatives to make sure that you give the Registry the right address of the company to be served and make sure before (as in this case) spending time and you client’s money with requests for alternative service (here in Poland) that the defendant to be served exists! So, before you start, make sure you have done the right research in the country (here the US) where you want the Registry to serve and make sure it is still up to date at the time of service. This also requires that (also in a busy Division) service by the Registry is done straightaway.  

    

19 November 2025
Local Division Düsseldorf, Bekaert v Siltronic 

UPC_CFI_539/2024

Confidentiality

Facts

1. After an order of the Court, the claimant carried out an evidentiary seizure and an inspection order.
2. The order listed the following conditions:
   1. The expert has to keep the result of the seizure and inspection confidential. If the expert needs a third party (e.g. a lab), then they to make sure that third party does the same.
   2. The lawyers of the claimant have to keep the results confidential as well – even towards their own client.
   3. The representatives of the defendant are to be heard with respect to requests for confidentiality to which representatives of claimant can respond.
3. These events take place.

Order of the JR

1. The report of the expert has been handed to the representatives of the claimant with the information marked confidential by the defendant being redacted. They are still bound not to disclose anything to the claimant.
2. The JR decides that certain items (such as prices and bank relations with suppliers) are indeed confidential.
3. Information that is irrelevant for the assessment of infringement will remain confidential.
4. If confidential information is relevant for assessing infringement, a confidentiality club can be created (see the “Leitsatz” – i.e. the heading provided by the Court).
5. After the decision of the JR, the representative for defendant has to upload the redacted version.
6. The representatives for the claimant are not bound to confidentiality anymore with respect to the uploaded, redacted version.
7. The information can only be used in the proceedings between the parties (to be commenced after the order within the TRIPS-term). 

Comment

1. This is how evidentiary seizure and inspection orders should be handled.
2. The defendant claimed that the expert in his report and seized annexes had gone beyond what was allowed in the order. The confidentiality obligation of the representatives of the claimant who were present during the seizure and inspection should – in my opinion – continue with respect to matters in the report and annexes which go beyond the order and the information with respect to such matters has to be removed from the report (redacted) and seized documents should be returned. It is, of course, for the JR to decide what falls outside the scope of the order (after defendant has lodged an objection). 
    

– All comments above are Prof. Hoyng‘s personal opinions –

For all decisions of the UPC’s Court of Appeal from the start in 2023 until 1 January 2025, Willem Hoyng’s more comprehensive summaries and comments are bundled in the book “Case law – Court of Appeal of the UPC 2023-2024”.