# 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-43-2026%26title%3DUPC%20Unfiltered%2C%20by%20Willem%20Hoyng%20%E2%80%93%20UPC%20decisions%20week%2043%2C%202026%26summary%3D "Linkedin") # UPC Unfiltered, by Willem Hoyng – UPC decisions week 43, 2026 26 October 2026 UPC Unfiltered Unified Patent Court (UPC) 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). #### **24 September 2026** ***(late published)*** **Local Division The Hague, Philips v Quectel** [UPC\_CFI\_2244/2025; UPC\_CFI\_2245/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/be2611e9-e04b-4f6c-8863-3fad380d2203.pdf) ***Second management hearing*** **Facts** 1. This case concerned an infringement action (EP 2 274 861 and EP 3 103 116) and a counterclaim for revocation. 2. On 8 September 2026, a second case management hearing was held “behind closed doors” as confidential information was discussed. 3. This procedural order states the results/decisions resulting from that second management hearing. **The JR** 1. The Judge-Rapporteur (“JR”) decides that there is no reason to deviate from the cost values. 2. The parties should agree on costs. Otherwise, they have to file their costs overview two weeks before the oral hearing and have one week respond to each other’s costs. 3. Late filed documents were discussed. The parties agreed which documents could remain and which would be removed. 4. The Technically Qualified Judge (“TQJ”) (who was apparently present) raised a few technical points, which in the meantime were put in writing. 5. A settlement was discussed. The JR suggested mediation. Quectel agreed. The JR maintained the date for the oral hearing stating that the date would only be postponed if both parties agreed to a postponement. **Comment** 1. The JR acts in accordance with the Rules of Procedure of the UPC, taking a hands-on approach to the role of a JR. 2. The implementer, Quectel, wants mediation. That is understandable, as mediation is not binding, so, as long as you mediate, you can continue without paying any license fee or risking an injunction. However, it may be less attractive to the SEP holder who has tried for years to reach an agreement (although I do not know if that is the case here), all assuming that they have been demanding a FRAND license. In general, mediation/arbitration in SEP cases seems only useful if the result is binding and reasonably fast, which means that both parties have to agree. #### **8 October 2026** ***(late published)*** **Local Division Munich, AX Wireless v Xiaomi** [UPC\_CFI\_676/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/69a2ab8b-519a-496f-a4a6-8ab087bc1c08.pdf) ***Old court fees*** **Facts** 1. This case concerns an infringement action filed in 2025. 2. The defendant filed its defence and counterclaim for revocation after 1 January 2026 and paid the new higher fees applicable as of 1 January 2026. 3. The defendant argues that as the case started in 2025, it should have paid the old fees and asks for return payment of the difference of € 4.900. **The JR** 1. The JR agreed with the defendant. 2. The JR referred to the decision of the Court of Appeal that the new fees apply to the return of fees in case of a settlement, even if the case in question was started before 1 January 2026. The JR did not follow that decision arguing that the fee for a counterclaim according to the Table of Fees should be the same as the fee for the infringement claim and, as the infringement claim was filed before 1 January 2026, the fee for the counterclaim should be the “old” fee. **Comment** 1. In my comments on the decision of the Court of Appeal, I stated that that a "request” for a return of court fees was not what was intended in Article 5 of the Administrative Committee’s decision of 4 November 205 with “actions and applications” filed after 31 December 2025. 2. The JR now decides that “action and applications” refers to actions started after 1 January 2026. The JR argues that the action started before this date and that the request should therefore be granted. The JR “deviates” from the Court of Appeal’s decision, referring to the fact that, according to the Table of Fees, the fee for a counterclaim is the same as the fee for the infringement claim. 3. This may be true, but again I disagree. This time, I believe that this fee should have been based on the new Table of Fees, as filing a counterclaim for revocation is filing a (new) action, distinct from a request to get a return of fees because of a withdrawal (settlement). This new action gets its own UPC number and can get referred to the Central Division, etc. 4. The first decision was, in my opinion, wrong, but satisfactory from a practical point of view because it means income for the UPC. However, this decision, which I also consider to be wrong, means less income. 5. I do not know how this decision can be corrected, but I advise the Registry to appeal against the decision to the Court of Appeal of the UPC, as it has been ordered to return the amount. At least, if the Court of Appeal decides that this is not possible, it can issue an obiter dictum stating that the decision is incorrect. #### **16 October 2026** ***(late published)*** **Court of Appeal, Dainese v Motocard** [UPC\_CoA\_97/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/42d2fc14-f652-4bd2-8d5d-526f4daadaf4.pdf) ***Signing*** **Facts** 1. This case concerns the appeal of a decision by the Local Division in Milan, which dismissed both the infringement and revocation case. 2. Dainese, having lost the infringement action, filed a statement of appeal on 19 June 2026 and its grounds of appeal on 21 August 2026. 3. On 10 September 2026, the Court of Appeal dismissed the respondents’ application pursuant to R. 361 RoP requesting to declare the appeal manifestly inadmissible. 4. On 25 September 2026, the respondents filed an application for a stay until the Board of Appeal of the EPO would have issued a written decision. The Board of Appeal had previously indicated in a preliminary opinion that the patent should be maintained according to the auxiliary request, and the respondents stated that the oral hearing by the Board of Appeal was scheduled on 16 October 2026. 5. On 16 October 2026, the parties informed the Court that the patent would be maintained in amended form corresponding to auxiliary request 2. **The JR of the Court of Appeal** 1. The application is inadmissible because it was not signed. 2. The Court of Appeal may stay proceedings pending opposition. However, in this case, there is no reason for a stay as the same auxiliary request has already been debated in first instance, and the Board of Appeal of the EPO has already given its reasons in the preliminary opinion. The respondents still have 40 days to prepare their response to the grounds of appeal. **Comment** 1. As I have said many times before: representatives should read the case law, particularly that of the Court of Appeal. If you skim through “Unfiltered”, it will not take you more than 20 minutes a week. Alternatively, on Tuesday morning, instead of listening to your favorite music when travelling to the office, listen to our podcast. 2. How can you explain to your client that you lost because you did not sign? 3. In this case, the obvious attempt to get more time for a response was deemed unsuccessful. The JR took the trouble to make that clear. The representative can tell their client that not signing did not cause any harm. #### **16 October 2026** ***(late published)*** **Local Division Lisbon, Illumina v Element** [UPC\_CFI\_1920/2025; UPC\_CFI\_1060/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/4917f6da-da8f-4ce1-a259-c779d13cdfa6.pdf) ***Interim conference / preliminary opinion*** **Facts** 1. This case concerns an infringement case and revocation case regarding EP 3 714 978. 2. An interim conference was held on 16 October 2026 during which the topics suggested by the parties and the JR were discussed. **The JR** 1. For the moment there is no settlement. 2. The value of the whole proceeding is €20 million. 3. The Judge-Rapporteur (“JR”) requests an agreement on costs; otherwise, a cost overview should be filed one week before the hearing, with the other side having 5 days to respond. 4. The JR asks if the defendant would consider making their counterclaim conditional. 5. The JR lists the claim elements which needed interpretation. 6. With respect to validity, the parties clarify the most important attacks (7 issues). 7. The late filings and Common General Knowledge to be addressed during the hearing are discussed. 8. 23 Auxiliary requests is not unreasonable. 9. The claimant is asked to clarify direct versus indirect infringement. 10. Both parties asked for a preliminary opinion at the start of the hearing. **Comment** 1. The Local Division Lisbon is now also prepared to provide a preliminary opinion at the start of the hearing: “the Court will introduce and at least outline the relevant issues to the parties”. It gives the parties a break after this introduction to prepare. We are gradually arriving at a more uniform oral hearing. 2. It would also be good if there were a uniform way in which injunctions were formulated, perhaps doing away with the elaborate German formulation of repeating the claim language, as suggested by the JR in this case. One possibility would be to use something like “not to infringe EP X more especially by selling product Y described in no. 2 of the Statement of Claim”. #### **19 October 2026** **Local Division Brussels, Barco v Yealink** [UPC\_CFI\_806/2025; UPC\_CFI\_185/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/256847bf-5ca3-4b88-98d5-25db32250d2f.pdf) ***Interim conference*** **Facts** 1. An interim conference (“IC”) took place on 8 September 2026. 2. The IC resulted in an order of 14 September 2026, which provided that if the procedural order of 17 August under appeal were to be overturned, a new IC would be organized. 3. The Court of Appeal affirmed the 17 August order refusing Barco’s further auxiliary request (“AR”) aligned on the AR which had been accepted by the EPO opposition division (“OD”) as novel and whose inventive step remained to be decided at a further OD hearing in November. **Order** 1. The Court maintains the hearing date on 3 November 2026. 2. The parties have asked for a preliminary opinion. If the Court gives such a (non-binding) preliminary opinion at the start of the hearing, parties will get 30-45 minutes to restructure their oral argument. 3. The parties are to inform the Court before 28 October 6 p.m. if an agreement is reached on recoverable costs. **Comment** 1. The Advisory Committee has questioned the Observers (representatives and users) about the uneven caseload of the Local / Regional Divisions. As I previously reported, they suggested on this occasion that all Divisions should give a (non-binding) preliminary opinion at the start of the oral hearing. For certain Divisions, this would require a change in their habits, inspired from national proceedings. It is good to see that the Brussels Division is apparently going to adopt it. It would be even better if this becomes standard practice in all Divisions. 2. I have often commented on the advantage of having parties agree on costs (and on all other matters where reasonable parties – and representatives – should be able to find common ground). This Local Division (as many other Divisions by now) also gives a clear sign that it expects such an arrangement. #### **20 October 2026** **Local Division Munich, Steindl v Kronos** [UPC\_CFI\_1209/2025; UPC\_CFI\_731/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/4c796275-f3fa-47ab-bc43-a1f51a82c4ef.pdf) ***Interim conference*** **Facts** 1. Steidl filed for infringement based on EP 3 287 315. 2. Kronos denies the infringement (as it had already contested it before the litigation started) and filed a revocation action. 3. For more detail on the facts and the hundreds of pages of pleadings, see the decision: the JR discusses them for over more than 50 pages. 4. The JR held an interim conference on 16 October 2026 in the presence of the legally qualified judge (“LQJ”) Samuel Granata from Belgium. **The JR** The outcome of the interim conference: 1. The JR accepts a later definition (of the infringement) as it consists basically of an explanation of the claimant’s earlier infringement theory. 2. It is clarified that the defendant maintains its revocation action, including where the Court would not find infringement. 3. The JR refuses to lower the cost ceiling to €40,000: if a party argues that being ordered to pay the full costs would threaten its existence (as Kronos states), one might expect it to try to litigate in a modest way, instead of €222,000 have been incurred in legal costs even before the interim conference. 4. The JR did not rule on the alleged late filings or the necessity to hear witnesses, considering that it may not have to be decided in the end. 5. Kronos’ request for translation during the oral argument is refused. However, this can be organized at its own costs and with translators sitting in the adjacent room so as not to disturb the hearing. 6. An afternoon is deemed sufficient for the hearing. 7. The JR gives the preliminary view that both cases (infringement and revocation) will be dismissed and encourages the parties to find an agreement. **Comment** 1. The Munich Division is clearly extremely busy (while this case could have been brought in several less busy Divisions, including in German in Austria). 2. It also looks as if the JR is of the (correct) opinion that parties in this dispute about a trailer make an elephant out of a mosquito. An oral argument lasting no longer than an afternoon is sufficient. 3. The JR’s position to delay a decision about late filings and the necessity for witnesses is understandable if one is extremely busy (and those points might in the end become moot) but, in principle, the interim procedure is precisely meant to solve these procedural issues. 4. Finally, the JR goes a step further and, without even bothering the third and technical judge (although the judge probably has been asked for its opinion) gives the parties a (very clear) hint to settle the case. I hope for the JR that the parties are wise and do so. 5. This case is a further encouragement to use other Divisions who are less busy. If some representatives keep insisting on going to very busy Divisions, they cannot expect a UPC procedure as it was intended. Even worse, they may be confronted in the future with the possibility that their case is just referred to a less busy Division. #### **20 October 2026** **Local Division Mannheim, Huawei v HMD** [UPC\_CFI\_481/2025; UPC\_CFI\_1358/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/5949c472-891f-4003-ba32-10e2e35e8688.pdf) ***Invalidity*** **Facts** 1. Huawei is suing HMD for infringement of EP 3 667 981. The patent concerns a method, a terminal apparatus and a network apparatus for determining feedback information. 2. HMD filed a counterclaim for revocation and raised a FRAND defence. **The Court** 1. The revocation action is successful because the subject matter of claim 1 and 5 go beyond the contents of the priority application, which result in the claims not being novel over the prior art that became public in the priority year. 2. In coming to that conclusion, the Court applies the Gold Standard as explained in Amgen v Sanofi (UPC-CoA-528/2024). 3. Among others the Court states: *“The amendments made by Defendant, in its brief of 2 September 2026, to its revocation request merely clarify and now reflect in the wording of the request that the only UPCA member states concerned are France and Germany. As already stated by Defendant in the reasoning of its counterclaim for revocation (para. 6), these UPCA member states are the sole member states in which the patent-in-suit is in force. At least do the amendments limit the request (R. 263.3 RoP).”* **Comment** This SEP case fizzles out as the (only) invoked patent is invalid. Consequently, we do not learn anything about willingness, proportionality, or how to deal with SEP cases in general. This is the risk you run if your SEP case is based on only one patent. However, if the claimant has more patents, you may assume that this was their best one. #### **21 October 2026** **Court of Appeal, X v SprintRay** [UPC-CoA-149/2026; UPC-CoA-150/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/4eef24c6-1a20-45b8-b9ef-dc2d35830488.pdf) ***Language in Central Division*** **Facts** 1. SprintRay filed for a declaration of non-infringement and a revocation action with respect to EP 3 762 212 in German in the Central Division. 2. X asked for a change of language to English. 3. The Court of first-instance (“CFI”) refused the language change on the ground that the UPCA does not allow a change of language in the Central Division and, as the patent was granted in German, the language has to be German. 4. X appealed. **Decision** The Court of appeal upholds the decision of the CFI. **Comment** 1. X was seeking a decision clearly contra legem. That was, of course, never going to work. 2. I sympathize with X, but this is a situation that can only change when the UPCA can be changed (i.e. after 7 years from 1 June 2023). A single-language English system would make the whole system simpler: no translations needed, all judges can serve on all Divisions, the Court of Appeal confronted with one language only, more fairness (all decisions being immediately accessible to all users and representatives, all representatives being able to act in all cases), to name just a few of the many advantages. 3. In such a one language only system, a translation can be provided for a defendant who does not understand English (in practice we see that this almost never happens; on the contrary, they are often sued in languages which the claimant understands but the small SME defendant does not). Since the UK does not participate (and Ireland has not joined yet), it may be, also politically, more easily acceptable if everybody had to give up their native language – who knows, Spain might join. But I am a realist and fear politicians will ruin the dream. #### **21 October 2026** **Court of Appeal, Gucci v Agfa** [UPC-CoA-582/2025; UPC-CoA-590/2025 to UPC-CoA-597/2025; UPC-CoA-602/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/0be7d7ba-4115-4230-8a0f-743e3dc60202.pdf) ***Late documents on appeal*** **Facts** 1. Agfa started an infringement action against Gucci based on EP 3 388 490 relating to decorating natural leather. 2. The LD Hamburg dismissed the infringement claim as well as the claim for revocation. 3. Both parties appealed. **The Court of Appeal** 1. On appeal, the court accepts Gucci’s exhibits which had been rejected by the LD Hamburg in first instance, confirming the discretionary power of the Court of Appeal to do so. 2. The Court cites three reasons for accepting them: 1. the procedural behavior of Agfa (which raised an argument for the first time in its rejoinder, in response to which the disputed exhibits were filed); 2. the exhibits are not completely new facts but supplement evidence already on record; 3. Agfa had sufficient opportunity to respond and did so, in its Statement of Response and at the oral hearing. 3. The Court interprets the claim features. The Court leaves open the question whether the claim interpretation can be affected by the prosecution history, stating that even if it were taken in consideration, it would not support Gucci’s construction. 4. The LD Hamburg had held that, having regard to an amendment made during prosecution, certain embodiments did not fall under the claim. The Court of Appeal does not agree. 5. Most of Gucci’s remaining arguments with respect to the claim interpretation are not accepted. 6. However, it does not lead to an infringement finding for the following reasons. 1. The Court holds that if a product is known in the prior art and the skilled person, by analyzing the product, can establish without undue burden the manufacturing method of that product (i.e. if this analysis is routine work), that method is not novel. It is not necessary that there be particular reason for the skilled person to analyze such a product. 2. The Court disagrees with the LD Hamburg and holds that the (Flora) product takes away the novelty of all the independent claims by relying on a different claim interpretation and the (now allowed) evidence brought by Gucci. 3. The Court repeats that the invalidity of an independent claim does not automatically lead to the invalidity of the dependent claims but the defendant in a revocation case has to clearly indicate, in a substantiated way, which dependent claims remain valid if the independent claim is found to be invalid. 4. The Court understands that Agfa defends the validity of each dependent claim separately. The Court deals only with claims 5, 6 and 9, for which Agfa substantiated its validity defence. The late-filed arguments (brought only on appeal) are disregarded, as the Court could find no reason why Agfa could not have raised them in first instance. 5. Claims 5 and 9 are upheld, although infringement of claim 9 was not alleged. 6. Agfa has also not demonstrated with conclusive evidence that Gucci infringed the combination of claims 1 and 5 (especially the requirements of claim 5). 7. R.172 (1), R.172 (2) RoP nor Art. 55(1) UPCA do not shift Agfa’s burden of proof. 7. The Court sets aside the LD Hamburg’s decision with respect to the revocation action. **Comment** Some important lessons/reminders for representatives: 1. If the LD has refused certain exhibits/evidence/allegations, keep invoking them on appeal (and if you are on the opposite side, realize that the Court of appeal may accept them). I think that the Court of appeal may be inclined to use its discretionary power if it feels that, by not considering the disputed materials, it may come in fact (from an objective standpoint) to an incorrect decision. I am not convinced by the arguments to have the additional exhibits admitted into the proceedings. As a third reason, the Court states that the respondent had the opportunity, which it used, to react to the new evidence in its response and during the oral argument. What else can a responsible representative do? They can hardly gamble that the Court will not use its discretionary power. 2. The lesson is (although I’m not sure I like it) that even if you are very late, one should always try submitting new facts, arguments in first instance because they may be accepted on appeal. 3. A further lesson is that if one wants to also defend the validity of combinations of dependent claims in case the independent claim goes down, one has to be very clear about which combinations they want to defend and to substantiate why they are valid. 4. As a claimant, one has to prove the infringement of each and every asserted claim feature (including of dependent claims). One should therefore think timely about the procedural possibilities to get evidence which is in the hands of the other party! 5. Importantly, a method claim which is not disclosed as such in the prior art can nevertheless be held to be anticipated if the routine analysis of a product makes that method claim readily available to the skilled person. This means, on the other hand, that a disclosed product can be novel if, at the priority date, the skilled person could not reverse-engineer it without undue effort. E.g. enantiomers may be disclosed but if you cannot get them, the enantiomers remain novel. The same may be true of a composition: if one knows what substances the mixture contains but cannot make the individual substance, it remains novel. #### **21 October 2026** **Local Division Mannheim, ZTE v Samsung** [UPC\_CFI\_847/2024; UPC\_CFI\_442/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/5962c7d2-5797-4ec0-b280-05a4540c7c93.pdf) ***Preliminary Opinion in SEP case*** **Facts** 1. This decision concerns an SEP case, including a claim for infringement and a FRAND defence. 2. A settlement proposal of the Court did not lead to a solution. 3. The parties briefed the Court about the rate-setting decision by the UK High Court, defended by Samsung but criticized by ZTE. 4. The Case is going to be argued in the LD in November. **The JR** 1. After consultation with the Presiding Judge and the Technically Qualified Judge (“TQJ”), the JR gives a management order in preparation of the oral argument, in which he also offers a preliminary opinion on validity and infringement. 2. With respect to the infringement claim, the JR construes a request for the production of accounting information under Art. 68 UPCA rather than a request for information under Art. 67 UPCA. 3. The JR interprets the counterclaim for revocation as limited to the countries for which infringement is alleged. Samsung has to clarify for which countries it seeks revocation. 4. The JR lists the points which are relevant for claim construction and gives a (preliminary) opinion thereon. 5. With respect to validity, the JR discusses and gives his opinion as to novelty and inventive step, suggesting in particular that certain asserted combinations of prior art in support of the inventive step attack may not be allowable under R. 263 RoP (amendment of case). 6. With respect to infringement, the JR notes that it seems to turn on a matter of claim construction. 7. The JR is inclined to conclude, based on Samsung’s behavior, that it is not a willing licensee. 8. The two hearing dates of 18 November (infringement, validity) and 19 November (FRAND defence) are confirmed. **Comment** 1. The UPC is an international court, sitting here in a German Division consisting of two local and one foreign Legally Qualified Judges (LQJ), along with a TQJ. The two German judges can always decide as they wish even if the TQJ would side with the foreign judge (as the Presiding Judge has the deciding vote). It is still preferable that the JR would also consult with the foreign judge on the panel before giving a preliminary opinion, which I can only interpret as meaning that the defendant is running a very high risk of an injunction while being prepared (if I understand correctly) to pay what a UK court considers a reasonable royalty. In an SEP case, a foreign judge may think differently about such an outcome and should at least be heard, even though the JR makes very clear here that it is no more than a preliminary opinion. 2. I should add that the UK court’s decision is probably under appeal and that the UPC is not bound by the decision of a UK court. More importantly, the LD itself tried to resolve the dispute by its own settlement proposal. We do not know who refused the proposal. If it was Samsung, it was of course entitled to do so. But, in that case, it cannot be surprised if it would be regarded as unwilling and may have to win infringement or validity to avoid an injunction. #### **21 October 2026** **Court of Appeal, Amazon v Nixu** [UPC-CoA-181/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/9e88928e-26d1-4c4c-ac38-0fa5cb54dd66.pdf) ***Alignment*** **Facts** 1. This case concerns an infringement action filed by Nixu against Amazon on the basis of EP 3 417 570. 2. The Statement of Claim against the four Amazon defendants was served on 29 July, 3 August and 11 August 2026. 3. Amazon asked for an alignment of the dates for filling a defence on 11 November or in the alternative a common date between 29 October and 11 November. 4. The Judge-Rapporteur (“JR”) of the LD ordered all Amazon defendants to answer on 29 October. 5. The full panel confirmed the order of the JR. 6. Amazon asked for discretionary review. **The JR of the Court of Appeal** The JR of the Court of Appeal denied the request. **Comment** 1. I agree with the JR that the order was not manifestly incorrect or that the Court of First Instance went beyond the boundaries of its discretion. However, I think that this provided the Court of Appeal with the possibility to give some guidelines with respect to the frequent situation of different dates for filing a defence with respect to different defendants. 2. Ideally, the parties would agree on a reasonable compromise between the first and last dates. 3. However, the ruling in Milan will not encourage claimants to be reasonable, nor will it encourage defendants to suggest a date somewhere in the middle. #### **22 October 2026** **Local Division Düsseldorf, CUP&CINO v Alpina** [UPC\_CFI\_52/2025; UPC\_CFI\_67/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/c339eae0-aaaa-4819-8669-0b1ca3f8c49e.pdf) ***Final decision in infringement action*** **Facts** 1. An infringement action was filed on the basis of EP 3 610 762, which protects a coffee machine. 2. The patentee filed 5 auxiliary requests and the defendant filed a counterclaim for revocation. **Decision** 1. The Court dismisses the defendant’s objections with respect to late filings. 2. The LD retains its competence with respect to this Austrian defendant on the basis of (imminent) infringement. 3. The Court describes the patent, defines the skilled person and recites the principles of claim construction. 4. The Court discusses and interprets certain claim features. 5. The Court dismisses the claimant’s argument that a non-infringement defence is late-filed and that it does not know if the statement is true. First of all, according to the Court, the UPC does not accept a “do not know” defence. Moreover, the infringement is a question of law. Finally, it is on the claimant to establish the facts on which an infringement decision can be based. 6. It is for the claimant to explain why a certain statement (about the operation of the disputed machines) by the defendant would be incorrect because it would be technically impossible. 7. The Court considers that, as long as the interpretation of a claim by the Court does not conflict with the statement of the patentee during prosecution, the question of the role of the file wrapper for the interpretation of the patent claims does not have to be decided. 8. The revocation action was based on the interpretation of the patent by the patentee, which is not followed by the LD. The LD finds that there is no infringement on the ground that four of the claim features are not fulfilled, neither literally nor under the doctrine of equivalence, for the assessment of which the Court accepts the standard of the LD The Hague. **Comment** 1. Despite the clear guidance of the Court of Appeal, the claimant submitted auxiliary requests to defend the validity of the granted claims. That caused confusion. The defendants in the revocation proceedings would be wise to state which claims they defend and to substantiate it in case the main claim is found to be invalid. Thereafter, defendants can submit auxiliary requests on the basis of elements taken from the description. The difference between the two is that auxiliary requests can be attacked on the basis of Art. 84 EPC (clarity). 2. The Court adopts the equivalent infringement approach of the LD The Hague (see UPC\_CFI\_239/2023). The Court of Appeal still has to take a position on the applicable standard before the UPC (and I hope that it accepts the “means, way, function” approach which is more objective - and more internationally accepted - in my opinion). 3. If one bases their revocation action on the patentee’s claim construction (which one may contest in the infringement action), it is wise to make such revocation conditional on a finding of infringement, to make sure that if one wins the infringement one does not automatically lose the revocation action! 4. Lastly, why did the claimant go to the busy Düsseldorf Division and not to the LD Vienna (home to the defendant)? In Vienna, one can also choose German as the procedural language. #### **22 October 2026** **Court of Appeal, Network v Qualcomm** [UPC-COA-68/2026 to UPC-CoA-72/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/95989e96-9075-4a35-b791-f12ad7282cba.pdf) ***Confidentiality on appeal*** **Facts** 1. In first instance, the LD Mannheim had issued numerous confidentiality orders. 2. On appeal, Qualcomm wants confirmation that the orders stay in place. **Order** 1. The Judge-Rapporteur (“JR”) of the Court of appeal confirms that these orders are still in place. 2. The JR wants Qualcomm to clarify if the documents mentioned in its Statement of Response and cross-appeal can be made available to the same persons authorized under the confidentiality orders of the LD. Qualcomm has to specify which pieces of information should be made available to whom and under which conditions. **Comment** 1. The first issue has already been answered many times. 2. What is not clear to the JR (and myself) is what Qualcomm exactly wants, i.e. whether the request for confidentiality is directed at information already filed in first-instance or at the new (confidential?) information filed with its appeal briefs. Before any unclarity leads to a breach of confidentiality, the JR is wisely asks for a clarification. #### **22 October 2026** **Local Division Paris, Valeo v SEG** [UPC\_CFI\_1913/2026; UPC\_CFI\_3369/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/cd358601-59df-42b8-84be-1be0ce79a2f9.pdf) ***Jurisdiction*** **Facts** 1. The decision relates to an infringement action based on EP 4 128 486. 2. In their Statement of Defence, the defendants raised an objection of lack of jurisdiction of the Court to rule on the alleged infringement committed in Spain. 3. Valeo replies that the Court should accept jurisdiction for Spain under R. 19.7 RoP as the defendants failed to file a preliminary objection (R. 19.1 RoP). **Order** 1. The JR refers to the decision of the Court of appeal of 7 March 2026 (UPC-CoA-420/2025 in NUC v Hurom) in which the Court of appeal held that, based on the Brussels I-bis Regulation (No. 1215/2012), jurisdiction can be contested in the (first) Statement of Defence. 2. The Court therefore refuses the request to have the objection of competence declared inadmissible. **Comment** Did SEG’s representative fail to check the case law of the Court of Appeal? This interim request could have been avoided. #### **22 October 2026** **Central Division Milan, Sandoz v Novo Nordisk** [UPC\_CFI\_2221/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/1aa69d8d-0905-43b4-950b-0758dd338389.pdf) ***Arrow declaration*** **Facts** 1. Sandoz filed a revocation action with respect to Unitary Patent 3 689 365 for a composition comprising semaglutide for use in the prevention or treatment of type 2 diabetes, administered once weekly at a dose of 1.0 mg, with parenteral administration. 2. Sandoz field three other requests: *“5) that pursuant to its inherent jurisdiction, the Court declares that at the priority date of the patent in suit a composition comprising semaglutide for use in the prevention or treatment of type 2 diabetes, wherein semaglutide is administered once weekly in an amount of 1.0 mg, and wherein semaglutide is administered by subcutaneous administration, was obvious to the skilled person in the art having regard to the common general knowledge and/or the prior art relied upon in the present proceedings; 6\) that the Court, for all patents it has competence under Art. 32.1 UPCA pursuant to its inherent jurisdiction, declares any claim of a Unitary Patent or respective European Patent granted for the Contracting Member States, entitled to claim the priority date of any application within the patent family of EP 3 689 365 broad enough to cover the subject matter of claims 1 to 5 of the patent in suit, would be invalid on the grounds of lack of inventive step; and 7\) to safeguard the Claimant’s legitimate interest in legal certainty on the validity of the claimed subject matter that the Court issues an order - under penalty to be further specified by the Court - that prevents the Proprietor from withdrawing the approval of the text of the Patent at the EPO (Art. 113(2) EPC) until the EPO opposition division, the Board of Appeal, or the UPC issues a final decision on the validity of the Patent.”* 1. Novo Nordisk filed a preliminary objection against the requests under 5-7 above arguing that the Court is not competent to hear these requests. 2. An oral hearing took place focusing only on the preliminary objection. **The Court** 1. The Court describes arrow declaration: to make sure that whatever patent (f.i. based on divisionals) is granted on the basis of the original application, is not infringed by the product of Sandoz because at the priority date of the patent that product was not new or inventive over the prior art existing at the priority date. 2. The Court sees what is requested under 7 as trying to avoid the so-called divisional game: one withdraws the application just before a refusal by the EPO and files in the meantime a new patent application for similar subject matter. 3. The Court does not think that there is enough evidence that Novo Nordisk is going to play the divisional game. 4. The Court qualifies the divisional game as an abuse of rights: *“an abuse of rights arises where a legal entitlement is exercised in apparent compliance with its conditions, but in a manner that departs from the purpose for which the right was conferred. The right to file a divisional application is conferred to organise and protect disclosed subject-matter within the patent grant system; it is not conferred to circumvent, neutralise, or indefinitely postpone effective judicial determination of patent validity. In that sense, the allegation of a “divisional game” is not merely a criticism of prosecution strategy. It raises a question of whether procedural rights are being exercised in a way that undermines the balance between exclusive protection and legal certainty on which the patent system rests.”* 5. The Court addresses the Unitary Patent package and Art. 47 of the Charter and sates that all these provisions are to be read together: *“10. All these provisions must be read together. The protection of patent rights cannot be detached from the procedural mechanisms by which their validity, scope and enforceability are contested. Nor can an exclusive and unified court system be interpreted in a manner that deprives parties of any effective tribunal for a patent-related dispute that falls within the field for which that system was established.”* 6. The Court concludes that its jurisdiction goes further than the strict literal interpretation of Art. 32(1) UPCA and referred to anti-antisuit injunctions as an example. 7. The Court states that, under the UPCA, it has jurisdiction for measures necessary for an effective judicial protection of rights arising under the patent system. 8. The Court has no jurisdiction for measures which have no relation to the patent but request 6 is allowable as it is directed to divisional patents. 9. In fact, request 6 seeks an arrow declaration and the Court of Appeal has already shown a certain openness with respect to competence questions. 10. The Court refers to R. 361 RoP which gives the possibility to consider an action devoid of purpose and dismiss it. 11. Request 7 is ancillary to the revocation action and is therefore allowable. 12. The Court refuses request 5 but considers requests 6 and 7 not manifestly inadmissible. **Comment** 1. The Court uses a lot of wording to justify the allowability of requests 6 and 7. 2. In the practice, it is important that the Court holds that it can issue an arrow declaration. 3. We have to await a decision of the Court of Appeal, of course, but I cannot see why the Court of Appeal would not allow an arrow declaration. #### **23 October 2026** **Local Division Mannheim, SK v Volta** [UPC\_CFI\_706/2025; UPC\_CFI\_706/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/1c8cf23f-983e-49c3-ba61-72f3bff58b9a.pdf) ***Infringement*** **Facts** 1. SK sued Volta for infringement of EP 3 316 363 relating to an electrolytic copper foil for a secondary battery. 2. Volta filed a conditional counterclaim for revocation. 3. The claimant, SK, tested a battery from defendant, which it had obtained from a company that by supplying the battery to claimant violated an NDA. 4. A US court already decided that the defendants infringed the US counterpart patent which has similar claims. The defendants relied essentially on the same products (injuncted in the US) to argue in the UPC prior public use. 5. Several materials, documents, expert reports are under a protective order in the US and the defendants did not want to cooperate to amend the protective order. The claimant’s motions in the US to have certain info released failed. **The Court** 1. The Court accepts jurisdiction against the Hungarian defendants based on Art. 7.2 of the Brussels I-bis Regulation and for the Luxembourg defendant on the basis of Art. 4 of the same regulation. 2. The competence of LD Mannheim follows from R. 19.7 RoP as competence was not challenged. 3. The secondary batteries are rechargeable batteries. 4. The Court discusses the patent stating that the objective task of the patent is to provide an improved secondary battery which maintains a high capacity over a longer time. 5. The Court interprets certain claim features after having established the skilled person. The Court does not accept the claimant’s point of view, further holding “this definition of Rpc in the patent-in-suit is decisive and, for the sake of legal certainty, cannot be interpreted in a broader sense to align it with other definitions used in (commonly known) technical specifications to which the patent-in-suit does not refer in this specific context and from which it deviates”. 6. The defendant referred to the prosecution history, but it has not been decided whether this can be used because the Court’s interpretation does not conflict with the prosecution history. On the contrary: it was confirmed by the claimant during prosecution. 7. The result of the claim interpretation is that the infringement action has to be dismissed. 8. The Court awards the costs to the defendant for both the infringement action and the conditional counterclaim for revocation. 9. **Comment** 1. The case shows that the patent is its own lexicon, and that the primary basis for interpreting patent claims is the patent itself. Even if the meaning is not in conformity with what is generally accepted in the technical field, the meaning based on the patent description is decisive. 2. I have previously argued that it is wrong to award costs to the patentee for the revocation action if the condition is not fulfilled, and I am pleased to see that the LD Mannheim agrees, providing a through justification for its decision. My reasoning was brief. I said that a conditional counterclaim is only raised as a further defence to the infringement claim, and that it is very clear who is the prevailing party if the Court dismisses the infringement claim. Even if you consider the revocation action to be separate, the same reasoning applies. Treating the (conditional) revocation action as completely separate from the infringement action, considering its success to be a separate issue, demonstrates a formalistic attitude that completely ignores reality. That is not how we should apply the law. Bravo, Mannheim! **– 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 –**