Below, 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.
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26 May 2025
Central Division Munich, Baussmann v Raimund Beck
Amendment of patent
The JR
The JR orders the parties, starting with the answer of defendant, to upload all written submissions in the workflow “Request for amendment of a patent” before 4 June 2025. This will give claimant the possibility to file a rejoinder to the reply to the defence to the request for amendment of the patent.
Whether a request to amend the patent has to be made as a separate request will be decided during the interim conference or during oral argument.
Comment
- According to the Rules (as I read them) the Statement of Defence includes a counterclaim for revocation if (one of) the defence(s) is the invalidity of the patent
(R. 25.1 RoP). However, it is also clear that an inter partes invalidity defence without requesting revocation is not possible. In the meantime, the Court of Justice in the European Union (“CJEU”) has decided in BSH Hausgeräte v Electrolux that with respect to European patents granted for EU-non-UPC countries the UPC does not have jurisdiction with respect to a claim for revocation but can deal with an invalidity defence inter partes. I think that despite R. 25.1 RoP, the defendant should in such situations be able to invoke the invalidity inter partes. - According to R. 30 RoP, the defence to the counterclaim may include an application to amend the patent. So it is certainly not necessary to file a separate application for amendment of the patent.
- From R. 30 RoP, it also becomes clear that an amendment does not always require auxiliary requests (only when “applicable and appropriate”). An amendment consisting of restricting the patent to one or more of the (already granted) subclaims does not require an auxiliary request and cannot be subject of an Art. 84 EPC attack (“clarity”).
27 May 2025
Local Division Düsseldorf, Grundfos v Hefei
Rectification of judgment
Background
Claimant asks for correction of the judgment.
The Court
The Court grants the request of claimant.
Comment
Although the Court says nothing about it, it seems clear that what is corrected qualifies as a “clerical mistake or an obvious slip”! (See R. 353 RoP)
28 May 2025
Paris Central Division, Aylo v Dish
UPC_CFI_198/2024 (decision no longer online)
Added matter
Background
- The revocation action started on 15 April 2024.
- An infringement action is pending in a national court in Germany.
- Opposition proceedings are scheduled for 4 and 5 June 2025.
- The defendant filed (further) auxiliary requests with its rejoinder which were not admitted as being late.
Decision of the Court
- The claimant only requested revocation for Germany. The Court considers that possible, among others referring to Art. 76(1) UPCA which states that the Court should not award more than requested.
- The Court refuses to stay the proceedings and gives a solid reasoning for that refusal which was requested by the defendant during the oral hearing. The court mentions the claimant’s interest for a timely judgment and the advanced stage of the proceedings.
- The Court first describes in detail the technical background and the patent (relating to adaptive-rate content streaming and a method for streaming videos from servers for play back on a content player).
- The Court refers to the decisions by the Court of Appeal Nanostring (UPC_CoA_335/2023) and Hanshow (UPC_CoA_1/2024) with respect to the principles of claim interpretation.
- The Court defines the skilled person (“a legal fiction”) and states that parties in fact agree on the skilled person.
- Regarding added matter, for the correct criteria the Court cites and refers to the decision of the Court of Appeal in Abbott v Sibio (UPC_CoA_382/2024). The Court states that as the patent is based on a divisional application the contents of the claim have to be included in each previous application.
- The Court notes that the claim of the patent as granted differs substantively from the claim of the original PCT applications and that the wording of certain features (including feature 1.7) is nowhere to be found.
- After a careful analysis, the Court concludes that feature 1.7 cannot be found in the parent application and that the patent is invalid for added matter.
- None of the 16 auxiliary requests which were admitted introduced an amendment that could overcome the added matter problem.
Comment
- The Court gives various reasons why you can restrict your claim for revocation to one country.
a. I agree with the Court that Art. 34 UPCA defines the possible scope of a judgment but does not mean that you cannot ask for less than a decision for all UPC countries (where the patent is valid).
b. I do not think that R. 44 (d) RoP is written for this situation. This provision makes it possible to limit the extent of the revocation of the patent. In other words, one can for instance only ask for the revocation of claim 1 (because one does not infringe the more limited subclaims). This has nothing to do with the question whether or not you have to ask for a revocation for the whole of the UPC.
c. Art. 5(2) of the Brussel I bis Regulation (1215/2012) in my opinion also does not provide an argument. That Regulation is an EU instrument with respect to Unitary Patents which does not deal with bundle patents. I cannot see how that provides guidance for the UPCA which is not an EU instrument.
d. The “ultra vires” argument (i.e. the Court cannot grant more than what is requested) at first glance seems strong. However, the question should be whether such a claim (for revocation of only one of the bundle patents granted for UPC countries) is admissible. Does this not go against the principles underlying the UPC which is, in my opinion, to see the UPC as one territory as much as possible, in order to avoid multiple national proceedings. It seems to go against that principle to allow a split up of the UPC in multiple different parts without any necessity at the will of the claimant. There is also no valid reason for such pick-and-choose attitude, also because this means that in the same UPC jurisdiction patents which have been held invalid by the UPC survive in other UPC countries. What is going to happen if tomorrow the same claimant start a new revocation action in the UPC but now for Denmark, and so on? There is no valid reasons to allow this. - The refusal of the stay is completely understandable. None of the parties had asked for a stay prior to the oral argument, and even after the Court explicitly asked the parties’ opinion about a stay, the defendant had not responded positively. During the hearing, the defendant apparently changed its mind. It is clear that the Court (which in the meantime had prepared the case, just like claimant) was not going to grant that request.
- That certain claim language was nowhere to be found in the parent application, as such does not necessarily mean that there is added matter. However, it is clear you are on dangerous ground as you will have to show that a skilled person would be able to derive (the meaning of) that language directly and unambiguously from the whole of the application as filed using this common general knowledge and seen objectively and relative to the date of filing.
- I am surprised that defendants (who should know about the front-loaded character of the UPC proceedings) filed a new set of auxiliary requests too late, apparently without solid reasons for the late filing, and that in the first set, which was allowed, apparently no effort was done to try to overcome the added matter attack which was of course already in the Statement of Defence/Counterclaim for Revocation.
28 May 2025
Local Division Mannheim, MED-EL v Advanced Bionics
Reimbursement of court fees
Just before the decision was to be pronounced, the parties inform the Court that the case is settled. The Court had asked the parties already several times if the decision should be pronounced or not.
Although normally parties, if the action is settled before the closure of the oral procedure, are entitled to a reimbursement of 20% of the court fees (R. 370.9.b(iii) RoP) the Court invokes exceptional circumstances (R. 370.9.c RoP) which allows the Court to refuse reimbursement.
Comment
- The representatives should read Art. 2.1 of the Code of Conduct. If settlement discussions take place and the Court is requested not to give a judgment because of such discussions, it is at least polite to keep the Court informed!
- If the Court has already done all the work (including drafting of the judgment), a return of any fees is indeed not justified.
- There is nothing more frustrating for a Court than having to throw a decision in the bin because parties settled at the last minute. If at all possible, parties should try to avoid these situations, but the frustrated judges should realize that the immediate threat of the (possibly negative) decision is sometimes necessary to give parties the last push necessary for a settlement.
28 May 2025
Local Division Mannheim, Samsung v ZTE
Value of the case
The JR considers that the value of the dispute is largely underestimated because this is a standard essential patent (“SEP”) case in which all 5G mobile devices are attacked. The JR sets the value of the case at € 4 million (instead of € 500.000) on a preliminary basis, and orders Samsung to pay € 26.000 extra in court fees.
Comment
The UPC is a self-financing system, so you should pay the fair price for its services and not try to get more than one is paying for!
28 May 2025
Court of Appeal, Harvard v Nanostring
Restoration revoked patent
Background
The Central Division revoked the patent of Harvard. Harvard appealed. Nanostring informed the Court of Appeal that it withdrew the action. Harvard did not react after being asked to respond.
The Court of Appeal
- As long as there is no final decision a claimant may apply to withdraw the action according to R. 265.1 RoP, which will not be permitted if the other party has a legitimate interest.
- Parties did not ask for costs then a cost decision is not necessary.
- The Court allows the withdrawal.
Comment
This means that the decision that the Harvard patent is invalid becomes ineffective and that that patent remains valid. R. 265.1 RoP only refers to the legitimate interest of the other party, not to the public interest that a patent which is invalidated by the Court can remain valid by an agreement between the parties.
28 May 2025
Local Division Munich, Nanoval v ALD
Evidentiary seizure
Background
The Court orders an evidentiary seizure and inspection without hearing the defendant. The defendant asks for revocation of the order, because the claimant has not established the required probability of patent infringement, the necessity of the measure and the risk of evidence being destroyed.
The Court
The Court refuses to revoke the order.
- The Court discusses the defendant’s non-infringement arguments in detail, emphasizing that for an order for an evidentiary seizure it is not required to prove infringement but to establish that infringement is possible.
- It is not the task of the Court to “find” arguments for not granting an order for a seizure in a protective letter which is poorly drafted.
- The argument that the defendant has its own patent for its product does not mean that that product cannot infringe.
- The argument that a request for a cross-license shows that somebody is not infringing is contrary to what happens in normal life.
- The Court rules that the danger of destruction of evidence does not play a role during review proceedings.
- The Court reminds the representative of defendant that he should not put forward untrue statements (sic!). The Court has not stated that filing of a protective letter is a fact which should be interpreted negatively for the defendant.
Comment
- This is a correct and predictable decision.
- First of all, if the infringement is clear you do not need an evidentiary seizure and inspection (which, on the contrary, may then be disproportionate). So you only need to bring all the evidence you have and establish that there is a likelihood of infringement. Art. 60 UPCA says “to support the claim that the patent is infringed”. So no fishing expeditions, but also not a likelihood of infringement as required for a PI.
- That having an own patent as such does not mean that you do not infringe is an open door. That is why for so-called dependent patents, in certain jurisdictions under certain circumstances, one can obtain a compulsory license. This question becomes more interesting if the defendant’s patent relates to a claim feature of which the patentee argues on the basis of the doctrine of equivalence that this is realised by the defendant’s product (which in certain national jurisdictions is considered a valid defence against an infringement allegation).
- I do not follow the substantiated reasoning of the Court that in review proceedings the danger of destruction of evidence does not play a role. However, Art. 60(5) UPCA makes clear that this is as such not a condition for granting an ex parte order. Art. 60(5) UPCA only requires “necessity” for an ex parte order and in my view such “necessity” with a measure as evidentiary seizure and inspection is basically a given for an efficient and timely execution of the measure. All kinds of voluntary or involuntary things can happen during the time it takes to hear the defendant, which also causes unnecessary delay.
- Three lessons for representatives:
a. Do not say something which is not true! It does not help your client.
b. If you file a protective letter, be to the point, concise and clear, so that the judges immediately get the point. Start with an executive summary!
c. Except if the claimant has clearly not been telling the truth, your chances in review proceedings are extremely slim.
30 May 2025
Local Division Mannheim, Sunstar v SeraCon
Language of proceedings
The claimant filed an infringement case against a German company in English and in fact wanted confirmation that that choice was effective. The JR confirms that that choice was effective because Germany has designated English as the language of their Local Division (per Art. 49(2) UPCA) and the exception of R. 14.2(b) RoP is not applicable. That exception only applies if only infringement in the country of the defendant is alleged, but in this case also (at least) infringement in Italy is alleged.
Comment
- A very strange question by the claimant, as by simply reading the Agreement and the Rules the answer is clear and moreover the defendant has not objected against the use of English.
- The JR in giving the right answer makes two minor mistakes. He refers to the fact that the patent is granted in English but that is irrelevant for his answer. Furthermore, he refers to R. 14(b) RoP but that rule does not exist; it should be R. 14.2(b) RoP.
- Art. 49(2) UPCA could in my opinion also be read as stating that if a contracting Member State chooses one or more EPO languages (English, French or German) as the language of their Local or Regional Division, this means that one can only litigate in that language. Only the Nordic/Baltic Regional Division in fact applies this reading of Art. 49(2) UPCA and uses English only. As Germany has designated only English under Art. 49(2) UPCA, arguably the Local Divisions in Germany should only accept English as language of the proceedings and the same is true for among others Italy, The Netherlands and France.
- It goes without saying that life would be simpler in the UPC if English would be accepted as the common language for all proceedings. As English is not the official language of any of the present UPC states, it should also politically not be too difficult to accept this. I have been told that Spain would have participated if the UPCA would have chosen for that solution.
- Anyway, the confirmation by the JR sends an important message to US companies and other international businesses: as a claimant, there is no reason to use any language other than English.
– All comments above are Prof. Hoyng‘s personal opinions –
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