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3 November 2025 (late published)
Local Division The Hague, Adeai v Walt Disney
UPC_CFI_666/2024; UPC_ CFI_199/2025
Order after interim conference
The JR
- The value of litigation is set at € 12 million for the claim and € 12 million for the counterclaim.
- Regarding costs, it was agreed that each party will submit a cost estimate two weeks before the hearing and one week before each party may comment on the costs submitted by the other party, unless the parties settle on the amount.
- The hearing is scheduled on 29 January 2026.
- The request regarding the confidentiality club is granted.
- The late filed prior art documents D8 and D9 are accepted as reaction to claim amendments. During the hearing it will be decided if D8 and D9 are accepted as prior art for the granted claims. Disney has to explain in no more than 3 pages why it thinks Adeai changed its claim interpretation.
Comment
Again a (Dutch) JR encourages parties to agree on costs which in Dutch national proceedings almost always is achieved between reasonable representatives. As the outcome of the case is uncertain it should be not difficult to agree on costs. It saves parties a lot of work (“cost proceedings”) and saves their clients’ money. Litigating about costs is not the most gratifying work for representatives or for a court that wishes to focus with true patent questions. So a win-win for everyone involved – especially the clients!
17 November 2025 (late published)
Local Division Lisbon, Boehringer v Zentiva
Preliminary objection
Facts
- The defendant filed a preliminary objection stating that the Court has no jurisdiction to hear the case.
- In support of its objection, the defendant argued that:
- The alleged threat of infringement arises exclusively from an administrative act governed by Portuguese law.
- Because the threat originates from such an administrative act, its legality has to be decided by a Portuguese court.
- The defendant has never committed any infringing act.
The JR
The JR rejects the preliminary objection, holding that:
- jurisdiction is established because the claimant alleges a threat of infringement by defendant;
- the claimant’s allegation does not arise from an administrative relation;
- the question of whether an actual infringement has occurred is a matter for the main proceedings.
Comment
- This is a to be expected straightforward outcome.
- A word of advice to prevent the defendant from incurring further unnecessary costs: the argument that no infringing act has taken place is irrelevant for the outcome of preliminary injunction (“PI”) proceedings. A threat of infringement is enough for a PI. Moreover, in my opinion, under the Court of Appeal’s rather broad interpretation of “offer”, the administrative act issued by the Portuguese Authority of Medicines and Health Products INFARMED (which is, of course, the result of the defendant’s actions) created a situation that effectively amounts to Zentiva “offering” its products.
17 November 2025 (late published)
Local Division Düsseldorf, Komax v Jiangsu
Inspection order
Facts
- This case concerns a request for inspection and seizure of evidence during an exhibition in Munich, which was granted by the Düsseldorf Division (because the applicant had indicated its intention to start main proceedings in Düsseldorf).
- The Court verified that all the requirements were met and issued the standard order.
Comment
- Exhibiting products at an international exhibition requires a serious investment. It would be beneficial for every UPC judge who has not previously practiced as a lawyer to witness firsthand how this goes in practice and how much consternation and disruption a raid by a bailiff, experts, lawyers, patent attorneys can cause. In my opinion, measures of this kind should be granted only when they are truly necessary.
- I recommend that the courts specify in the order that the inspection and seizure should not be executed until one hour before the exhibition closes for the day. This approach avoids significant disruption and allows the inspection and seizure to be carried out during the whole evening/night.
- What can you do if you fear such a raid (and you have good arguments that you do not infringe or that the patent is invalid)?
- Before the exhibition, invite the patentee to inspect the product and request confirmation that it will not do a raid during the exhibition.
- File a protective letter in which you make convincingly clear that you do not infringe and/or that the patent is invalid, and expressly state your willingness to give access to the machine and documentation.
- Hope that, also with respect to applications for inspection and seizure of evidence, the registry will check the register for protective letters. Call the relevant sub-registries (in this case, the four German ones) and ask for confirmation. If they do not give such confirmation, send the protective letter to the email address of the presiding judge. I say this because R. 208.1 second sentence RoP only refers to applications for provisional measures.
If you do not get a positive answer to your request for confirmation (see point a), then file an ex parte “anti-order” before the exhibition, requesting that the Court orders the patentee not to apply for a seizure.
26 November 2025 (late published)
Local Division Brussels, Barco v Yealink
Procedural order
Facts
- In the main proceedings, Yealink filed a preliminary objection arguing that that Local Division in Brussels had no territorial competence.
- Yealink had previously raised the same objection in the preliminary injunction (“PI”) proceedings.
- The court rejected such objection in the PI proceedings. Yealink appealed, however no decision on that appeal is currently known.
- The court suggested addressing these issues within the main proceedings and invited the parties to comment.
- The parties disagreed to such approach.
The JR
- The court decides to stay the decision on the preliminary objection until a decision is issued by the Court of Appeal.
- The JR set a schedule for the parties to react to the decision of the Court of Appeal.
- If no Court of Appeal decision has been issued by 22 December 2025, the parties will have until 29 December 2025 to comment on a possible extension of the deadline for the Statement of Defence.
Comment
- The JR is in my opinion too accommodating to the parties and is creating himself and the parties unnecessary work.
- The JR should have made the same decision as in the PI proceedings or should have postponed the decision until the Court of Appeal issues its ruling. If the Court of Appeal ultimately finds that the decision in the PI was wrong, the JR can still refer the case to the competent Division. Yealink can then file its Statement of Defence (again) before that Division. There is no reason for granting Yealink any extension of time for filing the Statement of Defence.
4 December 2025 (late published)
Local Division Brussels, Cooper v Motiva
A too expensive defence?
Facts
- After the Opposition Division (“OD”) had revoked the patent, the claimant requested withdrawal of the case and asked the Court to order that each party bears its own costs.
- The court allows the defendants time to respond, and they all claimed costs, providing detailed specifications and (at the Court’s request) explanations and supporting evidence.
- The claimant was given the opportunity to react and argued that “exceptional circumstances” justified each party bearing its own costs. The claimant argued, among other things, that after the OD’s preliminary opinion (which stated that the patent should be revoked), the defendants should have stopped working on their defence, particularly since the Court had extended the term for the defence until after the OD’s decision.
- The case was started by the claimant after the OD’s preliminary opinion.
The Court
- The court refers to Art. 69(1) UPCA “legal costs and other expenses” must be “reasonable and proportionate”.
- The claimant is entitled to start proceedings during opposition proceedings, which the court describes as a “fundamental right”.
- The costs incurred to defend against the claim are considered necessary, also when the OD has already issued a negative preliminary opinion.
- There are no exceptional circumstances. The claimant should have decided to withdraw earlier. It was perfectly reasonable for the defendant to continue working on its Statement of Defence, as it had to reckon with the possibility that the claimant would appeal the OD’s decision.
- The claimant should be considered as the unsuccessful party.
- The court holds that the burden of proving the costs is on the defendant. Although the court notes the difficulty of assessing the reasonableness of such costs without having seen the (draft) defence/counterclaim, it considers that the nomination of an expert goes against procedural efficiency.
- The Court considers the costs for representation of the defendants 1 and 2 to be too high and set these on € 100.000. It awards defendant 3 an amount of € 75.836,60.
Comment
- The Brussels Division takes the issue of costs seriously, as demonstrated by this decision where all aspects of a cost decision are discussed in detail, despite the case appearing pretty straightforward.
- It remains regrettable that the Court allows (almost) complete confidentiality. Potential users of the UPC system have no idea what work was carried out in this case or how the associated costs were incurred. One point is clear, however: the court found the representation costs of the UK patent attorneys which represented defendant 1 and 2 apparently not reasonable. I do not know the reason why the Belgium-based defendant chose to instruct two patent attorneys in Bristol. It would have seemed more logical to turn to an experienced patent litigator in Belgium.
- Another point is clear, and again a wise lesson for users of the UPC: the claimant could have saved more than € 200.000 by waiting to file the Statement of Claim until the OD’s decision was known, particularly given that the preliminary opinion was already negative.
4 December 2025 (late published)
Central Division Milan, Insulet v EOFlow
Penalty payment
Facts
- The Court of Appeal granted an injunction in the preliminary injunction (“PI”) proceedings on 30 April 2025.
- The Central Division granted an injunction on 22 July 2025 in the proceedings on the merits.
- Insulet asked the Court to impose penalties because of a violation of the injunctions.
- EOFlow argued that imports had taken place on the basis of an agreement between EOFlow and Menarini for patients which still used the infringing pump.
- EOFlow also argued that the sales occurred solely at Menarini’s warehouse in Korea by a different Italian shipping company and before the final injunction of the Central Division.
- EOFlow further argued that the injunction of the Court of Appeal did only set a maximum penalty ceiling which is not in conformity with R. 354.3 RoP.
- The more specific penalties of the Central Division cannot be applied retroactively according to EOFlow .
- EOFlow denied to have shipped to Sweden.
The Court
- A PI order may also be enforced by the UPC itself, on its own motion.
- Injunctions of the Court of Appeal are to be enforced by the competent Division in first instance.
- The injunction in the PI proceedings by the Court of Appeal is valid until the decision by the Central Division in the case on the merits.
- The penalty requested by Insulet will therefore be assessed solely on the basis of the PI injunction which was served on 1 May 2025.
- The order of the Court of Appeal “periodic penalty payments up to a ceiling of € 250.000” is clear and in conformity with R. 354.4 RoP.
- Insulet has proven that the export to the UPC continued after 1 May 2025. The use of shipping companies does not change this.
- Private contractual arrangements with third parties are irrelevant.
- Imposition of a penalty of € 150.000 to be paid immediately to the Court’s bank account.
- EOFlow has to pay € 10.000 costs to applicant.
Comment
- Injunctions in the case on the merits do not work retroactively, even if an injunction in PI proceedings is in place. That of course speaks for itself.
- It would have been easier if the Court of Appeal would have indicated an amount per product with which the order would be violated, with a maximum of € 250.000.
- In most national jurisdictions, export from a third party by a company which is established in that country is an infringement as soon as that company arranges for the transit from the third country to the patented country, which would result in a contribution to the import in the patented country, as the court thinks was the case here.
- If the patentee gives its consent to act contrary to the injunction, according to the Court, there is no violation of the injunction.
- Apparently, Menarini was allowed to sell certain infringing products in the UPC. If EOFlow would have sold and delivered the infringing products in Korea and Menarini would have arranged for the transport to the UPC, and this would have all happened because Menarini had ordered the products without any offering of product by EOFlow in the UPC, then I do not think that EOFlow would have forfeited penalty sums.
I do not sufficiently know the facts, but if EOFlow’s export would have only concerned products which Menarini was allowed to sell, and Insulet knew that the agreement with Menarini aims to continue the sale of EOFlow’s products (for a certain purpose), then I wonder if EOFlow could not be seen as a third-party beneficiary or Insulet’s enforcement of penalty sums as unreasonable.
5 December 2025 (late published)
Local Division Milan, AGA v 3V Sigma
Revocation of an order to preserve evidence
Facts
- 3V Sigma had obtained an order for an evidentiary seizure, which was carried out.
- AGA asked for revocation of the order mainly arguing that 3V Sigma had not fulfilled its duty to disclose relevant facts when asking for an ex parte order and that 3V Sigma’s request lacked urgency.
- AGA argued in fact that 3V Sigma had supplied the Court with a report by a laboratory with respect to the allegedly infringing products and incorrectly stated that from that report followed that it was likely that the product of AGA infringed.
The Court
- The application of revocation is inadmissible because it should state the reasons why the order to preserve evidence should be revoked, while in fact AGA in its application had only mentioned reservation about using a technical report for an application for an evidentiary seizure.
- The Court pointed out with respect to “urgency” that (as stated by the Court of Appeal) this requirement is not the same as for a PI.
- The Court notes that the evidence provided by 3V Sigma in its application came from a neutral reputable laboratory and dismissed the arguments of AGA.
Decision of the Court: dismissed the request for revocation.
Comment
- The Court is right with respect to “urgency”. In the context of a request for inspection or evidentiary seizure, I translate this term as “necessity”.
- I think that the “duty of disclosure” relates in particular to more “objective” facts, such as the fact that the patent has been revoked by the OD or invalidated in national proceedings, or that the seizure is not necessary because applicant has already all information with respect to the infringing product (for instance because of a national seizure etc.).
5 December 2025 (late published)
Local Division Düsseldorf, Roche v Menarini
Urgency / jurisdiction
Facts
- Hoffmann-La Roche is the patentee in France and Italy. Roche Diabetes is the patentee in Germany.
- Defendant 1 (Italy) is the EU importer of the allegedly infringing (Chinese) product.
- Defendant 2 (Germany) sells in Germany.
Defendant 3 (France) sells in France. - The preliminary injunction (“PI”) application was filed on 7 August 2025.
The Court
- International jurisdiction is established for defendant 2 (Germany) on the basis of Article 4 (1) of the Brussels I bis Regulation (“BR”), and for defendants 1 and 3 under Art. 8 (1) BR.
- Internal competence is established for defendant 2 under Art. 33(1)(b) UPCA and defendant 1 and 3 because there is a business relationship.
- The court justifies the different plaintiffs invoking R. 302.1 RoP.
- The court discusses the problems for which the patented invention gives a solution and interprets different claim features applying the case law of the Court of Appeal.
- The court does not follow the defendants’ arguments advocating a more limited interpretation of certain claim features, referring to among others the description.
- The Court states that it is not relevant in this case to look at the prosecution history.
- The fact that the patent states that the invention makes an earlier production method easier does not mean that the independent product claims can only be infringed if the product has been made according to the method claimed in a separate independent claim.
- Therefore, the court concludes that the required certainty with respect to infringement for a PI injunction is given.
- The court, noting that the patent was granted in 2009 without any opposition, rules that defendant did not convince the Court that the patent is more likely than not invalid.
- The court comes to that decision after applying the gold test with respect to the priority and novelty challenge.
- Regarding inventive step, the court applies the criteria of the Court of Appeal in the Meril v Edwards and Amgen v Sanofi cases.
- The court accepts that urgency and necessity are established, weighs the parties’ interests, and grants the PI.
Comment
- In my opinion, the Court adopts a too liberal interpretation to urgency. The infringing product was already offered at different exhibitions and on the internet in 2023. However, the court states that defendants had not proven that the claimant had positive knowledge of the infringement. One can hardly imagine that claimants, a multinational company with sales organizations in every country, would not monitor what new products (in competition with their non-patented products) are being launched at exhibitions and on the internet! The product was available for purchase on the internet. How can the Court then say that it was not proven that the claimant could have obtained a product? It goes too far to discuss all the other events leading up to the PI application in August 2025, but the presentation of the product at 5 exhibitions between 2 December 2024 and March 2025 speaks for itself. Under the rather strict standards set by the Court of Appeal, this does not, in my view, appear to be a case in which urgency could still be accepted.
- I also do not understand why the Düsseldorf Local Division was competent with respect to defendant 1 (the Italian company) and defendant 3 (the French company). Neither company is German, and neither appears to have carried out infringing acts in Germany (at least I have not seen the Court establish that such acts were alleged). They were sued on a patent held by Hoffmann-La Roche. In such situation, the Local Division would clearly have no competence to hear the case, as no infringement in Germany is alleged, and the defendants are not residing in Germany.
Despite this, the Court refers to Article 8 BR and Article 33(1)(b) last sentence UPCA. However, these provisions are intended for a situation in which a plaintiff sues a defendant in Germany on the basis of Article 4 BR together with more defendants not residing in Germany. In this case, though, Hoffmann-La Roche had no standing to sue the German defendant as it was not the patentee for Germany, nor did it allege that the German company infringed the Italian or French patent. Moreover, applying Roche v Primus, one could even say that both claimants sued under different patents.
The Court referred to R. 302.1 RoP, but even assuming – which is debatable – that this provision applies to the situation at hand, it is clear that the Court may only “merge” two cases if they are both before the same Division; in other words, if the Division is the competent Division in both cases.
I acknowledge that it is not very practical to go to different Divisions in a case like this, but this is the consequence of Roche having different entities holding one European Patent. Finally, I think Milan would likely have been the venue for the Roche companies to sue the Menarini parent company (the European distributor). Such action would have had the effect of stopping sales in all UPC-patent countries.
The claimant and Division could perhaps have avoided the competence question if they had alleged that, as a European importer, Menarini Italy was also infringing in Germany (for example, by delivering products to the German entity or as stated in the case having a website which was also accessible in Germany). However, that argument (based on Art. 7(2) BR) would not have created competence for France. - All the above is based on the opinion of the Division that it had to establish international jurisdiction for the French and Italian defendant on the basis of Art. 8 (1) BR. A question is whether this is necessary. The French and Italian defendant are residing in the UPC area. As there is one Court (for EP patents) in the UPC area, that Court is also the home Court (Art. 4 BR) for the Italian and French defendant and international jurisdiction is therewith established. The question which Division of that one Court (the UPC) can hear the case is a matter of internal competence. For the German defendant, it is Art. 33(i))(b) first sentence UPCA. For the Italian defendant (as they infringe in Germany), Art. 33(1)a UPCA. For the French defendant the last sentence of Art. 33(1)b UPCA as there is a commercial relationship. However, the question remains if the infringement of a French EP is the same as the infringement of a German EP. This all depends if one considers the Roche-Primus decision also applicable within the (internal) context of the UPC.
- I conclude that the already busy Düsseldorf Division should first have held that there was no urgency, and that it had no jurisdiction to hear the case against the French defendant. Ultimately, the alleged infringer was an Italian multinational, and the natural forum would have been Milan. In my opinion, the busy German Divisions should certainly not encourage litigants to file cases before them when this is not necessary.
9 December 2025
Court of Appeal, Bhagat v Oerlikon
UPC_CoA_8/2025 (EN), UPC_CoA_8/2025 (IT)
Damages to reputation
Facts
- On 13 June 2024, Oerlikon filed an application for preserving evidence during the ITMA exhibition in Milan.
- On 12 July 2023, Oerlikon started infringement proceedings.
- Bhagat did not deny infringement and did not challenge validity, but it contested the damages and challenged the value of the action, additionally requesting a stay pending a decision in a “parallel” validity case.
- The Milan Division refusing the requested stay:
- granted the injunction;
- ordered payment of € 15.000 in damages for harm to Oerlikon’s reputation by displaying the infringing machine at ITMA;
- ordered Bhagat to pay costs of € 77.000.
- Bhagat appealed, arguing:
- no damage had been suffered;
- regarding costs, the court did not take in consideration Bhagat’s efforts to settle the case.
The Court of Appeal
- As Bhagat presents itself as an internationally leading manufacturer of texturing and winding machines, it should have verified the patent landscape before exhibiting at IMTA. Therefore, it should have known or should have had reasonable grounds to know that it was infringing, and consequently liable for damages.
- Oerlikon’s statements (which only refers to general statements of Bhagat) are insufficient to establish reputational damage. The mere fact that Bhagat showed the machine at ITMA is not enough for justifying reputational damage.
- Regarding costs: Oerlikon did not incur unnecessary costs. In view of the urgency, Oerlikon could not send a warning letter before the evidentiary seizure, and only months after the seizure did Bhagat provide a more specific undertaking, but still not committing to pay penalties in the event of non-compliance.
- The Court of Appeal sets the value of the case on the lowest range for recoverable costs of € 250.000. Bhagat, which was only successful with respect to the damage claim, has to pay 80% of Oerlikon’s costs and Oerlikon 20% of Bhagat’s costs.
Comment
Some important lessons.
- If you are an international company (whether or not established within the UPC territory), you have to do a serious patent search before entering the UPC market. You may be held liable for full damages if you are found infringing even if the patentee has never sent you a warning letter.
This may be different if you are a small or medium seized company, but in house-counsels, representatives, and patent attorneys, should ensure that clients intending to introduce a product on the UPC market are properly warned. - A second lesson is that, if you want to avoid high costs and you know you are infringing, you should act quickly: give and undertaking and accept a contractual penalty (always with a maximum). Even then, you may not be able to avoid paying for an evidentiary seizure!
NB: I write “always with a maximum”. This is based on my experience with a small company seeking my advice after having received a claim for € 60 million because of contractual penalties. Ten years earlier they had given an undertaking not to sell a certain product anymore. A new marketing manager, who was unaware of the undertaking, had introduced the product again. The penalty was € 5.000 per product. More than 12.000 products had been sold over two years before getting the letter! - If you want to claim reputational damage, you have a (high) burden of proving that indeed your reputation has actually been harmed.
9 December 2025
Local Division Düsseldorf, Headwater v Apple
UPC_CFI_432/2025; UPC_CFI_1095/2025
Settlement
Facts
- Both parties filed a R. 263 RoP request for withdrawal with consent of the other party of claim and counterclaim, agreeing that each party bears its own costs.
- The parties claimed 60% of court fees back.
The Court
The court accepted the withdrawal, closed the case, and ordered to pay back 60% of the fees: € 14.400 to each party.
Comment
The UPC proceedings were apparently instrumental in enabling the parties to reach an agreement in a (minimal) € 4 million dispute. Why, then, should the Court (which must become self-financing in 4 years’ time) have to reimburse fees amounting to 0,07% of the value of the dispute? This reimbursement rule should, in my view, be abolished, save for an exception allowing reimbursement in exceptional circumstances.
10 December 2025
LD Düsseldorf, M-A-S v Altech
UPC_CFI_316/2024; UPC_CFI_547/2024
(In)direct infringement / damages
Facts
- This case concerns a patent for a method for continuous filtering of polluted plastic melt.
- M-A-S starts infringement proceedings.
- Altech denies infringement and files a counterclaim for revocation.
The Court
- The amendment of the claim after the interim conference should have been done in accordance with R. 263 RoP, which is not the case. Therefore, the amendment is refused, but it would anyway not have been allowable because it was late.
- The Court first discussed the patent and the problem for which it provides a solution.
- Thereafter, the Court gives an interpretation of certain claim elements following the guidelines formulated by the Court of Appeal (in e.g. its decision in Nanostring v 10x Genomics). The Court does not follow the interpretation of “continuous” raised by the defendant, who referring to the description argues that cleaning of the filter has to be continuous. The Court states that that is not necessary, and that what is stated in the description is an advantageous implementation, but not required by the claim.
- The Court follows a functional interpretation of the claim and in the sense that the Court refuses to accept a limiting interpretation of “after” (“hinter” der Förderschnecke), also referring to the fact that the example in the description does not show such an interpretation of “after”.
- With respect to inventive step, the Court refers to the decisions of the Court of Appeal in Meril v Edwards and Amgen v Sanofi. Also in this case (as we have seen before), the Court does not see the necessary motivation to combine and even if the combination would have been made then you still no reach the solution of the patent according the Court.
- The defendant does not give any further explanation why the submitted prior art would lead to invalidity.
- The Court concludes there is literal infringement. It is irrelevant that defendant has filed its own patent application for improvements.
- Filters which are destined for the installations of the patentee do not indirectly infringe because of exhaustion. The buyer of an installation is entitled to replace parts which are worn out (used), as long as this does not amount to the building of a new installation. They infringe as far as they are destined for installations of Altech.
- A claim which forbids any infringement of the patent and includes also “making” is allowed. Export is not an infringing act.
- The Court refuses to award interim damages because there has to be “einer ausreichenden tatsächlichen Grundlage” respectively “einer auf bestimmten Tatsachen basierenden plausiblen Schätzung” (see my comments).
Comment
- Also in this case the infringement question is in fact decided after the interpretation of the (disputed) claim elements. Also in this case, the defendant tries to escape infringement by trying to give an interpretation “within the letter of the claim” by referring to the description. In general that will not be successful as long as the “inventive idea” (the solution for the problem of the prior art) is used. Also in this case, it was in my opinion pretty clear for the defendant that its infringement defence was quite hopeless.
- The same was true for its invalidity defence, and such defence will of course never work if you just refer to prior art documents without clearly explaining (following the guidelines in the decisions of the Court of Appeal) why such (combination of) documents lead to the invention being obvious.
- A JR should not suggest during the interim conference a different formulation of what is claimed, and then after the claimant has made the changes, state that they should have been made via R. 263 RoP and are not allowable anyway. The JR in such a situation should make sure that the defendant agrees or clearly reserve judgment about the allowability. In the latter situation, the claimant should realize that he has to use R. 263 RoP for an amendment.
- It is not relevant if a patent application has been filed or even a patent has been obtained for the infringing product. That is an old trick which certainly does not work with literal infringement, but which also does not exclude infringement under the doctrine of equivalence, as the question of inventive step is a different one than the equivalence question (when you know the equivalent).
- The decision about the filters seem to me correct. Here we see how important it is to try to, during prosecution, obtain an independent claim for a usable, preferably in a separate patent, assuming one can point to new and inventive aspects of the usable (which in this case on the face of it did seem impossible).
- The Court holds that with respect to the non-monetary claims, the 5 years limitation period is not applicable. That indeed is a (very) literal interpretation of Art. 72 UPCA, but in my opinion these monetary claims are clearly intended to prevent further damages “for the patentee and in my view it would be totally unacceptable if such non-monetary order would go back more than 5 years. That of course has never been the intention of the drafters of the UPCA. The fact that a German textbook states something different, according the Court, is irrelevant. Citing textbooks in judgments is a habit which is not desirable in the UPC. It is not a textbook which decides what the law is, but the Court of Appeal. The judge does not know all what is written in the UPC in all different languages about Art. 73 UPCA. So he/she should make up its own mind about what is right and that gets more authority by referring to a (selected) textbook.
- The Court does not award interim damages. I have already as a young litigator been surprised that – while in my small country we could award damages ex aequo et bono – our big neighbor Germany requires proving damages until the last Pfennig (now: Euro cent). The cited German sentences breathe this sentiment. If you read the facts of the case, I think that the demand for € 100.000 was fully justified.
- Could the claimant have asked for an injunction with respect to the manufacturer in Turkey, as that manufacturer causes damage (infringement) in the UPC? As it is Christmas time, I offer a (one) bottle of champagne for the right answer.
10 December 2025
Local Division Düsseldorf, Canon v Katun
UPC_ CFI_351/2024; UPC_CFI_595/2024
Results of interim conference
Facts
- The JR stated that the penalty payments be phrased as “up to” and not as fixed amounts.
- The JR reiterated that the Court had already decided on the request for further written submissions.
- The defendant dropped its argument that one defendant was not properly served.
- The value of the dispute was postponed to the oral hearing.
- The JR decided on the breakdown of the claim in the different claim elements.
- The parties agreed about the time for argument during the oral hearing: both parties 60 minutes in first instance and 30 minutes for reply and rejoinder.
- Parties were asked to submit a preliminary estimate of the legal costs.
- The deadline for further submissions following the interim conference was discussed.
- In a confidential setting, a settlement was discussed.
Comment
- The German JR insists on the national German labels to formulate the penalty sums in the “up to” formulation. See also the previous decision of the day by the same Local Division. The Local Division states “to have more flexibility”. I wonder on which Article of the UPCA this is based.
Why can the claimant not claim a fixed penalty to which the defendant can react and the Court decide? This avoid time consuming proceedings for fixing the forfeited penalties. The way I read the Court of Appeal’s decision in Belkin v Philips, this is also the preferred way of the Court of Appeal. - The way the JR asks to submit preliminary estimated legal costs is in my opinion also too vague. First of all, it would be good to remind parties that the preferred way of dealing with costs is an agreement. If that is not possible, then follow the example of the Loca Division in The Hague. File your costs (including further expected costs) two weeks before the hearing and the other party has a week to react. That enables a cost decision in the decision avoiding the extra costs (for clients) and effort of cost proceedings.
- Further submissions after the interim conference? About what? The written phase is closed. If the JR allows a further written submission, it should be clear why and about what.
Very good that the JR takes one of the goals of the interim conference seriously, in the sense that she tried to have the case settled.
10 December 2025
Local Division The Hague, Maxell v Samsung
UPC_CFI_251/2025; UPC_CFI_769/2025
Case management / extension
Facts
- This concerns an infringement case, counterclaim for revocation.
- On 10 November 2025, the claimant files a conditional application to amend the patent.
- On the same day, the JR asked the claimant to file each auxiliary request as a separate exhibit (instead of one 566-pages document), and to explain why 44 (conditional) auxiliary requests is a reasonable number.
- The claimant explains on 14 November 2025 why also in view of the numerous invalidity attacks the number of auxiliary requests (which in essence were 8 requests) were reasonable.
- On 21 November 2025, Samsung stated that the number was unreasonable and asked an extension of time for its rejoinder/reply.
The JR
- An extension can only be granted in exceptional circumstances. There are no such circumstances. No extension granted.
- The unconditional auxiliary requests are reasonable in the circumstances of the case. The JR cites that de facto the number is lower and claimant has produced a table which makes the requests easy to understand. Furthermore, Samsung launched numerous invalidity attacks. The reasonableness will be discussed during the interim conference.
Comment
This seems to me a good decision. If you file more than (as I counted them) 40 invalidity attacks, you can expect such auxiliary requests. After direction by the JR, it seems manageable.
I have said before: in general, if you need so many attacks, this is often a sign that the patent is probably valid! The most difficult task for a representative is concentrating on his best arguments.
As the representative is German, he should know “In der Beschränkung zeigt sich erst der Meister“ (“Mastery reveals itself through limitation”), dixit Goethe in the poem “Natur und Kunst”.
– 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”.