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.
Interested in more of this? Stay tuned and subscribe here for weekly updates.
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 or Apple Podcasts.
30 September 2025 (late-published)
Local Division Hamburg, Med-El v Zhejiang
Settlement
Facts
- The parties settled after Med-El issued its Statement of Claim for infringement.
- The parties asked for confirmation of the settlement and that the details of the settlement remain confidential.
The Court
- The Court confirmed the settlement and stated that such confirmed settlement may be enforced as a final decision of the Court.
- The Court states that the settlement contains confidential information and orders that only the redacted version will be entered in the Register.
- The Court holds that it will not decide on the confidentiality request based on R. 262.2 RoP until a request to access the file is made by a member of the public.
Comment
- The parties had asked for a decision on R. 262 RoP. The Court refuses, referring to two Court of Appeal decisions. I quite frankly do not read in these decisions that the Court of Appeal rules that the Court of First Instance cannot grant such requests.
- The Court rules that it will decide upon such request if a member of the public lodges a request under R. 262.1(b) RoP. To me, this seems very unpractical. The Court in this decision already decides that certain information is confidential, and that only the redacted version will be put in the Register. Once a member of the public asks for access, the Court now wants the parties to ask for confidentiality again under R 262.2 RoP. A member of the public can then challenge the confidentiality (R. 262.3 RoP). Granting the R. 262.2 RoP request would have been more practical. If a member of the public wants more than the redacted version, they should lodge an order under R. 262.3 RoP.
- To make it even more complicated: I think that the parties did not have to lodge a request under R. 262.2 RoP at all.
- This is about confirmation of a settlement. In my view, it is for the parties to decide what they want to keep confidential. This may also be other information than confidential information.
- In my opinion, R. 365.2 RoP is a lex specialis as it relates to confidentiality particularly in the context of settlements. Parties can request that “details of the settlement are confidential”. The Court can refuse and then the parties may decide not to register the agreement. If granted, however, the parties should be allowed to assume that the register only contains a redacted version. Third parties should not be able to obtain the confidential details (for instance via R. 262.3 RoP).
- If parties cannot keep details confidential and are not safeguarded against third parties getting access, then registering a settlement becomes unattractive. Under those circumstances, claimants might avoid settlements, e.g. wanting a judgment instead. In my opinion therefore, R. 365.2 RoP should be read as a lex specialis which allows you to keep details confidential, and one should not be able to challenge that confidentiality.
1 October 2025 (late-published)
Local Division Paris, Guardant Health v Sophia Genetics
PI proceedings
Facts
Guardant lodged an application for a preliminary injunction (“PI”) on 29 August 2025. The application was served on all defendants on 15 September 2025.
On 1 October 2025, no representative for defendants had been nominated.
The JR
For efficiency reasons, the Judge-Rapporteur (“JR”) sets a timeline for submissions and the oral hearing as follows:
• Defendant’s Defence on 27 October 2025 (max. 100 pages);
• Applicant’s Reply on 10 November 2025 (max. 20 pages);
• Defendant’s Rejoinder on 24 November 2025 (max. 20 pages);
• Oral argument on 12 December 2025.
Comment
- The JR does the right thing, as the Rules do not set a time limit to appear in PI proceedings. This means that the Applicant can only ask for a decision by default if a party fails to take a step within the time limit foreseen in the Rules or set by the Court.
- The latter has now been done by the Court.
- Decisions by default are governed by R. 355 RoP. However, as mentioned above this Rule refers to “Decisions”, while PI proceedings end with an order and not a decision. However, I assume that the Court of Appeal will also apply this Rule in case of a party not appointing a representative and therefore simply not showing up in PI proceedings.
- To avoid delays because defendants not showing up, I wonder if the applicant in PI proceedings in his application should alternatively ask for an ex parte order in case a representative of a defendant is not appointed within two weeks.
- The above also shows that, after the revision of the Case Management System, a revision of the Rules may be a good thing to undertake, starting with collecting ideas for such revision from the judges and the representatives by a (new) Rules Committee (or the Advisory Committee).
- The Paris Local Division has learned from its experience with a more than 400-pages defence in PI proceedings and now sets a page limit.
- I advise the JR to follow the example of the Local Division The Hague the next time, and set a word limit instead of a page limit, which avoids receiving 100 pages in a very small font and at the same time allows the defendant to put drawings in the text without losing space for his written submission.
- Finally, I noted that the Application is based on 4 European patents. This seems to me (too) many to orderly deal with in PI proceedings.
1 October 2025 (late-published)
Local Division Düsseldorf, Roche v Menarini
Confidential information
JR
The JR gives a detailed decision about confidential information in the sense of R. 262A RoP and defers the decision (if necessary) about what should be kept secret during the oral hearing and in the decision, and about what should be disclosed to third parties upon requesting access.
Comment
This is a good example of how representatives should deal with confidentiality: try to agree about what should be kept confidential and who will get access. That cannot be terribly difficult in most cases.
6 October 2025
Court of Appeal, Roku v Sun/Dolby
UPC_CoA_288/2025; UPC_CoA_290/2025; UPC_CoA_291/2025
Preliminary Objection
Facts
Roku raised a preliminary objection in first instance, arguing basically that the UPC cannot deal with the case. In the alternative, Roku argued the proceedings should be stayed and that questions should be referred to the Court of Justice of the European Union (“CJEU”). Roku’s objections were dismissed, and it subsequently filed this appeal.
The Court of Appeal
- An argument that the Court cannot deal with the case because it does not have international jurisdiction (Art. 31 UPCA) is a preliminary objection falling under the scope of R. 19 RoP.
- R. 19 RoP contains an exhaustive list of preliminary objections. R. 19.1 RoP concerns the competence of the Court, including lack of international jurisdiction.
- Art. 31 UPCA refers to the Brussels I bis Regulation (“BR”). Art. 71b (1) BR states that a common court has jurisdiction where, under the BR, a national court would have had jurisdiction for a matter governed by the instrument (UPCA). This case concerns patents for which the national courts had competence.
- Also the argument that Art. 32 UPCA is not applicable, can be a ground for a preliminary objection.
- The scheme of Art. 31 and 32 UPCA does not conflict with Art. 267 of the Treaty on the Functioning of the European Union (“TFEU”).
- The Court also dismisses other claims, including the argument that there is an infringement of the right to a lawful judge due to the absence of a Central Division in London.
- The Court sees no reason to refer questions to the CJEU.
- You have to pay the court fee for each appeal case, also when all (in this case: three) appeals concern the same appellant and the same case.
Comment
- This is the culmination of efforts of persons who do not believe in the UPC. Over the years, they have been fighting with mostly rather weak arguments to prevent the UPC from happening. They only have been successful in delaying the UPC’s implementation for about 10 years.
- For the practice of the representatives, this last Don Quixote fight is not relevant. Apparently Don Quixote has found a client who pays for a lost uphill battle. In the meantime, representatives can continue with their normal practice and advise their clients to choose for the UPC system with the knowledge that the approval rate for the UPC is very high. There is no desire to return to the fragmented system of the past. Let us hope that the last remnant (the possibility of opting out) will end in 3,5 years’ time.
- The decision that the objections against the applicability of Art. 31 and 32 fall under R. 19.1 RoP are in my opinion correct. These articles deal with the competence of the Court. It is unimportant which reasons are given for the non-applicability (here basically that the UPC is not a court of a member state, but an international court).
- The Court refers to the decision of the CJEU with respect to the Benelux Court and the fact that after the opinion of the CJEU in 1/09 about the creation of the unified patent system, the UPCA was amended such that only EU countries can participate.
- The latter means, according to the Court of Appeal, that it is clear that EU member states can have common courts like the UPC. This reasoning is in my opinion very convincing.
- The interesting question about the exact meaning of Art. 71a BR remains. Is the UPC one EU court like a national EU court or a national court in each of the UPC states?
- That question is important, especially in cross-border cases. In the “one EU court theory”, each company domiciled in the UPC territory, irrespective of the division where it is sued, is always sued in its home court giving rise to cross-border jurisdiction against this company based on Art. 4 BR. So, suing a French company together with its Swedish parent company in the Local Division Paris, would also enable a decision against the Swedish parent for infringements in e.g. Spain, Turkey and the UK, because also the Paris Division is (part of) the home court for the Swedish company on the basis of Art. 4 BR.
– 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”.