# 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%2Fnews-insights%2Fdetail%2Fupc-unfiltered-by-willem-hoyng-upc-decisions-week-33-2026%26title%3DUPC%20Unfiltered%2C%20by%20Willem%20Hoyng%20%E2%80%93%20UPC%20decisions%20week%2033%2C%202026%26summary%3D "Linkedin") # UPC Unfiltered, by Willem Hoyng – UPC decisions week 33, 2026 17 August 2026 UPC Unfiltered News Hot Topic 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). #### **31 July 2026** ***(late published)*** #### **Local Division Paris, Bostik v Henkel** [UPC\_CFI\_583/2025; UPC\_CFI\_1435/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/0a983108-666f-4984-ab1c-d049daf7b29e.pdf) ***Added matter*** **Facts** 1. On 4 July 2025, Bostik commenced infringement proceedings against Henkel based on EP 1 725 627 protecting an “adhesive coating for snack food packaging”. 2. Henkel filed a counterclaim for revocation. 3. Bostik filed a conditional application to amend the patent. 4. The patent had been maintained by the Board of Appeal of the European Patent Office (“EPO”). **The Court** 1. The Court discusses the patent and states the problem solved by said patent. 2. The Court recalls the principles of claim construction and interprets certain claim elements. 3. The Court rejects Henkel’s argument that the claim consists of two separate parts: one with respect to how the adhesive coating is produced and the other regarding the properties of the (end) product. The Court concludes, in light of the whole disclosure, that you cannot have one without the other. 4. The Court notes that the EPO (including in opposition) did not consider “added matter”. 5. The Court concludes that there is added matter as the original application only discloses (“implies”) that both the cohesive and adhesive strengths must be above 118.11 g/cm, while the patent as granted also covers embodiments with adhesive strength below 118.11 g/cm. The claim therefore contains an extension of the subject-matter as filed. 6. The auxiliary requests do not address this added matter issue. 7. The Court revokes the patent and dismisses the infringement claim. **Comment** 1. This is, in my opinion, a very unsatisfactory decision. Of course, the claimant has to blame itself as it seems that it would have been easy to save the patent with an auxiliary request. 2. However, I also think that the Court should not primarily look at ways to invalidate the patent where it was prima facie granted for a good invention. In this case there was clearly the possibility to do so while staying within the boundary of Art. 123.2 EPC. In my opinion, the Court could have read the limitation in the claim in the light of the description. It chose for the far more literal approach of the EPO. 3. I have to add that I do not know what was argued by Bostik and what reading the limitation as being implicitly encompassed in the claim in view of the description would have meant for the infringement case. While it looks somewhat strange that a patentee would not want to at least save the patent, this may also be the reason why the claimant did not formulate an auxiliary request to cover this added matter objection. #### **10 August 2026** #### **Local Division Hamburg, Cybex v Nuna** [UPC\_CFI\_1321/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/e6d78d57-df01-45ac-a49c-e5a814ea43b3.pdf) ***PI proceedings*** **Facts** A application for a preliminary injunction (“PI”) was filed based on Unitary Patent 4 242 056 covering a children seat with a basis which can be attached to a vehicle. **The Court** 1. A party is entitled to invoke only the combination of claims 1 and 2 in which an alternative has been deleted. This also applies in PI proceedings. 2. A limitation of what was initially claimed in the proceedings is always permitted. 3. The Court refuses further auxiliary requests (only submitted with the reply) and not based on the granted claims. 4. The Court discusses the patent, defines the problem solved by the invention and interprets certain claim elements after reciting the principles of claim interpretation. 5. The Court discusses in detail the litigious products of the defendant and finds direct and indirect infringement (with respect to the latter, on the ground that the defendant also offers the different components of the children seats). 6. The Court considers it more likely than not that the patent is valid. 7. For a successful novelty attack, it is not sufficient that all the elements can be found in one publication: it is necessary that the document teaches clearly that the different elements can be combined as stated in the claim. 8. A claim element can be implicitly present in a publication but it should be clear to the skilled person without further consideration necessary. 9. The Court rejects the four novelty attacks. 10. After reciting the applicable test, the Court also rejects the objection of lack of inventive step. 11. The added matter objection is dismissed as well. 12. All the further requirements for a PI are discussed. In particular, the Court considers that the urgency requirement is fulfilled as the patent was only granted on 18 March 2026. **Comment** 1. In my opinion a well-reasoned and convincing decision issued within 5 months of the grant of the patent, which I think is when the clock for urgency starts to run in case of an “infringement” which started before the grant of the patent. 2. The decision that you can start PI proceedings on the basis of a limited claim (or narrower set of claims) is correct. It is always possible to invoke only one or more of the granted dependent claims (which include the subject-matter of an independent claim). 3. In my opinion, it is even possible to start PI proceedings on the basis of an “auxiliary” request (i.e. formulating a new, more limited claim on the basis of the granted claim amended with subject-matter from the description) in anticipation of invalidating prior art but, in such a situation, it seems necessary to explain why litigation is started on the basis of such amended claim and why such claim fulfils all the formal and substantive patentability requirements. For main proceedings, this possibility seems a bit theoretical as the same result can be reached via central limitation proceedings in the EPO or in national proceedings and there will be anyway the possibility to file auxiliary requests. 4. However, in PI proceedings wherein speed is of the essence, this should be a possibility, subject to the principle of due process. The claim may not be amended at the last moment if it does not give the defendant the possibility to defend itself adequately, as in this case. 5. I see no problem with starting proceedings before grand and/or while the request for unitary effect is pending if the text of the patent to be granted is known, as long as the patent has been granted (and where necessary validated) or the unitary effect has been obtained before the decision of the Court (and in practice I would say before the oral hearing). #### **10 August 2026** #### **Local Division The Hague, Maxell v Samsung** [UPC\_CFI\_251/2025; UPC\_ CFI\_769/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/e2fedc46-8d9f-41ff-87b7-a62ea81ca63d.pdf) ***Aggregation of features*** **Facts** 1. Maxell sued Samsung for infringement of EP 2 061 230 covering “a portable terminal, information processing apparatus and content display system”. 2. Samsung counterclaimed for revocation. 3. Maxell filed 44 auxiliary requests. 4. Samsung relied on 25 prior art documents. 5. After the interim conference, the counterclaim was narrowed down to 5 attacks and the auxiliary requests to 10. 6. The panel informed the parties before the oral hearing that it wanted to discuss inventive step of the auxiliary requests on the basis of D1 alone or D1 in combination with D3. **The Court** 1. The Court finds *ex officio* (in lack of a timely preliminary objection) that it has international jurisdiction already on the basis of Art. 26 Brussels I bis Regulation and Maxell has standing to sue. 2. The Court subsequently announces the outcome (invalid patent) and a table of contents of the decision. 3. The Court discusses the patent (“the content viewed on a first device can be passed to a second device” – “hand over”), recalls the principles of claim construction and defines the skilled person. 4. The Court discusses the interpretation of some claim features relevant for the decision, on which the parties disagreed. 5. The Court does not accept Samsung’s “over limiting” claim construction which would only cover the third embodiment described in the patent. It does not agree either with the limiting interpretation Maxell gave to other claim elements. 6. Claim 1 is not novel over D3. 7. The Court recites the principles for the inventive step test set out by the Court of Appeal. 8. As the auxiliary requests limit the scope of the patent progressively, the Court (as discussed during the oral hearing) considers the last two first: since they limit the patent the furthest, if these ones are found not to be inventive, none of the previous auxiliary requests can be. 9. The Court finds that the combination of D1 and D3 renders the last auxiliary requests invalid. The addition of some other distinguishing features are routine modifications. 10. The Court states the following: “79. *As follows from the UPC approach to inventive step as discussed above at 65., it has to be established what the purported invention adds to the state of the art not by looking at the individual features of the claim, but by comparing the claim as a whole in the context of the description and the drawings, thus also considering the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) that the skilled person on the basis of the application understands is (are) achieved with the claimed invention.* *80. However, in case of a mere aggregation of features, where the application of each individual distinguishing feature is obvious and the distinguishing features do not interact functionally to produce an effect that goes beyond a mere juxtaposition, the combination of such features cannot be held inventive (see LD Munich, UPC CFI 846/2024, Decision of 7 July 2026).* *81. This applies here. Samsung correctly pointed out that the different groups (i) to (iv) of the asserted distinguishing features discussed above (in 70) provide unrelated technical functionalities and do not give rise to a synergistic effect that would amount to more than the sum of their individual technical contributions.* *82. Maxell argues that the distinguishing features together all contribute to a smoother and more user-friendly provision of content relay between the portable terminal and the external device. However, in doing so it merely provides the standard functionalities that the skilled person would usually associate with these distinguishing features and for which the skilled person would routinely employ them in a technical implementation. Maxell has not been able to point to any technical benefit or effect that a combination of two or more \[sic\] these distinguishing features would add beyond a mere aggregation/juxtaposition.* *83. Thus, Maxell has not argued convincingly that any two of the distinguishing feature (group)s ii-iv (see 70. above, i.e. second history information/ authentication, remote control and internet/internet site/URL,), establish a synergistic effect when combined with one another or with the handback functionality of feature group F1.10. In the absence of any functional interdependencies that establish a synergistic effect, a plurality of routine modifications that the skilled person would each take as a next step and as a matter of routine amount to a mere aggregation of features that is obvious. This is further elaborated below.*” 11. As the patent is invalid, there is no infringement. 12. The parties had agreed on the total amount of recoverable costs (€400,000), to be divided by the Court. The Court awards the entire sum to Samsung who won both in the infringement action and the counterclaim. 13. The Court issues a R. 262.2 order with respect to the greyed-out confidential information in the submissions. **Comment** 1. An example of Dutch/Swedish efficiency! First, at the interim conference, by narrowing down of the (unreasonable) number of auxiliary requests and invalidity arguments and by announcing before the oral hearing that for the remaining auxiliary requests the focus should be on the combination of D1 and D3; then, in the judgment, by immediately considering the most limiting auxiliary requests (and of course having the parties agree on costs). 2. I have cited verbatim hereabove the most interesting part of the decision. It shows that adding multiple obvious features to a non-inventive combination does not make a claim inventive, unless such aggregation of features would lead to a certain synergetic effect. In this case, there was simply A + B + common general knowledge (i.e. the added obvious features), with no synergetic effect making the hand-over operation smoother. Therefore, it is no more than a mere aggregation. If the added feature would have had a positive effect on the already present features, there would have been a synergetic effect and possibly inventive step. 3. A further word on costs: until the Court of Appeal adopts as a general rule the principle of “winner-takes-all” when it comes to costs and German Divisions renounce their national habit of apportioning e.g. 88% of the costs to the claimant and 12% to the defendant when the Court finds infringement, it is possible for parties (as in this case) to agree on a lump sum for the costs related to the infringement claim and one for the costs of the counterclaim, and to let the Court determine which part is awarded to which party. Parties could also (possibly even better!) agree that the winner takes all (so the Court does not have to spend time on the percentage game). 4. As I previously noted: make sure that all the costs are counted in, including travel expenses and the pizza for the evening before the hearing. 5. On a related note, it has started to become a (good and efficient) habit to make the counterclaim for revocation conditional where it is only raised as a non-infringement defence. However, as I have already argued, it seems inappropriate to me, if the defendant prevails with its non-infringement arguments, to have him pay the claimant’s costs in the conditional counterclaim. Therefore, in case of a conditional counterclaim, you should also consider making the costs agreement reflect that if the defendant (already) wins on non-infringement, it is also entitled to the costs of the conditional counterclaim. It should then be made clear in Court that the conditional counterclaim is only raised as a defence against the infringement claim and that if you win on infringement you should be entitled also to the costs for the conditional counterclaim. 6. In my opinion, it would be wise that when the Rules of Procedure are revised, they reflect that such a conditional counterclaim is indeed possible (as has already been decided[\[LBO1\]](https://www.hoyngrokhmonegier.com/news-insights/detail#_msocom_1) ) and that, when it comes to costs, it should be considered as a (further) defence in the infringement case, even where the condition to rule on it is not fulfilled because the Court does not find infringement. #### **10 August 2026** #### **Local Division Mannheim, Wilus v AsusTek** [UPC\_CFI\_452/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/0c037d8c-4bfe-4d9b-91bf-ebae1cd99660.pdf) ***Settlement / reimbursement of court fees*** **Facts** 1. The claimant (Wilus) filed an infringement action based on EP 3 849 157. 2. The defendants filed separate counterclaims for revocation. 3. The parties settled before closure of the written proceedings under R. 265 RoP without requesting a cost decision. **The JR** 1. The Judge-Rapporteur (JR) accepted the withdrawal of all claims. 2. The JR awarded to all parties a 50% refund, including to defendant 1 who had claimed 50% but made a calculation error, asking €10,000 instead of €13,250. **Comment** The JR is willing to do the math and correct an obvious mistake ex officio. Bravo! #### **10 August 2026** #### **Local Division The Hague, Glaxo v Pfizer/BioNTech** [UPC\_CFI\_621/2025; UPC\_ CFI\_1707/2025; UPC\_ CFI\_1708/2025 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/33e32631-3927-4b09-9105-a60f279ea996.pdf) ***Stay?*** **Facts** 1. The oral hearing was scheduled for 30 September 2026. 2. The two patents invoked in this case are EP 4 226 941 (“EP941”) and EP 4 066 856 (“EP856”). 3. After the exchange of written pleadings, EP941 was revoked by the Opposition Division (“OD”) of the European Patent Office (“EPO”) for lack of novelty and the revocation of EP856 was confirmed by the Technical Board of Appeal (“TBA”). 4. Pfizer/BioNTech requested a stay until the appeal decision at the EPO on EP941. 5. The consequences of the decisions and the request for a stay were discussed during an interim conference on 27 July 2026. **The Court** 1. In the EP856 revocation case there is no need to adjudicate. Glaxo has to bear the costs. 2. The impact of the EP856 decision of the TBA on the validity of EP941 can only be properly judged after the written decision of the TBA, which is to be expected in October. The Court will decide after that written decision and then (if no stay is granted) set a new date for the oral hearing. **Comment** One would maybe have expected a stay in view of the fact that both patents are divisionals of the same application and the OD has already revoked the patent, but the The Hague Division applied the (correct) principle that stays are the exception in the UPC and does not grant a stay unless from the written decision of the Board of Appeal in the EP856 case it becomes clear that the TBA will likely confirm the decision of the OD in the EP941 case. #### **11 August 2026** #### **Court of Appeal, Ericsson v Transsion** [UPC\_CoA\_91/2026 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/581b51ee-7cd7-41fd-90c4-7ea298bee9a8.pdf) ***Settlement*** **Facts** 1. On 6 March 2026, Transsion started infringement proceedings in the Local Division of Lisbon. 2. Before that date, Ericsson had filed a case in the Local Division in The Hague asking the Court to determine FRAND complaint terms for a worldwide cross-license between the parties. The patent invoked in Lisbon belonged to the standard essential patents for which the case in The Hague was filed. 3. The Local Division Lisbon dismissed the request of Ericsson based on R. 360 RoP and R. 361 RoP to dismiss the case, ruling that the requirements for R. 360 RoP or R. 361 RoP were not fulfilled. 4. Ericsson appealed. **The Court of Appeal** 1. Ericsson filed a R. 265 RoP request for withdrawal of the appeal because of a settlement between the parties. 2. Transsion was asked to respond but did not do so. It has apparently no legal interest in continuing the appeal. 3. Request is granted. **Comment** It would have been very interesting if we would have had a decision of the Court of Appeal. Is it possible, by filing rate-setting proceedings in a certain Division, to avoid the SEP holder filing in Divisions which are perceived trigger-happy? If you are planning to do that, do not use R. 360/361 RoP but look at Art. 33(2) UPCA! #### **11 August 2026** #### **Local Division Mannheim, Google v BF exaQC** [UPC\_CFI\_2082/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/b6f43e5e-a507-4061-8e45-ebf60f7e4d8a.pdf) ***Change of language*** **Facts** 1. Two (small) German companies sued Google for infringement of EP 3 743 812 and EP 3 614 263, both granted in English. 2. Shortly after the service of the Statement of Claim in German, Google asked for a change of language of the proceedings. 3. The claimants referred to a case where they also acted as plaintiffs and where the President had refused such request, giving as one of the reasons the small size and domicile of the plaintiffs. **The President of the Court of First Instance** 1. The President cites Art. 49(5) UPCA (“fairness and all relevant circumstances”) and all the criteria developed by the Court of Appeal. 2. She observes that the situation is now different because, in the meantime, the claimants have started proceedings in English in German Divisions against the same defendants. She also points to the early application for a change of language, such that an order to change the language will not affect the course of the proceedings. **Comment** 1. This is a no-brainer to me. The prior art literature is almost all in English, to the point that even the claimants had to use a lot of English in their Statement of Claim otherwise written in German. 2. You can only wonder why the claimants chose German, contrary to the parallel lawsuits. I assume (and know) that their German counsel masters English. Is it to make Google’s life a bit more difficult because of all the translations which will have to be done and because their in-house people do not master German? That should not be a reason. Generally speaking, it would be beneficial for the UPC as an international Court that all proceedings be conducted in English. #### **12 August 2026** #### **Local Division Munich, Edwards v Meril** [UPC\_CFI\_1160/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/3ae67abc-6b75-4a50-9881-9e2dbeda2ace.pdf) ***Damage proceedings*** **Facts** 1. Meril lost infringement proceedings in the Local Division Munich. It did not appeal as it apparently could continue to sell its Transcatheter Heart Valve subject to a small change. 2. Edwards started damage determination proceedings with an application to lay open books, requesting among others information about the sales of non-infringing products. 3. Meril confirmed its willingness to lay open their books but not for all the information requested by Edwards and asked for a confidentiality regime. 4. An oral hearing was set for September. 5. This order is the result of the interim conference held by the JR together with the Technically Qualified Judge (TQJ). **The JR** 1. The JR sets the value of the litigation at the requested amount (€ 15 million in damages) but to be reviewed later. 2. The JR indicates that if this case is not settled or goes to the PMAC, the Court of Appeal will eventually have to decide whether or not one can claim damages for the sale of non-infringing products and which law is applicable to the damages resulting from infringing acts committed before the start of the UPC. 3. While urging the parties to find an agreement on the confidentiality regime and on the applicable law, the JR gave a “preliminary assessment of major points”. In point 11, he states the following: “The judge-rapporteur shared his preliminary assessment of the main legal question of whether profits from non-infringing products could be taken into account when calculating damages, and whether they could therefore be subject to an 'open the books' application. He gave an example: A department store advertises an infringing product, 'A'. A customer sees the advertisement and visits the department store to buy the infringing product “A”. However, the product has been taken off the shelves in the meantime due to a court order. The salesperson sells the customer a non-infringing product, "B", instead. In this situation, the profits made from selling product “B” can be attributed to the patent infringement, the patent-infringing offer. In the present case, it may be necessary to take into account the profits made from non infringing products that replaced the infringing product in open tenders. However, if the link to the sales of the non-infringing products is more tenuous, this might be viewed differently.” 4. The JR made the usual arrangements for the oral hearing, allowing attendance by video. **Comment** 1. In my experience, two normal commercial parties who have a dispute about damages are not going to spend massive hours and costs in attorneys’ fees but are going to sit around a table, settle and continue doing business. In complicated cases and/or if parties hate each other, they go to an experienced mediator (which in this case is even created by the UPCA: the PMAC). 2. I would find it practical but strange – not to say legally wrong – to apply the UPC law to the question of damages with respect to infringing acts with took place before the entering into force of the UPCA. That is in my view a clear example of retroactive effect, which should not be possible without an express provision in the UPCA. However, under Art. 13 of the Enforcement Directive, the law should be essentially the same everywhere in the EU and it is the European Court of Justice (ECJ) which in the end will have to decide if so-called springboard damages are possible. The same ECJ will also have to decide if the publication of a patent is enough to consider that a company “knew or had reasonable grounds to know that it infringed” (see Art. 13 of the Directive). 3. With respect to claiming profits of non-infringing products (so-called springboard damages), the JR gave his provisional view under 11 cited hereabove. 4. I think that the example seems somewhat remote with respect to the case at issue given that the defendant can continue to sell its products in a non-infringing way. 5. To give an example along the lines of the JR’s: suppose I see an advertisement for a book about the life, work and decisions of a given judge. I am a lawyer practicing patent litigation and I am interested in the book. When I get to the shop a few days later, the cover does not bear the photo of this judge anymore. When asked about it, the salesperson tells me that the photo has been removed from the book because of copyright problems. Of course I would still buy the book because the pictures are unimportant for my decision. The advertisement was directed to the book’s contents, not to a book with very specific photos. The same may be argued about the case here: if Meril advertised and introduced its new heart valve for a competitive price and did not advertise specific properties of the new product related to the invention, a buyer’s decision may have nothing to do with the invention. 6. If there is no evidence on record that it was the infringing properties which were advertised and which made customers buy the product, the advertisement example seems inapplicable. Moreover, if these inventive properties were truly important, why would a customer buy the non-infringing product? We have all seen “small” patents granted which in fact have no true influence on the overall functionality of the product. They may be nice to have but do not influence the purchase decision. In other words, the market created with the infringing products would also have been created with the same products stripped of the infringing feature. In this scenario, no springboard effect can be attributed to the reproduction of the patented feature. Also the JR seems to acknowledge this in the last sentence of the quote. #### **13 August 2026** #### **Local Division Düsseldorf, Lightguide v biolitec** [UPC\_CFI\_256/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/11d559d9-5747-4465-89e7-3c5ffece561b.pdf) ***Confidentiality of costs*** **Facts** Both parties asked for confidentiality with respect to some details of their invoices under R. 262.2 RoP so that the number of hours worked on the case, the hourly rates of lawyers and patent attorneys and the nature of the work would remain secret. **The JR** She grants the request, by reference to the case law of her own Division and on the ground that only few people knew this information (“nur einem ein geschränkten Personenkreis zugänglich”), thereby identifying a justified interest of the parties. **Comment** 1. Apparently, the parties did not agree on costs. Why not? 2. My understanding is that parties (i.e. the representatives’ clients) are free to disclose this information to third parties. What is then the “justified interest” for keeping this information from the public record? 3. As I have said before, (potential) users of the system have an interest in transparency. There is, in my opinion, no valid reason to keep this information secret. The baguette from the bakery in my village is € 1.20 and at Grand Frais € 0.90 (with an additional four-for-three offer). Very transparent! Where do I buy? In my village. Why? Better quality! #### **13 August 2026** #### **Local Division Düsseldorf, biolitec v S.I.A.** [UPC\_CFI\_256/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/c413cd04-a267-4215-9c3b-fee56a592772.pdf) ***Stay of cost proceedings*** **Facts** 1. On 6 September 2024, the Court rejected an application for a preliminary injunction (“PI”) and ordered the claimant to pay the costs. The appeal against this decision was dismissed, with a decision on the appeal costs. 2. The defendant asks for reimbursement of its costs related to the PI proceedings. 3. A main case is pending before the Local Division Munich. **The JR** 1. Citing different precedents, the JR states that the costs for a PI are normally decided after the main proceedings. 2. The JR considers that it is preferable to refer this costs claim to the Munich Division after that case has ended, also speculating that parties may reach an agreement. 3. Accordingly, she stays the cost proceedings. **Comment** 1. If main proceedings are pending, it may indeed be more efficient to pause the PI costs until the outcome of the main proceedings, as now seems to be customary. 2. The complication here is that the claimant, after having lost the PI in Düsseldorf, hopes for a better result in the main proceedings in Munich. So in principle Düsseldorf has to decide about the IP costs and Munich about the main action costs. 3. In my view, the JR has come up with the most practical solution: staying the costs case and after the Munich case has ended referring the costs proceedings to Munich also in the hope (expectation) that parties are pragmatic enough to reach an agreement on costs in the Munich proceedings (including an agreement about the PI costs). #### **13 August 2026** #### **Local Division The Hague, BTL v Lexter** [UPC\_CFI\_1048/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/f8e569dc-583d-4af8-9fb6-4a20b41634b4.pdf) ***Reimbursement of court fees*** **Facts** 1. The parties settled under R. 265 RoP. 2. The case was closed on 16 January 2026. 3. Two months later, the claimant’s representative asked for a reimbursement of 60% of its court fees. 4. The sub-registry sent an email to the applicant indicating that: 1. the Court wonders whether it is possible to file such request after the case is closed and tends to think that it is inadmissible; 2. moreover, no cost decision was requested and court fees are part of the costs; 3. although the RoP do not mention a time limit, the Court considers, having regard to R. 151 RoP, that a time period of two months after the final decision is not reasonable. 5. The claimant objected and asked for a formal order. **The Court** 1. The Court decided that, once the case is closed, one cannot file further submissions but should first apply for the reopening of the case. The Court has then discretion to reopen or not. 2. Even if the request were admissible, the claimant has forfeited his right when he informed the Court that no cost decision was necessary, as court fees are part of the costs. 3. Moreover, two months is too late. 4. What other Local Divisions do (in different situations) is not binding upon this Local Division, although a harmonized approach is of course desirable. 5. The Court refused the reimbursement but granted leave for appeal. **Comment** 1. It looks like the representative forgot to ask for a reimbursement of court fees and therefore engaged in a desperate effort to correct this. Hopefully he will appeal so that the Court of Appeal can clarify once and for all that you must ask for a return of fees already with a R. 263 RoP or a R. 365 RoP request. (In due course, it would also be good to amend R. 370.11 RoP to reflect this.) 2. The sub-registry of The Hague already provided the applicant with some relevant objections and the Court found another one: the applicant did not ask for reopening of the case. 3. I appreciate all this creative thinking but, first and foremost, waiting two months is just far too long. The representative is, in my opinion, going to lose a possible appeal but maybe it is necessary before he can claim the amount from his insurance. 4. With respect to the latter: if he looked at the recent case law or previous editions of the Unfiltered, he would realize that he is only entitled to 50%, and not 60% anymore. It is one further reason to deny the request, although maybe a bit too formalistic… #### **14 August 2026** #### **Court of Appeal, Sibio v Abbott** [UPC\_CoA\_884/2025 ](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/1af79fa9-e826-4ff0-b50a-75519b2da830.pdf) ***Intermediate generalization?*** **Facts** 1. Sibio’s claim for revocation of Abbott’s patent EP 3 831 283 was dismissed by the Paris Central Division. 2. Sibio appealed the decision with respect to added matter. 3. In preliminary injunction proceedings the Court of Appeal has already ruled that it is more likely than not that the patent is valid. **The Court of Appeal** 1. The Court defines “the core of the invention”. 2. The skilled person and the claim interpretation as established by the Court of First Instance are contested. 3. Sibio argued that there was a so-called intermediate generalization. The Court dismissed the arguments of Sibio with general considerations referred to in the two headnotes. 1\) One situation where added matter may arise is when claimed subject-matter is obtained by importing one or more features from a certain embodiment in the application into a claim, while omitting one or more other features of this embodiment which were presented in combination with the imported feature(s) in the disclosure of this embodiment. This is referred to as an ’intermediate generalisation’. This is generally considered to be unallowable if there is a clearly recognisable functional or structural relationship among the omitted feature(s) and the claim features, also referred to ’an extricable link’ between the omitted feature(s) and the claim features. 2\) The technical effect that the invention aims to achieve, and whether an omitted feature contributes thereto, is relevant for the assessment of added matter. It is relevant when considering whether the skilled person would understand from the disclosure of the application as a whole that there is a structural or functional relationship between the omitted feature and the other features of the claimed embodiment or, in other words, when considering whether there is an inextricable link with such other features or, yet differently worded, whether such omitted feature is essential to the invention.” **Comment** This is a very important decision. In my opinion, the “intermediate generalization issue” which you see in almost all revocation disputes has gone (in certain EPO decisions) out of hand. The Court of Appeal in its decision brings it back to correct proportions. **– All comments above are** [**Prof. Hoyng**](https://www.hoyngrokhmonegier.com/our-team/legal-experts/prof-willem-hoyng "https://www.hoyngrokhmonegier.com/our-team/legal-experts/prof-willem-hoyng")**‘s personal opinions –**