Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC.
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30 May 2025
Court of Appeal, Belkin v Philips
Penalty payments
Facts
- Belkin (found to infringe by the Munich Local Division) was ordered to communicate information in relation to the extent of the infringing acts it had committed since 28 December 2016. A penalty payment was ordered of up to € 50.000 per day of non-compliance.
- The decision was served on 13 September 2024, and on 20 September 2024, Philips notified Belkin that it intended to enforce the whole decision, setting 7 October 2024 as the latest date for receiving the information.
- Belkin asked CoA for suspensive effect on 23 September 2024.
- On 7 October 2024, Belkin informed Philips it could not provide the information but that it would do so one week after the decision of the Court of Appeal.
- The Court of Appeal refused suspensive effect on 30 October 2024.
- On 7 November 2024, Belkin’s representative asked for an extension to 15 November 2024 by phone. This request was rejected on 7 November (?), but in any event on 11 November 2024.
- On 11 November 2024, Philips asked the Court to impose penalty payments.
- On 12 November 2024, Belkin sent 16 boxes with invoices and a printed table.
- Philips argued the information was incomplete (no manufacturer prices were given) and asked to impose a penalty of € 20.000 per day as of 7 October 2024.
- The Local Division decided to impose a penalty of € 46.000 and divided the costs such that 75% is borne by Belkin and 25% by Philips. The Court held:
a. Providing information in paper form is okay if electronic form is not requested.
b. Information provided on 12 November 2024 was too late. Belkin gets the benefit of the doubt, but the information should have been given at the latest on 30 October 2024. Belkin should have started to prepare the provision of the information upon receipt of the decision.
c. The information is moreover incomplete.
d. The Court orders a penalty payment of € 500 a day as of 30 October for being late. On 25 November 2024, Belkin knew it was incomplete. From that day onwards, € 1.500 per day until 17 December 2024, as requested by Philips.
Both parties appealed.
Court of Appeal
- You can cross-appeal (See Art. 73(2) UPCA).
- Penalty payments can be requested or imposed on the Court’s own motion.
- You have to fulfil all general conditions for enforcement and there should be a culpable breach.
- Setting in a judgment a maximum per day and not a fixed amount is okay. The Court should consider the circumstances, proportionality, severity of the breach, duration and the defendant’s ability to pay.
- The order (R. 118.1 RoP) was served on 23 September.
- A request for suspensive effect does not suspend enforcement.
- You must get a reasonable period to provide information. From 23 September 2024 until 7 October 2024 was too short.
- Clearly providing information includes providing the manufacturer prices, because it allows one to calculate damages.
- A punitive sanction requires fault. Defendant has to do what is possible and reasonable.
- Court of Appeal considers a period of 6-8 weeks to be reasonable. A period ending on 6 November 2024 therefore would have been reasonable.
- Result: € 40,000 instead of € 45,000!
Cross-appeal
- Philips did not appeal against the decision to end the period for penalty payments on 17 December 2024 instead of 24 December 2024 (when it received the manufacturing prices), so that cannot be awarded because it was not requested. Obiter dictum: the Court should have imposed a recurring penalty.
- The Local Division was right in finding that providing information in paper form was okay.
Comment
1. Much ado about nothing! The UPC gets € 5,000 less: parties have spent a lot of money on appeal!
2. However, many lessons to be learned:
A. for the Divisions:
a. If a party has to give information, destroy products etc., set a reasonable period for compliance after the execution of the judgment.
b. Set recurring penalties if you decide on penalty payments while the not obeying injunctions/orders continues.
B. for representatives:
a. If you do not want your whole office full with boxes, ask for information in electronic form.
b. Say nothing during telephone conversations without confirming by email (better: communicate by email).
c. Be very reasonable when you set time periods for complying with an order. Give a party preferably the possibility to ask for suspensive effect. It is also better for your client because if suspensive effect is granted he may have to send back all the received boxes!
d. If you want something additional on appeal (here: additional fines for the period of 17 September 2024 – 25 September 2024), you have to ask for it!
C. for clients:
Do you want to spend your money on these irrelevant issues which are only of interest to the lawyers?
2 June 2025
Court of Appeal, XSYS v Esko-Graphics
Preliminary Objection
Facts
- On 12 May 2023, the patent at issue was opted out, and on 26 August 2024 the opt-out was withdrawn. On 27 August 2024, Esko starts infringement proceedings covering also the period before 1 June 2023, as well as the period before and after the withdrawal of the opt-out of the patent.
- XSYS lodged a preliminary objection, stating that the Court has no jurisdiction in relation to acts before 1 June 2023 and with respect to the period that the opt-out was in place.
- The Local Division rejected the PO.
The Court of Appeal
- The Court refers to the scope of the UPCA. Art. 3 (c) UPCA states: “the UPCA shall apply to any European Patent which has not yet lapsed at the date of entry into force of this Agreement without prejudice to Art. 83”.
- The Court refers to Art. 32 UPCA (under chapter VI of Part 1 “international jurisdiction and competence”), which lacks any temporal limitation with respect to alleged infringements. The absence of temporal limitation is reflected in the object of the UPCA which is to avoid a fragmented market for patent litigation.
- Also Art. 3 UPCA lacks a temporal limitation of the competence of the UPC.
- The transitional provisions provide for parallel competence, but not for partial or limited competence of the two courts (i.e. the UPC and the national court).
- Also the reference to Art. 29-32 of the Brussels I bis Regulation which applies with respect to proceedings in national courts and in the UPC, shows that the situation of parallel proceedings is regulated, but nothing suggests that one of the two is not available during a certain period of time.
- There is also no retroactivity: at the time of deciding the competence of the Court, the Court applied the applicable provision at that date. Reference to the Court of Justice of the European Union (“CJEU”) is not necessary because in fact this is all an acte clair.
- The withdrawal of an opt-out means that the patentee brings the patent back under the (exclusive) competence of the Court. The provision does not provide for a partial of limited opt-out.
Comment
-
- I think this is a convincing decision, fully in line with the correct grammatical interpretation of the Articles of the UPCA, and especially also the correct teleological interpretation of the UPCA which is indeed to overcome difficulties in exercising patent rights caused by national boundaries.
- The only question I have is about retroactive effect. Quite frankly, I do not even see that at all. When we decided in the Netherlands on 1 January 1988 that only the District Court The Hague could decide patent cases, nobody argued that that was not possible with respect to infringements committed before 1 January 1988 for which at the time a different court was competent, because that would mean retroactive effect.
- The same is true if the procedural rules of a court change. Such new procedural rules are of course also applicable in cases with respect to infringements committed before the change of the procedural rules.
- Note that the Court very specifically states that this is not a matter of applicable law. Indeed, if there is a difference between UPCA law and national law, the Court, in my view, will have to apply national law with respect to infringements before 1 June 2023. That is a matter of material law and not procedural law, and except for specific provisions in the new Act these should not work retroactively.
2 June 2025
Local Division Munich, Heraeus v Vibrant
UPC_CFI_114/2024; UPC_CFI_448/2024
Procedural order
The JR
The JR who held the interim conference together with the Technically Qualified Judge, orders the claimant to submit a consolidated version of the claims including the auxiliary requests for all the UPC member states. The JR suggests parties to renew the dormant settlement discussions, and to try to reach agreement about the costs.
Comment
If I understand what has happened correctly, the defendant only invokes the revocation of the German part of the bundle patent which (again) would raise the interesting question whether that is possible. In my view, that goes against the goal of the UPC which is avoiding fragmentation.
2 June 2025
Local Division Düsseldorf, Versah v HaeNaem
Withdrawal
Facts
Before the end of the written proceedings, the claimant requests the withdrawal against defendant 2 (there are three defendants). Defendant 2 agrees also that each party bears its own costs.
The Court
The Court agrees, but states that claimant has to bear the court costs with respect to defendant 2.
Comment
I do not quite understand the decision as I did not think that there had been extra court costs because of defendant 2. There is, as I understand it, only one fee which the claimant has paid, independent of the number of defendants. Maybe the JR wants to make clear that the withdrawal against one of the defendants cannot lead to any reimbursement of fees.
2 June 2025
Local Division Munich, Biomarin v Ascendis
Scheduling
The Court
- No bifurcation, and request for a technical qualified judge.
- Biomarin complains that the vacation period ends on 6 January which leaves little time for preparation for an interim conference on 9 January 2026. The Court sticks to 9 January 2026.
- The Oral hearing is scheduled for 18 March 2026.
- Topics for interim conference to be suggested by 19 December 2025.
Comment
Very good scheduling between the end of the written procedure and the oral argument which makes it possible to order certain things to be done or commented on before the oral hearing. Quite strange that you cannot appear on 9 January 2026 because the “vacation period” ends on 6 January 2026 and so you have only two days to prepare. So these representatives stop working from 19 December 2025 to 6 January 2026? Judges apparently work after 19 December and we also published our “UPC Unfiltered” on 23 December 2024, 30 December 2024 and 6 January 2025!
2 June 2025
Local Division Düsseldorf, Roche v Tandem (6 defendants)
Settlement confirmation
- The JR reports about the settlement between the parties at the request of plaintiff and defendants 1 and 2.
- The JR orders the agreement to stay confidential.
- Each party bears its own costs.
Comment
The parties ask for confirmation (R. 365 RoP). This means that the Agreement now can be enforced as a final decision by the Court. The question is what does that exactly mean? Can you enforce the contractual obligations through execution of the agreement as a judgment? For instance if the agreement includes contractual penalties, can you just follow R. 118.8 RoP and then ask the Registrar to serve this on the other party to collect the contractual penalties and then to pay them to the entitled party?
3 June 2025
Local Division Munich, Swarco v Yunex
Intervention
Background
Dianming Technology requests to intervene in order to support the defendant. Yunex, the defendant, agrees. Swarco, the claimant, agrees as well, but asks the Court to require Dianming Technology to provide security for its costs for € 169.000.
The JR
- The intervention is allowed.
- Dianming Technology gets 10 days to react to the demand for security.
Comment
Dianming Technology probably is the manufacturer of the allegedly infringing products. I do not think that Swarco as a claimant is entitled to security. If Swarco starts litigation, it could have realized that Yunex would ask the manufacturer to hold it harmless.
The UPCA is clear: security can only be asked by the defendant, with the exception that, if the defendant lodges a counterclaim for revocation he can also ask for security for that counterclaim because he file such counterclaim in order to defend himself..
3 June 2025
Local Division Munich, FUJIFILM v Kodak
Order to provide information
Background
FUJIFILM obtained an injunction against Kodak.
The Court refused to determine a fixed time to provide information and to set a penalty for non-compliance, in order to keep flexibility if defendant should fail to provide proper information in due time. The Court also refused to order that the information to be supplied should be verified with a report of an independent accountant, because it felt that the possibility of severe penalties was enough to make sure that defendant supplied the right information.
Claimant now asked the Court to send a warming to the defendant that if the information is not supplied within three weeks, they would forfeit a penalty for up to € 30.000 for each day they would be late.
The Court
The Court refused the request, as the panel had explicitly decided not to set a fixed time and an amount of penalties.
Comment
- This is an understandable decision. The claimant tried to get the certainty that the Court had already refused to give him.
- What can be criticized is the decision of the Court in the judgment in the main proceedings. The Court should have set a period and fixed the penalty. In such proceedings, the claimant should in his Statement of Claim ask for a certain period to provide information and to ask for a penalty amount if the information is not (completely) delivered before that date. It is then for the defendant to argue that that period is too short (and the penalty too high), and for the Court to then make a decision so that the parties have certainty.
- In this case it was up to the claimant to decide what was a reasonable period for supplying the information. Claimant tried to kick the ball back to the Court but the Court returned the ball!
- As to the refusal in the main proceedings, to order a report of an independent accountant, I am also not convinced. How can the claimant find out whether or not the supplied information is correct? That is certainly not always possible. Such a report at least avoids further disagreements between the parties.
3 June 2025
Local Division Munich, Edwards v Meril
Correction of decision and order
Claimant files numerous requests to rectify a decision of the Court dated 4 April 2025 (UPC_CFI_501/2023).
The Court accepts almost all requests.
Comment
Is this a sign that the Local Division in Munich has too many cases and a far too heavy workload? It would be much better if representatives stop filing so many cases in Munich and if this does not happen on a voluntary basis, the President of the CFI should announce that the Local Division in Munich will not deliver decisions in 14 months so that parties that want to have a decision in 14 months should file elsewhere. The Local Division in Munich in that way gets more time and can spend more time on cases.
4 June 2025
Local Division The Hague, Moderna v Genevant
Correction of order
The JR had ordered that some of the Preliminary Objections were filed after the one month (after the service of the Statement of Claim) and therefore too late. However, it appeared that a mistake was made with respect to the date of service and in fact also these Preliminary Objections were filed timely.
The JR
The JR corrected this “clerical mistake”.
Comment
- These mistakes can easily happen with (like in this case) numerous defendants served on different days. As I have said in the past and we have already seen in practice, why do parties not agree on one day (between the first and the last service – in cases where there are a few days apart –) from which the period for Preliminary Objections and the defence start to run, and ask confirmation by the JR?
- Moderna asked for the same correction in two different workflows. That is not necessary, says the JR and she is right. At the same time, a nervous representative who thinks “better safe than sorry”, also in view of the CMS system, is also right!
4 June 2025
Local Division Düsseldorf, 10x Genomics v Curio
Change in confidentiality regime
Background
- The JR had granted a confidentiality order and ordered that only a selected group of persons had access to certain information provided by Curio. In his order, the JR had mentioned all the persons by name, including the paralegals of the claimant working on the case.
That was probably the result of the way 10x Genomics had drafted its request. Not smart, because paralegals may leave the firm or for any other reason may be replaced. - 10x Genomics this time asks to delete these paralegals from the confidentiality club and more generally rule that any person working in the team of the representative would be part of the confidentiality club.
The JR
The JR (of course) granted the request.
Comment
- That is of course how such confidentiality orders should be granted. The representative is responsible and will be held accountable for this team. It would be very unpractical if you have to go back to the Court every time a team member would leave. Certainly with young team members that happens all the time (pregnancy, burn-out, not being fit for the job, unhappy with the office or representative for which they work or just looking for a better life-work balance and start working 35 less stressful hours a week for the government).
- As a representative for the opposing party, you should not have the automatic reaction to always disagree. This is a good example. The representative of the defendant should have realized that this all make sense and that disagreeing would not make sense.
4 June 2025
Court of Appeal, Hybridgenerator v HG System
Composition of the Court
Background
On 26 August 2024, the presiding judge granted an ex parte evidence seizure and order for inspection. The order stated that if the respondents would not comply, they would be subject to penalty payments. On 4 September 2024, the single judge set a penalty of € 5,000 a day for each respondent who would not comply with the order.
On 30 September 2024, a request for review of the 26 August 2024 order was heard by a single judge and the order was upheld.
With respect to the request to impose penalty payments, according to the order of
4 September 2024, the judge decided “On the present basis, the Respondents are not ordered to pay the periodic penalty sums set by the Court in the order of 4 September 2024”.
The Court of Appeal
The Court of Appeal, before dealing with the appeal of Hybridgenerator about the refusal to impose penalty payments, raised the question whether a single judge could decide about the imposition of penalty payments.
The Court of Appeal referred to R.1(2) RoP, which states that the powers of the Court can also be exercised by the President, the Judge Rapporteur or the standing judge unless the Rules state otherwise and then referred to R. 354.4 RoP, which states that imposing fines can only be done by the panel.
The Court of Appeal referred the case back to the Court of First Instance, to decide the question of imposing fines by the whole panel.
Comment
- The Respondents had asked the Court to deal with the case with one judge but apparently overlooked that for such a request both parties have to agree.
- The judge apparently overlooked R. 354.4 RoP when deciding that he would not impose penalty payments.
- So the lesson is that certainly one judge can grant ex parte orders and even stating in the order that if the order is disobeyed penalty sums may be imposed, and he/she may in my opinion even state the maximum amount which can be imposed, but the imposition of penalty sums is a decision for the full panel.
5 June 2025
Central Division Milan, Insulet v Eoflow
Legal costs / confidentiality
Background
Insulet filed cost proceedings after it had won PI proceedings in the Court of Appeal which reversed the decision of the CFI to refuse the PI (UPC_CoA_768/24).
Insulet filed at the same time a request for confidentiality as to information regarding attorney’s fees and expenses both under R. 262A RoP and (the decision says) R. 262.4 RoP.
Insulet claimed that the attorney’s fees and expenses were protected under attorney-client privilege and highly confidential.
The JR
- The JR gives a long exposé about R. 262A RoP, Art. 58 UPCA, Art. 9(2) of the Directive (EU) 2016/943 and Art. 39(2) TRIPS.
- The JR states then “costs are not covered by confidentiality, unless they are specifically indicative of the company’s financial capacity, its commercial strategy or the importance of the patent as a corporate asset” but not “from the point of view of protecting the law firm”.
- With respect to the latter, the JR refers to R. 262A RoP which only protects confidential information if contained in pleadings or the collection of evidence and use of evidence.
- Art. 58 UPCA refers according to the JR to the confidential information of a party in the proceedings or a third party and thus to companies and the third party is certainly not the legal team involved in the proceedings.
Decision of the JR
Exhibit 2 and 3 are confidential and are only accessible to the representatives and employees of the law firm who need access for case management purposes and mr. Jesse Kim of EOFlow.
Comment
- The JR considers the invoices confidential “because it shows the interest of the patent owner defending his patent”.
- What is not confidential is the breakdown of costs within the law firm and between individual employees, with an indication of the billable hours.
- Then we have a mysterious remark by the JR that the amounts paid are every time higher than the invoiced amount.
- It was argued by the law firm that all was considered “highly confidential” to such an extent that not even one person of the opposing party (bound to secrecy) could see it and that it was all protected under attorney-client privilege.
- It was clear that no JR is going to accept this but it raises the question why was that law firm so nervous about anything becoming public? I have never had a situation in my practice in which the client every time paid more than the invoiced amount.
- I applaud that the JR holds that under Art. 262A RoP the law firm cannot be considered as a third party and that invoices of law firms are not pleadings, different from what in the past has been held by other Divisions.
- On the other hand the reasoning that the invoiced amount would divulge the importance of the patent for the company is strange. There may be all kind of other reasons why a company decides to litigate. Maybe the company does not consider the patent as very important and maybe the infringement is not very important but the company decides to enforce the patent in order to show the defendant and competitors that as soon as you come in the neighborhood of one of their patents, you have an expensive lawsuit on your hands. Quite frankly, I do not think that in practice patents are valued on the basis of what the patentee paid for a lawsuit!
- As said before, I think it is much better to be completely transparent and if companies really think that the cheaper is the better in patent litigation then they will probably learn a very expensive lesson in the end.
- Especially for companies without litigation experience (although I realize that they will probably not read this), I note the following: every lawyer who is a member of the bar in a UPC country and every European patent attorney without a law degree who followed a course to obtain a so called Art. 48.2 certificate (which course is, different from a drivers license test, always completed successfully) can act as a representative.
- That does not make you automatically a top-class representative. If you want to litigate or if you are sued in the UPC (which is something very different from prosecution or opposition proceedings in the EPO), you better ask around who can best help you. The best source of information are not necessarily all these guides or conferences (where you find very often speakers who pay for speaking!) but general counsels of companies who have had the experience of litigating in the UPC.
- Choosing only on the basis of price is not a good advice, but that is not a reason why there should not be transparency.
June 3, 2025 (published June 5, 2025)
Court of Appeal, Tandem v Roche
Settlement
Background
Tandem’s revocation action was dismissed by the Paris Central Division. Tandem appealed.
The parties subsequently informed the Court of Appeal that they had reached a settlement, which they wanted to be confirmed by the Court of Appeal and kept confidential. Parties would bear their own costs.
Court of Appeal
The Court of Appeal granted the request and ordered the decision and the agreement in redacted version to be entered in the Register.
The Court of appeal further stated: “This decision is enforceable as a final decision of the Court of Appeal.”
Comment
- This decision is based on R. 365 RoP.
- It is important to note that the Court explicitly states that he confidentiality of the agreement can be challenged by a member of the public and that only then the Court of Appeal will decide about the confidentiality. So basically the Court of Appeal refused to make a decision about whether or not a member of the public would obtain access before such a request is made. That is understandable, as you do not know before an Art. 262 RoP is made what exactly the reasons are why such member of the public thinks that the agreement or parts of it should not remain secret. On the other hand this leads to uncertainty for the parties to the agreement. That may be the price you have to pay for the fact that “the decision to confirm one settlement may be enforced as a final decision of the Court” (the meaning of which I discussed in an earlier edition of “UPC Unfiltered”).
5 June 2025
Local Division Mannheim, Fingon v Samsung
Amendment of case
Background
The defendants complain because the claimant in its Rejoinder bases the infringement on new facts without requesting to amend its case. They say that the products launched this year are different products than the products mentioned in the Statement of Claim.
In the alternative, the defendants ask for a five-months term for their Rejoinder.
The claimant asks to refuse the requests and in the alternative to give permission to amend their case.
The JR
- The JR cites the case law of the Court of Appeal (21 November 2024, UPC_CoA_456/2024): not every new argument constitutes an “amendment of case”, only when the nature or scope of the dispute changes (for example invoking a different patent or different products).
- In this case, there is no such amendment of case, as the new products are not different as far as the infringement case is concerned.
- Whether certain submissions could have been made earlier will be decided after the oral hearing, if it is decided that they are relevant.
Comment
- A quite predictable decision in the light of the case law of the Court of Appeal. It looks if Samsung was playing for time. The argument that they needed more time to analyze the infringement question with respect to their own new products did also not sound very convincing.
- The problem with respect to the decision about new submissions is now: what do you do as Samsung in your Rejoinder? If you ignore them, there is the possibility that the Court accepts them or (what is more likely) finds a way to consider them irrelevant. If you comment on them, the Court may decide that you have been able to respond to them, so they let them in. In the end, I do not think it is wise to ignore them, which means that this postponement of the decision de facto in all likelihood means that the claimant wins and that the decision in fact means that Samsung also on this point has not prevailed!
5 June 2025
Local Division Munich, Phoenix v ILME
Settlement
Background
Infringement proceedings, counterclaim for revocation, conditional auxiliary requests. The parties settle. Both parties file for withdrawal and agree with the withdrawal by the other party. No costs have been asked.
The claimant asks reimbursement of 40% of the court costs. The defendants do the same for the revocation action.
The Court
- The withdrawal is allowed.
- The value of the case for the infringement case is € 750.000.
- According to the applicable rules this means that the value of the counterclaim for revocation is 50% more.
- Parties are entitled to a 40% return of fees.
Comment
Both parties (while discussing settlement, I assume) asked the Court to use a later date for the closure of the interim procedure without as I understand giving a good reason to the Court. The Court had no reason to agree in my opinion. In doing so it allowed the parties to settle and file their withdrawal requests before the end of the interim proceedings obtaining a 40% refund instead of a 20% refund (see R. 370.9.c.iii RoP). The UPC has to finance itself and the Court should not cooperate with scheming by representatives in order to deprive the Court from court fees.
6 June 2025
Court of Appeal, NUC v Hurom
Suspensive effect
Background
The LD Mannheim had injuncted NUC because it infringed the patent. It ordered NUC to destroy and recall the infringing products and to give Hurom information about the extent of the infringing acts stating the origin and distribution channels etc.
NUC asks for suspensive effect.
The LD Mannheim had ruled that for information etc. you have to supply as a result of the decision on the merits, you cannot after the judgment ask for confidentiality. The Court also stated already in its decision on the merits that the information could only be used to identify further infringers and calculate damages.
NUC argues that the information to be provided is all confidential business secrets and highly sensitive. It argues that if it wins on appeal, it will have suffered irreparable damage. There would be a risk of misuse.
Decision of the Court of Appeal
- The Court of Appeal refuses suspensive effect as there are no exceptional circumstances.
- All these measures are also to be found in the Enforcement Directive in order to obtain a high level of protection.
- So suspension should only take place in exceptional circumstances as the measures intend to ensure a high level of protection.
- As to misuse, the Court of Appeal refers to the decision by the Local Division Mannheim which has already taken measures to avoid this by clearly stating for what the information could be used.
Comment
- If you want to avoid such measures then you should during the proceedings (and not after the decision) specifically address these requests and showing convincingly that they are not necessary or are not proportionate.
- The same is true if the information is truly confidential you should be able during the litigation but before the final decision to ask for a confidentiality regime.
- Certainly in litigation between competitors, I think that it is better if the Court orders to recall the products and to hand the list of customers to the representatives of the other party to enable them to check if indeed the infringing products have been sent back. That is the way it is generally done in The Netherlands, country of origin of these petita at the time (in the seventies) known as the “Schaper petita” named after the “inventor”.
6 June 2025
Local Division Mannheim, Dish v Aylo
Equivalence
Background
Dish has sued defendants for literal infringement or infringement by equivalence. Aylo counterclaimed for revocation.
Decision of the Court
- The fact that the claimant, one day before it started these proceedings, started proceedings about the same alleged infringements on the basis of a patent in the national German court, is not misuse, because the claimant during the transitory period can sue in the UPC and in a national court. Section 145 of the German Patent Act is not applicable.
- The claimant was entitled to argue the doctrine of equivalence for the first time in his reply, as he could not have foreseen the arguments raised in defence. The defendant had enough time to react in his rejoinder.
- It is not necessary to already in your Statement of Claim state in general that you invoke the doctrine of equivalence.
- You cannot (after the expiry of the patent) change your demand for an injunction into a declaration of infringement. This is a change of claim (R. 263.1(a) RoP).
- It is no problem if a claimant in its reply adds subsidiary requests which fit his conditional auxiliary requests which result from answer to the counterclaim for revocation. R. 30 RoP has to be seen as a lex specialis with respect to R. 263 RoP.
- The patent is novel (the Court applies the usual test referring to Court of Appeal 25 September 2024, UCP_CoA_182/2024). The patent is also inventive. The Court cites Art. 56 EPC and states that without hindsight, one cannot see why the skilled person would have had an incentive to apply the teaching of the patent, as the prior art did not contain any general teaching to avoid interruptions.
- The Court rejects the Art. 83 EPC arguments.
- With respect to the question whether or not the patent claims go beyond what was claimed in the application (Art. 123 (2) EPC) the Court applies the (usual) criteria referring to the Court of Appeal 14 February 2025, UPC_CoA_383/2024 (Abbott v Sibio) and concludes that in several aspects this is the case.
- The Court decides that auxiliary request 12 resolves all the Art. 123(2) EPC objections and is valid.
- Although the patent in the meantime has expired, the decision that the patent is invalid in the UPC countries (where it was validated) remains relevant because of the ex tunc effect of the decision.
- There is no literal infringement and also no infringement on the basis of the doctrine of equivalence.
- As to the doctrine of equivalence, the Court states that it has to apply national law as the UPC does not have the power to harmonize the national decisions, but then comes to the conclusion that all national laws require that the equivalent means perform essentially the same function in essentially the same way, which is not the case in this case.
Decision
- The infringement claim is dismissed.
- The patent is partly revoked insofar as it contains more than auxiliary request 12.
Comment
- In this case, the Court decides that for the first time alleging equivalent infringement in the reply is not an amendment of case if one could not foresee the defence of the defendant which triggered the invoking of the doctrine of equivalence.
- This is as such a correct decision, but I wonder how often that is the case. I think that if there has been correspondence between the parties about the infringement question before the lawsuit started or if it is pretty clear that the defendant will argue that there is no literal infringement, a claimant should in his Statement of Claim allege also (as a subsidiary claim) equivalent infringement and explain why there is at least equivalent infringement.
- I agree with the Court that a claimant can in his reply adapt his claim to the auxiliary request which he had formulated in answer to a counterclaim for revocation by the defendant, without having to file a request for amendment of case (R. 263 RoP).
- It is correct that for infringing acts committed before the entry into force of the UPCA, the UPC should apply national law. However, before that date all countries applied Art. 69 EPC and the Protocol, which means that the result of whatever magic formula they used for the application of the doctrine of equivalence should be the same. I therefore think that unless a defendant shows convincingly that under the doctrine of equivalence in a certain country a different result should be reached also with respect to acts before 1 June 2023, the UPC formula should be used.
- Unfortunately we have to wait for the Court of Appeal for deciding upon a formula and let us hope that it is simple. The Court in this case noted that all countries at least require that the equivalent means perform essentially the same function in essentially the same way. If one would add to that that also the equivalent means have to be essentially the same, we would have a test which is understandable and also accepted in the US. Of course, it will have to supplemented by the fact that you cannot claim infringement if such equivalent means are disclosed in the application but not claimed or if such equivalent means were already known or not inventive on the priority date.
- Although I do not understand why the Court has such a problem with (after the expiry of the patent) changing the claim for an injunction into a declaration that the attacked products or method infringed, it is of course not wise not to (also) formulate such request in the Statement of Claim.
6 June 2025
Local Division Mannheim, Sunstar v CeraCon
Change of claim
- The claimant (in an obvious oversight) forgets to claim certain damages. The JR decides that it is already clear from the original claim that these damages are also included and, if not, an amendment of claim is granted.
- Defendant argued that an obvious oversight can never lead to an amendment of claim because one of the requirements of R. 263 RoP is that the amendment could not have been made earlier and it is clear that that is the case with an obvious oversight.
Comment
The representative of defendant is too clever and that does not work sometimes!
6 June 2025
Court of Appeal, Hanshow v Vusion
Cost procedure
Background
- On 20 December 2023, the Local Division of Munich rejected the request of Vusion for a preliminary injunction and stated that Vusion would have to bear the costs of the proceedings.
2. Vusion appealed.
3. On 13 May 2024 the Court of Appeal rejected the appeal and ruled that Vusion had to bear the costs of the appeal. This appeal concerns only the costs in appeal.
4. Hanshow started cost proceedings on 18 June 2024 at the Court of Appeal with respect to the costs on appeal, asking to extend the one-month term for starting such proceedings with three days.
5. The JR of the Court of Appeal had already decided that also with respect to the costs in appeal one has to start cost proceedings in the Court of First Instance, and referred the case to the Local Division in Munich stating that 18 June 2024 should be considered as date on which the application was made.
6. The Local Division refused the requested extension of the term of one month, stating that Hanshow should have asked for reestablishment of rights (R. 330 RoP).
The Court of Appeal
- If at the time of the decision (“order”) in the PI proceedings already a case on the merits is pending, then the one-month term for a cost decision starts with the date on which the decision in the case on the merits is handed.
- If there is no case on the merits, then the one-month term starts with the date on which the first instance PI decision is handed.
- If in the meantime a case on the merits is started, then one can continue with the cost proceedings for the PI. In case the cost proceedings have not yet started, the winner in the PI proceedings can start cost proceedings within a month after the final decision in the PI proceedings or await the decision in the main proceedings.
- The Court of Appeal list a number of Rules for which you cannot ask for an extension under R. 9 RoP but only for a reinstatement of rights because these Rules are either about the start of new proceedings or about a request which have to be lodged after the end of proceedings. The other party is entitled to certainty that proceedings cannot at a later point be reopened.
- The JR decides therefore that you cannot ask for an extension of the one-month term on the basis of R. 9 RoP, but you will have to ask reinstatement.
Comment
- This decision can be applauded as it creates order in the chaos and does that in a very sensible way. Each representative should read this decision and keep a copy on his desk. It is also a stern warning that you cannot get an extension of the one-month term for starting cost proceedings and of all the terms mentioned in the Rules mentioned in consideration 46.
- Hanshow will continue to correct its failure to start cost proceedings within one month with its pending renewed request for reinstatement. I write “renewed” because apparently the first time, they failed to pay the fees for a request for reinstatement. Thinking about legal certainty and the requirement for “all due care” in R. 320 RoP it appears a fight against the wind mills.
6 June 2024
Local Division Mannheim, Sunstar v SeraCon
Amendment of claim
Background
The defendant who is the claimant in the counterclaim wants to add a prior art document for a new novelty attack.
Decision
The document could have been found by a simple search. The claimant which already had filed its answer to the counterclaim could then only react in the rejoinder. The JR refuses the request.
Comment
- Apparently the prior art search was completely entrusted to a “specialized” firm and then the “supporting” patent attorneys found the document while working on a different case and finally the representative noticed the relevance.
- It all shows how serious you have to prepare a counterclaim for revocation, and if possible, do not wait until you are sued and do the work also yourself.
- If the disallowed document is truly an instant killer of the patent (which seems doubtful) then file a revocation case in the same Division (see Art. 33(4) UPCA) and ask for a joinder or an oral hearing on the same day, i.e. 10 February 2026 in this case.
6 June 2025
Local Division Munich, Tiroler Rohre v SSAB
UPC_CFI_324/2024; UPC_CFI_487/2024
Infringement / revocation proceedings
The Court
- The Court discusses the meaning of several claim features, referring to Nanostring.
- With respect to the revocation claim, the Court cites the applicable law and the relevant case law of the Court of Appeal and states that with respect to inventive step the problem solution approach should be applied as far as possible. This is necessary for the legal certainty. It would be problematic if the Court and the EPO would use different criteria.
- Claim 1 is not novel, but auxiliary request 3 would be valid. That claim is also inventive, as there is no incentive to combine.
- The defendant argues that the use of the invention is not possible because products necessary for working the invention do not exist. The burden of proof of such a defence is on the defendant.
- The fact that the infringing product is itself patented does not mean that it cannot infringe.
- Even if there is no (risk of) infringement in certain other countries of the UPC, then that is no reason to not grant an injunction for these countries (Art. 34 UPCA).
- For the argument that recall an destruction orders are not proportional you have to give argumentation.
- The fact that decisions are published is as such no reason not to order publication by defendant because otherwise such order would never be possible.
Decision of the Court
The Court decides accordingly:
a) The patent is revoked as far it goes beyond auxiliary request 3.
b) The court grants injunction for the UPC countries for which the patent is valid.
c) The court orders recall, destruction and publication.
d) The costs are born for 20% by the claimant and 80% by the defendant.
Comment
- The Local Division Munich sticks to the problem-solution-approach which is not applied by various other divisions. The argument that it is applied by the EPO is in my opinion not a very strong argument. First of all, it is certainly not mandatory at the EPO, and certainly before the Board of Appeal such approach is not necessary. That it is almost always applied is more because patent attorneys are used to it and have in general not the courage to argue in a different way.
- There are good reasons for the EPO to apply the test, because it has to process many applications and this makes life easier for examiners. But it remains a rather artificial and inflexible test. Moreover, I think it is not the UPC (a Court of law) which should follow the administration (I know the Board of Appeal are considered independent but still part of the EPO) but more the other way around. I sincerely hope that the Court of Appeal is not going to follow the Munich Local Division by making the problem-solution-approach mandatory in the UPC. The UPC has to apply Art. 6 of the EPC that should be the starting point.
- I fully agree that if an infringer states that in practice there cannot be infringement because in use a result required by the claim is not reached, the alleged infringer has to prove that. As evidenced by this decision, this will generally be very difficult because also if that result can only sometimes be reached or unintentionally reached there is infringement.
- By now a representative should know that having an own patent for the infringing device is no defence against infringement.
– 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”.